Lupercal LLC v. CitiBank, N.A.

Western District of Texas, txwd-6:2019-cv-00201

Exhibit PC09

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82 EXHIBIT PC09 82 UNITED STATES PATENT AND TRADEMARK OFFICE __________________________________________________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ GOOGLE INC. Petitioner v. SUMMIT 6 LLC, Patent Owner Case IPR2015-00806 Case IPR2015-00807 U.S. Patent No. 7,765,482 U.S. Patent No. 8,612,515 Title: Web-Based Media Title: System, Method, and Submission Tool Apparatus For Media Submission _____________________________________________________________ DECLARATION OF DR. MARTIN KALISKI Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 TABLE OF CONTENTS I. Introduction ......................................................................................................1 II. Qualifications and Compensation ....................................................................2 III. Materials Considered ........................................................................................5 IV. Person of Ordinary Skill in the Art ..................................................................6 V. Patenting of the Inventions ...............................................................................6 VI. Overview of Creamer .....................................................................................13 VII. Overview of Aihara ........................................................................................15 VIII. Overview of Mayle .........................................................................................15 IX. Overview of Narayen .....................................................................................16 X. Rebuttal to Clark's Declaration ......................................................................17 A. It would not have been obvious to a POSITA to combine Creamer and Aihara. .................................................................................................17 B. Clark Has Not Shown The Challenged Claims To Be Invalid Over the Combination of Creamer and Aihara. .................................................26 C. It Would Not Have Been Obvious to a POSITA to Combine Mayle and Narayen. ........................................................................................39 D. Clark Has Not Shown The Challenged Claims To Be Invalid Over the Combination of Mayle and Narayen. ..................................................47 XI. The Challeged Claims of the '482 Patent Are Valid Over Creamer and Aihara.............................................................................................................58 A. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35– 38, 40–42, 44–46, and 49 are Obvious in View of Creamer and Aihara. .................................................................................................58 1. Claim 12 is Not Obvious in View of Creamer and Aihara. ......58 ii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of a group of one or more media objects for transmission. ...58 b. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving pre-processing parameters from a remote device, pre-processing parameters including a specification of an amount of media data." .60 c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified group of one or more media objects using said received pre- processing parameters." ..................................................61 2. Claims 13, 24, and 25 Are Not Obvious in View of Creamer and Aihara. ................................................................................63 a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of digital content" (claim 13) or "receiving an identification of a media object for transmission." (claims 24, 25) .............63 b. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified [digital content / media object] at said [client / local] device in accordance with one or more pre-processing parameters." (claims 13, 24, 25) .....................................63 c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication." (claim 13) ..................................................64 3. Claims 35–38 Are Not Obvious Over Creamer and Aihara. ....66 a. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said selected digital content [at said client device] in accordance with one or more pre-processing parameters" that are received from a remote or separate device or "receiving pre-processed" digital content "in accordance with pre-processing parameters" received from a separate device (claims 35– 38) ...................................................................................66 iii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 b. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters [enabling/controlling] said client device in a placement of said" [said identified group of] "digital content into a specified form in preparation for publication." (claims 35–38) .............................................................................66 4. Dependent Claims 16, 18, 19, 21–23, 40–42, 44–46, and 49 Are Not Obvious Over Creamer and Aihara. ..................................67 B. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35– 38, 40–42, 44–46, and 49 are Obvious in View of Mayle and Narayen. .............................................................................................................67 1. Claim 12 is Not Obvious in View of Mayle and Narayen........68 a. Neither Mayle nor Narayen teaches or suggests "receiving pre-processing parameters from a remote device. . . including a specification of an amount of media data." (claim 12) .................................................68 b. Neither Mayle nor Narayen teaches or suggests "pre- processing. . . media objects using. . . pre-processing parameters." (claim 12) ..................................................69 c. Neither Mayle nor Narayen teaches or suggest "transmitting said pre-processed group of one or more media objects to the remote device." (claim 12) ............71 2. Claims 13, 24, and 25 are Not Obvious in View of Mayle and Narayen. ....................................................................................72 a. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified content/media object with [or in accordance with] one or more pre- processing parameters that are received from a device separate from said client device." (claims 13, 24, and 25) ........................................................................................72 b. Neither Mayle nor Narayen nor their combination teaches or suggests "placement of said digital content into a specified form in preparation for publication," or "changing the file format of said media object," or "encoding or otherwise converting said media object." (claims 13, 24, and 25) ...................................................73 iv Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 c. Neither Mayle nor Narayen nor their combination teaches or suggests "said transmitted message including said pre- processed digital content/media object and said retrieved information." (claims 13, 24, and 25).............................74 3. Claims 35–38 are Not Obvious in View of Mayle and Narayen. ...................................................................................................74 4. Dependent Claims 16, 18, 19, 21, 22, 23, 40, 41, 42, 44, 45, 46 and 49 are Not Obvious in View of Mayle and Narayen. ........75 XII. The Challeged Claims of the '515 Patent are Valid Over Creamer and Aihara.............................................................................................................76 A. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 are Obvious in View of Creamer and Aihara. .......76 1. Claims 1 and 23 are Not Obvious in View of Creamer and Aihara. .......................................................................................76 a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23).....................................76 b. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving, by said client device, a confirmation of an intent to associate. . . files with said account." (claims 1 and 23) ...........................................78 c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified. . . files using pre-processing parameters." (claims 1 and 23) ........................................................................................80 d. Neither Creamer nor Aihara nor their combination teaches pre-processing "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) ............................................................82 2. Claims 20 and 39 Are Not Obvious in View of Creamer and Aihara. .......................................................................................84 a. Neither Creamer nor Aihara nor their combination teaches or suggests "receipt of an identification of one or v Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 image files, video files or audio files to associate with said account." (claims 20 and 39)..................................84 b. Neither Creamer nor Aihara nor their combination teaches or suggests pre-processing "said identified. . . files using pre-processing parameters." (claims 20 and 39) ...................................................................................84 c. Neither Creamer nor Aihara nor their combination teaches "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) ..........................85 d. Neither Creamer nor Aihara nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) ..........................................................85 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Creamer and Aihara. ..................................86 B. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 are Obvious in View of Mayle and Narayen. ........86 1. Claims 1 and 23 are Not Obvious in View of Mayle and Narayen. ....................................................................................87 a. Neither Mayle nor Narayen nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23) ............................................87 b. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." (claims 1 and 23) ...................................................................................88 c. Neither Mayle nor Narayen nor their combination teaches "pre-processing parameters received from a remote server." (claims 1 and 23) ..............................................91 d. Neither Mayle nor Narayen teaches or suggests "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) ...........93 vi Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 e. Neither Mayle nor Narayen nor their combination teaches or suggests "transmitting said pre-processed. . . files." (claims 1 and 23) ............................................................94 2. Claims 20 and 39 are Not Rendered Obvious In View of Mayle and Narayen. .............................................................................94 a. Neither Mayle nor Narayen nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39) ..........................................94 b. Neither Mayle nor Narayen nor their combination teaches or suggests pre-processing "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." (claims 20 and 39) ..........................................................95 c. Neither Mayle nor Narayen nor their combination teaches pre-processing "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) ..................95 d. Neither Mayle nor Narayen nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) ..........................................................95 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Mayle and Narayen. ...................................96 XIII. Secondary Considerations of Nonobviousness ..............................................97 A. Rimfire, Including the Prepare and Post Tools, Embody Claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the '482 Patent. ..................................................................................................99 1. Independent Claim 12 ...............................................................99 a. 12. A computer implemented method of pre-processing media objects in a local device for subsequent transmission to a remote device, comprising: ................99 b. a. receiving pre-processing parameters from a remote device, said pre-processing parameters including a specification of an amount of media data; ....................100 vii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 c. b. receiving an identification of a group of one or more media objects for transmission, a collective media data of said group of one or more media objects being limited by said received pre-processing parameters; .....................101 d. c. pre-processing said identified group of one or more media objects using said received pre-processing parameters, wherein said pre-processing comprises encoding or otherwise converting said media object; and ......................................................................................102 e. d. transmitting said pre-processed group of one or more media objects to the remote device. .............................103 2. Independent Claim 13 .............................................................105 a. 13. A computer implemented method of pre-processing digital content in a client device for subsequent electronic publishing, comprising. ................................................105 b. a. receiving an identification of digital content, said digital content including one or more of image content, video content, and audio content. .................................105 c. b. pre-processing said identified digital content at said client device in accordance with one or more pre- processing parameters that are received from a device separate from said client device to produce pre-processed digital content, said one or more pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication to one or more devices that are remote from a server device and said client device. .................106 d. c. retrieving information that enables identification of a user, said retrieved information being available to said client device prior to said received identification. .......107 e. d. transmitting a message from said client device to said server device for subsequent publishing device to said one or more devices that are remote from said server device and said client device, said transmitted message including said pre-processed digital content and said retrieved information. ...................................................107 3. Dependent Claim 16 ...............................................................109 viii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 a. 16. The method of claim 13, wherein said pre-processing comprises pre-processing in accordance with one or more pre-processing parameters that have been previously downloaded to said client device. .................................109 4. Dependent Claim 18 ...............................................................109 a. 18. The method of claim 13, wherein said pre-processing comprises pre-processing in accordance with one or more pre-processing parameters that have been stored in memory of said client device prior to said identification. ......................................................................................109 5. Dependent Claim 19 ...............................................................110 a. 19. The method of claim 13, wherein said retrieving comprises retrieving a user identifier. ..........................110 6. Dependent Claim 21 ...............................................................111 a. 21. The method of claim 13, wherein said retrieving comprises retrieving in a manner that is transparent to said user. .......................................................................111 7. Dependent Claim 22 ...............................................................111 a. 22. The method of claim 13, wherein said one or more pre-processing parameters enable said client device to place said digital content into a specified form in preparation for publication to one or more devices on which said digital content is to be electronically displayed. ......................................................................112 8. Dependent Claim 23 ...............................................................112 a. 23. The method of claim 13, wherein said pre-processing comprises resizing said digital content. ........................112 9. Independent Claim 24 .............................................................113 a. 24. A computer implemented method of pre-processing media objects in a local device for subsequent transmission to a remote device, comprising: ..............113 b. a. receiving an identification of a media object for transmission to said remote device; ..............................113 c. b. pre-processing said identified media object at said local device in accordance with one or more pre- ix Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 processing parameters that are received from a device separate from said client device to produce a pre- processed media object, wherein said pre-processing comprises changing a file format of said media object; ......................................................................................113 d. c. retrieving information that enables identification of a user, said retrieved information being available to said local device prior to said received identification; and ..114 e. d. transmitting a message from said local device to said remote device, said transmitted message including said pre-processed media object and said retrieved information. ..................................................................114 10. Independent Claim 25 .............................................................114 a. 25. A computer implemented method of pre-processing media objects in a local device for subsequent transmission to a remote device, comprising: ..............114 b. a. receiving an identification of a media object for transmission to said remote device; ..............................114 c. b. pre-processing said identified media object at said local device in accordance with one or more pre- processing parameters that are received from a device separate from said client device to produce a pre- processed media object, wherein said pre-processing comprises encoding or otherwise converting said media object; ...........................................................................115 d. c. retrieving information that enables identification of a user, said retrieved information being available to said local device prior to said received identification; and ..115 e. d. transmitting a message from said local device to said remote device, said transmitted message including said pre-processed media object and said retrieved information. ..................................................................115 11. Independent Claim 35 .............................................................116 a. 35. A computer implemented method for pre-processing digital content at a client device for subsequent electronic publishing, comprising: ................................................116 x Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 b. a. receiving a command that moves a graphical user interface element in a graphical user interface displayed at said client device, said received command enabling selection of digital content, said digital content including one or more of image content, video content, and audio content; .........................................................................116 c. b. pre-processing said selected digital content in accordance with one or more pre-processing parameters that are received from a remote device to produce pre- processed digital content, said one or more pre- processing parameters enabling said client device to place said digital content into a specified form in preparation for publication to one or more devices that are remote from a server device and said client device; ......................................................................................117 d. c. displaying a preview image of said selected digital content, said preview image having a reduced size relative to said selected digital content; and .................117 e. d. transmitting a message that includes said pre- processed digital content to said server device for subsequent publishing to said one or more devices that are remote from said server device and said client device. ......................................................................................118 12. Independent Claim 36 .............................................................118 a. 36. A computer implemented method of publishing digital content that has been pre-processed by a client device, comprising: .......................................................118 b. a. receiving, from said client device, a pre-processed group of one or more items of digital content that includes one or more of image content, video content, and audio content, wherein a collective digital content of said group of one or more items of digital content is limited by a specification of an amount of digital content, said group of one or more items of digital content being pre-processed in accordance with pre-processing parameters that were provided to said client device by a device separate from said client device, said pre- processing parameters controlling said client device in a xi Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 placement of said identified group of one or more items of digital content into a specified form in preparation for distribution to one or more devices that are remote from a server device and said client device; and .....................119 c. b. distributing, by said server device via an electronic network, information based on said pre-processed group of one or more items of digital content to one or more devices that are remote from said server device and said client device. .................................................................119 13. Independent Claim 37 .............................................................119 a. 37. A computer implemented method of distributing digital content that has been pre-processed by a client device, comprising: .......................................................120 b. a. receiving, from said client device, pre-processed digital content that includes one or more of image content, video content, and audio content, and information retrieved by said client device that enables identification of a user, said retrieved information being available to said client device prior to an identification of said digital content at said client device, wherein said digital content is pre-processed by said client device in accordance with pre-processing parameters that were provided to said client device by a device separate from said client device, said pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for distribution to one or more devices that are remote from a server device and said client device; and .....................120 c. b. distributing, by said server device via an electronic network, information based on said pre-processed digital content to one or more devices that are remote from said server device and said client device. ............................120 14. Independent Claim 38 .............................................................121 a. 38. A computer implemented method for pre-processing digital content in a client device for subsequent electronic distribution, comprising: ...............................................121 xii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 b. a. initiating, by said client device, a transfer of digital content from said client device to a server device, said digital content including one or more of image content, video content, and audio content; .................................121 c. b. pre-processing said digital content at said client device in accordance with one or more pre-processing parameters, said one or more pre-processing parameters being provided to said client device from a device separate from said client device, said one or more pre- processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication to one or more devices that are remote from a server device and said client device; and.................................................................................121 d. c. transmitting a message from said client device to said server device for subsequent distribution to said one or more devices that are remote from said server device and said client device, said transmitted message including said pre-processed digital content. ...............................122 15. Dependent Claim 40 ...............................................................122 a. 40. The method of claim 38, further comprising receiving an identification of said digital content for transmission prior to said pre-processing. .........................................122 16. Dependent Claim 41 ...............................................................123 a. 41. The method of claim 38, wherein said pre-processing comprises reducing a file size or compressing said digital content...........................................................................123 17. Dependent Claim 42 ...............................................................124 a. 42. The method of claim 38, wherein said pre-processing comprises resizing said digital content. ........................124 18. Dependent Claim 44 ...............................................................125 a. 44. The method of claim 38, wherein said transmitted message includes identifying information for said digital content...........................................................................125 19. Dependent Claim 45 ...............................................................126 xiii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 a. 45. The method of claim 44, wherein said identifying information is retrieved from storage in said client device. ...........................................................................126 20. Dependent Claim 46 ...............................................................127 a. 46. The method of claim 45, wherein said identifying information includes a file name. .................................127 21. Dependent Claim 49 ...............................................................127 a. 49. The method of claim 45, wherein said identifying information includes user information. ........................127 B. Rimfire, Including the Prepare and Post Tools, Embody Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 of the '515 Patent. .......128 1. Independent Claim 1 ...............................................................128 a. 1. A method for pre-processing in a client device, comprising the following computer implemented steps: ......................................................................................128 b. transmitting information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; ...........................................................................129 c. receiving an identification of one or more image files, video files or audio files to associate with said account; ......................................................................................130 d. receiving, by said client device, a confirmation of an intent to associate said one or more image files, video files or audio files with said account; ...........................131 e. pre-processing said identified one or more image files, video files or audio files using pre-processing parameters received from a remote server, said received pre- processing parameters enabling said client device to pre- process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre- processed one or more image files, video files or audio files, to one or more devices separate from said client device; and ....................................................................132 xiv Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 f. transmitting said pre-processed one or more image files, video files or audio files. ..............................................134 2. Dependent Claim 2 .................................................................135 a. 2. The method of claim 1, wherein said transmitting information comprises transmitting an identifier associated with a user and a password from said client device to said host server. .............................................135 3. Dependent Claim 6 .................................................................136 a. 6. The method of claim 1, further comprising displaying a thumbnail preview of said identified one or more image files, video files or audio files. .....................................136 4. Dependent Claim 10 ...............................................................137 a. 10. The method of claim 1, wherein said pre-processing comprises reducing a file size or compressing said one or more image files, video files or audio files. .................137 5. Dependent Claim 11 ...............................................................138 a. The method of claim 1, wherein said pre-processing comprises resizing said one or more image files, video files or audio files. ........................................................138 6. Dependent Claim 18 ...............................................................139 a. 18. The method of claim 1, wherein said transmitting comprises transmitting location information. ...............139 7. Dependent Claim 19 ...............................................................140 a. 19. The method of claim 1, further comprising reporting a status of said transmission of said pre-processed one or more image files, video files or audio files. .................140 8. Independent Claim 20 .............................................................141 a. 20. A client device for pre-processing, comprising: ....141 b. a transmitter that transmits information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; .............................................141 c. a computer usable medium having computer readable program code means embodied therein for enabling a xv Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 receipt of an identification of one or more image files, video files or audio files to associate with said account; and.................................................................................141 d. a pre-processor that pre-processes said identified one or more image files, video files or audio files in preparation for transmission by said client device, said pre-processor using pre-processing parameters received from a remote server, said pre-processing parameters enabling said client device to pre-process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device....................................141 9. Independent Claim 23 .............................................................142 a. 23. A method for pre-processing in a client device, comprising the following computer implemented steps: ......................................................................................142 b. transmitting information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; ...........................................................................142 c. receiving an identification of one or more image files, video files or audio files to associate with said account; ......................................................................................142 d. receiving, by said client device, a confirmation of an intent to associate said one or more image files, video files or audio files with said account; ...........................143 e. pre-processing said identified one or more image files, video files or audio files using pre-processing parameters that have been loaded onto said client device by a device separate from said client device, said pre-processing parameters enabling said client device to pre-process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device; and .143 xvi Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 f. transmitting said pre-processed one or more image files, video files or audio files ...............................................143 10. Dependent Claim 26 ...............................................................144 a. 26. The method of claim 23, wherein said transmitting information comprises transmitting an identifier associated with a user and a password from said client device to said host server. .............................................144 11. Dependent Claim 28 ...............................................................145 a. 28. The method of claim 23, further comprising displaying a thumbnail preview of said identified one or more image files, video files or audio files. .................145 12. Dependent Claim 29 ...............................................................145 a. 29. The method of claim 23, wherein said pre-processing comprises reducing a file size or compressing said one or more image files, video files or audio files. .................145 13. Dependent Claim 30 ...............................................................146 a. 30. The method of claim 23, wherein said pre-processing comprises resizing said one or more image files, video files or audio files. ........................................................146 14. Dependent Claim 38 ...............................................................146 a. 38. The method of claim 23, further comprising reporting a status of said transmission of said pre-processed one or more image files, video files or audio files. .................146 15. Independent Claim 39 .............................................................147 a. 39. A client device for pre-processing, comprising: ....147 b. transmitter that transmits information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; ....................................................................147 c. a computer usable medium having computer readable program code means embodied therein for enabling a receipt of an identification of one or more image files, video files or audio files to associate with said account; and.................................................................................147 xvii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 d. a pre-processor that pre-processes said identified one or more image files, video files or audio files in preparation for transmission by said client device, said pre-processor using pre-processing parameters that have been loaded onto said client device by a device separate from said client device, said pre-processing parameters enabling said client device to pre-process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device....................................147 XIV. Claim Construction .......................................................................................148 XV. Acknowledgement ........................................................................................152 xviii Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 DECLARATION BY DR. MARTIN KALISKI I, Martin Kaliski, declare: I am of sound of sound mind, capable of making this declaration, and personally acquainted with the facts herein stated. I. INTRODUCTION 1. I am an independent consultant. I am over eighteen years of age, and I would otherwise be competent to testify as to the matters set forth herein if I am called upon to do so. 2. I have prepared this Declaration for consideration by the Patent Trial and Appeal Board in the Inter Partes Reviews of U.S. Pat. No. 7,765,482 ("the '482 patent") and 8,612,515 ("the '515 patent"). 3. I have written this Declaration at the request of and have been retained by Lee & Hayes PLLC, which represents Summit 6 LLC in connection with the above-captioned Inter Partes Reviews. 4. I was asked to give my opinion on whether claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the '482 patent ("the challenged claims of the '482 patent") are obvious in view of Creamer and Aihara, and also in view Mayle and Narayen. As discussed further below, it is my opinion, that neither Creamer combined with Aihara, nor Mayle combined with Narayen render obvious the challenged claims of the '482 patent. 1 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 5. I was also asked to give my opinion on whether claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 of the '515 patent ("the challenged claims of the '515 patent") are obvious in view of Creamer and Aihara, and also in view Mayle and Narayen. As discussed further below, it is my opinion, that neither Creamer combined with Aihara, nor Mayle combined with Narayen render obvious the challenged claims of the '515 patent. 6. I was also asked to determine if Rimfire, including the Prepare and Post Tools, meets each limitation of the challenged claims of the '482 patent and '515 patent. As discussed further below, it is my opinion, that Rimfire, including the Prepare and Post Tools, meets the limitations of each of the challenged claims. II. QUALIFICATIONS AND COMPENSATION 7. I am being compensated at my standard hourly rate of $500 per hour for my work in connection with this matter. My compensation is not dependent on the contents of this Declaration, the substance of any further opinions or testimony that I may provide, the ultimate outcome of these matters, or the outcome of or any issue in relation to the Inter Partes Reviews. 8. I earned a B.S. in Electrical Engineering in 1966 from the Massachusetts of Institute, a B.S. in Mathematics in 1968 from the Massachusetts of Institute, a M.S. in Electrical Engineering in 1968 from the Massachusetts 2 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Institute of Technology, and a Ph.D. in Electrical Engineering in 1971 from the Massachusetts Institute of Technology. 9. My resume, including my qualifications, a list of the publications that I have authored during my career, and a list of cases that I have testified as an expert at trial or by deposition, is attached to this declaration as Attachment A. 10. I have spent over 35 years teaching and researching in the fields of Electrical Engineering, Computer Science Engineering, and Computer Science at the City College of New York (1971–1973), Northeastern University (1973–1986), L'Ecole Superieure d'Ingenieurs en Electrotechnique et Electronique, France (1980–1981), and California Polytechnic State University ("Cal Poly") (1986– 2007). 11. I was the Department Chair of the Electrical Engineering Department at Cal Poly from 1989 to 1992 and again from 1995 to 2002. I am currently a Professor Emeritus in Electrical Engineering at Cal Poly. 12. Besides being active in the Electrical Engineering Department at Cal Poly, I have been active in its Computer Engineering program since its inception in the early 1990's. My research and teaching focus on computer systems, software systems, industrial systems, control systems, digital logic and embedded systems. I have taught extensively in the latter areas in recent years, at both the undergraduate and graduate levels. For example, I have taught undergraduate courses based upon 3 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 FPGAs and CPLDs, digital logic courses, and graduate design courses in embedded system design, oriented about microcontrollers, using both wireless and wired technologies. I have also taught graduate courses in asynchronous hardware design and in computer arithmetic, as well as undergraduate and graduate courses in digital signal processing, image processing, and computer architecture. I also have extensive background in both software and hardware design recovery. 13. As a consultant, I have been involved in both contract research and private consulting for about 35 years. Example technologies I have worked on include software and hardware design reconstruction, software quality assurance, remote tracking technologies, algorithm development for CAD/CAM systems and expert systems in industrial automation applications, trouble-shooting fault- detection microcode, software engineering for advanced signal processing applications, development and implementation of algorithms for finite-state controller design, design of disk head assembly fault diagnostics, development of expert systems for verification of design standards for PC board design and for component testability, documentation and analysis of BIOS software, development of training manuals, classical expert system design, software design recovery research in transportation engineering, and expert system approaches to telephone system reliability. 4 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 III. MATERIALS CONSIDERED 14. In forming the opinions expressed herein, I have reviewed and considered numerous documents, including the following materials:  The '482 patent and its file history;  The '515 patent and its file history;  U.S. 6,930,709 to Creamer et al. ("Creamer");  Provisional Application No. 60/085,585, filed on May 15, 1998 ("Creamer '98");  Provisional Application No. 60/067,310, filed Dec. 4, 1997 ("Creamer '97");  U.S. 6,223,190 to Aihara et al. ("Aihara");  U.S. 6,018,774 to Mayle et al. ("Mayle");  U.S. 6,035,323 to Narayen et al. ("Narayen");  Plaintiff's Opening Claim Construction Brief in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) ("Summit 6 Brief");  Joint Claim Construction and Prehearing Statement in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) (ECF No. 149) ("Summit 6 JCCS");  Declarations of Paul Clark filed in IPR2015-00806 (Ex. 1003) and in IPR2015-00807 (Ex. 1003);  Petition for Inter Partes Review of the '482 patent;  Decision on Institution of Inter Partes Review of the '482 patent (Paper No. 19);  Petition for Inter Partes Review of the '515 patent;  Decision on Institution of Inter Partes Review of the '515 patent (Paper No. 18);  Exhibits 2010, 2014, and 2030; and  All documents cited in this Declaration. 5 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 IV. PERSON OF ORDINARY SKILL IN THE ART 15. It is my opinion, based upon a review of the file history of the '482 and '515 patents and the other evidence addressed herein, that a person of ordinary skill in the art ("POSITA") would have had, as of July 21, 1999, at least a Bachelor of Science degree in computer science or electrical engineering or with 2–3 years of experience in software engineering. V. PATENTING OF THE INVENTIONS 16. The two Summit 6 patents at issue in these coordinated proceedings— U.S. Pat. Nos. 7,765,482 ("the '482 Patent") and 8,612,515 ("the '515 Patent")— along with a third patent not challenged, No. 6,895,557 ("the '557 Patent"), all stem from a common specification filed on July 21, 1999. ('482 Patent.) The original application issued nearly six years later as the '557 Patent on May 17, 2005 ('515 Patent.) On October 4, 2004, the inventors filed a continuation of the '557 patent application. As with the earlier application, that application went through nearly six years of prosecution before ultimately issuing as the '482 Patent on July 27, 2010. ('482 Patent.) Finally, on April 29, 2011, Summit 6 filed for a third patent, which issued on December 17, 2013 as the '515 Patent. ('515 Patent.) 17. Until the Summit 6 inventions, uploading a digital image to a web site was a very cumbersome process. "For example, transferring a digital image may require first downloading a FTP program, then installing it, then running it and 6 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 connecting to an FTP server by typing the server name in the connection dialog, then navigating to the proper subdirectory, selecting the files to be uploaded, making sure that the program is in binary transfer mode, then sending the files." ('482 pat., 1:26–32; '515 pat., 1:31–37.) Summit 6's inventions provided an elegant solution to this problem by allowing users with minimal technical sophistication to select and submit "media objects" (which include, for example, images, videos, graphics, sound clips) to a third-party website. ('482 pat., 2:56– 57; '515 pat., 2:62–63.) The so-called Prepare and Post tools are browser-side components that prepare and submit media objects from inside a standard browser to a web site or server. ('482 pat., 2:44–48; '515 pat., 2:50–54.) Each of Summit 6's patents claim different embodiments of the "Prepare and Post Media Submission Tool" described in the common specification of the'482 and '515 patents. 18. A diagram of an exemplary web page providing the media object acquisition functionality of the Prepare and Post tools is shown in Fig. 1 of the '482 patent (right): 7 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 19. A user of the Prepare and Post tools selects a media object (e.g., a digital image) to upload either through a "drag and drop" functionality ('482 pat., 3:20–24; '515 pat. 3:26–30) or a file browse functionality. ('482 pat., 3:31–34; '515 pat., 3:37–40.) During the selection process, a user can add identification information such as a MLS listing number to the image in the context of a real estate application. ('482 pat., 3:60–62; '515 pat., 3:66–4:1.) After image selection, the user can simply upload the selected images to another location such as web site using the media sender functionality of the Prepare and Post tools. ('482 pat., 3:17–19; '515 pat., 3:23–25.) 20. The user of Summit 6's inventions need not understand (or even be aware of) the underlying technology of the image selection and upload process because the Prepare and Post tools transparently ensure that any media object selected by the user will be submitted in a form acceptable to the receiving location such as a web site. To do so, the Prepare and Post tools running on the user's browser utilize configuration parameters. ('482 pat., 5:26–33; '515 pat., 5:32–39.) Before transmitting images to the second location, the Prepare and Post tools preprocess the images according to requirements of the second location, as specified by the parameters. ('482 pat., 5:1–4; '515 pat., 5:7–10.) This client side intelligence of the Summit 6 inventions allows a user to "submit media objects to 8 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 web pages 'as is' without making modifications to the media objects prior to sending." ('482 pat., 2:65–67; '515 pat., 3:4–6.) Accordingly, these tools provide a user access to an intuitive platform for facilitating image selection and uploading. 21. Media objects can be preprocessed in numerous ways before transmission to the second location, including resizing the image, compressing the file, changing the image file format, changing the image quality, cropping or changing the aspect ratio of the image, adding text or annotations, encoding or combining media objects, or enhancing image values such as contrast or saturation of the media object. ('482 pat., 4:52–67; '515 pat., 4:58–5:6.) 22. In addition to facilitating the user's experience, the Prepare and Post tools also benefit the receiving web site. This functionality gives the web site partner access to media objects that "meet[] their imaging specifications every time without human intervention." ('482 pat., 3:4–6; '515 pat., 3:10–12.) The client- side, transparent preprocessing functionality allows a user to submit images "as is" because the tool automatically prepares the images to meet requirements for the second location. ('482 pat., 4:46–5:4; '515 pat., 4:52–5:10.) 23. The Summit 6 Prepare and Post tools transparently handle for the user the technical tasks of image selection and uploading. ('482 pat., 2:56–60; '515 pat., 2:62–66.) And as discussed later, Summit 6's inventions quickly proliferated 9 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 into wide spread use because Summit 6's technology benefitted both users who submitted images to web sites, as well as receiving web sites. 24. The Summit 6 patents disclose at least two methods of identifying and associating digital content. A user of the Prepare and Post tool can identify an image "through a 'drag and drop' behavior where the user clicks on a media object to select the one they want to submit." ('482 pat., 3:20–23; '515 pat., 3:27–29.) Or a user can "click on the media object identifier to browse for media objects, then select the media object of choice." ('482 pat., 3:31–34; '515 pat., 3:36–40.) In either case, the user selects an image located on the computer desktop for submission to a web page. ('484 pat., 3:15–17; '515 pat., 3:21–23.) 25. The Summit 6 patents allow users to confirm that they intend to associate digital images with an account on a web site, and confirm that the images selected are the desired images. ('515 patent, 4:7–12.) One example of a means of confirming a submission is the use of thumbnail images. (Id. at 2:13–17.) The "tool provides the user an opportunity to confirm the submission with a visual representation, for example by generating a thumbnail image of the rich media file that has been selected." (Id.) This confirmation occurs whether the image is uploaded serially or in a batch. In the case of a batch upload, "opportunity for user confirmation is again provided, e.g., by displaying a visual representation of the images in the batch." (Id. at 4:7–9.) A confirmation of intent allows the user to 10 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 correct mistakes by substituting a correct image for a wrong image in a media object identifier. (Id. at 4:10–16.) 26. The Summit 6 patents also disclose a "Prepare and Post" tool that is "integrated into web sites (customers) to allow [] those sites to accept media objects from web site visitors (users)." ('482 pat., 5:8–11.) Digital images are one example of media objects. (Id. at 2:13.) The Prepare and Post tool can specify the amount of digital data via "DefaultImageWidth and DefaultImageHeight" parameters. These parameters specify "the default width and height of the images after they have been compressed for transmission." (Id. at 5:34–38; see also '482 pat., claim 3 ("wherein said receiving pre-processing parameters comprises receiving a specification of a number of items of digital content.").) 27. The Prepare and Post tools disclosed in the Summit 6 patents "are easily integrated into web sites (customers) to allow[] those sites to accept media objects from web site visitors (users)." ('482 pat., 5:7–8; '515 pat., 5:14–16.) The Prepare and Post tools pre-process media objects (e.g., digital images) in a number of ways in preparation for the publication of the media objects (e.g., digital images) to users, including resizing the image, changing the file format of the image, cropping or changing the aspect ratio of the image, or encoding the image, among other functions. ('482 pat., 4:54–67; '515 pat., 4:68–5:6.) For example, DefaultImage Width and DefaultIMage Height parameters "specify the default 11 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 width and height of the images after they have been compressed for transmission." ('515 pat., 5:40–44.) The transparent pre-processing of the Prepare and Post tool "allows the end user to submit media to the Prepare and Post tool 'as is,' since the tools with automatically prepare it to meet the requirements of the second location." ('482 pat., 4:67–5:4; '515 pat., 5:8–10.) The uploading of pre- processed images allows "access to contributed media in 'real time' with no time delays." (Id. at 3:10–11.) By pre-processing media objects to meet the requirements of the second location, the Summit 6 patents teach placing an identified group of digital content in a specified form in preparation for publication to one or more devices. 28. The Summit 6 patents teach client-side intelligence that is built into the Prepare and Post Tool. This intelligence includes the ability to "associate data with media objects." ('482 pat., 4:46–49.) The Prepare and Post Tools also "preprocess the media objects in any number of ways prior to transporting to a second location." (Id. at 4:54–56.) Compression and resizing the image are two disclosed examples of preprocessing. (Id. at 4:56–60.) The pre-processing is transparent to the end user "since the tools will automatically prepare it to meet the requirements of the second location." (Id. at 4:67–5:4.) Thus, the preprocessing disclosed in the '482 patent allows control of the processing of the digital content before submission to a web site. 12 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 VI. OVERVIEW OF CREAMER 29. U.S. Pat. No. 6,930,709 ("Creamer") was filed on December 3, 1998, issued on August 16, 2005, and is assigned to the camera company Pentax. (Ex. 1003.) Creamer claims priority to provisional application No. 60/067,310, filed on December 4, 1997 ("Creamer '97"). (Id.) I understand that Petition alleges Creamer to be prior art under 35 U.S.C. § 102(e). (Pet., p. 5.) 30. Creamer discloses a digital camera that captures and automatically uploads each and every digital image to a website. The collected images are digitized, processed, and stored in general purpose memory in the camera. "Upon capturing the digital image, the camera initiates a connection to the Internet, connects to the destination user directory, and uploads the digital images" stored in general purpose memory to the destination user directory. (Creamer, Abstract.) The digital images are uploaded from general purpose memory either (i) immediately as they are created, or (ii) in a batch process executed at a later time. (Id.) 31. Fig. 3 depicts the Creamer camera system. The image is captured by CCD 248, digitized, and stored in image memory 220, which is a "RAM capable of storing at least one high 13 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 resolution color image." (Creamer, 11:16–17.) The compression engine 224, under microcontroller control, compresses an image stored in the image memory using JPEG compression. (Id. at 11:28–31.) The microcontroller can also adjust the resolution of an image in image memory before storage in general purpose memory. (Id. at 11:33–43.) The processing of the image in image memory creates a digital image that is stored in an image slot in general purpose memory. (See Fig. 8 (showing an image capture routine beginning with a triggering event / timer (S26) and ending with a JPEG compressed image in general purpose memory (S38)).) 32. Creamer also discloses a menu and parameter structure (shown in Fig. 5) that is stored in NVRAM 242 or shadowed in GP memory 228. (Creamer, 12:48–50.) The parameter structure includes an IMAGE FILES menu/storage area that "allows the setting of flags, attributes, and parameters for a plurality of images to be captured, adjusted, and uploaded by the camera." (Id. at 13:1–3.) Creamer discloses an embodiment having 9 image slots (FILE 1 through FILE 9) stored in general purpose memory and available for individual control. (Id. at 12:48–50, 13:3–5.) 33. The camera may capture (or collect) images upon a user pushing a release button 214e. (Creamer, 6:56–58.) Alternatively, an image may be captured based on trigger settings or the expiration of a timer. (Id. at 13:48–56.) 14 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 VII. OVERVIEW OF AIHARA 34. Aihara was filed April 13, 1998, and issued April 24, 2001. (Ex. 1005.) Aihara discloses creating an HTML file that includes digital images captured by a digital imaging device. (Aihara, Abstract.) Aihara also discusses a prior art digital camera system that included a "play mode" in which an LCD display screen "is used as playback screen for allowing the user to review previously captured images either individually or in arrays of for, nine, or sixteen images." (Id. at 1:23–35.) VIII. OVERVIEW OF MAYLE 35. U.S. Patent No. 6,018,774 to Mayle ("Mayle") was filed July 3, 1997 and issued January 25, 2000. (Ex. 1006.) Mayle is directed to a "system for creation of an image display such as electronic postcard." (Mayle, Abstract.) Mayle describes a system to "allow the creation of [an] electronic postcard composed of the user's digital photograph," which "mimics aspects of a conventional postcard." (Id. at 2:32–37.) The heart of the system is a "server" that "processes the electronic image data" to create that electronic postcard. (Id. at 2:52–54.) While this processing can take many different forms including "cropping, flipping," and so forth, this processing is performed "on the server." (Id. at 2:64–3:2.) Mayle has no teaching or suggestion of a server providing its requirements to the client, or of pre-processing at the client to meet requirements 15 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 of the server. While the electronic postcard is being created, its textual data and graphical data "are stored in the file system of the server in a directory specifically created to store the temporary image files." (Id. at 5:20–22). Once the postcard is completed and "sent," the associated data are stored in two other server databases. (Id. at 5:32–37). IX. OVERVIEW OF NARAYEN 36. U.S. Patent No. 6,035,323 to Narayen et al. ("Narayen") was filed October 24, 1997 and issued March 7, 2000. (Ex. 1007.) Broadly summarized, Narayen teaches photo album composition software installed on a client device with corresponding software installed on a server. 37. The user operating the client device selects an album format and layout, then manually composes digital photos on each album page. (Narayen, 8:60–9:64, 9:21–22 (Fig. 6B is a process for creating a "media container, such as a picture album.").) The album authoring software assembles the format data and picture data into a stored album. Once the user has completed the album the client system logs onto the server's dedicated database and uploads the data to the server. (Narayen, 10:36–39, Fig. 7, step 291.) When a user at a different client asks to view the album, the server software authors HTML pages depicting the album format, acquires from a server database HTML viewable image copies, joins the images to the album pages, and serves the requesting client the completed page. 16 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 (Id. at 11:7–40, Fig. 9.) The Narayen reference was cited extensively during prosecution of the '557 and '482 patents. X. REBUTTAL TO CLARK'S DECLARATION 38. Clark in ¶ 11 states "Users could select and modify multimedia content through personal computers, laptop computers, Internet-enabled televisions (e.g., WebTV") or network computers." The excerpts cited by Clark (Creamer '97, 42:24–26; Mayle, 4:6–20; Narayen, 5:2–5) do not support his conclusion. These excerpts are silent regarding whether users could "select and modify multimedia content" as alleged by Clark. (Clark Dec., ¶ 11.) A. It would not have been obvious to a POSITA to combine Creamer and Aihara. 39. Clark in ¶ 30 states "It would have been obvious to one of skill in the art to combine the Creamer reference with the Aihara reference." I disagree. As discussed below, it would not have been obvious to one of ordinary skill in the art to combine Creamer with Aihara. 40. Clark states in ¶ 31 "One of ordinary skill in the art would be aware of the limitations of liquid-crystal displays on handheld cameras, such as small viewing area size." I disagree. First, Clark provided no support for his opinion; nor did he identify any alleged limitation beyond "small viewing size." And even that feature is not necessarily a limitation. Rather than requiring the time- consuming process of developing the film negative and thereafter printing the 17 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 photograph, the small view area size of the liquid-crystal display allowed a user to preview a scene before taking a picture. Such an advance could be considered an advantage by one of ordinary skill in the art. Additionally, Clark does not provide any context to his (or a person of ordinary skill in the art's) understanding of a "small viewing area size." For example, the size of the liquid-crystal display of a handheld camera was typically larger than that of the sensor used to capture the image. Additionally, Clark provides no details regarding the sizes and resolutions of the display screens and image acquisition arrays in Creamer or Aihara. Without such analysis, Clark's opinion is unsupported. 41. I reviewed the deposition transcript of Clark. He failed to articulate a meaning of a "small viewing area size" during his deposition. Clark testified that display screens in Creamer and Aihara were of small size because the display screens were smaller than the physical size of the camera. (Clark Dep. at 34:7-14 (testifying that a LCD with a small viewing size is "[l]imited by the size of the camera" and "[y]ou can't have an LCD on a camera that is bigger than the camera.").) Based on Clark's testimony, a person of ordinary skill in the art could not determine whether a given LCD screen, independent of the attached camera, would be determined to have a small viewing area size. Accordingly, Clark's testimony regarding a small viewing size of an LCD camera lacks support from a person of ordinary skill in the art. 18 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 42. Clark further states in ¶ 31 "Combining the techniques of displaying preview images, such as disclosed by Aihara, on a camera display of limited size, as disclosed by Creamer, would improve the ability of the screen to display multiple images." I disagree. Aihara describes "[i]n record mode, the LCD is used as a viewfinder in which the user may view an object or scene before taking a picture." (Aihara, 1:35–38 (emphasis added).) On the other hand, "[i]n play mode, the camera 110 allows the user to view screen-sized images in the LCD screen 402 in the orientation that the image was captured. (Aihara, 6:66–7:2 (emphasis added).) Nowhere does Aihara disclose "displaying preview images" as Clark alleges. Because Aihara can preview only a single image at one time, Aihara cannot display "preview images." 43. After erroneously discussing "displaying preview images," Clark argues that the combination of Creamer and Aihara "would allow a user to review captured images faster and more accurately." (Clark Dec., ¶ 31.) I disagree. Displaying multiple images on a display screen having a "small viewing area size" would not improve the ability of the screen to display images, nor improve the ability of a user to review such images faster and more accurately. Indeed, even if the review function of Aihara would be modified by the prior art to review arrays of captured images, such a modification would further degrade the quality of displayed images because the resolution of each image would be reduced by an 19 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 amount related to the number of images concurrently displayed. In my opinion, displaying multiple images simultaneously on a fixed size screen would further degrade the quality of those images. The resulting image degradation undermines any motivation to combine these references. 44. Clark provides no support for his allegation that combining Creamer and Aihara would lead to faster and more accurate review of captured images. Indeed a person of ordinary skill in the art would conclude otherwise. One of ordinary skill in the art would understand that immediately uploading images to an Internet-accessible device allows those images to be displayed on a computer or other device with a larger screen having a higher resolution than the display screen of Creamer. By displaying the images on a larger screen, a user could more accurately, and more quickly, view the images, contrary to Clark's claims otherwise. Furthermore, Creamer discloses creating a "thumbnail grid 'collage' image in the thumbnail grid 'collage' slot [that] may be separately sent as any other image, which provides an easy way to preview or check all the images currently stored in the camera." (Creamer, 14:18–21.) Thus, combining Creamer and Aihara as proposed by Clark would result in a system having a very inefficient and cumbersome image review function. Accordingly, one of ordinary skill in the art would not be motivated to combine Creamer with Aihara as Clark alleges. 20 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 45. Clark's testimony confirms that a person of ordinary skill in the art could not conclude that the "combination [of Aihara and Creamer] would allow a user to review captured images faster and more accurately." (Clark Dec., ¶ 31.) Clark testified that the accurate display of an image is a subjective analysis based on the application that created the image and the view of the image. Q: How does one in the ordinary skill of the art know if the image is displayed accurately? A: It's a subjective analysis. Q: What does it mean to display an image accurately? A: It means to display it with sufficient clarity so that it is useful for the application. Q: And whether or not an image is displayed accurately is a subjective analysis? A: I think so. Q: So it depends upon the user -- or the viewer, I mean? A: The application, the customer, those sorts of things. (Clark Dep., 36:8–21.) Reviewing a less accurate representation of an image could be expected to be more time consuming that would reviewing a more accurate representation of an image. The accuracy of image representation based on the combination of Creamer and Aihara is subjective, based on a number of unknown 21 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 factors, including an unknown user, an unknown application, an unknown image, and an unknown display screen size. (See e.g., Clark Dep., 36:8–21.) Accordingly, a person of ordinary skill in the art would not combine the teachings of Aihara and Creamer. Moreover, a person of ordinary skill in the art would not have a reasonable expectation of success in combining Aihara and Creamer to "improve the ability of the screen to display multiple images" (Clark Dec., ¶ 31) because the accuracy of the image display is subjective based on numerous unknown factors, and therefore a person ordinary skill in the art would not have combined Aihara and Creamer. 46. Clark further states in ¶ 31 "Based on my knowledge and experience, one of skill in the art would know how to combine Creamer and Aihara by, for example, writing code executed by the microcontroller disclosed in Creamer to enable it to display arrays of preview images on the display screen like the processor and LCD screen disclosed in Aihara." I disagree. The LCD display in Creamer can preview only a single image—the current scene. (Creamer, 29:50–53 ("the display 218 shows a more accurate representation of the scene at which the camera 1 is directed than the viewfinder, and a more accurate preview of the image that will be captured").) Clark has put forth no theory that would allow a person of ordinary skill in the art to preview more than one image scene on Creamer. Indeed a person of ordinary skill in the art would understand that the Creamer LCD screen 22 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 could preview only a single image since only one image scene exists (and can be displayed on the LCD screen of Creamer) at any point in time. Accordingly, a person skilled in the art would not be motivated to apply the teachings of Aihara and Creamer to modify Creamer to allow Creamer to preview multiple images because Creamer teaches a person of ordinary skill in the art that an LCD screen should preview the image to be captured, and not review multiple, previously captured images. 47. Creamer discloses a camera that is pre-programmed to perform certain functions, including capturing and transferring images from a camera to a third party web site. As discussed above, Creamer processes raw image data into a stored digital image. (Creamer, Fig. 8 (defining raw data manipulation and compression as part of the image collection routine).) Thus, an image does not exist in Creamer until the raw image data is manipulated, compressed, and stored in an image slot in general purpose memory. (Creamer, Fig. 8.) Creamer discloses a system that transfers images either immediately or in a future batch operation. (Creamer, 13:29–32 ("An UPLOAD variable group stores a parameter defining whether the file should be uploaded immediately (e.g., immediately after a release signal is acted upon and the image file stored), or at the next batch upload operation.")) One of ordinary skill in the art would understand that Creamer teaches that every image captured is uploaded. And reviewing the display of 23 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 images on an LCD screen is inconsistent with the teachings of Creamer because the review function in Creamer is provided by display of images that have been uploaded to a web site. One of ordinary skill in the art would understand that the LCD screen of Creamer performs the function of previewing images to be captured—it does not review images that have been captured. 48. Moreover, to the extent that Clark in ¶ 31 argues that Creamer can be modified to display multiple stored images in memory on the LCD screen, I disagree. Creamer cannot permit a user to review previously stored images on the viewfinder. (Creamer, 29:50–53 ("the display 218 shows a more accurate representation of the scene at which the camera 1 is directed than the viewfinder, and a more accurate preview of the image that will be captured").) The camera in Creamer captures and transmits images to a remote server immediately or in a future batch operation. (Creamer, 13:29–32 ("An UPLOAD variable group stores a parameter defining whether the file should be uploaded immediately (e.g., immediately after a release signal is acted upon and the image file stored), or at the next batch upload operation.")) Creamer provides the user with the ability to capture images and update configuration settings for future images. Creamer does not allow a user to display any previously captured image. Accordingly, one of ordinary skill in the art would not be motivated to combine Creamer with Aihara as Clark proposes. 24 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 49. I understand that Clark testified that because the LCD display 218 of Fig. 3 in Creamer (or 218' of Fig. 17) is coupled to the image memory, Creamer suggests that the camera in Creamer includes the functionality to review previously captured images. I disagree. Just because (1) LCD display is coupled to integrated microcontroller 206, (2) integrated microcontroller 206 is coupled to the parallel control / data bus, (3) parallel control / data bus is coupled to the compression engine, and (4) the compression engine is coupled to the image memory this does not mean or suggest that images captured and stored in GP memory can be displayed on an LCD display. The LCD controller 206 of Creamer controls the "display functions of the display 218 connected thereto." (Creamer, 7:7–8.) "The display 218 is an inexpensive multi-line display capable of displaying character or text information and of responding to the control of the display controller 206." (Creamer, 7:49–52.) The LCD screen in the Fig. 17 embodiment can "show images formed on the image pickup 248" and shows "a more accurate preview of the image that will be captured." (Creamer, 29:47–53.) Creamer provides no functionality that would suggest to a person of ordinary skill in the art that captured images could be addressed and displayed on the LCD screen without adversely affecting the picturing taking and uploading of Creamer. It is my opinion that a person of ordinary skill in the art reading Creamer would understand that Creamer cannot display images previously captured. 25 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 50. Clark's opinion is further flawed because it is based on improper hindsight. Clark provides no motivation that would drive a person of ordinary skill in the art to modify Creamer to review captured images on a display screen. The mere ability to display images on a screen in parallel with reviewing images uploaded to a web server would not motivate a person of ordinary skill in the art to combine Creamer and Aihara. Instead a person of ordinary skill in the art would recognize that image review and analysis is performed faster and more efficiently using the images uploaded from the camera, rather than attempting to review the captured images directly on the LCD screen of the camera. B. Clark Has Not Shown The Challenged Claims To Be Invalid Over the Combination of Creamer and Aihara. 51. I disagree with Clark's opinion in ¶ 34. In my opinion, each of the challenged claims are valid in view of Creamer '97 and Aihara. 52. I disagree with Clark's opinion in ¶ 35. In my opinion, each of the challenged claims are valid in view of Creamer and Aihara. 53. Clark in ¶ 36 states "the combination of Creamer and Aihara discloses or renders obvious pre-processing digital content in a client device according to pre-processing parameters received from a remote device for subsequent transmission in view of Creamer's Internet-enabled digital camera that processes (e.g., compresses) captured digital images and subsequently transmits the processed images to the Internet." I disagree. The citations in Creamer relied 26 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 upon by Clark refer to the digital camera function of Creamer, namely, the capture and creation of the image in image memory. (Cf. Creamer, 19:9–15 ("the compression engine. . . according to settings stored. . . [may] compress the image in the image memory").) Furthermore, the excerpts of Aihara relied on by Clark refer explicitly teach away from pre-processing an image. (Cf. Aihara, 13:42–43 ("capturing images and generating a formatted electronic document which includes those images").) 54. In my opinion Creamer does not teach preprocessing images or digital content in a client device. The image capture routine of Creamer is shown in Fig. 8. (Creamer, Fig. 8 ("Fig. 8 shows a capture routine for capturing, compressing, and storing an image.").) Following event detection, the routine first selects an image slot in S28 or S30. (Creamer, Fig. 8, 18:25–32 ("image capture slot is identified according to the time that expired" and "image slot is identified as the least recently filled event slot").) The image slot defines where the captured image is stored and accessed for uploading; the slot is known as an "image capture slot." (Creamer, 19:9–13 ("compress the image in image memory 220 to the appropriate slot (identified in steps S28 or S30) in the GP memory 226").) Moreover, image uploading occurs from an image slot, not from image memory. (Creamer, 19:23– 32 ("the transmit routine first, at step S40, checks if the slot identified in one of steps S28 or S30 is an image slot designated for batch operations, i.e., whether or 27 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 not the settings stored in the IMAGE FILES: UPLOAD variable group indicate that the image in the image slot is to be uploaded immediately (e.g., following capture) or whether the image in the image slot is to be uploaded at the next batch upload operation").) One of ordinary skill in the art would recognize that the data in image memory is raw image data—it changes as the image is being created, and therefore is not a captured image. Image creation includes Steps S32 (Get Exposure), S34 (CCD Capture to Image Memory), S36 (Image Adjust) and S38 (JPEG Compression) shown in Fig. 8 of Creamer. Not until the compressed image is stored in an image slot in GP DRAM at the end of S38 is the captured image a complete and accurate representation of what was captured by the camera. 55. The captured image in Creamer does not exist until the compressed image is stored in GP DRAM in Step S38. Because Creamer uploads the captured image in the image slot without any processing, one of ordinary skill in the art would recognize that Creamer does not preprocess any images in a client device, let alone preprocess any images in a client device according to parameters received from a remote device. 56. Clark in ¶ 37 states "the combination of Creamer and Aihara discloses or renders obvious receiving pre-processing parameters from a remote device." I disagree. Clark does not provide any support from Aihara for that conclusion. Clark fails to support its conclusion that Aihara in any way discloses or renders 28 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 obvious receiving pre-processing parameters from a remote device. Furthermore, the excerpts of Creamer relied upon by Clark merely show that any manipulation of the raw image data is performed by the configuration parameters present on the camera. (Cf. Creamer, 24:10–15 ("the user may place a setup or configuration file in his destination directory and in a predetermined format recognizable by the camera, and the camera may download a new or modified full or partial set of operational parameters (e.g., those shown in FIG. 5)").) The parameters of Creamer define how an image is created, not the processing of that image. Furthermore, one of ordinary skill in the art would recognize that parameters used to create an image in Creamer are received from the camera, not from parameters received from a remote device. Any new configuration file that is downloaded to the camera in Creamer is applicable to images captured in the future, and is not applicable to the creation of captured images. Creamer does not disclose or render obvious receiving pre-processing parameters from a remote device because Creamer does not pre-process images. 57. Clark in ¶ 38 states "the combination of Creamer and Aihara discloses or renders obvious receiving an identification of a group of digital content and confirming an intent to associate the digital content with an account in view of Creamer's disclosure of a camera that captures digital images and categorizes them for processing and subsequent transmission according to settings stored within the 29 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 camera." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 58. Furthermore, one of ordinary skill in the art would recognize that Creamer does not disclose or render obvious receiving an identification of a group of digital content and confirming an intent to associate the digital content with an account in view of Creamer's disclosure of a camera that captures digital images and categorizes them for processing and subsequent transmission according to settings stored within the camera. Clark's citations to Creamer merely show that the camera collects and digitizes the light signal and compresses the digitized signal in image memory. (Cf. Creamer, 18:46–56 ("the image pickup is driven by the driver to accumulate light, i.e., to store an image. . . Subsequently, the A/D [analog/digital] converter converts the [analog] signal to a digital image signal, which is passed by the compression engine and memory controller to the image memory (at this point without compression)"), 19:9–21 ("the compression engine. . . according to settings stored in the IMAGE FILES: IMAGE ADJUST [may compress the image in the image memory").) None of these citations show any identification of a group of digital content or confirming an intent to associate the digital content with an account. Nor does Clark provide any analysis of these claims elements. Indeed, rather than identifying any group of digital content and 30 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 confirming any intent, the user of the camera in Creamer merely takes a picture, which then automatically generates a digital image, which is uploaded either immediately or in a future batch. After selecting an image for capture, the user in Creamer provides no additional input—no identification of group of digital content and no confirmation of an intent to associate the digital content with an account. 59. Moreover, Clark in ¶ 38 states without support that Creamer "categorizes. . . [digital images] for processing and subsequent transmission according to settings stored within the camera." It is unclear what Clark means by "categorizes" because Creamer does not categorize any image. Rather, after a digital image is created following capture by the sensor, the image is stored in image memory. (Creamer, 19:9–13 ("In step S38, the compression engine 226 is controlled by the microcontroller 20, according to settings stored in the IMAGE FILES: IMAGE ADJUST, to compress the image in the image memory 220 to the appropriate slot (identification in steps S28 or S30) in the GP memory 226.")) Creamer does not disclose any processing of an image stored in image memory. Rather, an image stored in image memory is uploaded either immediately or in a batch depending on the UPLOAD parameter. (Creamer, 19:23–32 ("As shown in FIG. 9, the transmit routine first, at step S40, checks if the slot identified in one of steps S28 or S30 is an image slot designated for batch operations; i.e., whether or not the settings stored in the IMAGE FILE: UPLOAD variable group indicate that 31 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 the image in the image slot is to be uploaded immediately (e.g., following capture), or whether the image in the image slot is to be uploaded at the next batch upload operation.").) It is my opinion that a person of ordinary skill in the art would not conclude that the combination of Creamer and Aihara discloses or renders obvious receiving an identification of a group of digital content and confirming an intent to associate the digital content with an account. 60. Clark opinion's in ¶ 38 regarding whether the digital content is limited by the pre-processing parameters and whether compression limits digital content is related is not relevant to his analysis of "receiving an identification of a group of digital content and confirming an intent to associate the digital content with an account." 61. Clark in ¶ 39 states "the combination of Creamer and Aihara discloses or renders obvious a specification of an amount of digital content." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 62. I further disagree with Clark's opinions in ¶ 39 regarding Creamer and the claim language "specification of an amount of digital content." That a "variable group stores several color property parameters defining increase or decrease of gamma, brightness, contrast, hue, saturation, and luminance, as well as 32 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 settings for (e.g., JPEG) compression level" (Creamer, 13:36–44) does not "determine the size or quantity of digital content as defined by physical dimensions, pixel count, or kilobytes of the digital content." Instead the size or quantity of digital content is determined by size, resolution, and properties of an image, combined with the type of compression preformed on the image. 63. Clark in ¶ 40 states "the combination of Creamer and Aihara discloses or renders obvious preprocessing digital content by encoding or otherwise converting digital content." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. Furthermore, one of ordinary skill in the art would not view Creamer as disclosing or rendering obvious preprocessing digital content. A person of ordinary skill in the art would understand Creamer to teach that the digital processing performed on the collected image in image memory are steps performed during the image creation process. An image is captured and manipulated in image memory using the compression parameters, and the resultant digital image is stored in an image slot in general memory. (Creamer, 19:9–13 ("In step S38, the compression engine 226 is controlled by the microcontroller 200, according to settings stored in the IMAGE FILES: IMAGE ADJUST, to compress the image in the image memory 220 to the appropriate slot (identified in steps S28 or S30) in 33 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 GP memory 226.").) But the Creamer excerpts relied upon by Clark (Cf. 8:22–29) relate to compressing the captured image in image memory, rather than compressing a digital image stored in an image slot in general purpose memory. Accordingly, Clark has not shown that Creamer preprocesses a digital image. 64. Clark in ¶ 41 states "the combination of Creamer and Aihara discloses or renders obvious placing digital content in a specified form in preparation for publication." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. Furthermore, Clark has not shown that Creamer discloses this limitation. 65. Clark argues in ¶ 41 that an image in JPEG, GIF, HTML, or other similar means of encoding digital content is ipso facto in a form for publication. I disagree. Merely storing an image in TIFF or GIF format defines the stored image format, but does not necessarily put that image in a format for publication. In Creamer, the image does not exist until it is present in an image slot in general purpose memory. (See Fig. 8 of Creamer). Accordingly, one of ordinary skill in the art would understand that the TIFF or GIF format is format of the stored image that may thereafter be uploaded. (Creamer, 19:23–32 (describing an image in image slot that is to be uploaded immediately or at the next batch upload operation).) Moreover, Creamer teaches that the image compression may be 34 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 changed for the purpose of transmission, not publication. (Creamer, 15:46–4 ("An ADAPTIVE variable group activates adaptive functions, such as changing the (e.g., JPEG com) compression ratio of the image depending on the upload data transmission rate.").) One of ordinary skill in the art would not conclude that Creamer discloses or renders obvious placing digital content in a specified form in preparation for publication. 66. Clark in ¶ 42 states "the combination of Creamer and Aihara discloses or renders obvious transmitting preprocessed digital content in view of Creamer's disclosure that preprocessed images are uploaded to the Internet where any user may view those images." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. Furthermore, as discussed above, Creamer does not preprocess any digital content. One of ordinary skill in the art would not conclude that Creamer discloses or renders obvious transmitting preprocessed digital content. 67. Clark in ¶ 43 states "the combination of Creamer and Aihara discloses or renders obvious retrieving information that enables identification of a user in the form of a user identifier in view of Creamer's disclosure of retrieving and transmitting a user ID and password to gain access to an account stored on a remote/host server." I disagree. Clark does not provide any support from Aihara 35 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 68. Clark in ¶ 44 states "the combination of Creamer and Aihara discloses or renders obvious receiving a command moving an element in a graphical user interface that enables selection of content in view of Creamer's disclosure of a display enabling the user to navigate a menu to view and change variables and images stored within memory." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 69. Moreover, Creamer discloses a "display (e.g., an LCD) 218, preferably an inexpensive multi-line text display, displays the results of user interaction, automatic reporting, and status reporting to the user." (Creamer, 6:46– 49.) Creamer discloses a text-based user interface, rather than a graphical user interface. (Creamer, 6:51–58 ("the button/switch input 215 preferably includes up and down buttons 214a and 214b, a 'menu' button 214d for switching between and activating interaction menus, an 'item' button 214c for indicating a selection in an active interaction menu, and a release button 214e for initiating the capture of an image in an event-based mode (including manual operation) and other specific functions (described later).").) Viewing the menu/storage items or variables or 36 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 parameters in the menu/storage structure (e.g., Creamer, 26:43–56, 27:48–49) is not a graphical user interface that enables selection of content. Furthermore, Clark provides no support for his conclusion that a user can "navigable a menu to view and change. . . images stored within memory." (Clark Dec., ¶ 44 (citing Creamer, 26:43–56).) In my opinion Creamer does not disclose any ability to change an image stored in memory. Moreover, Creamer does not disclose selection of any captured images—selection when to capture an image is not a selection of content. One of ordinary skill in the art would not conclude that Creamer discloses or renders obvious receiving a command moving an element in a graphical user interface that enables selection of content. 70. Clark in ¶ 45 states "the combination of Creamer and Aihara discloses or renders obvious displaying a preview image or thumbnail image of digital content having a reduced size relative to said content." I disagree. Clark cites no support from Creamer or Aihara relating to thumbnail images. Clark points to Creamer's disclosure of displaying images formed on the image pickup (Clark Decl, ¶ 45 (citing Creamer, 29:43–54).) and to Aihara's disclosure of the LCD screen allowing the user to review previously captured images (Clark Dec., ¶ 45 (citing Aihara, 1:33–36).) 71. Clark further argues in ¶ 45 that because the display screens in Creamer and Aihara allegedly are "smaller in size relative to the sizes of the 37 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 images that could be captured by those cameras, . . . one of ordinary skill in the art would understand that any image displayed on those screens would therefore by of a reduced size relative to the digital content because of the physical limitations of those displays." Additionally, Clark argues that the "display screen on the cameras would not be large enough to display a captured image in its full resolution, and therefore a smaller representation. . . of the captured image would be displayed in a form that could be presented on the screen." (Clark Dec., ¶ 45.) I disagree. 72. Clark provides no context for the display screen of Aihara and Creamer. Without knowing the size and resolution of the display screen, the image sensor, and the captured images, a person of ordinary skill in the art would not have information sufficient to compare the size of the display screen to the size "of the images that could be captured by those cameras." (Clark Dec., ¶ 45.) 73. Clark in ¶ 46 states "the combination of Creamer and Aihara discloses or renders obvious retrieving information in a manner transparent to the user, in which the retrieved information may be a user identifier that enables identification of a user or a file name." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark's analysis ignores Aihara, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 74. Clark in ¶ 47 states "the combination of Creamer and Aihara discloses or renders obvious parameters that have been previously downloaded or stored in 38 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 client device memory in view of Creamer's disclosure of a parameter storage structure stored in the camera memory that is updated according to the camera's automatic configuration procedures." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 75. Clark in ¶ 48 states "the combination of Creamer and Aihara discloses or renders obvious transmitting location information." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. 76. Clark in ¶ 49 states that "the combination of Creamer and Aihara discloses or renders obvious reporting a status of transmission in view of Creamer describing the LCD screen reporting the status of uploads of processed images to the user." I disagree. Clark does not provide any support from Aihara for that conclusion. Because Clark ignores Aihara in his analysis, he has not put forth any evidence showing that Aihara discloses or renders obvious this term. C. It Would Not Have Been Obvious to a POSITA to Combine Mayle and Narayen. 77. Clark in ¶ 51 states "[i]t would have been obvious to one of skill in the art to combine the Mayle reference with the Narayen reference. Clark opines 39 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 that Mayle and Narayen can be combined because Mayle uses the term "structured album" and Narayen uses the term "picture album." I disagree. In my opinion, the structured album of Mayle is distinct from the picture album of Narayen. Mayle teaches that "one or more related users can upload an [sic] electronic images. . . [and] the users can specify one or more recipients to receive notice of the new images, thus inviting them to view the display" (Mayle, 13:29–46), whereas Narayen teaches that a single user can create a media container—in the case of images, a picture album—and submit the media container to a server for processing into an HTML page (Narayen, 6:67–7:2). 78. Mayle and Narayen are directed toward different types of albums, and more specifically, to albums solving different problems. Mayle's family album allows one or more related users to upload images to a server that imposes a structure and creates an album, and once uploaded, users specify recipients to receive notice of the album. By individually identifying recipients, Mayle limits the recipients of the URL of the final web page. Narayen, on the other hand, allows a user to select the format of a web page having one or more images and places the images into a media container, which is sent to as server for processing into an HTML page. Mayle allows related users to create a collection of images that are related based on family relationships, whereas Narayen allows a single user to select how digital images appear on a web page. Finally, Mayle is directed 40 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 to a post card with limited recipients, rather than a mass distribution of the post card to the Internet. In my opinion, Mayle are Narayen are not "similar devices." Because Mayle and Narayen are directed toward different problems, a person of ordinary skill in the art would not combine Mayle and Narayen as suggested by Clark. Mayle does not teach that it can be combined with any reference that discloses a "photo album." 79. In Mayle, the server creates both the structure for the album and the album. (Mayle, 10:63–12:35 ("When a photograph is received on the server the Electronic postcard server software processes the photo using several steps as illustrated in Fig. 3a.").) Mayle teaches a "server [that] processes the electronic image data and creates a display containing at least a portion of the processed electronic image data." (Mayle, 2:52–54.) Narayen discloses a "picture management system" which allows a user to select "a layout and the pictures for the album and then the picture management system transmits the necessary information to another computer system, such as a server computer system, which then automatically generates the viewable pages." (Narayen, 7:15–28.) The "picture management software [of Narayen is] on the client computer system." (Narayen, 8:64–65.) In Narayen, the user selects images for a media container and sends the media container to a server, and the server generates the pages upon request. (Narayen, 7:23–26 ("the picture management system transmits the 41 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 necessary information to another computer system, such as a server computer system, which then automatically generates the viewable pages"), 7:41–44 ("media container information and the digital media are supplied from the client computer system to the server computer system which then automatically generates the viewable pages, such as viewable HTML pages.").) In my opinion, that Narayen and Mayle are based on fundamentally different architectures, namely, a server- based system of Mayle and the client-based system of Narayen, counsels against combining these references. 80. Clark in ¶ 52 concludes that "the combination of Mayle and Narayen would also be the use of a known technique to improve similar devices and methods in the same way." Yet, Clark fails to articulate or even describe the alleged "known techniques" or "improvements" of Narayen. Rather than identifying the alleged "improvements," Clark, without any support, merely concludes that "it would have been obvious to one of skill in the art to apply the improvements described in Narayen to Mayle's system in order to yield the predictable result of publishing processed digital images in a photo album to the Internet." (Clark Dec., ¶ 52.) Clark compounds his conclusory analysis by stating that the unstated "improvements" provide "additional image processing tools to the album publishing system." (Clark Dec., ¶ 52.) I disagree. Clark fails to identify any such "improvements" or "additional image processing tools." Narayen does 42 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 not improve or provide additional image processing tools beyond the image processing functions disclosed in Mayle. 81. Instead of articulating the alleged "improved features" or "improvements" of Narayen that are to be combined with Mayle, Petitioner concludes that a "skilled artisan could have applied the improvement of Narayen to the system of Mayle to achieve the predictable result of publishing processed digital images to the Internet in a photo album." (Pet., p. 15.) Even Petitioner's expert failed to identify even one such improvement in his declaration or during his deposition. (Clark Dep., 7:6–8 ("Q. What improvements are described from Narayen, in your opinion? A. I don't know from memory."), 7:22–25 ("Q. But -- so it's your testimony that the improvements that you identified in Paragraph 52 are not described in Paragraph 52 of your expert report? A. No, it's-- they are not explicitly listed."), 8:8–16 ("Q. But just to be clear, so in your declaration, you didn't identify any improvements described in Narayen in your expert – in your declaration? A. I did not list them. Q. Okay. Can you identify any improvements described in Narayen, as you sit here today? A. I'm not prepared to do that from memory, no.").) Petitioner also contends without support that unstated "improvements" provide "additional image processing tools to the album publishing system." (Pet., pp. 15–16.) I disagree. Petitioner cannot meet its obviousness burden without articulating the teachings of Narayen and Mayle that 43 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 are to be combined. In my opinion, unknown "improvements" and "additional image processing tools" would not motivate a POSITA to combine these references. 82. Clark also states in ¶ 52 that "[a] person of ordinary skill in the art would be motivated to make this modification, for example, to give a user convenient digital album authoring tools that can be accessed via the Internet through a standard web browser," and furthermore, that "one of skill in the art would know how to combine Mayle and Narayen." Clark concludes his obvious analysis by stating "[b]ased on my knowledge and experience, one of skill in the art would be able to write a Java program accessible by Mayle's browser-based system that would implement Narayen's digital album authoring tool." I disagree. First, Clark points only to a single sentence in Mayle to support his opinion (Clark Dec., ¶ 52 (citing Mayle, 6:62–65).) But Mayle's support merely states "enabl[ing] the browser to support processing local to the client." (Mayle, 6:62– 65.) This statement is silent on whether the processing contemplates pre- processing of any images, or other types of processing. Furthermore, in my opinion, this single sentence disclosure about Java programming is not an enabling disclosure permitting one of ordinary skill in the art to implement the Mayle authoring tools in a Java enabled browser. 44 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 83. In my opinion, a person of ordinary skill in the art would not be motivated to combine Mayle and Narayen as proposed by Clark. Clark assumes that a skilled artisan would implement the formatting and style selection of all digital images on a browser in Mayle through Java functionality. Petitioner assumes that a Java-enabled browser can implement any functionality. (Pet., pp. 14–15 (citing Mayle, 6:62–65).) Clark contends that a person of ordinary skill in the art would implement the server functionality, including the formatting and creation of postcards and digital albums in the client, rather than the server. Nowhere does Mayle so teach—let alone teach that a Java-enabled browser could create the structure for the album, perform all image processing for the album, and create the album as alleged by Petitioner. Transforming the server-based system of Mayle to a client-based one counsels against the proposed combination. Clark assumes that a person of ordinary skill would reject the teachings of Mayle except for (1) Java functionality and (2) server sending the card and allowing for viewing of the card (Mayle, 12:36–60). Clark's reliance on Java programming to rewrite the disclosure of Mayle to implement the album authoring software of Narayen is improper hindsight. 84. Moreover, a person of ordinary skill in the art would have understood resource limitations in the 1999 time frame would have precluded Clark's proposed combination. Browsers in 1999 were limited, in part, by the processing 45 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 speed of the computer on which it is installed, by the complexity and efficiency of the browser code, and by network bandwidth limitations. A person of ordinary skill in the art would have recognized that the picture management software disclosed in Narayen is an application installed on the client system. (Narayen, 8:64–65.) The album authoring tools disclosed in Narayen are part of a graphical user interface. (Narayen, Figs. 12A–14E, Block 642 of Fig. 10.) The album authoring tools of Narayen are included in the album authoring and publishing software. (Narayen, block 605 of Fig. 10.) The album authoring tools require a dedicated database for album authoring/publishing software (Narayen, block 607). The album authoring tools of Narayen create data objects for each digital image. (Narayen, Fig. 4, block 607 of Fig. 10.) 85. In my opinion, implementing the digital album authoring tools of Narayen in Mayle according to Petitioner's theory through the use of a Java program accessible by Mayle would require the Java program to perform at least the following functionalities: (1) a browser interface allowing a user to select from among a sets of styles and layouts for photo albums, (2) process all digital images and create a photo album using the selected style and layout, and (3) create and link image objects. A person of ordinary skill in the art would understand that combining Mayle and Narayen in light of the state of browser functionalities and network limitations in 1999 would result in a system that is much less efficient 46 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 than the disclosed Mayle approach. Moving the image processing and album formatting and layout from the server to the client would result in a system that is much slower with a large time delay because of (i) the large amount of Java code that would be required to be sent to the browser to enhance the browser functionality and (ii) the extra Java functionality executing on the browser. Accordingly, in my opinion, a person of ordinary skill in the art understanding the teachings of Mayle and Narayen would not be motivated to combine Mayle and Narayen. 86. I further disagree that a person of ordinary skill in the art would have combined Mayle and Narayen in the fashion proposed by Clark. First, Clark fails to articulate which features of Narayen are combined with which features of Mayle. Second, because Mayle limits its distribution of the URL of the image file to a list of recipients and does not teach distribution of a URL to an unbounded set of recipients, a person of ordinary skill in the art understanding the teachings of both Narayen and Mayle would not conclude that combining Mayle and Narayen "would enable a user to share processed digital images to a larger audience via the Internet" (Clark Dec., ¶ 52). D. Clark Has Not Shown The Challenged Claims To Be Invalid Over the Combination of Mayle and Narayen. 87. I disagree with Clark's opinions in ¶ 53. In my opinion, each of the challenged claims are valid over Mayle and Narayen. 47 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 88. Clark in ¶ 54 states "the combination of Mayle and Narayen discloses or renders obvious pre-processing digital content in a local device according to parameters received from a remote device for subsequent transmission." I disagree. Yet Clark provides no support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. Regardless, Narayen does not teach or disclose pre-processing on a client device using parameters received from a remote device. Rather, the picture management system resides on the client device. Petitioner has not shown that it receive parameters from a remote device relating to "pre-processing." 89. Mayle teaches pre-processing on a server, not on a client device. Mayle teaches that the processing of all images occurs on the server. (Mayle, 2:64–3:2 ("The processing on the server consists of one or more of the following: captioning, formatting, storing, transmitting, centering, cropping, flipping, anti- aliasing, scaling, compressing, filtering, color correcting, adding special borders, and/or corner motifs, blurring, and adding visual effects."), 10:63–65 ("When a photograph is received on the server the Electronic postcard server software processes the photo using several steps as illustrated in FIG. 3a").) 90. Mayle further teaches that "the client may be augmented to perform some of the processing during interactions with the server." (Mayle, 3:2–4.) 48 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Additionally, the "browser may be further augmented for supporting the Java language (Sun Microsystems, Inc., Mountain View, Calif.) to enable the browser to support processing local to the client." (Mayle 6:62–65, see also 13:52–54 ("The embodiments can further be adapted to provide additional processing by the client computer of the electronic image data and/or display.").) 91. Mayle is clear that any processing performed by the client on the digital image stays on the client device. No pre-processed images are transmitted from the client to the server in Mayle. Mayle teaches or suggests only two types of processing performed by the client, neither of which results in a pre-processed image being transmitted to a server: (1) the client can display the result of an image that is re-centered on a postcard (Mayle, 13:53–59 ("the system could be modified to allow the user to drag the client computer's mouse to re-center the picture on the front of the postcard. Software, running on the client, could update the display to show the re-positioned photograph. The display update could proceed while the mouse is being dragged, without communicating with the server computer.").); and (2) the client can preview the result of other image processing (Mayle, 13:59–14:7 ("Software running on the client computer can also preview the result of the various other types of image data processing e.g. scaling, filtering, color correcting, compositing text, etc. The result produced by processing on the client computer could be at the same resolution as created by the server computer 49 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 or it could be a lower quality so as to minimize processing time for preview, thus allowing the server to actually produce the final processed information.")). 92. One of ordinary skill in the art would understand that the client in Mayle may change the position of the image on the postcard, which is not pre- processing the image that will be transmitted to the server. One of ordinary skill in the art would also understand that the client in Mayle may perform local image processing on an image in order to preview the postcard, but the "server actually produces the final processed information." (Mayle, 14:6–7.) It is my opinion that one of ordinary skill in the art would not understand Mayle as teaching or suggesting performing image processing on an image before transmitting that pre- processed image to the server. Accordingly, the combination of Mayle and Narayen does not disclose or render obvious pre-processing digital content in a local device according to parameters received from a remote device for subsequent transmission. 93. Clark in ¶ 55 states "the combination of Mayle and Narayen discloses or renders obvious receiving preprocessing parameters from a remote device." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 50 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 94. Mayle does not teach or suggest settings specifying how an image is to be compressed and converted to display in a web browser. Mayle teaches that the server performs the compression and thus parameters are not received by a remote device. (Mayle 12:30–33 ("The resulting image is finally compressed and converted into an image format viewable in a web browser (such as GIF or JPEG).") (describing the steps performed by the server).) Setting the byte count sent to a server is not an example of preprocessing parameters received from a remote device. The byte count check does not "dictate the processing that occurs on the client device." (Clark Dec., ¶ 55.) Rather, the byte count check aborts transmission of an image that exceeds the byte count and does not affect the image residing on the client device. Accordingly, one of ordinary skill in the art would understand that the byte count size is not teaching or suggestion of preprocessing parameters. Additionally, since Mayle teaches that all size and compression processing reside on the server, all parameters relating to the size and compression format of the digital content reside on the server and thus are not preprocessing parameters from a remote device. It is my opinion that one of ordinary skill in the art would recognize that parameters to preprocess the digital image in Mayle reside exclusively on the server in Mayle. Consequently, the combination of Mayle and Narayen does not disclose or renders obvious receiving preprocessing parameters from a remote device. 51 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 95. Clark in ¶ 56 states "the combination of Mayle and Narayen discloses or renders obvious pre-processing digital content by encoding or otherwise converting said digital content." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 96. Clark in ¶ 57 states "the combination of Mayle and Narayen discloses or renders obvious placing digital content in a specified form in preparation for publication." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 97. Clark in ¶ 58 states "the combination of Mayle and Narayen discloses or renders obvious receiving an identification of digital content and confirming an intent to associate the content with an account on a host server in view of Male system enabling a user to specify a file on the client device that the user wishes to process and transmit." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 52 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 98. None of the excerpts cited by Clark relate to confirming an intent to associate the content with an account on a host server. Clark alleges that a mere specification of "a file on the client device that the user wishes to process and transmit" is sufficient to associate content with an account. (Clark Dec., ¶ 58.) In support, Clark cites to Mayle, 10:38–11:35 ("the user specifies a file on the local client computer that holds the image data he or she wants to use on their card. The file should be in JPEG or GIF format") and Mayle, 12:37–41 ("[w]hen the user clicks on the 'Send' button [whereupon] the server creates a card key, saves the card into the Permanent Database and sends an email message to the recipient"), neither of which relate to an account. The first excerpt relates to a user selecting a file on the local device. The second excerpt relates to the server creating a "card key" and a "card" (which is stored in the Permanent database), and thereafter sending an email message to a recipient that includes a URL for accessing the card. One of ordinary skill in the art would recognize that creating a card key and storing a card in a Permanent database is not an account; instead, any recipient with the URL key could access the card. One of ordinary skill in the art would conclude that the combination of Mayle and Narayen does not disclose or render obvious placing digital content in a specified form in preparation for publication. 99. Clark in ¶ 59 states "the combination of Mayle and Narayen discloses or renders obvious transmitting pre-processed digital content in view of Mayle 53 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 enabling a user to send a message that includes pre-processed digital content to a recipient via the Internet." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 100. The excerpts cited by Clark do not teach or disclose transmitting pre- processed digital content to a server. Instead, the server pre-processes the digital content. (Mayle, 10:63–65 ("When a photograph is received on the server the Electronic postcard server software processes the photo using several steps as illustrated in FIG. 3a.").) Clark further compounds his erroneous conclusion by stating that the user sends "a message that includes pre-processed digital content to a recipient via the Internet" (Clark Dec., ¶ 59), yet recognizing that the recipient receives a URL, not the pre-processed digital content (Clark Dec., ¶ 59 (citing Mayle, 12:37–60 ("The recipient may view the card as soon as they receive the email message with the URL. The recipient will use a web browser to enter the URL, and view their personalized page")).) 101. Clark in ¶ 61 states "the combination of Mayle and Narayen discloses or renders obvious receiving a command that moves a graphical user interface element to enable selection of digital content in view of Mayle's disclosed graphical user interface." I disagree. Clark does not provide any support from 54 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 102. Clark in ¶ 62 states "the combination of Mayle and Narayen discloses or renders obvious displaying a preview or 'thumbnail' image of selected digital content in view of Narayen's display of lower resolution thumbnails of selected digital images." I disagree. Clark does not provide any support from Mayle for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 103. Clark in ¶ 63 states "the combination of Mayle and Narayen discloses or renders obvious previously downloading or storing in memory parameters for preprocessing." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 104. Clark points to no excerpts in Mayle that discloses or renders obvious downloading or storing in memory parameters for preprocessing. Clark first points to Mayle, 7:40–56, which states that "With an Internet connection the user can now use standard web browser software (such as Netscape Navigator or Microsoft Internet Explorer) to access a site that offers the electronic postcard service." But a web browser accessing a site that offers the electronic postcard service does not 55 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 disclose downloading memory parameters for preprocessing because the processing services are executed on the server, not the browser. (Mayle, 10:63–65 ("When a photograph is received on the server the Electronic postcard server software processes the photo using several steps as illustrated in FIG. 3a.").) Similarly, the excerpt at Mayle, 12:30–33, relates to image compression on the server, not the client; therefore this excerpt does not teach or disclose downloading or storing in memory parameters for preprocessing. Finally the byte count checking excerpt (Mayle, 10:66–11:4 ("The image data that is POSTed to the server must be in a size and format that the electronic postcard software can handle. The first step is to check the byte count of the data sent to the server.")) relates to aborting the transmission of a digital image to the server, and not any pre-processing of an image before transmission. Accordingly, one of ordinary skill in the art would not understand the server settings or any byte count "settings to constitute parameters that dictate the processing that occurs on the client device." (Cf. Clark Dec., ¶ 63.) As discussed above, one of ordinary skill in the art would understand that all image processing of any transmitted image in Mayle occurs on the server, and not the client device. Therefore, I disagree with Clark's opinions in ¶ 63. In my opinion, one of ordinary skill in the art would not understand that the web browser in Mayle could receive parameters specifying the byte count, size, and compression format of the digital content form the server hosting the web site 56 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 accessed by the user, and furthermore, that there would be no associated parameters downloaded by the client device from the server hosting the web site and stored in the client device's memory. 105. Clark in ¶ 64 states "the combination of Mayle and Narayen discloses or renders obvious receiving a user identifier." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 106. Clark in ¶ 66 states "the combination of Mayle and Narayen discloses or renders obvious transmitting location information in view of Mayle disclosing that the system sends a Uniform Resource Locator, or web address, to the recipient of the message." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he has not put forth any evidence showing that Narayen discloses or renders obvious this term. 107. Clark in ¶ 67 states "the combination of Mayle and Narayen discloses or renders obvious reporting a transmission status in view of Mayle providing a notice to the user that the message including the preprocessed digital content was sent to the recipient." I disagree. Clark does not provide any support from Narayen for that conclusion. Because Clark ignores Narayen in his analysis, he 57 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 has not put forth any evidence showing that Narayen discloses or renders obvious this term. XI. THE CHALLEGED CLAIMS OF THE '482 PATENT ARE VALID OVER CREAMER AND AIHARA A. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 are Obvious in View of Creamer and Aihara. 108. In my opinion, Creamer and Aihara fail to teach or suggest several limitations in the challenged claims. Additionally, a POSITA would not be motivated to combine Creamer and Aihara. As a result, the Petitioner has not shown that the challenged claims are obvious under §103. 1. Claim 12 is Not Obvious in View of Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of a group of one or more media objects for transmission. 109. Independent claim 12 requires "receiving an identification of a group of one or more media objects for transmission." In my opinion, Creamer teaches no image identification because its system automatically transfers every picture taken either immediately or in a batch operation at a future time. Nor has Petitioner has shown that Aihara discloses this limitation. 110. Petitioner alleges that "Creamer discloses a means to identify media objects for transmission through an 'image pickup. . . to store an image,' whereupon the image is converted into digital format and stored in 'the image memory (at this point, without compression.).'" (Pet., p. 25.) In my opinion, 58 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 collecting and then processing the collected raw image data in image memory to create and store an image in general purpose memory does not identify an image for transmission. Before the image data is stored as an addressable file in general purpose memory, the data is merely raw data indicative of photons captured by the CCD sensor. (Creamer, 18:49–54.) Because no digital image files exists until after the image pickup unit captures light photons and the raw data is processed and stored as an image file in S38, in my opinion, functions performed by the image pickup unit and the resultant storage of the digital image as a file cannot meet this limitation. (See also Figure 8 (describing image manipulation and compression as part of the image capture process).) Petitioner further alleges that the "[c]aptured images (e.g., media objects) are limited by the received pre- processing parameters in that the parameters define a level of compression that will limit (e.g., reduce) the file sizes of those images when the preprocessing occurs." (Id. at 25–26.) I disagree because Creamer does not pre-process any image. Instead, Creamer merely generates captured images. 111. Petitioner alleges that Aihara "discloses 'select[ing] pictures from a set stored in the memory of the camera.'" (Pet., p. 26 (citing Aihara, 8:26–28).) But the claim language recites "receiving an identification" of "media objects for transmission," not merely recite "selecting pictures." In my opinion, Petitioner's failed to provide a theory showing that Aihara discloses this limitation, including 59 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 identification for transmission, and therefore Petitioner has now shown that this claim limitation is met. b. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving pre-processing parameters from a remote device, pre-processing parameters including a specification of an amount of media data." 112. Independent claim 12 recites "receiving pre-processing parameters from a remote device, pre-processing parameters including a specification of an amount of media data." In my opinion, neither Creamer nor Aihara teaches or suggests these limitations. Creamer never specifies an amount of digital content; rather it discusses the use of an optional parameter that changes the compression level of a captured image based on the rate of data transmission. (Creamer, 19:9– 22 ("the compression engine 226 is then set to increase the compression level by a predetermined amount if the data rate is lower than a predetermined rate, or decrease the compression level by a predetermined amount if the date rate is higher than a predetermined rate").) 113. Petitioner contends that the setup/configuration parameters relating to JPEG compression level, resolution, grey-scale or color image, and cropping of specified image "specify an amount of media data." (Pet., pp. 24–25.) Petitioner alleges that "[t]hese parameters all control quantity or size of digital content, as defined by one or more of physical dimensions, pixel count, or kilobytes." (Id. at 25.) In my opinion, rather than specifying an amount of data, modifying the 60 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 compression level merely changes the amount of data. I understand that Google's expert admitted that JPEG compression does not specify an amount of data. Q: So if I have a JPEG compression algorithm specified as a compression level, what is the discrete quantity of data that would be associated with that JPEG compression algorithm? A: The amount of data would be the output. Q: So what is the output of the JPEG compression function? A: Again there's parameters that can be set, but it would be dependent upon the input size and also the content. Clark Dep., 66:20–67:4 (emphasis added). 114. Petitioner alleges that Aihara "discloses a set of predefined instructions and formatting commands." (Pet., p. 25 (citing Aihara, 3:10–12).) But Aihara does not disclose receiving parameters specifying an amount of media data. In my opinion, Petitioner has failed to meet its burden with respect to this claim limitation. c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified group of one or more media objects using said received pre-processing parameters." 115. Independent claims 12 recites "pre-processing said identified group of one or more media objects using said received pre-processing parameters." In my opinion, Creamer does not satisfy this limitation because Creamer does not pre- 61 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 process any "identified" items of digital content. Instead Creamer discloses that digital content is merely uploaded to a server. Furthermore, in my opinion, Petitioner has not shown that Aihara discloses this limitation. 116. The parameters identified by Petitioner in Creamer (See Pet., pp. 26– 27) do not control processing of image files prior to transmission, as required by the claim language. Creamer's parameters define how raw image data is manipulated before initially being saved in general purpose memory—the parameters tell the camera how to package the raw pixel data collected by a camera's lens and sensor into a digital image file saved in general purpose memory, but not how to process an existing image file prior to or in preparation for transfer. In my opinion, Fig. 8 of Creamer defines the image adjustment step (S36) and JPEG compression step (S38) as part of the image capture routine. Creamer does not teach further modifying these image files after they are created. The variables and parameters are applicable to a particular image slot, which does not identify any unique image. Because the compression and adjustment steps identified by Petitioner are performed on raw image data, not on identified image files, and because Creamer does not teach identifying files, in my opinion, Creamer does not teach or disclose pre-processing identified files. 117. Petitioner further does not show how Aihara discloses this element other than stating that "Aihara also discloses 'images [that] are located and scaled. 62 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82. . in accordance with the script's predefined model.'" (Pet., p. 27 (citing Aihara, 13:19–23).) This excerpt describes placing an image on a web page, not pre- processing the image in accordance with received pre-processing parameters as recited by the claim language. Aihara does not disclose processing using received parameters. In my opinion, Petitioner has failed to meet its burden with respect to this claim limitation. 2. Claims 13, 24, and 25 Are Not Obvious in View of Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of digital content" (claim 13) or "receiving an identification of a media object for transmission." (claims 24, 25) 118. Petitioner's invalidity theory refers to the discussion of claim element 12[B]. (Pet., p. 28.) As I discussed previously in Section XI(A)(1)(a), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. b. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified [digital content / media object] at said [client / local] device in accordance with one or more pre-processing parameters." (claims 13, 24, 25) 119. Petitioner's invalidity theory refers to the discussion of claim 12 elements a and c (Pet., pp. 28–30.) As I discussed previously in Section XI(A)(1)(a), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. 63 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication." (claim 13) 120. Independent claim 13 requires "pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication." Petitioner argues that mere generation of data in a form suitable for Internet publishing meets this element. (Pet., p. 29.) In my opinion, neither Creamer nor Aihara teaches pre-processing parameters that place any item of digital content into a specified form in "preparation for publication." 121. Petitioner's argument that JPEG compression is performed in preparation for publication [or distribution] (Pet., p. 29) is unsupported by evidence other than Clark's conclusory testimony. In my opinion, just because an image is JPEG compressed does not mean that the JPEG compression was performed in preparation for publication. JPEG compression predates the asserted prior art, and was developed to compress a stream of bytes of image data. The visual detail of a decoded JPEG compressed image depends on a quality factor. Many images that have been compressed using low quality JPEG would not reproduce without substantial loss of color and detail in the image, and such images may not be appropriate for publication. Accordingly, a POSITA would recognize that JPEG compression is performed as convenient way to reduce the 64 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 size of an image to facilitate storage and transfer of that image, and not performed in preparation for publication. 122. Creamer does not teach or suggest that these functions are performed "in preparation for publication [or distribution]" as recited by the claims. Creamer teaches that compression is performed in preparation for transmission, not publication of the image data. (Creamer, 19:9–20.) The compression rate in Creamer is modulated based on the transmission rate between the camera and the image host, not based on the transmission rate (or any other characteristic) of the channel between that host and any end downstream recipient to which the item is "published." (Id.) In my opinion, Creamer does not teach that compression is performed for the purpose of publication. 123. Petitioner fails to articulate an obviousness theory based on Creamer or Aihara for this element, and instead makes an unsupported, conclusory statement: "Each of these could be used by the systems disclosed in Creamer and Aihara, and is a specified form in preparation for publication." (Pet., p. 29.) I disagree. Petitioner's obviousness theory is incorrect. To the extent that the script file identified by Petitioner in Aihara determines how (e.g., where) an image file appears on a web page, it does not modify the image. "[T]he HTML commands which determine the appearance, hereafter referred to as the format, of the resulting web page, are generated in script in accordance with the predefined model." 65 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 (Aihara, 7:48–51.) The script disclosed in Aihara does not preprocess any image, and accordingly, the script in Aihara does not preprocess any image in a "specified form." Accordingly, in my opinion, Petitioner has not shown that Aihara discloses pre-processing parameters that control the placement of the digital content in a specified form in preparation for publication as recited by the claims. 3. Claims 35–38 Are Not Obvious Over Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said selected digital content [at said client device] in accordance with one or more pre-processing parameters" that are received from a remote or separate device or "receiving pre-processed" digital content "in accordance with pre-processing parameters" received from a separate device (claims 35–38) 124. Petitioner's invalidity theory refers to the discussion of claim 12, elements a–d, and claim 13, element c. (Pet., pp. 33–36.) As I discussed previously in Sections XI(A)(1) and XI(A)(2), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. b. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters [enabling/controlling] said client device in a placement of said" [said identified group of] "digital content into a specified form in preparation for publication." (claims 35–38) 125. Petitioner's invalidity theory refers to the discussion of claim 12 elements a–d, and claim 13, element c. (Pet., pp. 33–36.) As I discussed previously in Sections XI(A)(1) and XI(A)(2), neither Creamer nor Aihara nor 66 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 their combination disclose this element for the same reasons. Furthermore, Petitioner's analysis of claim 12 elements a–d and claim element 13 c do not address this limitation, and thus in my opinion, Petitioner cannot meet its burden with respect to this element. 4. Dependent Claims 16, 18, 19, 21–23, 40–42, 44–46, and 49 Are Not Obvious Over Creamer and Aihara. 126. Dependent claims 16, 18, 19, 21–23 each dependent from independent claim 13. Claim. Dependent claims 40–42, 44–46, and 49 each depend from claim 38. 127. Each of the challenged dependent claims depend from an independent claim that in my opinion is valid over Creamer in view of Aihara. 128. Accordingly, neither Creamer nor Aihara nor their combination discloses these dependent claims for the same reasons. B. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 are Obvious in View of Mayle and Narayen. 129. In my opinion, Petitioner has not met its burden of showing a reasonable likelihood of prevailing as to any of the challenged claims. As discussed below, Mayle lacks numerous limitations of the challenged claims; and Narayen does not supply these missing limitations. As I discussed previously, a POSITA would not have combined Mayle and Narayen to arrive at the invention claimed. 67 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 1. Claim 12 is Not Obvious in View of Mayle and Narayen. a. Neither Mayle nor Narayen teaches or suggests "receiving pre-processing parameters from a remote device. . . including a specification of an amount of media data." (claim 12) 130. Petitioner misrepresents the teachings of the Mayle reference, asserting that in Mayle the various forms of image processing disclosed "may be performed on the local client device." (Pet., p. 41 (citing Mayle, 2:65–3:4).) Because the server in Mayle performs image processing, Mayle does not disclose receiving pre-processing parameters from a remote device. 131. In my opinion, the byte count in Mayle is not a pre-processing parameter. "[I]f the byte count exceeds some limit then the image is ignored and the user is redirected to an error page." (Mayle, 11:3–4.) The server ignores, rather than processes, such an image. Additionally, the byte count parameter is not sent to the client: it is used by the server "to check the byte count of the data sent to the server." (Mayle, 11:1–2.) Therefore, the byte count is not a pre-processing parameter received from a remote device. 132. In my opinion, it would have not been obvious for a POSITA "to send the parameters specifying the maximum byte count, maximum scale, and compression format from the server hosting the web site. . . because the browser- based system of Mayle would need these parameters at the client device in order to preprocess the digital content." (Pet., pp. 42–43.) After disclosing that all 68 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 processing is performed on the server, Mayle recognizes that the client could preview images before sending to the server for processing. "In addition, the client may be augmented to perform a portion of the processing during interactions with the server" to allow the client device to generate a "preview" of the image as it will appear after processing by the server. (Mayle, 3:2–4, 13:59–14:7 (describing augmenting the client device to perform data processing such as scaling, filtering, color correction, and the like to "preview the result of various other types of image data processing. . . at the same [or lower quality] resolution as created by the server computer. . . allowing the server to actually produce the final processed information").) A POSITA would recognize benefits for allowing a user to preview a postcard in Mayle before allowing access to recipients, including to ensure that the server-generated postcard will be acceptable for viewing by the recipients. Without this preview function, the server may generate unnecessary and inappropriate post cards. In my opinion, a POSITA reading the teachings of Mayle would conclude that Mayle teaches that all image processing is performed on the server, and therefore no pre-processing parameters would be received by the client from a remote device in Mayle. b. Neither Mayle nor Narayen teaches or suggests "pre- processing. . . media objects using. . . pre-processing parameters." (claim 12) 69 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 133. As discussed in the foregoing subsection, Mayle teaches that all image processing is performed by the server. Mayle does not provide that the client device processes an image for transmission to the server, i.e. does not disclose "pre-processing." Mayle only mentions augmenting the client to provide a preview of the image as it will appear after processing by the server. 134. In my opinion, Mayle does not teach pre-processing media objects at the client. Nor does Narayen supply this missing limitation. Narayen discloses processing of the picture album at the server. (Narayen, 10:51–11:6.) The picture management software in Narayen is a client application. In my opinion, Petitioner has not shown that any related functionality is the result of pre-processing parameters received from a remote device. 135. In my opinion, Narayen discloses processing of the picture album at the server, not the client. (Narayen, 10:51–11:6, 8:40–45 ("The images are converted into a web-viewable format before any requests to view the images are made by other client computer systems. In this manner, the web-viewable format images are pre-generated prior to "publication" or distribution to other client computer systems."); see also Narayen, 10:60–66).) Thus, it is not surprising that Google's expert failed to opine that Narayen meets this limitation. (Clark Dec., ¶ 55.) Narayen's discussion relating to the "album authoring software scal[ing] each picture if necessary to cause it to fit into the corresponding slot on the album page" 70 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 is not an example of "pre-processing." (Narayen, 9:45–47.) Narayen scales an image for preview on the client display, not modifying the underlying data for that identified image as required by pre-processing. Furthermore, Narayen does not teach that the scaled image is actually transmitted to a computer. (Kaliski Dec., ¶ __.) Neither Mayle nor Narayen nor their combination teaches or suggests this element, and as discussed previously, a POSITA would not be motivated to combine Mayle and Narayen. c. Neither Mayle nor Narayen teaches or suggest "transmitting said pre-processed group of one or more media objects to the remote device." (claim 12) 136. Mayle explicitly describes preparation of the postcard data only on the server. In my opinion, Petitioner misrepresents Mayle's teachings by asserting "[a]fter pre-processing, subsequent transmission to a remote device occurs '[w]hen the user clicks on the Send button. . . .'" (Pet., p. 41.) As Mayle discloses, the Send command instructs the server to move the postcard data from the server's temporary files to permanent storage in the server's Card Database and Image Database, at which time the temporary data can be deleted. (Mayle, 5:32–40.) Narayen does not teach that any scaled image is actually transmitted to the remote device that provided the pre-processing parameters. Moreover, neither the image that is previewed in Mayle (Mayle, 13:59–15:7) on the client nor the image that is 71 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 scaled in Narayen (Narayen, 9:45–47) is transmitted to any device. Accordingly, neither Mayle nor Narayen disclose this element. 2. Claims 13, 24, and 25 are Not Obvious in View of Mayle and Narayen. 137. Independent claims 13, 24 and 25 recite "pre-processing said identified content/media object" "with/in accordance with one or more pre- processing parameters." A discussed previously, Petitioner's argument is based on selective quotations applied out-of-context to misrepresent the teaching of Mayle. Petitioner falsely suggests that Mayle is based on client-side processing, when it is actually based on server-side processing. In my opinion, Mayle does not teach or suggest these limitations because (1) the processing in Mayle occurs on the server and not on the client device, and (2) Mayle does not receive pre-processing parameters from a separate device. Petitioner merely cites to certain excerpts of Narayen, and completely omits any analysis of how Narayen allegedly meets this claim limitation. (Pet., p. 49.) In my opinion, such an approach does not support an invalidity showing. Absent any analysis as to the disputed limitation, Petitioner has not met its burden to show that Narayen discloses this limitation. a. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified content/media object with [or in accordance with] one or more pre-processing parameters that are received from a device separate from said client device." (claims 13, 24, and 25) 72 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 138. As set forth previously in Section XI(B)(1)(a), although Mayle briefly mentions augmenting the client to provide a preview of the image as it will appear after processing by the server, nothing in Mayle discloses client-side processing of an image that will be transmitted to the server. In my opinion, all image processing is done on the server. Mayle does not teach or suggest delivery, to the client device, of pre-processing parameters originating from a separate device. Narayen does not supply this missing limitation because Narayen discloses processing of the picture album at the server (Narayen, 10:51–11:6.) Nothing in Narayen teaches or suggests a separate device providing the client device with image processing parameters. b. Neither Mayle nor Narayen nor their combination teaches or suggests "placement of said digital content into a specified form in preparation for publication," or "changing the file format of said media object," or "encoding or otherwise converting said media object." (claims 13, 24, and 25) 139. Petitioner's argument with respect to these claim limitations is a POSITA would simply understand them, because "[t]he '482 patent relates to the field of 'handling, manipulation and processing of digital content and more particularly to the transportation and Internet publishing of digital content.'" (Pet., p. 48.) I disagree. This is improper hindsight reconstruction: Petitioner is attempting to impute knowledge to a POSITA based upon the specification of the '482 patent. Petitioner does not link these limitations to any teachings in either 73 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Mayle or Narayen. Neither Mayle nor Narayen place digital content in a form in preparation for publication, nor do they pre-process images. Furthermore, the preview images discussed in Mayle (Mayle, 13:59–14:8) and the scaled images discussed in Narayen (Narayen, 9:45–47) are for viewing by the user on the client, not for publication to others. In my opinion, no such teachings exist. c. Neither Mayle nor Narayen nor their combination teaches or suggests "said transmitted message including said pre- processed digital content/media object and said retrieved information." (claims 13, 24, and 25) 140. Petitioner's argument with respect to these limitations consists of recitation of the respective claim language, and a reference to Petitioner's argument concerning claim 12. For the reasons set forth above in Section XI(B)(1)(c), in my opinion, Mayle and Narayen and their combination lack numerous limitations of claim 12. 3. Claims 35–38 are Not Obvious in View of Mayle and Narayen. 141. Petitioner's argument with respect to claims 35–38 rests on its argument concerning claim 12. For the reasons set forth above with respect to claims 12 and 13 in Sections XI(B)(1) and XI(B)(2), in my opinion, Mayle and Narayen and their combination does not render these claims invalid. 74 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 4. Dependent Claims 16, 18, 19, 21, 22, 23, 40, 41, 42, 44, 45, 46 and 49 are Not Obvious in View of Mayle and Narayen. 142. In my opinion, Petitioner improperly incorporates its arguments in relation to claims 12 and 13. Petitioner's analysis is improper. Petitioner makes no effort to explain its conclusions, or demonstrate where, in the Mayle and Narayen references, these asserted limitations can be found. In my opinion, Petitioner cannot show this limitation is found either Mayle or Narayen, for the reasons recited above in response to Petitioner's claim 12 and claim 13 arguments in Sections X1(B)(1) and X1(B)(2). 143. Petitioner attempts to argue that a POSITA familiar with Mayle and Narayen would simply understand that "the parameters specifying maximum byte count, maximum scale, and compression format were downloaded by the client device from the server hosting the website comprising the system and stored in the client device's data store." (Pet., p. 55.) I disagree. Petitioner ignores Mayle's teaching with regard to the byte count check. Mayle teaches away from client-side pre-processing to meet the byte count requirements of the server. Mayle provides that "the first step is to check the byte count of the data sent to the server. If the byte count exceeds some limit then the image is ignored and the user is redirected to an error page." (Mayle, 10:66–11:4.) In my opinion, Mayle instructs a POSITA that a user operating a client device and desiring to send an image to a server cannot succeed unless he or she knows, and meets, the server's rigid image size 75 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 and format requirements. Mayle teaches that where those requirements are unknown, an oversize image is ignored by the server and the user receives an error message. (Mayle, 11:3–4.) XII. THE CHALLEGED CLAIMS OF THE '515 PATENT ARE VALID OVER CREAMER AND AIHARA A. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28– 30, 38, and 39 are Obvious in View of Creamer and Aihara. 144. In my opinion, Creamer and Aihara fail to teach or suggest several limitations in the challenged claims, and furthermore, a POSITA would not be motivated to combine Creamer and Aihara as Petitioner proposes. As a result, the challenged claims are not obvious under §103. 1. Claims 1 and 23 are Not Obvious in View of Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23) 145. Independent claims 1 and 23 require "receiving an identification of one or image files, video files or audio files to associate with said account." In my opinion, Creamer teaches no image identification because its system automatically transfers every picture taken either immediately or in a batch operation at a future time. Petitioner has not shown that Aihara discloses this limitation. In my opinion, Narayen does not disclose this limitation because Aihara does not associate and image files with an account. 76 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 146. Petitioner alleges that "Creamer discloses receiving an identification of one or more images to associate with the account on the host server through an 'image pickup. . . to store an image,' whereupon the image is converted into digital format and stored in 'the image memory (at this point, without compression.).'" (Pet., p. 22.) I disagree. Collecting and then processing the collected raw image data in image memory to create and store an image in general purpose memory does not identify an image to associate with an account. Before the image data is stored as an addressable file in general purpose memory, the data is merely raw data indicative of photons captured by the CCD sensor. (Creamer, 18:49–54.) Because no digital image files exists until after the image pickup unit captures light photons and the raw data is processed and stored as an image file in S38, functions performed by the image pickup unit and the resultant storage of the digital image as a file do not meet this limitation. The manipulation of raw image data is not pre-processing of an image. I further note that Figure 8 of Creamer recognizes and defines the image manipulation steps as being part of the image capture process. In my opinion, the digital image in Creamer does not exist until a JPEG compressed image is stored in general purpose memory. Petitioner further alleges that the "shell account is where 'JPEG image files may be stored.'" (Pet., p. 22.) I disagree. A shell account does not identify any images to associate with an account. 77 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 147. Petitioner alleges that Aihara discloses that users can identify media objects where "the user could be prompted to select pictures from a set stored in the memory of the camera." (Pet., p. 22.) I disagree. Aihara does not disclose associating any images with an account. I further note that Google's expert fails to provide any supporting testimony. (Clark Dec., ¶ 38.) 148. Finally, Google alleges that a POSITA "would be motivated to combine the identifications of digital content disclosed in Creamer and Aihara." (Pet., p. 22.) I disagree. As discussed above, a POSITA would not have been motivated to combine Creamer and Aihara. b. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving, by said client device, a confirmation of an intent to associate. . . files with said account." (claims 1 and 23) 149. Independent claims 1 and 23 recite "receiving, by said client device, a confirmation of an intent to associate said one or more image files, video files or audio files with said account." ('515 patent, 6:62–64, 9:6–8.) In my opinion, Creamer does not teach this limitation because all image files in Creamer are automatically uploaded to a destination server—no intent or confirmation step is performed or required. Further, as I discussed above, Creamer does not receive any type of identification of media files to associate with an account. Aihara, on the other hand, describes generation of a web page with references to images, but does 78 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 not provide a confirmation of intent to associate with an account as required by the claim language. 150. In my opinion, Petitioner has not shown that Creamer teaches this element. Petitioner states that this limitation is met "when the image is converted into digital format and stored in 'the image memory (at this point without compression.)'" (Pet., p. 23 (citing Creamer, 18:46–56).) I disagree. Petitioner points to the immediate upload parameter in the IMAGE FILES: UPLOAD variable group as "confirm[ing] an intent to associate the image with the shell account." (Pet., p. 23.) Petitioner has identified no steps that relate to a client device receiving an intent to associate an image file with an account. The processing steps performed on each set of collected raw image data (see Creamer, 11:32–35) are not an intent to associate an image file with an account. The immediate upload of an image file in accordance with stored parameters is not an intent to associate an image file with an account because no such image file exists when the UPLOAD variable group is transferred to camera in Creamer. 151. Aihara's disclosure that "the user could be prompted to select pictures from a set stored in the memory of the camera" does not evidence this limitation. (Pet., p. 23 (citing Aihara, 8:26–27).) A POSITA would understand that mere selecting images for an HTML page does not evidence a confirmation of intent to associate image files with an account. Aihara merely teaches the generation of a 79 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 web page that includes references to collected digital images, rather than evidencing a confirmation of an intent to associate image files with an account. As I discussed previously, a POSITA would not have been motivated to combine Creamer and Aihara. Neither Creamer nor Aihara or their combination teaches this element. c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified. . . files using pre- processing parameters." (claims 1 and 23) 152. Independent claims 1 and 23 recite "pre-processing parameters enabling said client device to pre-process one or more. . . files in a manner specified by a distributing party." ('515 pat., 6:66–7:4, 9:12–16.) In my opinion, Creamer does not teach or suggest this limitation. Creamer's image adjustment and compression parameters control how a raw image is manipulated and saved during an image capture process, rather than modifying an existing image that has already been saved in a storage media. (Creamer, Fig. 8.) Aihara does not disclose this element because reference to a captured image by a formatted HTML file is not pre-processing identified files. 153. Petitioner incorrectly cites the setup/configuration file of Creamer as allegedly teaching this limitation: The setup/configuration file may specify an amount of media data through 'settings for (e.g., JPEG) compression level, resolution, whether an image is stored as a greyscale or a color image, as well as 80 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 any cropping of the image specified, e.g., coordinates of opposite corners of the region to be cropped.' (Pet., p. 25.) But "specifying an amount of media data" is not at issue in this pre- processing claim limitation. And as discussed below, the configuration parameters relate to image generation, not image processing. Petitioner cites the compression engine in Creamer performing JPEG, TIFF, GIF, or other compression schemes and that "[c]aptured images are stored in 'image slots.'" (Pet., p. 26 (citing Creamer, 19:23–26).) Because Creamer compresses raw image data, not identified image files (Creamer, Fig. 8 (showing that image compression is part of the image capture process)), Creamer does not teach or disclose pre-processing identified files. 154. The parameters identified by Petitioner in Creamer do not control processing of existing files prior to transmission, as required by the claim limitation. Creamer's variables and parameters define how raw image data is manipulated before initially being saved in general purpose memory—the variables of Creamer tell the camera how to package the raw pixel data collected by a camera's lens and sensor into a digital image file saved in general purpose memory, but not how to process an existing image file prior to or in preparation for transfer. I note that Fig. 8 of Creamer defines the image adjustment step (S36) and JPEG compression step (S38) as part of the image capture routine. (Creamer, Fig. 81 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 8.) Creamer does not teach further modifying these image files after they are created. Parameters are applicable only to a particular image slot, which does not identify any unique image. Because the compression and adjustment steps identified by Petitioner are performed on raw image data, not on identified image files, a POSITA would understand that Creamer does not teach or disclose pre- processing identified files. 155. Petitioner argues that "Aihara discloses pre-processing images by 'capturing images and generating a formatted electronic document which includes or references those images.'" (Pet., p. 26 (citing Aihara, 4:35–37).) I disagree. A reference to a captured image by a formatted HTML file is not pre-processing identified files. Such an image file remains untouched: Aihara generates "a page description file such as HTML. . . that references images captured by a digital camera." (Aihara, 3:1–4.) In my opinion, Aihara does not disclose pre-processing identified images. d. Neither Creamer nor Aihara nor their combination teaches pre-processing "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) 156. Neither Creamer nor Aihara teaches or suggests "preprocess[ing] . . . in a manner specified by a distributing party for transfer of content" because Petitioner fails to identify any distributing party that meets this limitation. Petitioner states generally that "one of ordinary skill in the art would know that the 82 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 'manner specified' by the parameters would be a form of digital content suitable for Internet distribution," and further that HTML and JPEG are well known "form[s] of digital content suitable for Internet distribution." (Pet., p. 27.) Because Petitioner fails to articulate any theory as to how the "distributing party" limitation is taught or suggested by Creamer or Aihara, or their combination, Petitioner cannot meet its burden to show this claim element is met by the asserted prior art. 157. Petitioner fails to identify any distributing party taught or suggested by Creamer. Instead, Petitioner contends that "the 'manner specified' by the parameters would be a form of digital content suitable for Internet distribution [such as] . . . HTML, JPEG, or similar encoding." (Pet., p. 27.) As I discussed previously, neither Mayle nor Aihara teach or suggest the "pre-processing said identified. . . files using pre-processing parameters." The JPEG settings in Creamer are not pre-processing parameters, and therefore Creamer does not teach or disclose this limitation. 158. Petitioner also fails to identify a distributing party taught or disclosed by Aihara. The script file identified by Petitioner (Pet., pp. 26–27) in Aihara determines how (e.g., where) an image file appears on a web page, and does not modify or pre-process the image. "[T]he HTML commands which determine the appearance, hereafter referred to as the format, of the resulting web page, are 83 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 generated in script in accordance with the predefined model." (Aihara, 7:48–51.) In my opinion, Petitioner failed to show that Aihara meets this limitation. 159. Petitioner nakedly states that "one of skill in the art would be motivated to combine the preprocessing according to the received parameters disclosed in Creamer and Aihara. (Pet. at 27.) I disagree. Petitioner fails to articulate what aspects, if any, of the alleged "received parameters" in Creamer and Aihara would have been selected, or how to modify Creamer in view of Aihara. And as I discussed previously, a POSITA would not be motivated to combine Creamer and Aihara. In my opinion, neither Creamer nor Aihara nor their combination renders claims 1 or 23 obvious. 2. Claims 20 and 39 Are Not Obvious in View of Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39). 160. Petitioner's invalidity theory refers to the discussion of Claim 1, elements b, c. (Pet., p. 29.) As I discussed previously in Section XII(A)(1)(a), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. b. Neither Creamer nor Aihara nor their combination teaches or suggests pre-processing "said identified. . . files using pre- processing parameters." (claims 20 and 39) 84 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 161. Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., p. 30.) As I discussed previously in Section XII(A)(1)(c), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. c. Neither Creamer nor Aihara nor their combination teaches "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) 162. Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., p. 30.) As I discussed previously in Section XII(A)(1)(d), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. d. Neither Creamer nor Aihara nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) 163. Petitioner fails to specifically discuss Creamer's or Aihara's alleged disclosure of "a pre-processor that pre-processes said identified files. . . in preparation for transmission," instead equating this limitation to Claim 1, elements d, e. (Pet., p. 30.) Claim 1 does not recite the limitation "in preparation for transmission." (See '515 pat., claim 1.) Petitioner makes no attempt to cite any teaching in Creamer or Aihara of "pre-process[ing] . . . in preparation for transmission" or provide reasoning to support its assertion of equivalence of that limitation to the cited limitation of claim 1. And as I discussed previously in 85 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Section XII(A)(1)(c), neither Creamer nor Aihara discloses pre-processing identified files. In my opinion, Petitioner cannot meet its burden to show that this limitation is taught or suggested by Creamer in view of Aihara. Neither Creamer nor Aihara nor their combination renders claims 20 or 39 obvious. 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Creamer and Aihara. 164. Dependent claims 2, 6, 10, 11, 18, 19 each depend from independent claim 1. Dependent claims 26, 28–30, and 38 each depend from independent claim 23. 165. Each challenged independent claim (claims 1, 20, 23, 39) is valid over Creamer in view of Aihara. 166. In my opinion, neither Creamer nor Aihara nor their combination discloses these dependent claims for the same reasons. B. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28– 30, 38, and 39 are Obvious in View of Mayle and Narayen. 167. I note that Petitioner states that it relies, in whole or in part, on Mayle as the "base" system and Narayen as the "comparable" system for its obviousness combination. (Pet., p. 15.) I disagree that a POSITA would have combined Mayle and Narayen. As discussed below, Mayle and Narayen fail to teach or suggest several limitations in the challenged claims as Petitioner proposes, and as 86 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 discussed previously, a POSITA would not have been motivated to combine Mayle with Narayen. 1. Claims 1 and 23 are Not Obvious in View of Mayle and Narayen. a. Neither Mayle nor Narayen nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23) 168. Independent claims 1 and 23 require "receiving an identification of one or image files, video files or audio files to associate with said account." ('515 patent, 6:60–61, 9:4–5.) In my opinion, neither Mayle nor Narayen teaches or suggests this limitation. Mayle teaches a server computer that manipulates an image file uploaded from a user computer. (Mayle, 10:37–39, 10:63–11:35.) Mayle is silent about and does not address an account. Mayle does not associate any image files with an account. Narayen, on the other hand, refers to media containers, not the image files themselves. (Narayen, 7:49–56 ("the user of the client computer system can cause a media container with its associated digital media to be published to the Internet").) 169. Petitioner alleges "Mayle discloses a system which receives an identification of images to associate with an account." (Pet., p. 38.) I disagree. Petitioner does not cite to any excerpt of Mayle that discloses an account. "[S]pecif[ying] a file on the local client computer that holds the image data he or she wants to use on their card" (Pet., p. 38) does not refer to relate to any 87 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 "account" to which files are to be associated. Petitioner's remaining arguments regarding Mayle relate to alleged preprocessing parameters rather than the "receiving an identification" limitation at issue. 170. Petitioner alleges that Narayen discloses user selection of a media container with its associated image data. (Pet., p. 39.) I disagree. User selection of a media container is not an identification of image data. A media container is capable of holding various types of media. Though a media container includes references to image files, selection of that container does not identify the files referenced by that container. In my opinion, neither Mayle or Narayen or their combination discloses this element. b. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified. . . files using pre- processing parameters. . . enabling said client device to pre- process said identified. . . files." (claims 1 and 23) 171. Claims 1 and 23 recite "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." Petitioner applies out-of-context quotations to misrepresent Mayle as a client-side processing system. May is actually based on server-side processing. I also note that Petitioner merely cites two excerpts of Narayen without analysis regarding how Narayen allegedly meets this claim limitation. (Pet., p. 45.) Petitioner fails to provide any analysis regarding Aihara and therefore, in my 88 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 opinion, Petitioner has not met its burden to show that Narayen discloses this limitation. 172. Petitioner argues that the client in Mayle performs pre-processing: "For example, these parameters determine the pre-processing that is performed on the client device." (Pet., p. 43 (citing Mayle, 3:2–4, 10:66–11:25, 12:3–33, 13:47– 14:19).) I disagree. In each of these excerpts, the server, not the client computer, performs the processing. (Mayle, 10:64–65 ("the Electronic postcard server software processes the photo").) Mayle discusses only two ways to augment the client, neither of which is pre-processing image data: (1) re-positioning a picture (Id. at 13:52–57) and (2) performing data processing such as scaling, filtering, color correction, and the like to "preview the result of various other types of image data processing. . . at the same [or lower quality] resolution as created by the server computer. . . allowing the server to actually produce the final processed information." (Id. at 3:2–4, 13:59–14:7.) In either case, the transmitted image is processed by the server, not by the client. The client provides a preview of the image as it will appear after processing by the server. The client device does not pre-process the image before transmitting it to the server. The digital image transmitted by the client to the server is never pre-processed. 173. Petitioner also alleges that the "pre-processing occurs within the web browser on the client device." (Pet., 43 (citing Mayle, 4:40–45, 6:66–7:6, Fig. 2).) 89 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 I disagree. This passage of Mayle describes a "web browser running on a client computer 10 to access the hypertext documents stored on one or more server computers." (Mayle, 4:41–43, 6:66–7:6.) This excerpt does not describe pre- preprocessing. In my opinion, Mayle is clear: all image processing occurs on the server, not the client. (Id. at 10:63–65, 13:46–14:7.) 174. I note that Petitioner does not articulate how Narayen meets this limitation. (Pet., p. 45.) Narayen discloses processing of the picture album at the server (Narayen, 10:51–11:6). (Narayen, 8:40–45 ("The images are converted into a web-viewable format before any requests to view the images are made by other client computer systems. In this manner, the web-viewable format images are pre- generated prior to "publication" or distribution to other client computer systems."), see also Narayen, 10:60–66).) I note that Google's expert failed to opine that Narayen meets this limitation. (Clark Dec., ¶ 55.) Narayen's discussion relating to the "album authoring software scal[ing] each picture if necessary to cause it to fit into the corresponding slot on the album page" is not an example of "pre- processing." (Narayen, at 9:45–47.) Narayen scales an image for preview on the client display, not modifying the underlying data for that identified image as required by pre-processing. My opinion is confirmed by the lack of teaching in Narayen that the scaled image is actually transmitted to a computer. Neither Mayle nor Narayen nor their combination teaches or suggests this element, and as I 90 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 discussed previously, a POSITA would not be motivated to combine Mayle and Narayen. c. Neither Mayle nor Narayen nor their combination teaches "pre-processing parameters received from a remote server." (claims 1 and 23) 175. Claims 1 and 23 recite "pre-processing parameters received from a remote server." Petitioner continues to mischaracterize Mayle by contending that the local client receives pre-processing parameters. (Pet., p. 42 ("Preprocessing parameters received at the client", "The parameters specifying the amount of media data are received and implemented by the local device").) I disagree. Mayle does not receive pre-processing parameters from a remote server because the remote server, not the local client, performs the processing steps on the image data. Petitioner did not articulate a theory as to Narayen with respect to this limitation. 176. Petitioner points to the file size check performed by the server on the received image data as a processing parameter received by the client: Pre-processing parameters received at the client device require that '[t]he image data that is POSTed to the server must be in a size and format that the electronic postcard software can handle. The first step is to check the byte count of the data sent to the server. If the byte count exceeds some limit then the image is ignored and the user is redirected to an error page.' 91 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 (Pet., p. 42 (citing Mayle, 10:66–11:4).) I disagree with Petitioner for at least two reasons. First, this file-size checking functionality does not process the image. It is merely an error check to prevent the server from processing large image files. The file size limit is not used to process the image in a different size. Second, the server performs file size functionality and the client device does not receive any file size parameter. (Mayle, 10:63–67 (disclosing that the electronic postcard server software processes performs the file size and byte check).) 177. Petitioner mischaracterizes Mayle by stating that "[t]he parameters specifying the amount of media data are received and implemented by the local device such that '[t]he resulting image is finally compressed and converted into an image format viewable in a web browser (such as GIF or JPEG).'" (Pet., p. 43 (citing Mayle, 12:30–33).) This particular passage in Mayle refers to server, not client image compression. Petitioner also contends that "[i]t would be obvious. . . to send the parameters specifying maximum byte count, maximum scale, and compression format from the server hosting the web site comprising the system to the client device." (Pet., p. 43.) I disagree. Petitioner's contention is nothing more than improper hindsight, and as discussed previously, a POSITA would not be motivated to modify Mayle so that it receives parameters to perform functions that will be performed by the server. In my opinion, Petitioner has not shown that Narayen discloses pre-processing using parameters received from a remote device. 92 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Finally, as I discussed previously, a POSITA would not have been motivated to combine Mayle and Narayen. d. Neither Mayle nor Narayen teaches or suggests "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) 178. Claims 1 and 23 recite "preprocessing. . . in a manner specified by a distributing party." In my opinion, neither Mayle nor Narayen teaches or suggests this limitation. Petitioner fails to identify any distributing party in Mayle or Narayen or their combination that meets this limitation. Instead Petitioner states that "one of ordinary skill in the art would know that the 'manner specified' by the parameters would be a form of digital content suitable for Internet distribution," and further that HTML and JPEG are well known "form[s] of digital content suitable for Internet distribution." (Pet., p. 45.) I disagree. Petitioner's argument focused "on the nature of the distribution," rather than identifying a distributing party that provides pre-processing parameters for the "pre-processing" limitation recited by the claim language should be rejected. Furthermore, the preview images discussed in Mayle (Mayle, 13:59–14:8) and the scaled images discussed in Narayen (Narayen, 9:45–47) are for viewing by the user on the client, not for distribution to others, and accordingly, this limitation is not met by Mayle and Narayen. In my opinion, this limitation is not taught or suggested by Mayle or Narayen, or their combination. Petitioner states that "one of skill in the art would 93 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 be motivated to combine the preprocessing according to the received parameters disclosed in Mayle and Narayen. (Pet., p. 45.) I disagree. Petitioner fails to articulate what aspects, if any, of the alleged "received parameters" in Mayle and Narayen would have been selected, and how to modify Mayle in view of Narayen to allegedly render this limitation obvious. As I discussed above, a POSITA would not have been motivated to combine Mayle and Narayen. Neither Mayle nor Narayen nor their combination renders claims 1 and 23 obvious. e. Neither Mayle nor Narayen nor their combination teaches or suggests "transmitting said pre-processed. . . files." (claims 1 and 23) 179. As I discussed previously in Section XII(B)(1)(d), because the server performs all image processing in Mayle and Narayen, neither Mayle or Narayen pre-processes images files. Furthermore, the image that is previewed in Mayle (Mayle, 13:59–15:7) on the client nor the image that is scaled in Narayen (Narayen, 9:45–47) is not transmitted to any device. Accordingly, neither Mayle nor Narayen disclose this element. 2. Claims 20 and 39 are Not Rendered Obvious In View of Mayle and Narayen. a. Neither Mayle nor Narayen nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39) 94 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 180. Petitioner's invalidity theory refers to the discussion of Claim 1, elements b, c. (Pet., p. 47.) As I discussed previously in Section XII(B)(1)(a), neither Mayle nor Narayen nor their combination disclose this element for the same reasons. b. Neither Mayle nor Narayen nor their combination teaches or suggests pre-processing "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." (claims 20 and 39) 181. Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., p. 48.) As I discussed previously in Section XII(B)(1)(b), neither Mayle nor Narayen nor their combination disclose this element for the same reasons. c. Neither Mayle nor Narayen nor their combination teaches pre-processing "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) 182. Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., p. 48.) As I discussed previously in Section XII(B)(1)(d), neither Mayle nor Narayen nor their combination disclose this element for the same reasons. d. Neither Mayle nor Narayen nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) 95 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 183. I note that Petitioner fails to specifically discuss Mayle's or Narayen's alleged disclosure of "a pre-processor that pre-processes said identified files. . . in preparation for transmission," instead equating this limitation to Claim 1, elements d, e. (Pet., p. 48.) I disagree with Petitioner. Claim 1 does not recite the limitation "in preparation for transmission." (See '515 pat., claim 1.) Petitioner does not attempt to cite any teaching in Mayle or Narayen of "pre-process[ing] . . . in preparation for transmission" or provide reasoning to support its assertion of equivalence of that limitation to the cited limitation of claim 1. Furthermore, the preview images discussed in Mayle (Mayle, 13:59–14:8) and the scaled images discussed in Narayen (Narayen, 9:45–47) are for viewing by the user on the client, not for distribution to others, and accordingly, this limitation is not met by Mayle and Narayen. In my opinion, Petitioner cannot meet its burden to show that this limitation is taught or suggested by Mayle in view of Narayen. 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Mayle and Narayen. 184. Each of the challenged dependent claims depends on an independent claim, each of which as I discussed above, have not been shown invalid by the combination of Mayle and Narayen. Accordingly, neither Mayle nor Narayen nor their combination discloses these dependent claims for the same reasons. 96 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 XIII. SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS 185. In my opinion, Summit 6 and its predecessors solved a long-felt but unresolved need for a web-based media submission tool that pre-processes media prior to submission in an easy, convenient, and intuitive manner. Summit 6 achieved significant commercial success in developing its products embodying the technology claimed in the '482 and '515 Patents, obtained licenses, and received a wide array of industry recognition. 186. In my opinion, Rimfire's Prepare & PostTM Tools were specifically referenced in the specification of the '515 Patent and are part of the browser-based system that embodies the challenged claims. Rimfire, including the Prepare & PostTM Tools, performs each of the limitations of the challenged claims, including:  Pre-processing images such as sizing, cropping, rotating, and reformating images to customer specifications before uploading. (Ex. 2010, pgs.13, 22; Ex. 2014, pgs. 3, 6–8). These features are present in each independent claim challenged ('482 pat. at Claims 12, 13, 24, 25, 35–38; '515 pat. at Claims 1, 20 23, and 39).  Uploading image files to servers for distribution. (Ex. 2010, p. 5; Ex. 2014, pgs. 3, 6). This feature is present in each independent claim challenged ('482 pat. at Claims 12, 13, 24, 25, 35–38; '515 pat. at Claims 1, 20, 23, and 39).  Preparation of thumbnail images. (Ex. 2010, p. 4; Ex. 2015, p. 6). This feature is present in dependent claim 35 of the '482 patent and claims 6 and 28 of the '515 patent. 97 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82  Server receipt and validation of Rimfire account information for the customer. (Ex. 2014, p. 6). This feature is present in each independent claim challenged ('515 pat. at Claims 1, 20, 23, and 39).  Server transmission of an identifier associated with the user. (Ex. 2010, pgs. 23-24, 43). This feature is found in dependent claims 2, 26 of the '515 patent.  Reporting status of the transmission of pre-processed files. (Ex. 2010, pgs. 17–18). This feature is present in dependent claims 19 and 38 of the '515 patent. 187. In my opinion, Rimfire, including the Prepare & PostTM Tools, contain each component of the challenged claims. For example, as shown in my report, Rimfire, including the Prepare & Post™ Tools,meets the limitations of claim 12 of the '482 patent. Rimfire, including the Prepare & Post Tools, allows users to pre- process selected images to a specified height and width thereby meeting the "receiving pre-processing parameters," "receiving an identification," and "pre- processing" limitations of claim 12. Additionally, Rimfire allows a user to submit an image to a remote device, via, e.g., a "submission button," and thereby meeting the "transmitting" limitation of claim 12. In my opinion, Rimfire also meets the limitations of challenged claims 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the '482 patent. Similarly, in my opinion, the Rimfire meets the limitations of claim 1 of the '515 patent. Rimfire allows users to pre-process selected images to a specified height and width thereby meeting the "receiving an identification," 98 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 and "pre-processing using received pre-processing parameters" limitations of claim 1. Additionally, Rimfire allows a user to submit an image to a remote device, via, e.g., a "submission button," and thereby meeting the "receiving a confirmation of intent" and "transmitting" limitation of claim 12. TRimfire also sends user identification and password information for access to an account. In my opinion, Rimfire, including the Prepare & Post™ Tools, also meets the limitations of remaining challenged claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, 39 of the '515 patent. Therefore Rimfire, including thePrepare & PostTM Tools is at least "reasonably commensurate with the scope" of the challenged claims. A. Rimfire, Including the Prepare and Post Tools, Embody Claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the '482 Patent. 1. Independent Claim 12 188. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 12 of the '482 patent. a. 12. A computer implemented method of pre-processing media objects in a local device for subsequent transmission to a remote device, comprising: 189. As discussed in Rimfire Functional Specification Verson 1.0 Feature Set, the Prepare & Post tools in the Rimfire System is a computer implemented method of pre-processing media objects in a local device and thus meets the preamble. (Ex. 2010, 4 ("The Rimfire system is a set of services and tools that make it easy for businesses to submit, access and control mission critical media 99 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 content over the Internet. For businesses interested in browser-based picture submission, the system provides an easy solution for moving pictures over the Internet from point A to point B. Using PictureWorks's Prepare & Post tool to submit pictures from a standard browser, the Rimfire system offers a highly available and efficient alternative to manual processing of media in order to incorporate media into clients' server-based web pages. The Rimfire system uses customer-defined filters for sizing and enhancing images targeted for distribution to clients and their affiliates. All image enhancement is completed before media is delivered to the client using PictureWorks MediaPush technology.").) In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble of this claim. b. a. receiving pre-processing parameters from a remote device, said pre-processing parameters including a specification of an amount of media data; 190. Rimfire, including the Prepare and Post tools, receives pre-processing parameters from a remote device. The "ScaleImage" interface in the PWImageControl Interface and in the PWImgApplet.jar and includes width (destWidth) and height (destHeight) parameters in the browser code specify an amount of media data. (Ex. 2010, pp. 22, 26.) These parameters specify the width and height of the image to be pre-processed by the user's browser, and therefore specify and amount of media data. These parameters facilitate the ability of the 100 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 browser to scale the image. (Ex. 2010, p. 21; see also Ex. 2014, Rimfire: The End- to-End Imaging Solution for Content Capture and Delivery, p. 11 ("Functionality of the Rimfire client is ultimately determined by the requirements of the end-user's preferred browser. To accommodate Netscape and Internet Explorer users, the Rimfire client has built-in intelligence to transparently identify the browser and then provide the appropriate controls on the submission page. In most instances, client-side processing is implemented by downloading either an ActiveX control or a Java applet (depending on the browser) on the user's system. This is called the full-browse implementation of RSAPI."); see also Ex. 2014 at 7 ("Rimfire automatically captures, sizes and formats images to customer specifications before uploading to Rimfire servers for additional transformation, storage and distribution."). In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. c. b. receiving an identification of a group of one or more media objects for transmission, a collective media data of said group of one or more media objects being limited by said received pre-processing parameters; 191. Rimfire has "image wells" that allow a user to identify a group of digital images for pre-processing and transmission. As discussed above, the pre- processing is performed on media objects such as images and the pre-processing is based on applying the received pre-processing parameters to the identified media objects. (Ex. 2014 at 9 ("Image wells - These controls provide Rimfire's patent- 101 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 pending drag-and-drop functionality for adding images. The user simply drags an image file from a location on their local drive to an image well on the customer's Web submission page. The customer may elect to add one or more image wells to the page."); see also Ex. 2014 at 12 ("Drag-and-drop - The user can add an image to the submission page by simply dragging an image file from their local system and dropping it into a submission control (an image well) on the submission page.", "Browse dialog - The user clicks an image well in the submission page which opens a browse dialog from which the user selects and adds an image file."); see also Ex. 2010, p. 21 ("Ability to select and (depending on the capabilities of the browser) to view images."). The images that are selected are pre-processed as discussed in the next claim element. In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. d. c. pre-processing said identified group of one or more media objects using said received pre-processing parameters, wherein said pre-processing comprises encoding or otherwise converting said media object; and 192. Rimfire provides client-side pre-processing, where the pre-processing includes encoding or converting media objects. The pre-processing is based on received pre-processing parameters. The pre-processing resizes or otherwise converts the identified media objects. (Ex. 2014, p. 7 ("Rimfire automatically captures, sizes and formats images to customer specifications before uploading to Rimfire servers for additional transformation, storage and distribution."), p. 10 102 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 ("When an end-user submits an image via a Rimfire-enabled Web page, a copy of that image (already properly sized and formatted on the client to specific standards set by the recipient Web site) is transmitted to the Rimfire Server."), p. 11 ("Client- side image processing encompasses any automated image handling specified by the customer, such as image resizing" and "conversion of graphical formats. A real benefit of client-side processing is that it frees the server from unnecessary processing overhead and bandwidth expense."); Ex. 2010 at 13 ("Client-side scaling refers to setting the desired image size and quality before the image is submitted to Rimfire Central from a web browser. Where possible (i.e., where the browser supports scriptable components and where we have appropriate instructions on scaling from the client), we will scale down the image to our client's specifications (gleaned from the Rimfire repository) before transmitting it. Client-side scaling is discussed further in the Detailed Software Design section. In addition to sizing an image on client side, the image can also be converted to any of the supported formats before being sent. Typically, a bitmap would be converted to the JPEG format in order to achieve maximum compression. This would dramatically reduce the amount of time required to upload the image to the server."). In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. e. d. transmitting said pre-processed group of one or more media objects to the remote device. 103 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 193. Rimfire transmits the pre-processed media objects (e.g., images) to a remote device such as a server. (Ex. 2014, p. 7 ("As the world's first and only dynamic imaging infrastructure, PIXcast with Rimfire stands alone in providing a solution for collecting, managing, and delivering user media to customers around the globe."), p. 10 ("When an end-user submits an image via a Rimfire-enabled Web page, a copy of that image (already properly sized and formatted on the client to specific standards set by the recipient Web site) is transmitted to the Rimfire Server."; "A submission button - This control is a regular HTML button that calls into RSAPI and informs it that there are images in the image wells that are ready to be uploaded to the Rimfire Server."; "An upload handler - This component is the send control that performs the submission of images to the Rimfire server when the user clicks the submission button."), p. 11 ("Submission, as discussed earlier, is the user's ability to upload images to the Rimfire Server."), p. 8 ("Rimfire technology allows eBay users to instantly upload and display images of their auction items directly in the eBay site.), p. 16 ("Rimfire's bulk upload feature is a business-to- business solution for customers who need to transfer and process vast groups of media in an automated fashion. It simplifies the submission process by allowing media to come to the client in large batches rather than singly as in the standard upload. The bulk upload feature is a system administrator's tool that is optionally available in two implementations:").) 104 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 194. The SubmitMediaRequest command "[t]ransfers a media item to the Rimfire servers," (Ex. 2010 at 23, 28) which is an example command for transferring images to a server. (See also Ex. 2010, p. 4 ("A submission page can handle as many photos on one page as is required by the customer. No need to submit photos one at a time."), p. 5 ("Customers have a uniform, reliable and secure channel for media acquisition. Partners who integrate media content into their web site can rely on the Rimfire System to deliver media according to their specific delivery requirements.").) In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. 2. Independent Claim 13 195. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 13 of the '482 patent. a. 13. A computer implemented method of pre-processing digital content in a client device for subsequent electronic publishing, comprising. 196. See my analysis above for claim 12 (Section XIII.A.2.a). In my opinion, Rimfire, including the Prepare and Post tools, system meets the preamble. b. a. receiving an identification of digital content, said digital content including one or more of image content, video content, and audio content. 105 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 197. See my analysis above for "receiving an identification" element (Section XIII.A.1.c) of claim 12. In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. c. b. pre-processing said identified digital content at said client device in accordance with one or more pre-processing parameters that are received from a device separate from said client device to produce pre-processed digital content, said one or more pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication to one or more devices that are remote from a server device and said client device. 198. See my analysis above for "pre-processing" element (Section XIII.A.1.d) of claim 12. The pre-processing is performed in accordance with received pre-processing parameters such as the ScaleImage interface. (See Ex. 2014, p. 3 ("Automatically preparing media for use on the Internet prior to delivery and storage."), p. 7 ("When an end-user submits an image via a Rimfire-enabled Web page, a copy of that image (already properly sized and formatted on the client to specific standards set by the recipient Web site) is transmitted to the Rimfire Server."), p. 20 ("Image submission is easy thanks to extensible RSAPI implementations. Understanding terms like JPEG, resolution, sizing, FTP, hosting and others is not necessary. Rimfire automatically manages all processing and transformation tasks associated with images."); Ex. 2010, p. 21 ("Ability to scale and set the quality of images.).) In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. 106 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 d. c. retrieving information that enables identification of a user, said retrieved information being available to said client device prior to said received identification. 199. In my opinion, Rimfire, including the Prepare and Post tools meets this limitation. For example, the SubmitMediaRequest command includes a UserID and Passwords as strings. (Ex. 2010 at 23, 28.) The userID identifies a user, and this userID is available before the received identification because it is part of the browser interface. Ex. 2014, p. 5 ("iPIX provides the customer with a valid Rimfire account and a Rimfire Submission Pack. The Submission Pack contains everything that the developer needs to activate a new account and "Rimfire-enable" the site."), p. 19 ("When a new customer begins using the Rimfire infrastructure, a new account profile(s) is created in the database to control, authorize, process and distribute media for a particular customer per their specific requirements."). In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. e. d. transmitting a message from said client device to said server device for subsequent publishing device to said one or more devices that are remote from said server device and said client device, said transmitted message including said pre-processed digital content and said retrieved information. 200. See my analysis above for the "transmitting limitation" (XIII.A.1.e) of claim 12, including the SubmitMedia Request command. Rimfire client, including the Prepare and Post Tools, transmits a message to a server for subsequent 107 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 publishing to devices such as other computers that are remote from the server device. The transmitted message includes the pre-processed image and userID information. The server that receives the pre-processed image also receives user identifiable information. (Ex. 2014, p. 10 ("The server first validates the Rimfire account information for the customer."), p. 9 ("iPIX provides the customer with a valid Rimfire account and a Rimfire Submission Pack. The Submission Pack contains everything that the developer needs to activate a new account and "Rimfire-enable" the site."), p. 19 ("When a new customer begins using the Rimfire infrastructure, a new account profile(s) is created in the database to control, authorize, process and distribute media for a particular customer per their specific requirements.").) 201. The Rimfire server checks the user ID and password to look up an associated account record. (Ex. 2010, p. 43 ("When the submission arrives at Rimfire, the userID and password are used to lookup the associated Account record (1 above). Once we have identified the Account, we use the AccountID and service name (e.g., "MIRROR") to find the ServiceLink record associated with the account for the 'MIRROR' service (2 above.)".).) In my opinion, Rimfire, including the Prepare and Post tools, meets this limitation. 108 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 3. Dependent Claim 16 202. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of dependent claim 16. I incorporate my analysis of claim 13 into my analysis of claim 16 below. a. 16. The method of claim 13, wherein said pre-processing comprises pre-processing in accordance with one or more pre- processing parameters that have been previously downloaded to said client device. 203. See my analysis of claim 12, including the "receiving pre-processing parameters" (Section XIII.A.1.b) and "preprocessing" elements (Section XIII.A.1.d), and my analysis of claim 13, including the "pre-processing" element (Section XIII.A.2.c). For example, the ScaleImage" interface uses parameters that have been downloaded to the browser. The parameters in the ScaleImage interface have been previously downloaded to the Rimfire client. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of claim 13 of the '482 patent. 4. Dependent Claim 18 204. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of dependent claim 18. I incorporate my analysis of claim 13 into my analysis of claim 18 below. a. 18. The method of claim 13, wherein said pre-processing comprises pre-processing in accordance with one or more pre- 109 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 processing parameters that have been stored in memory of said client device prior to said identification. 205. See my analysis of claim 12, including the "receiving pre-processing parameters," "identification," and "preprocessing" elements (Sections XIII.A.1.B– XIII.A.1.d), and my analysis of claim 13, including the "identification" and "pre- processing" elements (Sections XIIIA.2.b and XIII.A.2.c). For example, the ScaleImage" interface uses parameters that have been downloaded to the browser. During execution of the browser code, those parameters are stored in memory. The image identification by the user occurs after the pre-processing parameters have been stored in memory, as that enables the client to pre-process the identified image content. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of claim 18 of the '482 patent. 5. Dependent Claim 19 206. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of dependent claim 19. I incorporate my analysis of claim 13 into my analysis of claim 19 below. a. 19. The method of claim 13, wherein said retrieving comprises retrieving a user identifier. 207. See my analysis of "retrieving information" element of claim 13 (Section XIII.A.2.d). In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of claim 19 of the '482 patent. 110 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 6. Dependent Claim 21 208. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of dependent claim 21. I incorporate my analysis of claim 13 into my analysis of claim 21 below. a. 21. The method of claim 13, wherein said retrieving comprises retrieving in a manner that is transparent to said user. 209. See "retrieving" element of claim 13 (Section XIII.A.2.d). See also Ex. 2014, p. 9 ("iPIX provides the customer with a valid Rimfire account and a Rimfire Submission Pack. The Submission Pack contains everything that the developer needs to activate a new account and 'Rimfire-enable' the site."), p. 19 ("When a new customer begins using the Rimfire infrastructure, a new account profile(s) is created in the database to control, authorize, process and distribute media for a particular customer per their specific requirements."). The userID and password information is transparently included in the SubmitMediaRequest command as UserID and Passwords strings. (Ex. 2010 at 23, 28.) In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of claim 21 of the '482 patent. 7. Dependent Claim 22 210. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of dependent claim 22. I incorporate my analysis of claim 13 into my analysis of claim 22 below. 111 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 a. 22. The method of claim 13, wherein said one or more pre- processing parameters enable said client device to place said digital content into a specified form in preparation for publication to one or more devices on which said digital content is to be electronically displayed. 211. See my analysis of the "pre-processing" element of claim 13 (Section XIII.A.2.c). Rimfire pre-processes the image according to the requirements of the server. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of claim 22 of the '482 patent. 8. Dependent Claim 23 212. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of dependent claim 23. I incorporate my analysis of claim 13 into my analysis of claim 23 below. a. 23. The method of claim 13, wherein said pre-processing comprises resizing said digital content. 213. See my analysis of the "pre-processing" element of claim 13 (Section XIII.A.2.c). See also the "ScaleImage" interface in the PWImageControl Interface and in the PWImgApplet.jar and includes width (destWidth) and height (destHeight) parameters. (Ex. 2010, pp. 22, 26.) The ScaleImage interface resizes the image. In my opinion, Rimfire, including the Prepare and Post tools, meets the limitations of claim 23 of the '482 patent. 112 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 9. Independent Claim 24 214. In my opinion, Rimfire, including the Prepare and Post Tools, meets each of the limitations of claim 24 of the '482 patent. a. 24. A computer implemented method of pre-processing media objects in a local device for subsequent transmission to a remote device, comprising: 215. See my analysis of claim 12 of the '482 patent, including the discussion of the "pre-processing" (Section XIII.A.1.d) and "transmitting" elements (Section XIII.A.1.e). In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble of this claim. b. a. receiving an identification of a media object for transmission to said remote device; 216. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 12 of the '482 patent, including "receiving an identification" element (Section XIII.A.1.c). c. b. pre-processing said identified media object at said local device in accordance with one or more pre-processing parameters that are received from a device separate from said client device to produce a pre-processed media object, wherein said pre-processing comprises changing a file format of said media object; 217. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 12 of the '482 patent, including "pre- processing" element (Section XIII.A.1.d). 113 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 d. c. retrieving information that enables identification of a user, said retrieved information being available to said local device prior to said received identification; and 218. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 13 of the '482 patent, including "retrieving information" element (Section XIII.A.2.d). e. d. transmitting a message from said local device to said remote device, said transmitted message including said pre- processed media object and said retrieved information. 219. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 13 of the '482 patent, including "transmitting" element (Section XIII.A.2.e). 10. Independent Claim 25 220. In my opinion, Rimfire, including the Prepare and Post Tools, meets each of the limitations of claim 25 of the '482 patent. a. 25. A computer implemented method of pre-processing media objects in a local device for subsequent transmission to a remote device, comprising: 221. See my analysis of claim 12 of the '482 patent, including the discussion of the "pre-processing" and "transmitting" elements (Section XIII.A.1.a, XIII.A.1.d, XIII.A.1.e). In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble of this claim. b. a. receiving an identification of a media object for transmission to said remote device; 114 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 222. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 12 of the '482 patent, including "receiving an identification" element (Section XIII.A.1.c). c. b. pre-processing said identified media object at said local device in accordance with one or more pre-processing parameters that are received from a device separate from said client device to produce a pre-processed media object, wherein said pre-processing comprises encoding or otherwise converting said media object; 223. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 12 of the '482 patent, including "pre- processing" element (Section XIII.A.1.d). d. c. retrieving information that enables identification of a user, said retrieved information being available to said local device prior to said received identification; and 224. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 13 of the '482 patent, including "retrieving information" element (Section XII.A.2.d). e. d. transmitting a message from said local device to said remote device, said transmitted message including said pre- processed media object and said retrieved information. 225. In my opinion, Rimfire, including the Prepare and Post Tools, meets this element. See my analysis of claim 13 of the '482 patent, including "transmitting" element (Section XIII.A.2.e). 115 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 11. Independent Claim 35 226. In my opinion, Rimfire, including the Prepare and Post Tools, meets each of the limitations of claim 25 of the '482 patent. a. 35. A computer implemented method for pre-processing digital content at a client device for subsequent electronic publishing, comprising: 227. See my analysis of claim 12 of the '482 patent, including the discussion of the "pre-processing" (Section XIII.A.1.d) and "transmitting" elements (Section XIII.A.1.e). In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble. b. a. receiving a command that moves a graphical user interface element in a graphical user interface displayed at said client device, said received command enabling selection of digital content, said digital content including one or more of image content, video content, and audio content; 228. In my opinion, Rimfire, including the Prepare and Post tools, meets this element. The graphical user interface provided by Rimfire and the Prepare and Post tools allows a user to select images to put in image wells. The selection is a command that moves a GUI element for image selection. (Ex. 2014, p. 9 ("Rimfire submission controls are a combination of GUI image well controls and 'send' components that are instantiated in the customer's Web page after their values are defined in the integration code. These controls are the elements that allow the end-user to submit images to the Rimfire Server. They include: . . . 116 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Image wells - These controls provide Rimfire's patent-pending drag-and-drop functionality for adding images. The user simply drags an image file from a location on their local drive to an image well on the customer's Web submission page. The customer may elect to add one or more image wells to the page."), p. 12 ("Drag-and-drop - The user can add an image to the submission page by simply dragging an image file from their local system and dropping it into a submission control (an image well) on the submission page.").) c. b. pre-processing said selected digital content in accordance with one or more pre-processing parameters that are received from a remote device to produce pre-processed digital content, said one or more pre-processing parameters enabling said client device to place said digital content into a specified form in preparation for publication to one or more devices that are remote from a server device and said client device; 229. See my analysis of claim 13 of the '482 patent, including the discussion of the "pre-processing" element (XIII.A.2.c). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. d. c. displaying a preview image of said selected digital content, said preview image having a reduced size relative to said selected digital content; and 230. Rimfire, including the Prepare and Post Tools, displays preview images in the form of thumbnail images having a reduced size relative to the digital image. (Ex. 2014, p. 10 ("In addition to specifying the values for submission controls, customers may also elect to set parameters in their integration 117 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 code that specify custom features such as. . . Dynamic thumbnails."), p. 7 ("Rimfire also allows customers to enhance the presentation of images with graphic layering (adding watermarks or banners), thumbnail creation, image editing (on the client), multiple image delivery, and interactive PhotoMoviesTM.").) In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 6 of the '482 patent. e. d. transmitting a message that includes said pre-processed digital content to said server device for subsequent publishing to said one or more devices that are remote from said server device and said client device. 231. See my analysis of claim 13 of the '482 patent, including the discussion of the "transmitting" element (Section XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 12. Independent Claim 36 232. In my opinion, Rimfire, including the Prepare and Post Tools, meets each limitation of this claim. a. 36. A computer implemented method of publishing digital content that has been pre-processed by a client device, comprising: 233. See my analysis of claim 12 of the '482 patent, including the discussion of the "pre-processing" (Section XIII.A.1.c) and "transmitting" elements (Section XIII.A.1.e). In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble. 118 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 b. a. receiving, from said client device, a pre-processed group of one or more items of digital content that includes one or more of image content, video content, and audio content, wherein a collective digital content of said group of one or more items of digital content is limited by a specification of an amount of digital content, said group of one or more items of digital content being pre-processed in accordance with pre- processing parameters that were provided to said client device by a device separate from said client device, said pre- processing parameters controlling said client device in a placement of said identified group of one or more items of digital content into a specified form in preparation for distribution to one or more devices that are remote from a server device and said client device; and 234. See my analysis of claim 13 of the '482 patent, including the discussion of the "pre-processing" element (XIII.A.2.c). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. c. b. distributing, by said server device via an electronic network, information based on said pre-processed group of one or more items of digital content to one or more devices that are remote from said server device and said client device. 235. See my analysis of the "transmitting" element in claim 12 of the '482 patent (Section XIII.A.1.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 13. Independent Claim 37 236. In my opinion, Rimfire, including the Prepare and Post Tools, meets each of the limitations of claim 37. 119 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 a. 37. A computer implemented method of distributing digital content that has been pre-processed by a client device, comprising: 237. See my analysis of claim 12 of the '482 patent, including the discussion of the "pre-processing" (Section XIII.A.1.c) and "transmitting" elements (Section XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble of this claim. b. a. receiving, from said client device, pre-processed digital content that includes one or more of image content, video content, and audio content, and information retrieved by said client device that enables identification of a user, said retrieved information being available to said client device prior to an identification of said digital content at said client device, wherein said digital content is pre-processed by said client device in accordance with pre-processing parameters that were provided to said client device by a device separate from said client device, said pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for distribution to one or more devices that are remote from a server device and said client device; and 238. See my analysis of claim 13 of the '482 patent, including the discussion of the "pre-processing" and "transmitting" elements (XIII.A.2.c, XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. c. b. distributing, by said server device via an electronic network, information based on said pre-processed digital content to one or more devices that are remote from said server device and said client device. 120 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 239. See my analysis of the "transmitting" element in claim 12 of the '482 patent (Section XIII.A.1.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 14. Independent Claim 38 240. In my opinion, Rimfire, including the Prepare and Post Tools, meet each of the limitations of claim 38. a. 38. A computer implemented method for pre-processing digital content in a client device for subsequent electronic distribution, comprising: 241. See my analysis of claim 13 of the '482 patent, including the discussion of the "transmitting" element (Section XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets the preamble. b. a. initiating, by said client device, a transfer of digital content from said client device to a server device, said digital content including one or more of image content, video content, and audio content; 242. See my analysis of claim 13 of the '482 patent, including the discussion of the "transmitting" element (Section XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. c. b. pre-processing said digital content at said client device in accordance with one or more pre-processing parameters, said one or more pre-processing parameters being provided to said client device from a device separate from said client device, said one or more pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication to one or more 121 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 devices that are remote from a server device and said client device; and 243. See my analysis of claim 13 of the '482 patent, including the discussion of the "pre-processing" element (XIII.A.2.c). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. d. c. transmitting a message from said client device to said server device for subsequent distribution to said one or more devices that are remote from said server device and said client device, said transmitted message including said pre-processed digital content. 244. See my analysis of claim 13 of the '482 patent, including the discussion of the "transmitting" element (Section XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 15. Dependent Claim 40 245. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 40 of the '482 patent. I incorporate my analysis of claim 38 into my analysis of claim 40 below. a. 40. The method of claim 38, further comprising receiving an identification of said digital content for transmission prior to said pre-processing. 246. See my analysis of claim 13 of the '482 patent, including the discussion of the "transmitting" element and my analysis of claim 12 of the '482 patent, including the "receiving an identification" element (Sections XIII.A.1.c and 122 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 XIII.A.2.e). In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 16. Dependent Claim 41 247. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 41 of the '482 patent. I incorporate my analysis of claim 38 into my analysis of claim 41 below. a. 41. The method of claim 38, wherein said pre-processing comprises reducing a file size or compressing said digital content. 248. The ScaleImage interface in the PWImageControl Interface and in the PWImgApplet.jar and includes width (destWidth) and height (destHeight) parameters. (Ex. 2010, pp. 22, 26.) In my opinion, the ScaleImage interface can reduce a file size. (See also Ex. 2014, p. 11 ("Client-side image processing encompasses any automated image handling specified by the customer, such as image resizing" and "conversion of graphical formats.").) Rimfire provides a quality factor that can reduce the size of an image before transmission. (See Ex. 2010 at 13 ("Client-side scaling refers to setting the desired image size and quality before the image is submitted to Rimfire Central from a web browser. Where possible (i.e., where the browser supports scriptable components and where we have appropriate instructions on scaling from the client), we will scale down the image to our client's specifications (gleaned from the Rimfire repository) before 123 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 transmitting it. Client-side scaling is discussed further in the Detailed Software Design section. In addition to sizing an image on client side, the image can also be converted to any of the supported formats before being sent. Typically, a bitmap would be converted to the JPEG format in order to achieve maximum compression. This would dramatically reduce the amount of time required to upload the image to the server.").) In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 17. Dependent Claim 42 249. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 42 of the '482 patent. I incorporate my analysis of claim 38 into my analysis of claim 38 below. a. 42. The method of claim 38, wherein said pre-processing comprises resizing said digital content. 250. Rimfire allows pre-processing that can reduce the size of an image, including reducing the width and height of an image, or setting the quality of an image. The ScaleImage interface in the PWImageControl Interface and in the PWImgApplet.jar and includes width (destWidth) and height (destHeight) parameters. (Ex. 2010, pp. 22, 26.) In my opinion, the ScaleImage interface can reduce a file size. (See Ex. 2014 at 11 ("Client-side image processing encompasses any automated image handling specified by the customer, such as image resizing" and "conversion of graphical formats.").) Rimfire provides a quality factor that 124 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 can reduce the size of an image before transmission. (See Ex. 2010 at 13 ("Client- side scaling refers to setting the desired image size and quality before the image is submitted to Rimfire Central from a web browser. Where possible (i.e., where the browser supports scriptable components and where we have appropriate instructions on scaling from the client), we will scale down the image to our client's specifications (gleaned from the Rimfire repository) before transmitting it. Client-side scaling is discussed further in the Detailed Software Design section. In addition to sizing an image on client side, the image can also be converted to any of the supported formats before being sent. Typically, a bitmap would be converted to the JPEG format in order to achieve maximum compression. This would dramatically reduce the amount of time required to upload the image to the server.").) In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 18. Dependent Claim 44 251. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 44 of the '482 patent. I incorporate my analysis of claim 38 into my analysis of claim 44 below. a. 44. The method of claim 38, wherein said transmitted message includes identifying information for said digital content. 252. Rimfire allows a message identifier for the transmitted digital content. (Ex. 2014, p. 10 ("A URL to the location of each image is created and returned to 125 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 the client via a hidden field in the Web application. This hidden field is what allows the end-user to see the images on the client's Web pages.").) The fileName is a string that identifies the name of file shown in the image well. (Ex. 2010, pp. 22, 26; see also id. at 23, 24, 28, 29 (submitMediaRequest (showing that this command includes a file name parameter) and submitGroupRequest (showing that this command includes a file name parameter).) In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 19. Dependent Claim 45 253. In my opinion, Rimfire, including the Prepare and Post Tools meets the limitations of claim 45 of the '482 patent. I incorporate my analysis claim 44 into my analysis of claim 45 below. a. 45. The method of claim 44, wherein said identifying information is retrieved from storage in said client device. 254. When the media object is submitted to the Rimfire server, the file name is retrieved from storage and placed in the interface for transmission. (Ex. 2014, p. 10 ("A URL to the location of each image is created and returned to the client via a hidden field in the Web application. This hidden field is what allows the end-user to see the images on the client's Web pages.").) The fileName is a string that identifies the name of file shown in the image well. (Ex. 2010, pp. 22, 26; see also id. at 23, 24, 28, 29 (submitMediaRequest (showing that this command includes a file name parameter) and submitGroupRequest (showing that this 126 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 command includes a file name parameter).) In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 20. Dependent Claim 46 255. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 46 of the '482 patent. I incorporate my analysis of claim 45 into my analysis of claim 46 below. a. 46. The method of claim 45, wherein said identifying information includes a file name. 256. See my analysis of dependent claim 44 of the '482 patent describing filenames. In my opinion, Rimfire, including the Prepare and Post tools, meets this element. 21. Dependent Claim 49 257. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 49 of the '482 patent. I incorporate my analysis of claim 45 into my analysis of claim 49 below. a. 49. The method of claim 45, wherein said identifying information includes user information. 258. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 40 of the '482 patent. 127 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 259. See my analysis of claim 13 of the '482 patent, including the discussion of the "retrieving information that enables identification of a user" element (Section XIII.A.2.d). B. Rimfire, Including the Prepare and Post Tools, Embody Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 of the '515 Patent. 1. Independent Claim 1 260. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 1 of the '515 patent. a. 1. A method for pre-processing in a client device, comprising the following computer implemented steps: 261. As discussed in Rimfire Functional Specification Verson 1.0 Feature Set, Rimfire, including the Prepare & Post Tools, meets the preamble. (Ex. 2010, p. 4 ("The Rimfire system is a set of services and tools that make it easy for businesses to submit, access and control mission critical media content over the Internet. For businesses interested in browser-based picture submission, the system provides an easy solution for moving pictures over the Internet from point A to point B. Using PictureWorks Prepare & Post tool to submit pictures from a standard browser, the Rimfire system offers a highly available and efficient alternative to manual processing of media in order to incorporate media into clients' server-based web pages. The Rimfire system uses customer-defined filters for sizing and enhancing images targeted for distribution to clients and their 128 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 affiliates. All image enhancement is completed before media is delivered to the client using PictureWorks MediaPush technology.").) b. transmitting information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; 262. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. The Rimfire system transmits user identification information to a server for access to an account. For example, the SubmitMediaRequest command includes a UserID and Passwords as strings. (Ex. 2010, pp. 23, 28.) 263. Further support is provided at p. 9 of Ex. 2014 ("iPIX provides the customer with a valid Rimfire account and a Rimfire Submission Pack. The Submission Pack contains everything that the developer needs to activate a new account and "Rimfire-enable" the site."); at 19 ("When a new customer begins using the Rimfire infrastructure, a new account profile(s) is created in the database to control, authorize, process and distribute media for a particular customer per their specific requirements."). 264. The Rimfire server checks the user ID and password to look up an associated account record. (Ex. 2010 at 43 ("When the submission arrives at Rimfire, the userID and password are used to lookup the associated Account record (1 above). Once we have identified the Account, we use the AccountID and service name (e.g., "MIRROR") to find the ServiceLink record associated with the 129 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 account for the 'MIRROR' service (2 above.)".) The user ID and password are transmitted and are used to access account information upon the receipt of an identifier such as the userID and password. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. c. receiving an identification of one or more image files, video files or audio files to associate with said account; 265. Rimfire, including the Prepare and Post Tools, has "image wells" that allow a user to identify a group of digital images for pre-processing and transmission. As discussed above, the pre-processing occurs based on the received pre-processing parameters. (Ex. 2014 at 9 ("Image wells - These controls provide Rimfire's patent-pending drag-and-drop functionality for adding images. The user simply drags an image file from a location on their local drive to an image well on the customer's Web submission page. The customer may elect to add one or more image wells to the page.").) See id. at 12 ("Drag-and-drop - The user can add an image to the submission page by simply dragging an image file from their local system and dropping it into a submission control (an image well) on the submission page.", "Browse dialog - The user clicks an image well in the submission page which opens a browse dialog from which the user selects and adds an image file."); see also Ex. 2010, p. 21 ("Ability to select and (depending on the capabilities of the browser) to view images.").) 130 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 266. A URL is established for a pre-processed image and a filename string is transmitted to identify an image. (Ex. 2014, p. 10. ("A URL to the location of each image is created and returned to the client via a hidden field in the Web application. This hidden field is what allows the end-user to see the images on the client's Web pages.").) The fileName is a string that identifies the name of file shown in the image well. (Ex. 2010, pp. 22, 26; see also id. at 23, 24, 28, 29 (submitMediaRequest (showing that this command includes a file name parameter) and submitGroupRequest (showing that this command includes a file name parameter).). The server receives the images that have been selected. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. d. receiving, by said client device, a confirmation of an intent to associate said one or more image files, video files or audio files with said account; 267. Rimfire, including the Prepare and Post Tools, allows a user to select (by dragging) image files to an image well, which is followed thereafter by selection of a submission button to transmit the images to a server. By selecting the submission button, the user confirms and intent to associate image files with an account. (Ex. 2014 at 9 ("Image wells - These controls provide Rimfire's patent- pending drag-and-drop functionality for adding images. The user simply drags an image file from a location on their local drive to an image well on the customer's Web submission page. The customer may elect to add one or more image wells to 131 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 the page."), p. 10 ("A submission button - This control is a regular HTML button that calls into RSAPI and informs it that there are images in the image wells that are ready to be uploaded to the Rimfire Server" and "An upload handler - This component is the send control that performs the submission of images to the Rimfire server when the user clicks the submission button.").) In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. e. pre-processing said identified one or more image files, video files or audio files using pre-processing parameters received from a remote server, said received pre-processing parameters enabling said client device to pre-process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device; and 268. Rimfire, including the Prepare and Post Tools, provides client-side pre-processing, including encoding or converting media objects. The pre- processing is based on received pre-processing parameters. The files are pre- processed to meet the requirements of a distributing party. (Ex. 2014 at 7 ("Rimfire automatically captures, sizes and formats images to customer specifications before uploading to Rimfire servers for additional transformation, storage and distribution."), p. 10 ("When an end-user submits an image via a Rimfire-enabled Web page, a copy of that image (already properly sized and formatted on the client to specific standards set by the recipient Web site) is 132 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 transmitted to the Rimfire Server."), p. 11 ("Client-side image processing encompasses any automated image handling specified by the customer, such as image resizing" and "conversion of graphical formats. A real benefit of client-side processing is that it frees the server from unnecessary processing overhead and bandwidth expense."); Ex. 2010, p. 13 ("Client-side scaling refers to setting the desired image size and quality before the image is submitted to Rimfire Central from a web browser. Where possible (i.e., where the browser supports scriptable components and where we have appropriate instructions on scaling from the client), we will scale down the image to our client's specifications (gleaned from the Rimfire repository) before transmitting it. Client-side scaling is discussed further in the Detailed Software Design section. In addition to sizing an image on client side, the image can also be converted to any of the supported formats before being sent. Typically, a bitmap would be converted to the JPEG format in order to achieve maximum compression. This would dramatically reduce the amount of time required to upload the image to the server.").) In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 269. See also Ex. 2014 at p. 3 ("Automatically preparing media for use on the Internet prior to delivery and storage."), at p. 7 ("When an end-user submits an image via a Rimfire-enabled Web page, a copy of that image (already properly sized and formatted on the client to specific standards set by the recipient Web 133 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 site) is transmitted to the Rimfire Server."), and at p. 20 ("Image submission is easy thanks to extensible RSAPI implementations. Understanding terms like JPEG, resolution, sizing, FTP, hosting and others is not necessary. Rimfire automatically manages all processing and transformation tasks associated with images."); Ex. 2010, at 21 ("Ability to scale and set the quality of images.) In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. f. transmitting said pre-processed one or more image files, video files or audio files. 270. Rimfire, including the Prepare and Post Tools, transmits the pre- processed images to a server. (Ex. 2014, p. 7 ("As the world's first and only dynamic imaging infrastructure, PIXcast with Rimfire stands alone in providing a solution for collecting, managing, and delivering user media to customers around the globe."), p. 10 ("When an end-user submits an image via a Rimfire-enabled Web page, a copy of that image (already properly sized and formatted on the client to specific standards set by the recipient Web site) is transmitted to the Rimfire Server."; "A submission button - This control is a regular HTML button that calls into RSAPI and informs it that there are images in the image wells that are ready to be uploaded to the Rimfire Server."; "An upload handler - This component is the send control that performs the submission of images to the Rimfire server when the user clicks the submission button."), p. 11 ("Submission, as discussed earlier, is the user's ability to upload images to the Rimfire Server."), p. 8 ("Rimfire technology 134 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 allows eBay users to instantly upload and display images of their auction items directly in the eBay site."), p. 16 ("Rimfire's bulk upload feature is a business-to- business solution for customers who need to transfer and process vast groups of media in an automated fashion. It simplifies the submission process by allowing media to come to the client in large batches rather than singly as in the standard upload. The bulk upload feature is a system administrator's tool that is optionally available in two implementations").) 271. The SubmitMediaRequest command "[t]ransfers a media item to the Rimfire servers," (Ex. 2010 at 23, 28), which is an example command for transferring images to a server. (See also id. at 4 ("A submission page can handle as many photos on one page as is required by the customer. No need to submit photos one at a time."), p. 5 ("Customers have a uniform, reliable and secure channel for media acquisition. Partners who integrate media content into their web site can rely on the Rimfire System to deliver media according to their specific delivery requirements.").) In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 2. Dependent Claim 2 272. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 2 of the '515 patent. a. 2. The method of claim 1, wherein said transmitting information comprises transmitting an identifier associated 135 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 with a user and a password from said client device to said host server. 273. The Rimfire client transmits a userID and password to the Rimfire server, which checks the user ID and password to look up an associated account record. (Ex. 2010 at 43 ("When the submission arrives at Rimfire, the userID and password are used to lookup the associated Account record (1 above). Once we have identified the Account, we use the AccountID and service name (e.g., "MIRROR") to find the ServiceLink record associated with the account for the 'MIRROR' service (2 above.)".) In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 3. Dependent Claim 6 274. In my opinion, Rimfire, including the Prepare and Post Tools meets the limitations of claim 6 of the '515 patent. I incorporate my analysis of claim 1 into my analysis of claim 6 below. a. 6. The method of claim 1, further comprising displaying a thumbnail preview of said identified one or more image files, video files or audio files. 275. Rimfire, including the Prepare and Post Tools, displays thumbnail images. (Ex. 2014, p. 10 ("In addition to specifying the values for submission controls, customers may also elect to set parameters in their integration code that specify custom features such as. . . Dynamic thumbnails."), p. 7 ("Rimfire also allows customers to enhance the presentation of images with graphic layering 136 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 (adding watermarks or banners), thumbnail creation, image editing (on the client), multiple image delivery, and interactive PhotoMoviesTM.").) In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 6 of the '515 patent. 4. Dependent Claim 10 276. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 10 of the '515 patent. I incorporate my analysis of claim 1 into my analysis of claim 10 below. a. 10. The method of claim 1, wherein said pre-processing comprises reducing a file size or compressing said one or more image files, video files or audio files. 277. The ScaleImage interface in the PWImageControl Interface and in the PWImgApplet.jar and includes width (destWidth) and height (destHeight) parameters. (Ex. 2010, pp. 22, 26.) In my opinion, the ScaleImage interface can reduce a file size. (See Ex. 2014, p. 11 ("Client-side image processing encompasses any automated image handling specified by the customer, such as image resizing" and "conversion of graphical formats.").) Rimfire provides a quality factor that can reduce the size of an image before transmission. (See Ex. 2010, p. 13 ("Client-side scaling refers to setting the desired image size and quality before the image is submitted to Rimfire Central from a web browser. Where possible (i.e., where the browser supports scriptable components and where we 137 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 have appropriate instructions on scaling from the client), we will scale down the image to our client's specifications (gleaned from the Rimfire repository) before transmitting it. Client-side scaling is discussed further in the Detailed Software Design section. In addition to sizing an image on client side, the image can also be converted to any of the supported formats before being sent. Typically, a bitmap would be converted to the JPEG format in order to achieve maximum compression. This would dramatically reduce the amount of time required to upload the image to the server.").) 5. Dependent Claim 11 278. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 11 of the '515 patent. I incorporate my analysis of claim 1 into my analysis of claim 11 below. a. The method of claim 1, wherein said pre-processing comprises resizing said one or more image files, video files or audio files. 279. Rimfire, including the Prepare and Post Tools, allows pre-processing that can reduce the size of an image, including reducing the width and height of an image, or setting the quality of an image. The ScaleImage interface in the PWImageControl Interface and in the PWImgApplet.jar and includes width (destWidth) and height (destHeight) parameters. (Ex. 2010 at 22, 26.) In my opinion, the ScaleImage interface can reduce a file size. (See Ex. 2014, p. 11 ("Client-side image processing encompasses any automated image handling 138 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 specified by the customer, such as image resizing" and "conversion of graphical formats.").) Rimfire provides a quality factor that can reduce the size of an image before transmission. (See Ex. 2010, p. 13 ("Client-side scaling refers to setting the desired image size and quality before the image is submitted to Rimfire Central from a web browser. Where possible (i.e., where the browser supports scriptable components and where we have appropriate instructions on scaling from the client), we will scale down the image to our client's specifications (gleaned from the Rimfire repository) before transmitting it. Client-side scaling is discussed further in the Detailed Software Design section. In addition to sizing an image on client side, the image can also be converted to any of the supported formats before being sent. Typically, a bitmap would be converted to the JPEG format in order to achieve maximum compression. This would dramatically reduce the amount of time required to upload the image to the server.").) 6. Dependent Claim 18 280. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 18 of the '515 patent. I incorporate my analysis of claim 1 into my analysis of claim 18 below. a. 18. The method of claim 1, wherein said transmitting comprises transmitting location information. 281. The Rimfire system sets up a URL to provide location information about an image. The URL is transmitted to an end-user for viewing of the image. 139 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 (Ex. 2014 at 10 ("A URL to the location of each image is created and returned to the client via a hidden field in the Web application. This hidden field is what allows the end-user to see the images on the client's Web pages.").) 7. Dependent Claim 19 282. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 19 of the '515 patent. I incorporate my analysis of claim 1 into my analysis of claim 19 below. a. 19. The method of claim 1, further comprising reporting a status of said transmission of said pre-processed one or more image files, video files or audio files. 283. The SubmitMedia Request command returns a status of the transfer of a media object to a Rimfire server. (Ex. 2010 at 23 ("Transfers a media item to the Rimfire servers and returns a status code. The action is successful if the return code is 0. A non-zero return code indicates an error condition. Check the section on error codes for details on submission errors. The string response to a submission is returned in ServerRetString. In the case of a 0 return code (success), this typically contains some sort of URL – this is application-dependent however. In the case of a non-zero return code, this contains a readable error string which can be used to diagnose the cause of failure.").) 140 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 8. Independent Claim 20 284. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 20 of the '515 patent. a. 20. A client device for pre-processing, comprising: 285. See my analysis of claim 1 (including Section XIII.B.1.a) of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets the preamble of claim 20 of the '515 patent. b. a transmitter that transmits information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; 286. See my analysis above for "transmitting information" element (Section XIII.B.1.b) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. c. a computer usable medium having computer readable program code means embodied therein for enabling a receipt of an identification of one or more image files, video files or audio files to associate with said account; and 287. See my analysis above for "receiving an identification" element (Section XIII.B.1.c) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. d. a pre-processor that pre-processes said identified one or more image files, video files or audio files in preparation for transmission by said client device, said pre-processor using pre-processing parameters received from a remote server, said 141 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 pre-processing parameters enabling said client device to pre- process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device. 288. See my analysis above for "receiving an identification" element (Section XIII.B.1.e) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 9. Independent Claim 23 289. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 23 of the '515 patent. a. 23. A method for pre-processing in a client device, comprising the following computer implemented steps: 290. See my analysis of claim 1 (including Section XIII.B.1.a) of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets the preamble of claim 23 of the '515 patent. b. transmitting information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; 291. See my analysis above for "transmitting information" element (Section XIII.B.1.b) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. c. receiving an identification of one or more image files, video files or audio files to associate with said account; 142 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 292. See my analysis above for "receiving an identification" element (Section XIII.B.1.c) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. d. receiving, by said client device, a confirmation of an intent to associate said one or more image files, video files or audio files with said account; 293. See my analysis above for "receiving, by said client device, a confirmation of intent" element (Section XIII.B.1.d) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. e. pre-processing said identified one or more image files, video files or audio files using pre-processing parameters that have been loaded onto said client device by a device separate from said client device, said pre-processing parameters enabling said client device to pre-process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device; and 294. See my analysis above for "pre-processing" element (Section XIII.B.1.e) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. f. transmitting said pre-processed one or more image files, video files or audio files 143 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 295. See my analysis above for "transmitting" element (Section XIII.B.1.f) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 10. Dependent Claim 26 296. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 26 of the '515 patent. I incorporate my analysis of claim 23 into my analysis of claim 26 below. a. 26. The method of claim 23, wherein said transmitting information comprises transmitting an identifier associated with a user and a password from said client device to said host server. 297. The SubmitMediaRequest command includes a UserID and Passwords that are transmitted as strings. (Ex. 2010, pp. 23, 28; see also Ex. 2014, p. 5 ("iPIX provides the customer with a valid Rimfire account and a Rimfire Submission Pack. The Submission Pack contains everything that the developer needs to activate a new account and "Rimfire-enable" the site."), p. 19 ("When a new customer begins using the Rimfire infrastructure, a new account profile(s) is created in the database to control, authorize, process and distribute media for a particular customer per their specific requirements."). 298. The Rimfire server checks the user ID and password to look up an associated account record. (Ex. 2010, p. 43 ("When the submission arrives at Rimfire, the userID and password are used to lookup the associated Account record 144 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 (1 above). Once we have identified the Account, we use the AccountID and service name (e.g., "MIRROR") to find the ServiceLink record associated with the account for the 'MIRROR' service (2 above.)".) In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 11. Dependent Claim 28 299. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 28 of the '515 patent. I incorporate my analysis of claim 23 into my analysis of claim 28 below. a. 28. The method of claim 23, further comprising displaying a thumbnail preview of said identified one or more image files, video files or audio files. 300. See my analysis above for dependent claim 6 of the '515 patent (Section XIII.B.3). In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 12. Dependent Claim 29 301. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 29 of the '515 patent. I incorporate my analysis of claim 23 into my analysis of claim 29 below. a. 29. The method of claim 23, wherein said pre-processing comprises reducing a file size or compressing said one or more image files, video files or audio files. 145 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 302. See my analysis above for dependent claim 10 of the '515 patent (Section XIII.B.4). In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 13. Dependent Claim 30 303. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 30 of the '515 patent. I incorporate my analysis of claim 23 into my analysis of claim 30 below. a. 30. The method of claim 23, wherein said pre-processing comprises resizing said one or more image files, video files or audio files. 304. See my analysis above for dependent claim 11 of the '515 patent (Section XIII.B.5). In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 14. Dependent Claim 38 305. In my opinion, Rimfire, including the Prepare and Post Tools, meets the limitations of claim 38 of the '515 patent. I incorporate my analysis of claim 23 into my analysis of claim 38 below. a. 38. The method of claim 23, further comprising reporting a status of said transmission of said pre-processed one or more image files, video files or audio files. 146 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 306. See my analysis above for dependent claim 19 of the '515 patent (Section XIII.B.7). In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. 15. Independent Claim 39 a. 39. A client device for pre-processing, comprising: 307. See my analysis of claim 1 (including Section XIII.B.1.a) of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets the preamble of claim 39. b. transmitter that transmits information that enables access to an account that is associated with a user, said access to said account conditioned on a receipt of an identifier at a host server; 308. See my analysis above for "transmitting information" element (Section XIII.B.1.b) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. c. a computer usable medium having computer readable program code means embodied therein for enabling a receipt of an identification of one or more image files, video files or audio files to associate with said account; and 309. See my analysis above for "receiving an identification" element (Section XIII.B.1.c) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. d. a pre-processor that pre-processes said identified one or more image files, video files or audio files in preparation for 147 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 transmission by said client device, said pre-processor using pre-processing parameters that have been loaded onto said client device by a device separate from said client device, said pre-processing parameters enabling said client device to pre- process said identified one or more image files, video files or audio files in a manner specified by a distributing party for transfer of content, which is based on said pre-processed one or more image files, video files or audio files, to one or more devices separate from said client device. 310. See my analysis above for "pre-processing" element (Section XIII.B.1.e) of claim 1 of the '515 patent. In my opinion, Rimfire, including the Prepare and Post Tools, meets this limitation. XIV. CLAIM CONSTRUCTION 311. I understand that the PTAB employs the "broadest reasonable interpretation" (BRI) in post-grant review proceedings. 312. I understand that Petitioner proposes that "distributing" means "making available to at least one person other than the user." (Pet., pp. 18–19.) I disagree. Adoption of Petitioner's construction would improperly limit the distributing in claim 1 to a person, rather than more broadly including devices or entities such as a companies, websites, or service providers as recipients of distributing parties. To remove any confusion, the term "distributing" should be construed according to its plain and ordinary meaning, which is not limited to people. 148 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 313. I understand that the Northern District of Texas construed the term "pre-processing" to mean "modifying the [media object data/digital content data/one or more image files, video files, or audio files], as opposed to data merely associated with the [media object/digital content/image files, vide files, audio files], at the client or local device prior to transmission to a remote device. (Ex. 2030 at 12–13.) I agree. 314. To the extent construction is required for the phrases "an amount of media data" and "an amount of digital content", Patent Owner agrees in part with Petitioner, namely that this term should be construed to mean a "quantity or size of digital content." Petitioner's construction is incorrect to the extent that it requires "as defined by one or more of physical dimensions, pixel count, or kilobytes." Petitioner's proposed construction would exclude identifying a number of items of digital content from the scope of this term and thus would be inconsistent with claims 2 and 3. Accordingly, Petitioner's proposed construction for this term should be rejected. 315. Petitioner's proposed constructions for the terms "publication / publishing" and "distributing / distribution" are incorrect because it ignores claim scope differences between these terms. The intrinsic record does not support construing these terms identically. (See, e.g., claim 51 of the '482 patent, which recites both "distribution" and "publication"). Different words used in a claim are 149 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 presumed to have different claim scope. Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011). And Google recognizes that publication and distribution have different claim scopes. (Pet., 19.) Patent Owner proposes that these terms be construed according to their plain and ordinary meanings, which for "publishing" is "making publicly available" and "distribution" is "sharing." These constructions comport with the Claim Construction Orders in the two U.S. district court matters that have construed the '482 and '515 patents. (See Ex. 2035, p. 66; Ex. 2030, p. 58.) 316. Patent Owner agrees that the broadest reasonable construction for "said identification" is "said identification of digital content." 317. Petitioner includes proposed constructions of "Similar/Related Claim Terms." (Pet., 21.) Petitioner first identifies "digital content" and proposes that a POSITA would understand that term to include media objects which may in turn include images. (Id.) The term "digital content" is commonly understood by a POSITA such that no construction is necessary. 318. Petitioner asserts that the terms "local device" and "client device" are interchangeable (Id., 21), but then suggests that "'client device' refers to a range of devices that includes local devices." (Id., 22.) Patent Owner proposes that these terms are commonly understood by a POSITA, and require no construction. 150 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 319. Petitioner had previously proposed a construction of the terms publishing and distribution (see Section B above), yet offers no explanation or justification for returning to these terms. In particular, the terms "electronic publishing" and "electronic distribution" do not appear in the claims, and require no construction. 320. Patent Owner submits that the term "encoding or otherwise converting" should be construed according to its plain and ordinary meaning. 151 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 I. ACKNOWLEDGEMENT I further declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true, and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that willful false statements or the like may jeopardize the validity of the patent or any patent issuing thereon. Jay /r,r, .d)rtye, Signed \n C..(*.*-on December 7, zots Martin Kaliski 152 Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 ATTACHMENT A MARTIN E. KALISKI, Ph.D: Self-Employed Technical Consultant BUSINESS ADDRESS 2831 El Cerrito Street San Luis Obispo, CA 93041 805 545 0152, 805 234 3210 (mobile) SUMMARY OF EXPERIENCE After 35 years of teaching in the fields of Electrical Engineering, Computer Engineering and Computer Science, I recently retired and am now a Professor Emeritus in Electrical Engineering at the California Polytechnic State University in San Luis Obispo, California ("Cal Poly"). I completed nine years as Department Chair of the Electrical Engineering Department at Cal Poly in 2001. I have been active in its Computer Engineering program since its inception in the early 1990's. My main areas of interest encompass computer systems, software systems, industrial systems, control systems, digital logic and embedded systems. I have taught extensively in the latter areas in recent years, at both the undergraduate and graduate levels. Recent courses include undergraduate courses based upon FPGAs and CPLDs, digital logic courses, and graduate design courses in embedded system design, oriented about microcontrollers, using both wireless and wired technologies. I have recently taught graduate courses as well in asynchronous hardware design and in computer arithmetic. I have also taught both undergraduate and graduate courses in digital signal processing, image processing, and computer architecture. I have a special interest in both software and hardware design recovery. I have been involved in both contract research and private consulting for close to 35 years. Typical project areas have included software and hardware design reconstruction, software quality assurance, remote tracking technologies, algorithm development for CAD/CAM systems and expert systems in industrial automation applications, trouble-shooting fault- Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 detection microcode, software engineering for advanced signal processing applications, development and implementation of algorithms for finite-state controller design, design of disk head assembly fault diagnostics, development of expert systems for verification of design standards for PC board design and for component testability, documentation and analysis of BIOS software, development of training manuals, classical expert system design, software design recovery research in transportation engineering and expert system approaches to telephone system reliability. Some of my more recent consulting activities are indicated below. I have been engaged as an expert witness in numerous technology based matters for the past eleven years, with a focus on patent infringement, trade secret misappropriation and copyright infringement. Cases have covered such diverse areas as machine vision, computer architecture, storage systems, electronics packaging, data encryption, mainframe and microprocessor based software, health care management systems, web-based technologies, computer networking, embedded systems, television systems and video gaming, to name a few. PROFESSIONAL EXPERIENCE 1986 to 2007 California Polytechnic State University 1986 to 2007 Professor, Electrical Engineering (retired 2007) 1995 to 2002 Department Chair 1989 to 1992 Department Chair 1980 to 1981 L'Ecole Superieure d'Ingenieurs en Electrotechnique et Electronique, France, Visiting Professor 1973 o 1986 Northeastern University, 1974 Professor, Department of Electrical and Computer Engineering Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 1971 to 1973 City College of New York Professor, Department of Computer Science OTHER PROFESSIONAL EXPERIENCE  Consulting to Sonicwall, Sunnyvale, CA (2006); Extreme Networks, Santa Clara, CA (2002-2004); patent analyses for networking technologies  Consulting in computational geometry, General Electric Corporate Research and Development, 2000-2002  General Electric Corporate Research and Development (1995-1997), Consulting in software test and quality assurance in a large networked database management system.  Hi-Tech Systems, Inc. (1994), Consulting in software design recovery.  Pacific Bell (1993-1995), Expert system approaches to telephone system reliability.  CalTrans and other agencies (1992-1994), Research in transportation engineering.  Digital Sound, Inc. (1992), Software design recovery.  Cardkey Systems, Inc. (1992), Software systems and expert systems architecture work.  Escorp (1991-1993) Software systems and expert systems architecture work.  Executive Systems, Inc. (1991), Software design recovery. Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82  1983 to 1988 General Electric Corporate Research and Development Design of controllers for motors and investigation of their characteristics, including motor modeling issues. EDUCATION Ph.D., Electrical Engineering, Massachusetts Institute of Technology, 1971 MS, Electrical Engineering, Massachusetts Institute of Technology, 1968 BS, Mathematics, Massachusetts Institute of Technology, 1968 BS, Electrical Engineering, Massachusetts Institute of Technology, 1966 LITIGATION RELATED EXPERIENCE Expert Consulting to Attorneys, especially in intellectual property and patent litigation, 1991-present. Numerous cases where there was no testimony, over and above those listed below. Depositions/trial and other testimony during past seventeen years (underscore indicates party represented; law firm worked for listed at the end of each citation.): Farstone Technology v. Apple, United States District Court for the Central District of California, SA CV13-01537-ODW-JEM, Deposition November, 13, 2014, Testimony at Markman Hearing, December 10 2014, Deposition, July 8, 2015, Stroock & Stroock & Levan. Intellectual Ventures v. Canon, United States District Court for the District of Delaware, 13-CV-473 (SLR), Deposition, May 22, 2015, Tensegrity Law Group Kinglite Holdings v. Micro-Star International et al, United States District Court for the Central District of California, Southern Division, CV-14-03009 JVS (PJWx), Consolidated with CV-14-04989 JVS (PJWx), Deposition, April 30, 2015, Hill, Kertscher & Wharton. Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Intellectual Ventures v. Capital One Financial, United States District Court for the District of Maryland, Southern Division, 1:14-cv-00111-PWG, Deposition, March 20, 2015, Feinberg Day Alberti & Thompson. Ricoh, Xerox, & Lexmark v. MPHJ Technology Investments, IPR 2014- 00538, 00539 Deposition, February 11, 2015, Hill, Kertscher & Wharton. USAA v. Mitek, United States District Court for the Western District of Texas, San Antonio Division, 5-12-CV-0282, Deposition, August 27, 2014, Akin Gump, Fish & Richardson Brilliant v. Guidetech, United States District Court for the Northern District of California, Oakland Division, C09-05517 (CW), Testimony at Trial, April 1, 2014, Kao & Swope. Openwave v. Apple and RIM, United States District Court for the District of Delaware, C.A. No. 11-764 (RGA), Deposition, August 15, 2013, McKool Smith In the Matter of Certain Devices for Mobile Data Communication, United States ITC, Washington, DC, 337-TA-809, Unwired Planet v. Apple and Rim, Depositions, July 17, August 10, 2012, McKool Smith. In the Matter of Certain Digital Photo Frames and Image Display Devices and Components Thereof, United States ITC, Washington, D.C., 337-TA- 807, TPL v .Sony., Deposition, June 29, 2012, Kenyon & Kenyon Apple, Inc. v. Samsung Electronics, 12-CV-00630-LHK, United States District Court for the Northern District of California, San Jose Division, Deposition, May 10, 2012, Quinn, Emanuel, Urquhart & Sullivan Internet Machines LLC v. Alienware et al, 6:10-CV-00023 MHS, United States District Court for the Eastern District of Texas, Tyler Division, Deposition, October 18, 2011, October 27, 2011, Testimony at Trial, February 27, 2012, Baker McKenzie LLP Bose Corporation v. SDI Technologies et al, 09-cv-11439-WGY, United States District Court for the District of Massachusetts, Deposition, December 28, 2011, Fish and Richardson Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Motorola Mobility, Inc. v. Microsoft, 1:10-cv-24063-MORENO, United States District Court for the Southern District of Florida, Deposition, July 20-21, 2011, Ropes & Gray Zap Media Services v. Apple, 2:08-CV-104-DF-CE, United States District Court for the Eastern District of Texas, Marshall Division, Deposition, September 22, 2010, Hill, Kertcher and Wharton, LLP Cisco Systems, Inc. v. James P. Rivers, JAMS Arbitration 1100062875, Deposition, September 3, 2010, Hearing, September 13-14, 2010, DLA Piper. Kenexa Brass Ring, Inc. v. Taleo Corporation and Vurv Technology, Inc., C.A. No. 07-521-SLR/LPS (Consolidated), United States District Court for the District of Delaware, Deposition, August 25, 2010, Nixon Peabody IMX, Inc. v. ELoan Inc. and Banco Popular, 09-20965-CIV-MARTINEZ- BROWN, United States District Court for the Southern District of Florida, Miami Division, Deposition, January 8, 2010, DLA Piper Data Treasury Corporation v. Wells Fargo & Co et al, 2:06-CV-72-DF, United States District Court for the Eastern District of Texas, Texarkana Division, Deposition, December 17, 2009. Andrews Kurth Network Appliance v. Sun Microsystems, C-07-06053-EDL, United States District Court for the Northern District of California, San Francisco Division, Deposition, July 24, 2009. DLA Piper Dealer Track v. David Huber, Finance Express, CV06-2335-AG-(FMOx), United States District Court for the Central District of California, Southern Division, Deposition, April 22, 2009, Goodwin Procter Network Appliance v. Sun Microsystems, C-08-01641-EDL, United States District Court for the Northern District of California, San Francisco Division, Tutorial on Claim Construction, March 25, 2009, Testimony at Markman Hearing, 4/1/09. DLA Piper Simplification LLC v. Block Corporation, 03-355-JJF, 04-114-JJF, United States District Court for the District of Delaware, Deposition, November 20, 2008, Venable. Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Network Appliance v. Sun Microsystems, C-07-05488-EDL, United States District Court for the Northern District of California, San Francisco Division, Tutorial on Claim Construction, October 20, 2008, DLA Piper Alcatel USA Sourcing, Inc. v, Microsoft, 6:06-CV-499-LED, United States District Court for the Eastern District of Texas, Tyler Division, Deposition, September 25, 2008, Baker Botts, Kirkland and Ellis Multimedia Patent Trust v. Microsoft, 06-CV-0684-H(CAB), United States District Court, Southern District of California, Deposition, January 22, 2008, March 5, 2008, Testimony at Trial, May 28, 2008, May 30, 2008, Baker Botts In the Matter of Certain Personal Computers, Notebook Computers and Components Thereof, United States ITC, Washington, D.C., 337-TA-606, Hewlett-Packard v. Acer, Deposition, December 18, 2007, February 1, 2008, Testimony at ITC Hearing, 2/12/08, 2/20/08, DLA Piper. Mobile Micromedia Solutions v. Nissan North America, 5:05-CV-230, United States District Court for the Eastern District of Texas, Texarkana Division, Deposition, October 2, 2007, October 16, 2007, Hill, Kertscher & Wharton, LLP. Ticket Innovations v. Ticketmaster, Los Angeles Superior Court, Case No. BC 327228, Deposition, September 26, 2007. Gibson, Dunn and /Crutcher. Visto Corporation v. Microsoft Corporation, 2:05-CV-546-DJF, United States District Court for the Eastern District of Texas, Marshall Division, Deposition, June 20, 2007, June 26, 2007, Manatt, Phelps and Phillips. IMX, Inc. v LendingTree, LLC, C.A. No. 03-1067 (SLR), United States District Court for the District of Delaware, Deposition, August 5, 2005, August 22, 2005, Testimony at Trial, January 12-13, 19-20, 2006, DLA Piper Rudnick Gray Cary US LLP Guilford v. In-Patients Consultants Management, Inc., et al.,California Evidence Code Section 402 hearing. Los Angeles Superior Court, Case No. 219214. Testimony at hearing on February 25, 2005, Testimony at Trial, December 5, 2005.. Weston Benshoof Rochefort Rubalcava MacCuish LLP Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 World Interactive Network, Inc. v JC Decaux Airport, Inc., Circuit Court of the 11th Judicial Circuit In and For Miami-Dade County, Florida, Case No. 00-15814 CA 11, Deposition, October 7, 2005, Harke & Clasby, LLP. Koninklijke Philips Electronics N.V. v. Defibtech, LLC, CV03-1322R, United States District Court for the Western District of Washington, Deposition, July 19-20, 2005, King & Spalding, LLP. Highmark, Inc. v. Allcare Health Management Systems, Inc. 4:03CV1384- Y, United States District Court for the Northern District of Texas, Fort Worth Division, Deposition, January 7, 2005, Hill, Kertscher & Wharton, LLP. Action Gaming, Inc. and IGT v. Alliance Gaming Corp., Bally Gaming, Inc., and United Coin Machine Co.,, CV-S-01-1109 JCM (PAL), United States District Court, District of Nevada, Deposition, April 15, 2003 and May 6, 2003, Brown, Raysman, Millstein, Felder & Steiner. Stamps.com, Inc. v. Pitney Bowes, Inc., 02-042 JJF, United States District Court for the District of Delaware, Deposition, April, 8, 2003, Irell and Manella. Allcare Health Management System, Inc. v. Trigon Healthcare, Inc. et al, 02-756-A, United States District Court for the Eastern District of Virginia, Alexandria Division, Deposition, November 18, 2002, Hill, Kertscher & Pixley LLP Parental Guide of Texas, Inc. v. Funai Corp, Inc. et al, 2:00-CV-262(TJW), United States District Court for the Eastern District of Texas, Marshall Division, 30(b)(6) Deposition, July 2, 2002, Morrison & Foerster; 30(b)(6) Deposition, July 17,18, Kenyon & Kenyon; Deposition, October 13, 2002, Nixon & Vanderhye; Deposition, October 14, 2002; Kenyon & Kenyon, Morisson & Foerster, Nixon & Vanderhye. Cognex Corporation v. Electro Scientific Industries, Inc., 01-CV- 10287RCL, United States District Court, Massachusetts, Deposition, June 20,21, 2002; Markman Hearing, July 8, 2002, Deposition, February 23, 2004, Cesari and McKenna. Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Yost v. Johnson, CV 000734, San Luis Obispo County Superior Court, San Luis Obispo, CA, Deposition, August 20, 2001, Radovich Law Offices. Netzero, Inc. v. Juno OnLine Services, Inc., 00-13378 JSL (RNBx), United States District Court for the Central District of California, Deposition, March 10, 2001, Kenyon & Kenyon. PTEK Holdings, Inc. et al. v. Z-TEL Technologies, Inc. et al., 8:00 CV- 1148-T-30B, United States District Court for the Middle District of Florida, Tampa Division, Deposition, October 5, 2000, Paul, Weiss, Rifkind, Wharton & Garrison. Michael I. Rackman v. Microsoft Corporation, 97-CV-0003 (CBA), United States District Court for the Eastern District of New York, Deposition, August 30, 2000, Kenyon & Kenyon. Comverse Network Systems, Inc. v. Priority Call Management, Inc. 98-CV- 12259DPW, United States District Court, Massachusetts, Deposition, May 25, 26, 2000, Hale & Dorr. Robotic Vision Systems, Inc. v. View Engineering, Inc. and General Scanning, Inc. CV95-7441 (LGB), United States District Court for the Central District of California, Bench Trial Testimony, November 16, 17, 1999, Kenyon & Kenyon. Isogon Corporation v. Amdahl Corporation 97-CIV-6219 (SAS), United States District Court for the Southern District of New York, Markman Hearing, October 1, 1998, Deposition, February 22-24, 1999, Kenyon & Kenyon. Robotic Vision Systems, Inc. v. View Engineering, Inc. CV96-2288 (LGB), United States District Court for the Central District of California, Deposition, June 2, 1997, Bench Trial Testimony, December 11-12, 1997, January 7, 1998, Kenyon & Kenyon. Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 SAMPLE PUBLICATIONS "A RF Laboratory and Lecture Cource for Wireless Communications," with Cheng Sun, 2000 International Conference on Engineering Education, Taipei, Taiwan. "Optimal DAC Design in Finite-State Controller Architectures," 1992 American Control Conference "The Software Sleuth," with B. Kaliski, West Educational Publishing, 1991. "Algorithms for Finite-State Control," with T.L. Johnson, 1991 American Control Conference. "Finite-State Control of Continuous-State Processes: Progress and Prospects," with T.L. Johnson, 29th IEEE Conference on Decision and Control, 1990. "Switched Linear Discrete-Event Systems: An Architecture and Simulator," with Sylvia Ritz, 1990 American Control Conference. "Assembly Language Programming for the VAX-11," with K. Lemone, Little-Brown, 1983. PATENTS U.S. Patent Number Date Title 6711477 2004 Automatic flight Envelope Protection For Uninhabited Air Vehicles: Method for Determining Point in Flight Envelope. Co-inventor with Timothy L. Johnson PROFESSIONAL AFFILIATIONS & AWARDS Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC 82 Institute of Electrical and Electronics Engineers (IEEE) - Organizer and Chair of San Luis Obispo Subsection of Santa Barbara Section, 1994-2001 (now Central Coast Section) Sigma Xi, Tau Beta Pi and Eta Kappa Nu Principal Investigator on research contracts from General Electric Corporate Research and Development, Northern Telecom, Bell Northern Research, the U.S. Air Force of Scientific Research, U.S. Navy (1995-96), Savi Corporation (1996-97) and Sun Microsystems (1997). Fulbright Scholar, France, 1980-81 Host of weekly radio talk show, "Technology and You," KVEC-AM (920), San Luis Obispo, 1994-2000 Columnist "Bits and Bytes," Telegram-Tribune, SLO, CA (1997-1998) Exhibit 2058 Google Inc. v. Summit 6 LLC IPR2015-00807, Summit 6 LLC