Lupercal LLC v. CitiBank, N.A.

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

Exhibit PC23

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5 EXHIBIT PC23 5 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION LUPERCAL LLC, Case No. 6:19-cv-00201-ADA Plaintiff LEAD CASE v. CITIBANK, N.A., Defendant Case No. 6:19-cv-00202-ADA LUPERCAL LLC, Plaintiff JURY TRIAL DEMANDED v. PLAINS CAPITAL BANK, Defendant DECLARATION OF STEPHEN GRAY IN SUPPORT OF PLAINSCAPITAL BANK'S OPENING CLAIM CONSTRUCTION BRIEF 5 Declaration of Stephen Gray I, Stephen Gray, declare as follows: I. INTRODUCTION I have been retained as an independent expert consultant by counsel for PlainsCapital Bank ("PlainsCapital"). Counsel for PlainsCapital asked me to form certain opinions regarding the meaning of certain claim terms in U.S. Patent No. 9,386,094 (Ex. PC01), and those opinions are set forth in this declaration. I am over 21 years of age and, if I am called upon to do so, I would be competent to testify as to the matters set forth herein. I am being compensated at a rate of $400/hour for my work, and my compensation is in no way contingent on the nature of my findings, the presentation of my findings in testimony, or the outcome of this litigation or any issue. II. QUALIFICATIONS I am an independent consultant. All of my opinions stated in this declaration are based on my own personal knowledge and professional judgment. In forming my opinions, I have relied on my knowledge and experience in designing, developing, and deploying digital image processing systems, distributed client/server systems, graphical user interfaces, and e-commerce systems, and on the documents and information referenced in this declaration. I have attached to this declaration a copy of my current curriculum vitae (Attachment 1), which details my education and experience, and a list of all other cases during the previous four years in which I testified as an expert at trial or by deposition. The following provides an overview of some of my experience that is relevant to the matters set forth in this declaration. 2 5 Declaration of Stephen Gray I graduated from California Polytechnic University in 1973 with a Bachelor's Degree in Economics. Since the mid-1970s, I have designed, developed, and deployed distributed computing systems and products that operate in distributed computing environments, including image processing systems. As such, I have acquired expertise and I am an expert in the areas of distributed computing architecture and design, graphical user interfaces, eCommerce systems, image processing systems, operating systems, document storage access, retrieval and management systems, local area and wide area networks, and various programming languages used in the development of those systems and products. I have been employed by or retained as a consultant, including acting as a litigation consultant, for companies such as Burroughs, Filenet, Fujitsu, Marriott Corporation, MCI, Northern Telecom, Olivetti, TRW, and Xerox, as well as other companies. As a consultant to TRW Financial Systems (TFS) in the late 1980s and early 1990s, I worked on several projects that performed various aspects of image-assisted item processing and document management. I worked on a joint project with TFS and IBM to develop a distributed remote item processing system using IBM components including Check Processing Control System (CPCS), High Performance Transaction Systems (HPTS), CIMS, and others. I led the design of a high performance, LAN-based image capture and statement printing subsystem using IBM system components including CPCS, Multiple Virtual Storage/Enterprise Systems Architecture (MVS/ESA) and DB2 relational database for TFS. I also led the design of an image assisted, remittance processing system using IBM system components such as CPCS, MVS/ESA and Sybase relational database in a client/server architecture for TFS. In both the image capture and statement printing system and the remittance processing system mentioned above, financial 3 5 Declaration of Stephen Gray documents such as paid checks, statements, invoices and remittance records were captured as images, indexed, stored and retrieved for a variety of applications such as statement printing, research and auditing. In the mid-1990s I was a consultant for Xerox. One of my assignments there was to develop strategies for data management among network attached office products. For example, one of the distributed data management strategies that I delivered provided end user visibility into printer queues supporting distributed network printers. Another distributed data management strategy that I delivered provided network operations distributed job management control. Still another example of distributed data management applications that I contributed to at Xerox related to document abstraction and archiving. I have several relevant professional experiences that demonstrate my expertise in the field of distributed data management. In late-2001 to mid-2002, as Chief Technology Officer for Networld Exchange Inc., I was responsible for the design, development and deployment of a suite of products that delivered eCommerce functions. These functions were provided over the Internet and included product catalog information display, purchase and/or purchase order creation, order delivery to fulfillment systems and order status reporting. The products that I had responsibility for performed numerous operations, including data synchronization, on data distributed among geographically dispersed computing entities. I have several relevant professional experiences that demonstrate my expertise in the field of software applications involving data transfer over networks. Since 1984, as a Principal for Gray & Gray, LLC, I served as the Chief Technology Officer for an Internet-based secure content distribution startup. In that role, I was responsible for developing comprehensive Digital Rights Management (DRM) solutions for the control and promotion of content on the Internet. 4 5 Declaration of Stephen Gray From 2000 to 2001, as the Chief Technology Officer for NTN Communications, I was responsible for all technical aspects of the corporation, which included the development and distribution of sports and trivia games to a variety of interactive platforms, including the Internet, and mobile phones. From 1982 to 1985, as a manager for Xerox, I developed the technical interconnect strategy for electric page printers to wide- and local-area network. In this role, I developed an interface to Ethernet and Token-Ring local area networks and designed connections to IBM mainframes using SNA and the System/370 channel. I also defined a distributed network printing product for Xerox. I was also responsible for designing IBM SNA Distribution Services compatible electronic mail interface product interfaced to MCI mail services. I have also been retained by attorneys for plaintiffs and defendants matters where the concepts and practice of image processing and/or distributed data management technology were at issue. The matters include contract disputes: GTE v. Videotron; HealthFirst v. HealthTrio; Waltrip Associates v. Kevin Kimperlin & Spencer Trask Ventures, as well as patent infringement: WebSide Story v. NetRatings; ICR v. Harpo; Fotomedia v. Yahoo!; Cisco v. Telcordia; DataTreasury v. US Bank; Bedrock v. Yahoo!; Ariba v. Rearden; Augme v. Yahoo!; CNET v. Etilize, and Mirror Imaging v. Affiliated Computer Services. Further details about these cases are set forth in Attachment 1. I have developed and presented numerous public and in-house courses in computer system technology, including courses relating to operating systems, such as IBM MVS, UNIX, Linux, IBM OS/2, Microsoft Windows, and related networking technologies. I have lectured on distributed image processing in numerous publicly offered training sessions oriented to engineers interested in maintaining their professional credentials with continuing education units. 5 5 Declaration of Stephen Gray As my curriculum vitae shows, much of my career has been spent as a software development professional. As a software development professional, I have had numerous occasions to write, modify, analyze, and otherwise review bodies of source code. I have written and/or analyzed source code written various programming languages, including variants of C, SQL, COBOL, RPG, variants of Basic, Java, JavaScript, Perl, several Assembler languages, HTML, and XML. For example, as an individual contributor at Xerox during the mid-1980s to 1990, I evaluated the quality of source code from third party software providers for possible inclusion in the Xerox product line. As another example, I evaluated the source code of several application software packages for completeness and maintainability for possible inclusion into the NTN product line in 2000-2001. During my early career, I spent time maintaining source code written by others. In each of these assignments, I analyzed the source code to identify the data structures, logical flow, algorithms and other aspects. In addition, on several occasions, I have served as an expert witness where source code analysis was required to render an opinion. These matters include Autobytel v. Dealix; NetRatings v. Coremetrics, et al.; Ampex v. Kodak, et al.; AB Cellular v. City of Los Angeles; Oracle v. Mangosoft; Harrah's Casino v. Station's Casino; MediaTek v. Sanyo; MathWorks v. Comsol; among others. Also, I have served as an expert witness where image processing and/or distributed data storage were among the central issues. These matters include Mirror Imaging v. Affiliated Computer Services; DataTreasury v. US Bank; Telesocial v. Orange; Phoenix v. TIAA-CREF; SuperSpeed v. IBM; FedEx v. U.S.; MathWorks v. Comsol; Ametron-American Electronic Supply v. Entin; BMC Software v. Peregrine Systems, Inc.; and ADV Freeman v. Boole & Babbage. 6 5 Declaration of Stephen Gray I have testified as an expert at trial or by deposition within the preceding four years, as set forth in Attachment 1. III. MATERIALS REVIEWED In forming my opinions, I have reviewed the following documents: Exhibit Description No. PC01 U.S. Patent No. 9,386,094 to Wood et al. ("the '094 patent") PC02 Amendment and Response to Office Action, U.S. Patent Appl. No. 09/357,836 (Mar. 22, 2002) PC03 Interview Summary, U.S. Patent Appl. No. 09/357,836 (Feb. 27, 2003) PC04 Amendment to Office Action Under 37 C.F.R. § 1.111, U.S. Patent Appl. No. 09/357,836 (Mar. 11, 2003) PC05 New Application, U.S. Patent Appl. No. 09/357,836 (July 21, 1999) PC06 Amendment, U.S. Patent Appl. No. 10/961,720 (Mar. 26, 2010) PC07 Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00807, Paper 23 (Dec. 9, 2015) PC08 Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00806, Paper 28 (Dec. 9, 2015) PC09 Declaration of Dr. Martin Kaliski, Google Inc. v. Summit 6 LLC, IPR2015-00806 and -00807, Exhibit 2058 (Dec. 9, 2015) ("Kaliski Decl.") PC10 Amendment, U.S. Patent Appl. No 12/831,503 (Feb. 20, 2017) PC11 Amendment, U.S. Patent Appl. No 12/831,503 (Dec. 7, 2015) PC12 Final Office Action, U.S. Patent Appl. No 12/831,503 (Feb. 29, 2016) PC13 Non-final Office Action, U.S. Patent Appl. No 12/831,503 (Mar. 14, 2018) PC14 Notice of Abandonment, U.S. Patent Appl. No 12/831,503 (Oct. 19, 2018) Oxford Dictionary of Computing at 235 ["image processing"] (4th ed. 1996) PC15 Oxford Dictionary of Computing at 8 ["Active X"] (5th ed. 2004) PC16 7 5 Declaration of Stephen Gray Exhibit Description No. PC17 Microsoft Computer Dictionary at 15 ["ActiveX"], 112 ["conversion"], 252 ["Java applet"], 253 ["JavaScript"], 473 ["Visual Basic Script"] (4th ed. 1999) PC18 McGraw-Hill Computer Desktop Encyclopedia at 10 ["ActiveX"], 10-11 ["ActiveX control"], 510 ["Java applet"] (9th ed. 2001) PC19 Freedman Computer Desktop Encyclopedia at 442 ["image processing"] (2d ed. 1999) PC20 Merriam-Webster's Collegiate Dictionary at 253 ["conversion/convert"] (10th ed. 2000) PC21 Preliminary Amendment, U.S. Patent Appl. No. 10/961,720 (Oct. 8, 2004) I have also considered the following definitions from various dictionaries: • "Java" Oxford Dictionary of Computing at 259-260 (4th ed. 1996); • "Software tool" Oxford Dictionary of Computing at 462 (4th ed. 1996); • "Tool" Oxford Dictionary of Computing at 506 (4th ed. 1996); • "ActiveX control" Microsoft Computer Dictionary at 16 (4th ed. 1999). All of the opinions contained in this declaration are based on the documents I reviewed and my knowledge and professional judgment. My opinions have also been guided by my understanding of how a person of ordinary skill in the art would have understood the claims of the '094 patent at the time of the alleged invention. For purposes of this declaration, I have assumed that the date of the alleged invention is the earliest claimed priority date: July 21, 1999. IV. GUIDING LEGAL PRINCIPLES I am not a legal expert and offer no opinions of the law. However, I have been informed by counsel of the legal standards that apply to claim construction, and I have applied them in arriving at my conclusions. 8 5 Declaration of Stephen Gray I have been instructed that the words of a claim are given their ordinary and customary meaning, as they would have been understood by a person of ordinary skill in the art at the time of the invention, in view of the intrinsic record (also discussed below). In this case, I have been instructed to assume that the "time of the invention" for purposes of claim construction is July 21, 1999, which is the earliest priority filing date for the '094 patent. The opinions herein pertain to that time frame, except where expressly stated otherwise. I have been instructed that the "intrinsic record" of a patent consists of the claims themselves, as well as the figures and written description of the patent, and the patent's prosecution history—i.e., the record of proceedings at the U.S. Patent and Trademark Office ("Patent Office") concerning the patent. Like the claims and written description, the prosecution history provides evidence of how the inventor intended his patent to be understood, and how the Patent Office understood the patent. I understand that the inventor is permitted to apply a special definition to the terms or to limit the scope of claim terms in his patent claims, which may differ from the term's plain and ordinary meaning. That special definition or limitation on scope may be provided in the patent's written description, the patent's prosecution history, or both. I understand that claim interpretation may also be informed by "extrinsic evidence" (that is, evidence outside of the patent record itself). Extrinsic evidence may include dictionaries, technical treatises, and other materials evidencing the meaning of a claim term and the understanding held by a person of ordinary skill in the art in the relevant time period. V. THE LEVEL OF ORDINARY SKILL IN THE ART In my opinion, the art relevant to the '094 patent relates to "handling, manipulation and processing of digital content." '094 patent. 1:18-19. I have been advised that a "person of ordinary skill in the art in the relevant field" is a hypothetical person to whom one could assign a routine task in the relevant field of software 9 5 Declaration of Stephen Gray applications involving data transfer over networks with reasonable confidence that the task would be successfully carried out. I was asked to give an opinion as to the level of one of ordinary skill in the art pertinent to the subject matter set forth in the '094 patent at the time of the invention, which I have assumed is the earliest claimed priority date of July 21, 1999. I am familiar with the level of experience required of a person of ordinary skill in the art to be able to understand, make, and use the technology presented in '094 patent. In reaching my opinion as to the hypothetical person of ordinary skill in the art, I have considered the types of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level and professional capabilities of workers in the field. It is my opinion that a person of ordinary skill in the art at the time of the invention would have had at least an undergraduate degree in electrical engineering, computer engineering, or computer science (or similar degree) and at least two years of work experience designing or implementing software applications involving data transfer over networks. It is my opinion that work experience would substitute for formal education and that additional formal education, such as graduate studies, could substitute for work experience. The basis for my familiarity with the level of ordinary skill is my interaction with large numbers of workers in the computing field who were of the level of ordinary skill in the art, as well as my own professional experience in the pertinent field. The pertinent field was the configuration and arrangement of commercially available computer components, networks, systems, and software to satisfy particular document retrieval system specifications, together with 10 5 Declaration of Stephen Gray any programming as might be necessary for the components of the system to operate together in the desired manner. VI. OVERVIEW OF THE '094 PATENT The '094 patent is titled "System, Method and Apparatus for Media Submission." The named inventors of the '094 patent are Lisa T. Wood, Scott M. Lewis, and Robin Fried. The '094 patent is a continuation of four parent applications and is itself the parent of two continuation applications. According to the '094 patent, the "State of the Art" for "manipulating and sharing digital images over the Internet" was "cumbersome and daunting." '094 patent, 1:29-30. While there were existing solutions, they were "[p]iecemeal solutions" and "require[d] a level of sophistication that [wa]s beyond that of the ordinary user." '094 patent, 1:31-33. When describing a prior-art system, the '094 patent explains that "[a] broad-based solution to the foregoing problem requires a web-based media submission tool that allows for submission of media objects in a convenient, and intuitive manner." '094 patent, 1:52-55. According to the applicants, the prior art system "ActiveUpload" allowed "an arbitrary file to be dragged and dropped onto a web page control for upload to the web server." '094 patent, 1:55-58. It also allowed "users to, without leaving a web page, transfer files to a server … by selecting the files on the user's desktop that the user wants to transfer, then dragging them onto the web page." '094 patent, 1:59-62. According to the '094 patent, the web site creator, by integrating this prior-art media submission tool into web pages, can "change the behavior of the control" so a user can visit a web page to "contribute pictures, documents, zip files, etc., without having to leave the web page and use an FTP program." '094 patent, 1:62-67. The '094 patent, however, criticizes ActiveUpload, because it did not "automat[e] … the handling and distribution of media objects" from the backend and lacked "built in 11 5 Declaration of Stephen Gray 'intelligence' to streamline the process of handling and transporting rich media objects from the front end." '094 patent, 2:2-6. To address this alleged "need for enabling the use and distribution of rich content and media on the Internet," the '094 patent's "present invention" provides for an "improved web- based media submission tool." '094 patent, 1:48-54; 2:24-25. The '094 patent also discloses that its "improved web-based media submission tool" has at least the five characteristic features: First, it provides "an opportunity to confirm the submission with a visual representation. '094 patent, 2:29-32; see also 3:49-51; 4:1-6; 4:49-55. Second, it "allows a user to drag and drop or select" media objects for "batch submission." '094 patent, 2:33-35; see also 4:1-6). Third, it provides for "submission from a web page to a web page." '094 patent, 2:34-35). Fourth, it is "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 2:35-38; see also 4:55- 59. And fifth, it enables the "submission of [ancillary] information." '094 patent, 2:39-46; see also 4:32-48. According to the '094 patent, an "improved web-based media submission tool" must possess certain "unique and valuable functions" that are "[u]like existing tools" discussed above. '094 patent, 2:24-29. The '094 patent emphasizes "[e]ven more importantly" that the "improved web-based media submission tool" should be "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 2:24-25, 35- 38. The "client-side intelligence" of the" improved web-based media submission tool" is the "key differentiator" of the invention, and its ability to be "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload" is an important feature of the image submission tool. '094 patent, 2:35-38, 4:49-50. 12 5 Declaration of Stephen Gray The only disclosed web-based media submission tool, referred to as the "Prepare and Post tools," are "browser-side components" that "prepare[] and submit[] media objects from inside a standard browser" for transport "over the web." '094 patent, 2:47-49, 55-57. The '094 patent explains that its web-based media submission tool has "two primary components": (1) "the media object identifier" and (2) "the media sender." '094 patent, 3:15-17. The media object identifier "provide[s] a graphical interface for placing and associating a media object from a user's desktop onto a web page," and the media sender "[carries] out the function of transmitting media objects to a second location." '094 patent, 3:18-20; 3:20-22. The '094 patent present further detail about the "small code snippets that the customer pastes into the web page" that comprise the web-based media submission tool. '094 patent, 5:17-18. According to the '094 patent, by cutting and pasting the "code snippets … into the web page," the customers (i.e., web site creators) can "integrate [the web-based media submission tool] into their own web pages … to allows [sic] those sites to accept media objects from web site visitors (users)." '094 patent, 10-25. VII. CLAIM CONSTRUCTION OF THE DISPUTED TERMS "image submission tool" Counsel for PlainsCapital asked me to provide an opinion regarding the meaning of "image submission tool" in the '094 patent, claims 30, 31, 32, 38, 42, 43, 44, 50, as it would have been understood to a person of ordinary skill in the art at the time of the invention. I have been informed that the parties have proposed the following constructions of the term "pre-process," as used in the claims of the '094 patent: 13 5 Declaration of Stephen Gray Terms and Claims PlainsCapital's Lupercal's Construction Construction "image submission tool" "web-based program capable No construction of this term of being integrated into a is required. This term has its Claims 30, 31, 32, 38, 42, 43, webpage and configured to plain and ordinary meaning 44, 50 perform a variable amount of as understood by a person of intelligent pre-processing on ordinary skill in the art. media objects prior to upload" I have been informed that Lupercal believes this term has a plain and ordinary meaning. I disagree. While a person of ordinary skill in the art may have a general understanding of each of the individual terms "image," "submission," and "tool," in my opinion, the term "image submission tool," as it is used in the patent, the combination does not have a plain meaning that that would be understood by a person of ordinary skill in the art.. Moreover, there is no commonly understood meaning that is attributed to it in general or computer dictionaries that I am aware of. In my opinion, the word "image," which appears in the claims of the patent '094 patent, is a substitute for "media" as in "media submission tool," which appears in the patent's specification, because the patent explains that an "image" is a form of "media." '094 patent, 2:50- 51, 1:41-46 ("media objects, such as streaming video, 3D objects, slide shows, graphics, movies, and even sound files that accompany imaging data"). 1. Image submission tool is web based In my opinion, a person of ordinary skill in the art reviewing the '094 patent's intrinsic record would have understood that "image submission tool" must be "web based." First, in my opinion, the '094 patent's "image submission tool" must be "web based" because the '094 patent itself unambiguously states that "a broad-based solution to the 14 5 Declaration of Stephen Gray foregoing problem requires a web-based media submission tool that allows for submission of media objects in a convenient, intuitive manner." '094 patent, 1:52-54 (emphasis added). This is consistent with the '094 patent's description of its "present invention." For example, the specification explains that the "present invention" is an "improved web-based media submission tool." '094 patent, 2:24-25. The specification further describes this "web based" feature in every disclosed embodiment. See, e.g., '094 patent, 2:26-46, 2:47-57, 3:18-51; 3:58-60; 5:10-25. As the '094 patent explains, for example, the "Prepare and Post™ tool" is a "browser-side component[]" that operates "from inside a standard browser" or can be invoked from within a standard browser to provide "the ability to submit and transport media objects over the web." '094 patent, 2:47-59. The '094 patent then describes these "browser-side components" in all of the disclosed embodiments as all web-related components. For example, the '094 patent describes the Prepare and Post tool in one of the disclosed embodiments as an ActiveX component or an Active X control. '094 patent, 3:30-33; 6:35-42. Next, the '094 patent describes the Prepare and Post tool as based on Java, such as Java applets or JavaScript. '094 patent, 3:48-51; 6:35-42; Appendix A. Lastly, the '094 patent provides another example based on VBScript in Fig. 4B. '094 patent, Fig. 1. Thus, in my opinion, a person of ordinary skill in the art would have understood the "image submission tool" must be a web-based program because all of the disclosed embodiments use web-based programs and it is described as the "invention." See, e.g., '094 patent, 2:24-46, 2:47-57, 3:18-51; 3:58-60; 5:10-25. Moreover, because the "web page integration" of the patent's "present media submission tool" "facilitate[s] automatic server-side integration of media content" ('094 patent, 15 5 Declaration of Stephen Gray 6:45-50), integrating the web-based program into the web pages solves the back-end problem of distributing digital contents and provides a "required" feature of the "present invention" and a "key differentiator" from prior-art systems. '094 patent, 1:52-54, 2:24-25, 4:49-55. In my opinion, a person of ordinary skill in the art would have also understood that ActiveX, Java, Java Script, and VBScript are web-based programs. This understanding is supported by contemporaneous dictionary definitions and common knowledge of the person of ordinary skill in the art at the 1999 timeframe. For example, ActiveX was a software introduced in 1996 by Microsoft that enabled the embedding of software programs into web pages. See, e.g., Ex. PC16, Oxford Dictionary of Computing at 8 (5th ed. 2004) (defining "ActiveX" as a "technology developed by *Microsoft for embedding executable code into *Web pages"); Ex. PC17, Microsoft Computer Dictionary at 15 (4th ed. 1999) (defining "ActiveX" as "used primarily to develop interactive content for the World Wide Web … and can be embedded in Web pages to produce animation and other multimedia effects, interactive objects, and sophisticated applications"); Ex. PC18, McGraw-Hill Computer Desktop Encyclopedia at 11 (9th ed. 2001) (explaining that ActiveX "turn[s] Web pages into software pages that can perform just like any program that is launched from a server"). For example, if the web browser on a user device accessed a web page that contains an ActiveX control, the browser would then automatically download and install the control with little or no user intervention. Java applet was introduced in 1995. It is a small application that is launched from a web page to provide interactive features to web applications. See, e.g., Ex. PC18, McGraw-Hill Computer Desktop Encyclopedia at 510 (defining Java Applet as a "Java program that is downloaded from the server and run from the browser"); Ex. PC17, Microsoft Computer Dictionary at 252 ("Java applets can be downloaded and run by any Web browser capable of 16 5 Declaration of Stephen Gray interpreting Java."). The Java applet is called from within a web page using HTML tags, which is then executed by a web browser to launch the applet. JavaScript is one of the core technologies of the World Wide Web and enables interactive web pages and web applications. It is typically a light-weight text-based piece of code that is placed in line with standard web page code. See, e.g., Ex. PC17, Microsoft Computer Dictionary at 253 (defining JavaScript as "a scripting language" that is "included in a Web page along with the HTML code" and used to add online application and functions to Web pages). JavaScript is also used to tie Java applets together. VBScript is an Active Scripting language developed by Microsoft around 1996 that is modeled on the Visual Basic programming language. Initially, VBScript was specifically developed for web development both to support client-side functions and server-side processing of web pages. It is similar in function to JavaScript and is used to write web programs that are embedded in or included from HTML pages. See, e.g., Ex. PC17, Microsoft Computer Dictionary at 473 (defining VBScript as a programming language "optimized for Web-related programming" and "embedded in HTML documents"). Thus, it is my opinion that a person of ordinary skill in the art would have understood "image submission tool" in the '094 patent must be a "web-based program." 2. Image submission tool is capable of being integrated into a webpage In my opinion, a person of ordinary skill in the art reviewing the '094 patent's intrinsic record would have understood that "image submission tool" is a program "capable of being integrated into a webpage." In the '094 patent, the "present invention" is "an improved web-based media submission tool" that provides for "[s]ubmission from a web page to a web page." '094 patent, 2:24-35. 17 5 Declaration of Stephen Gray In my opinion, a person of ordinary skill in the art reviewing the '094 patent would have understood that the submission of digital content from a web page to another web page is a key feature of the '094 patent's present invention. As the '094 patent explains, the submission from a first web page to a second web page refers to the transmission of digital content from a first location (i.e., from the user's machine) to a second location (i.e., a server). '094 patent, 2:48- 50, 6:32-34. This is achieved using browser-side components (i.e., web-based programs) that are capable of being integrated into a customer's webpage, which is then operated by a user via "a browser." '094 patent, 2:47-57, 5:10-25. This client-side "browser," which provides all of the client-side intelligence built into the web-based programs, is described as the "key differentiator" of these "browser-side components" (i.e., web-based programs). '094 patent, 4:49-50. In my opinion, not only does the '094 patent describe this capability of being integrated into a customer's webpage as a key feature, the '094 patent's disclosed embodiments all describe the Prepare and Post tools as being "integrated into web sites (customers) to allow[] those sites to accept media objects from web site visitors (users)." '094 patent, 5:11-14. As I explained above, all of the '094 patent's embodiments use a web-based program that is specifically designed to be embedded into a webpage. Further, the patent's only "complete working example" consists of JavaScript code snippets that are copied and pasted into the web page. '094 patent, 5:14-28; Appendix A. As the '094 patent explains, the web-based program is able to "download all of the needed Prepare and Post submission components" because the code snippets are copied into the webpage. '094 patent, 5:26-28; see also '094 patent, 4:27-30; 6:17-21; 6:29-31. 18 5 Declaration of Stephen Gray The '094 patent further explains that "All media object identifiers on a web page must be contained within an HTML form." '094 patent, 6:9-10. As I explained above, the media object identifier is one of the "primary components" of the image submission tool. It is used for "provid[ing] a graphical interface for placing and associating a media object from a user's desktop onto a web page." '094 patent, 3:15-20. To enable to use of the media object identifier, the component must be inserted into the webpage. For example, the '094 patent explains that any place on the web page where "a media object identifier is desired," a "single line of JavaScript code is inserted into the web page (within the HTML form)." '094 patent, 6:10-14. Thus, it is my opinion that every embodiment disclosed in the specification includes this feature of the image submission tool being integrated into a webpage. The '094 patent also criticizes prior-art media submission tool as lacking back-end automation in the handling and distribution of media objects. '094 patent, 2:1-6. After criticizing the prior-art media submission tool, the 094 patent further explains that the "web page integration" of the '094 patent's "present media submission tool" "facilitate[s] automatic server- side integration of media content." '094 patent, 6:45-50. As the '094 patent explains, integrating the web-based program into the webpages solves the back-end problem of distributing digital contents and provides a "required" feature of the "present invention" and a "key differentiator" from prior-art programs. This further supports the understanding of a person of ordinary skill in the art that the image submission tool must be capable of being integrated into a webpage. It is my opinion that the prosecution history of related patents in the '094 patent family confirms this understanding of a person of ordinary skill in the art. For example, during the prosecution of the original U.S. Patent Appl. No. 09/357,836, the applicants argued that the 19 5 Declaration of Stephen Gray "media object identifier [for the image submission tool] of the present invention" provided "great commercial success" because of its ability to be incorporated into "[m]any existing websites including Ebay.com and Realtor.com." Ex. PC02, Amendment and Response to Office Action, U.S. Patent Appl. No. 09/357,836 at 5 (Mar. 22, 2002). The applicants further stated that "the present invention embeds objects in web sites that enable client-side pre-processing." Ex. PC03, Interview Summary, U.S. Patent Appl. No. 09/357,836 at 1(Feb. 27, 2003). And the applicants further stated that "[t]o include a media object identifier on a customer web page, the customer can cut and paste code snippets for these sections into a web page" and that "cutting and pasting the code of Appendix A into code for a third party web site will embed a media object identifier onto the web site." Ex. PC04, Amendment to Office Action Under 37 C.F.R. § 1.111, U.S. Patent Appl. No. 09/357,836 at 18 (Mar. 11, 2003). Thus, in my opinion, a person of ordinary skill in the art reading these statements made during prosecution would have understood that the image submission tool must be "capable of being integrated into a webpage." 3. Image submission tool is capable of being configured to perform a variable amount of intelligent pre-processing on media objects prior to upload In my opinion, a person of ordinary skill in the art reviewing the '094 patent's intrinsic record would have understood that "image submission tool" is a program "capable of being configured to perform a variable amount of intelligent pre-processing on media objects prior to upload." A "key" feature of the applicants' present invention is the image submission tool's capability "to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 2:36-38, 4:49-51; 2:35-38. 20 5 Declaration of Stephen Gray According to the '094 patent, the "Prepare and Post components requires … a Configuration Section." '094 patent, 5:19-21. This Configuration Section "overrides various configurable default settings that the customer can control. '094 patent, 5:29-33. The '094 patent further applies this description related to preprocessing of image media "equally to media objects of all descriptions." '094 patent, 2:51-54. Figures 1 and 2 even demonstrate a web page with the capability of being configured by the user to perform a variable amount of intelligent pre- processing on media objects prior to upload—specifically, in operation the user can add a variable number of photos and even build a "SurroundView." Thus, in my opinion, a person of ordinary skill in the art reviewing all of the embodiments of the '094 patent's present invention would have understood that the image submission tool must be capable of being configured to perform a variable amount of intelligent pre-procession prior to upload. Accordingly, it is my opinion that a person of ordinary skill in the art would understand the term "image submission tool" to mean "web-based program capable of being integrated into a webpage and configured to perform a variable amount of intelligent pre- processing on media objects prior to upload." "pre-process" Counsel for PlainsCapital asked me to provide an opinion regarding the meaning of "pre-process" in the '094 patent, claims 30 and 42, as it would have been understood to a person of ordinary skill in the art at the time of the invention. I understand that this term was previously construed in two prior cases. Counsel for PlainsCapital has advised me that the term "pre-process" was previously construed to mean: 21 5 Declaration of Stephen Gray a) "modifying the [media object data/digital content data], as opposed to data merely associated with the [media object/digital content], at the client or local device in preparation for transmission to a remote device"; or b) "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, video files, audio files], at the client or local device prior to transmission to a remote device." I have been informed that the parties have proposed the following constructions of the term "pre-process," as used in the claims of the '094 patent: Terms and Claims PlainsCapital's Lupercal's Construction Construction "pre-process" "modifying the one or more "modifying the one or more image files, as opposed to images, as opposed to data Claims 30, 42 data merely associated with merely associated with the the image files, at the user one or more images, at the device prior to transmission user device prior to to a remote device" transmission to a remote device" I generally agree with the construction that "pre-processing" involves the modification of material but not the modification of "data merely associated with" the media object, digital content, image files, etc. I understand that Lupercal proposed the construction above on November 13, 2019. I reserve the right to respond to that construction in a reply declaration after considering Lupercal's arguments. This is consistent with the '094 patent's specification. For example, the specification explains that pre-processing includes various types of modification of the file itself stored in memory, such as resizing (or compressing), changing the file format, cropping (or 22 5 Declaration of Stephen Gray changing the aspect ratio), adding text or annotation, converting (or encoding), changing orientation, combining (or stitching), or enhancing. '094 patent, 4:59-5:3. This is also consistent with the original claims in the parent U.S. patent application, which list ten different ways of pre-processing a media object prior to transportation to the second location: Ex. PC05, New Application, U.S. Patent Appl. No. 09/357,836 at 15 (July 21, 1999). In my opinion, a person of ordinary skill in the art would have understood the material subject to pre-processing is the image file itself stored on the user device, as opposed to other data associated with the image files. In my opinion, according to the '094 patent, digital image files are images that have been captured via digital cameras and scanners and saved onto 23 5 Declaration of Stephen Gray the user device, not raw digital image data. See '094, 1:25-26. Thus, the pre-processing is conducted on the digital image files, not on the raw digital image data. Moreover, a person of ordinary skill in the art reviewing all of the '094 patent's disclosed embodiments would have understood that the image to be modified is a digital image file stored locally on the user device. For example, the '094 patent explains that the user may "drag and drop" the existing image file or "browse a directory to select" the existing image file. '094 patent, 2:25-27, 3:23-51. Thus, in my opinion, a person of ordinary skill in the art would have understood "pre-process[ing]" to mean "modifying the one or more image files, as opposed to data merely associated with the image files, at the user device prior to transmission to a remote device." It is my opinion that the prosecution histories of the related patents further confirm the understanding of such person of ordinary skill in the art. For example, during prosecution of the parent U.S. Patent No. 7,765,482, the applicant distinguished a prior art (Hui reference) because the prior art "processes information associated with digital content," which does not constitute "pre-process[ing] the digital content." Ex. PC06, Amendment, U.S. Patent Appl. No. 10/961,720 at 22 (Mar. 26, 2010). During an inter partes review of a related U.S. Patent No. 8,612,515, the patent owner of related distinguished a prior art (Creamer reference) because it manipulated "a raw image" rather than "modifying an existing image that has already been saved in a storage media. … Because Creamer compresses raw image data, not identified image files …, Creamer does not teach or disclose pre-processing identified files." Ex. PC07, Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00807, Paper 23 at 29-30 (Dec. 9, 2015). In particular, the patent owner likened "pre-processing" to "modifying an existing image that has already been saved in a storage media" and distinguished it from saving a 24 5 Declaration of Stephen Gray raw image "during an image capture process." Ex, PC07, Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00807, Paper 23 at 29 (Dec. 9, 2015). Then the patent owner, in an inter partes review of U.S. Patent No. 7,765,482, distinguished the same prior art Creamer reference because it "describes a digital camera that processes raw image data, … not a camera that processes captured images." Ex. PC08, Patent Owner's Response Under 37 C.F.R. § 41.120, Google Inc. v. Summit 6 LLC, IPR2015-00806, Paper 28 at 15, 31-32 (Dec. 9, 2015); see also Ex. PC07, Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00807, Paper 23 at 9, 13, 30 (Dec. 9, 2015). Thus, a person of ordinary skill in the art reviewing the prosecution histories would have understood that pre-processing modifies existing digital image files that have been saved into memory and not a raw image capture during an image capturing process. Moreover, in my opinion, a person of ordinary skill in the art would have understood that image processing refers to the processing of images, which is an operation distinct from image capturing. In my opinion, such an understanding is consistent with contemporaneous dictionary definitions. See, e.g., Ex. PC15, Oxford Dictionary of Computing at 235 ("[I]mage capture (image acquisition)" means "[t]he process of obtaining a digital image from a vision sensor, such as a camera," and "image processing (picture processing)" means "[p]rocessing of the information contained in a *digital image."); Ex. PC19, Freedman Computer Desktop Encyclopedia 442 (2d ed. 1999) ("[I]mage processing" means "[a]ny image improvement, such as refining a picture in a paint program that has been scanned or entered from a video source."). This is also consistent with statement by the patent owner's expert, Dr. Kaliski, confirming that "manipulation of raw image data is not pre-processing of an image [because] the digital image … 25 5 Declaration of Stephen Gray does not exist until a JPEG compressed image is stored in general purpose memory." Ex. PC09, Declaration of Dr. Martin Kaliski, IPR2015-00807, Exhibit 2058, ¶¶ 110, 146 ("Kaliski Decl."). Accordingly, in my opinion, a person of ordinary skill in the art would have understood the term "pre-process[ing]" to mean "modifying the one or more image files, as opposed to data merely associated with the image files, at the user device prior to transmission to a remote device." "pre-processing parameters" Counsel for PlainsCapital asked me to provide an opinion regarding the meaning of "pre-processing parameters" in the '094 patent, claims 30 and 42, as it would have been understood to a person of ordinary skill in the art at the time of the invention. I understand that this term was previously construed in two prior cases. Counsel for PlainsCapital has advised me that "pre-processing parameters" was previously construed to mean "values directing the preprocessing." I have been informed that the parties have proposed the following constructions of the term "pre-processing parameters," as used in the claims of the '094 patent: Terms and Claims PlainsCapital's Lupercal's Construction Construction "pre-processing parameters" "configurable values "values directing the pre- directing the pre-processing, processing" Claims 30, 42 as opposed to merely default values" In my opinion, a person of ordinary skill in the art would have understood "pre- processing parameters" to mean "configurable values directing the pre-processing, as opposed to merely default values." I understand that Lupercal proposed the construction above on November 26 5 Declaration of Stephen Gray 13, 2019. I reserve the right to respond to that construction in a reply declaration after considering Lupercal's arguments. As I discussed above, in the '094 patent, an important feature of the invention is that the image submission tool is "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 2:35-38. Indeed, the '094 patent disparages the prior-art media submission tool because it merely transferred files to a server from the user's desktop and lacked "built in 'intelligence' to streamline the process of handling and transporting rich media objects from the front end." '094 patent, 1:59-2:6. Further, Figure 3 of the patent shows a table "PWImageControl Interface" with configurable variables consistent with the purportedly important need in the field for configurability to perform a variable amount of intelligent preprocessing on media objects prior to upload. In my opinion, this lack of "intelligence" refers to the prior-art media submission tool's inability to process the media. A person of ordinary skill in the art would have known that a software without intelligence means that software can receive information and transmit information, but it cannot independently process the received information. A person of ordinary skill in the art reviewing the '094 patent would have understood that the '094 patent distinguishes the prior art media submission tool based on the lack of intelligence. For example, the '094 patent states that its present invention's benefits include "the ability to submit media objects to web pages 'as is' without [the image submitter] making modifications to the media objects prior to sending" so that the "contributed media [is] 'made to order' … and meets … [the web site partner's] imaging specifications every time without human 27 5 Declaration of Stephen Gray intervention." '094 patent, 3:1-9; see also 5:5-7 ("[T]he tools will automatically prepare it to meet the requirements of the second location."). It is my opinion that a person of ordinary skill in the art would have found this ability to "mak[e] modifications" according to the "imaging specifications" or "requirements of the second location" as an important feature in the '094 patent's present invention. This is because this provides the tool with the ability to be "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 3:1-9, 5:5-9, 2:26-38. This is unlike the prior-art media submission tool, which allows user to "transfer files to a server … without having to leave the web page" but cannot "mak[e] modifications" according to the "imaging specifications" or "requirements of the second location." The '094 patent explains that the present invention is "configurable to perform a variable amount of intelligent preprocessing" because the image submission tool "requires … a Configuration Section." '094 patent, 2:26-38, 5:19-20. In the '094 patent, this Configuration Section configures the image submission tool "to perform any preprocessing of the image that may be desired prior to upload" using "[c]onfigurable parameters" such as "DefaultImageWidth and DefaultImageHeight" values. '094 patent, 5:30-39. It is my opinion that a person of ordinary skill in the art would have understood that the "values directing the pre-processing" must be "configurable" because this is a required part of the image submission tool. It is my opinion that these configurable values provide the image submission tool's ability to preprocess images," in contrast to the prior-art media submission tool that lacks "intelligence." 28 5 Declaration of Stephen Gray However, the configurable value, in my opinion, is not default values of the existing webpages. The '094 patent makes this clear: the prior-art media submission tool lacks any intelligence and is not "configurable to perform a variable amount of intelligent preprocessing." In my opinion, a person of ordinary skill in the art reviewing the '094 patent would have understood that the configurable value cannot simply be default values of the existing web pages. According to the patent, the prior-art media submission tool lacks any intelligence, and as such, is not "configurable to perform a variable amount of intelligent preprocessing." The prior- art media submission tool can only "allow[] users to, without leaving a web page, transfer files to a server" using the web page's default settings. In contrast, the configurable value in the invention "overrides various configurable default settings that the customer can control." '094 patent, 5:29- 30. A person of ordinary skill in the art would have understood that the "customer" refers to the person integrating the image submission tool "into the web page," not the "web site visitors (users)." '094 patent, 5:10-14. In my opinion, a person of ordinary skill in the art would have understood that default settings refer to the customer's existing settings in the customer's "own web pages," as opposed to the configurable values provided to the image submission tool. '094 patent, 5:10-11, 30-31. The image submission tool by overriding the default settings using configurable values has the "ability to preprocess the media objects in any number of ways prior to transporting to a second location" via the client-side intelligence built into the tools. This is a "key differentiator" of the invention, according to the '094 patent, and an important feature. '094 patent, 2:26-38, 4:57-59, 4:49-50, 5:5-7. 29 5 Declaration of Stephen Gray In my opinion, the phrase "as opposed to merely default values" helps clarify the distinction between using the configurable values of the image submission tool to direct pre- processing and using the default values of the existing web pages to direct the pre-processing. Accordingly, in my opinion, a person of ordinary skill in the art would have understood the term "pre-processing parameters" to mean "configurable values directing the pre- processing, as opposed to merely default values." "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" Counsel for PlainsCapital asked me to provide an opinion regarding the meaning of "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" in the '094 patent, claims 30 and 42, as it would have been understood to a person of ordinary skill in the art at the time of the invention. I have been informed that the parties have proposed the following constructions of the term "the pre-processing by the image submission tool controlled by one or more pre- processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party," as used in the claims of the '094 patent: 30 5 Declaration of Stephen Gray Terms and Claims PlainsCapital's Lupercal's Construction Construction "the pre-processing by the "pre-processing the one or No construction of this term image submission tool more image files using the is required. This term has its controlled by one or more image submission tool to plain and ordinary meaning pre-processing parameters meet the pre-processing as understood by a person of received from a device parameters specified by a ordinary skill in the art. separate from the user device receiving party, the pre- in a conversion of the one or processing parameters being more images or the one or received by the image more replacement images as submission tool from a device specified for use by a other than the user device receiving party" during a change of the one or more image files from one Claims 30, 42 form to another" The term "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" has no "plain and ordinary meaning" to a person of ordinary skill in the art because there is no commonly understood meaning for the claim term as a whole. In my opinion, a person of ordinary skill in the art reviewing the intrinsic and extrinsic record of the '094 patent would have understood that the inventors provided a definition of the term "the pre-processing by the image submission tool controlled by one or more pre- processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party," based on the teachings in the specification and statements made during the prosecution of the '094 patent and related patents. A person of ordinary skill in the art would understand that the pre-processing is performed "using the image submission tool." The specification explains that the image submission tool, sometime referred to in the '094 patent as the "Prepare and Post tool," "prepares 31 5 Declaration of Stephen Gray and submits media objects from inside a standard browser, referred to as the first location, to a second location or server." '094 patent, 2:47-50; see also 2:55-57 ("The Prepare and Post tools refers to browser-side components which together provide the ability to submit and transport media objects over the web to be stored and served."). The specification also explains that "[u]sing the Prepare and Post tools, end users can submit images in an immediate, intuitive manner. No technical sophistication is required … since the Prepare and Post tools handles all of these tasks for the user," including performing "intelligent preprocessing on media objects prior to upload." '094 patent, 2:58-63, 2:35-38; see also 2:38-39 ("In the case of digital images, the tool can perform sizing and formatting, for example."). Accordingly, it is my opinion that a person of ordinary skill in the art would have understood that the pre-processing is performed using the image submission tool. A person of ordinary skill in the art would also understand that the pre-processing is performed to meet the pre-processing parameters specified by a receiving party. The '094 patent explains that the images are pre-processed to "meet[] [the web site partner's] imaging specifications" '094 patent, 2:64, 3:7-9; see also 5:4-7 ("[T]he tools will automatically prepare [the media] to meet the requirements of the second location."). From this, a person of ordinary skill in the art would understand that the image submission tool could be used to meet the requirements of the web site partner because of the configurable values (i.e., pre-processing parameters). Statements made during prosecution of the related patents also support such an understanding. During prosecution of the application for the parent U.S. App. No 12/831,503, the applicant argued that the claim term "clarif[ied] the role of pre-processing in preparing media for use by a receiving party," explaining that "if the web site partner has a particular imaging 32 5 Declaration of Stephen Gray specification (e.g., aspect ratio), then the pre-processing of the media object identifier can pre- process the image to conform to that imaging specification." Ex. PC10, Amendment, U.S. Patent Appl. No 12/831,503 at 12 (Feb. 20, 2017). From this, a person of ordinary skill in the art would understand that the pre-processing is performed to meet the pre-processing parameters specified by a receiving party. A person of ordinary skill in the art would also understand that the pre-processing parameters are received by the image submission tool that is stored for use on a user device, even though the claim language is silent about what received the pre-processing parameters. This necessarily follows because in order for the pre-processing by the image submission tool to be "controlled by" pre-processing parameters that are "received from a device separate from the user device," the image submission tool must receive the pre-processing parameters. A person of ordinary skill in the art would also understand, based on an understanding of what it means to be a separate device, that "a device separate from the user device" means "a device other than the user device." Counsel for PlainsCapital has informed me that the term "a device separate from the user device" was previously construed in a prior litigation to mean "device other than said client device." Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014-O, 2015 U.S. Dist. LEXIS 179647 (N.D. Tex. Mar. 21, 2015) ("HTC"). Although the phrase "in a conversion" is not expressly used in the '094 patent specification, a person of ordinary skill in the art reviewing the '094 patent specification as a whole and the related prosecution histories would have understood that the pre-processing parameters are received during a change of the one or more image files from one form to another. The plain language of the claims supports this understanding because the phrase "in a 33 5 Declaration of Stephen Gray conversion," is used in claims 30 and 42 as a prepositional phrase to describe the context of how the pre-processing parameters are received by the image submission tool. The prepositional phrase "in a conversion" modifies the verb "received" immediately before it. A person of ordinary skill in the art would have understood that the preposition "in," as used "in a conversion," refers to a temporal aspect, as opposed to indicating a location. This use provides a temporal context regarding when the pre-processing parameters are received. For example, the preposition "in" is followed by the noun "a conversion," which refers to the process or act of converting something, so to be in a conversion means to be in the process of converting. To be in the process of doing something means that the process has started but is yet to conclude. In other words, to be "in a conversion" means to be at some point after the start and before the end of the conversion, such as "during a conversion." A person of ordinary skill in the art would have understood that the image submission tool receives the pre-processing parameters during the course or duration of a conversion of the one or more images files while it is converting one or more image files, for example, after it has started to convert the one or more image files but before the conversion is complete. A person of ordinary skill in the art would have understood that "conversion" also provides a technical context for the one of more image files, such that a "conversion" of the image files refers to a change of the one or more image files from one form to another. As explained by the specification of the '094 patent, the image submission tool may, among other things, "encode … the media object," etc. '094 patent, 4:63-5:8. Thus, encoding the media object refers to the conversion of the media object into a particular form. As explained in the specification of the '094 patent, this is one of the ways the image submission tool can "preprocess the media objects … prior to transporting to a second location" and is "provided 34 5 Declaration of Stephen Gray via this [client-side] intelligence" built into the image submission tool. '094 patent, 4:50-5:1. The conversion is distinguished over other forms of pre-processing, such as "resizing," "compressi[ng]," "crop[ping]," or other "enhance[ment]" of the images. '094 patent, 4:60-5:2. The prosecution histories of related patents also support this understanding. For example, the original claims in the parent U.S. patent application no. 09/357,836 list "encoding or otherwise converting the media object" as one of the ways of pre-processing a media object prior to transportation to the second location. Ex. PC05, New Application, U.S. Patent Appl. No. 09/357,836 at 15 (July 21, 1999); see also Ex. PC21, Preliminary Amendment, U.S. Patent Appl. No. 10/961,720 at 3 (October 8, 2004) (claiming "[e]ncoding or otherwise converting the media object" as one of the ways for "digitally processing the media object prior to transpor[t]ation to the second location"). From this, a person of ordinary skill in the art would understand that the propositional phrase "in a conversion of the one or more images or the one or more replacement images" means "during a change of the one or more image files from one form to another." It is my opinion that such an understanding is also supported by contemporaneous dictionary definition. According to Microsoft's Computer Dictionary "conversion" is defined as "[t]he process of changing from one form or format to another." Ex. PC17, Microsoft Computer Dictionary at 112. Merriam-Webster's definition of "conversion" ("the act of converting" or "the process of being converted," and "convert" as "to change from one form or function to another.") is consistent this definition, since both define "conversion" as some type of change in form. Ex. PC20, Merriam-Webster's Collegiate Dictionary at 253 (10th ed. 2000). Therefore, it is my opinion that a person of ordinary skill in the art would understand "the pre-processing by the image submission tool controlled by one or more pre- processing parameters received from a device separate from the user device in a conversion of the 35 5 Declaration of Stephen Gray one or more images or the one or more replacement images as specified for use by a receiving party" to mean "pre-processing the one or more image files using the image submission tool to meet the pre-processing parameters specified by a receiving party, the pre-processing parameters being received by the image submission tool from a device other than the user device during a change of the one or more image files from one form to another." VIII. INDEFINITE CLAIM TERM "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" Counsel for PlainsCapital asked me to provide an opinion regarding the meaning of "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" in the '094 patent, claims 30 and 42, as it would have been understood to a person of ordinary skill in the art at the time of the invention. I have been informed of the parties' position regarding this term. I disagree with Lupercal's assertion that the term "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" is definite. In my opinion, a person of ordinary skill in the art reviewing the '094 patent would not have been informed with reasonable certainty what is the objective standard for a user making such a determination to replace an image. Determine whether an image "should be replaced," is a subjective determination, which necessitates a judgment call by a user, not an objective standard. For example, one user's opinion as to "whether [an] image should be replaced" based on the "visual representation" is not necessarily the same as another user's opinion as to "whether [that same] image should be replaced." It is my opinion that the '094 patent does not set forth any objective criteria for users to determine from a visual representation of an image whether the image "should be" 36 5 Declaration of Stephen Gray replaced. There is nothing in the specification of the '094 patent that would inform a person of ordinary skill in the art how the generated visual representation enables a user to determine whether an image should be replaced with a replacement image. Because the user determination is completely subjective, a person of ordinary skill in the art would not have been informed with reasonable certainty how to generate "a visual representation" that would enable such a determination. Thus, there are no objective boundaries for generating the visual representation. Although the '094 patent describes that the user may replace one or images that are "wrong" or "mistaken," it fails to provide guidance for determining from the visual representation whether an image "should be replaced" with a replacement image. See '094 patent, 4:7-13. In the absence of objective criterion in the '094 patent for "wrong" or "mistaken," the subjective determination of whether an image "should be replaced" is left to the user. Accordingly, it is my opinion that the term "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" is indefinite because the '094 patent provides no objective guidance as to how a user may determine "whether the one or more images should be replaced with one or more replacement images" and no objective boundaries for generating a visual representation that may enable such a determination. I declare that all statements made herein of my knowledge are true, and that all statements made on information and belief are believed to be true, and 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. Dated: November 15, 2019 Stephen Gray 37 5 Attachment 1 5 Stephen Gray Expertise  Distributed Computing Architecture  Image and Document Processing  Internet/Web/e-Commerce  Relational Database Design  Web Services Protocols/SOA  Network Architecture  Client/Server Technology  Software Quality  User Interface Technology  Software Development Life Cycle  Software Architecture  Clean Room Design Professional Summary Mr. Gray has over 30 years of experience in the computer and communications industries. His background includes systems and software architecture, design and development as well as senior management positions in development, marketing, and general management. Employment History From: 1984 Gray & Gray, LLC To: Present San Diego, CA Position: Principal Mr. Gray is an expert in modern computing platform architecture, design, implementation and integration, including relational database design in networking environments. In providing consulting services, he has successfully completed the following projects:  Performed patent portfolio analysis for large corporations  Developed policies and procedures for a "clean" software development environment. Monitored activities to ensure conformance.  CSO for a Business Process Management software start up. The firm develops Web Services/SOA based BPM creation, orchestration, management and optimization solutions.  CTO for an e-Commerce Internet start up. The firm developed a product that specializes in procurement for public agencies.  Interim CEO for a broadband Competitive Local Exchange Carrier (CLEC). Helped negotiate the successful sale of the CLEC.  CTO for an Internet-based secure content distribution startup. The firm developed comprehensive Digital Rights Management (DRM) solutions for the control and promotion of content on the Internet.  Architected several e-Commerce applications for legacy interoperability Confidential Resume of Stephen Gray Page 1 Printed: 11/15/19 5  Participated in the architecture definition and design of a highly scalable, high performance device controller for multifunction document processing products  Performed a detailed analysis of the competitive environment for retail point-of-sale hardware and software systems. Analysis included technology, marketing, compensation and back office interface issues  Provided system design, product selection and project management for a turnkey software/hardware system for residential refuse hauling and toxic waste disposal company. System involved multiple hardware and software vendors around the IBM AS400 central processing system  Led the design of a high performance, LAN-based image capture and statement printing subsystem using IBM system components using DBII relational database and SQL language for TRW  Led the design of an image assisted, remittance processing system using IBM system components and Sybase relational database in a client/server architecture for TRW. Additionally, designed an object-oriented front end to the database so that the UNIX platform could execute Sybase applications  Engaged to perform a technology audit for the United States Department of Agriculture using ORACLE database products, which resulted in a major overhaul of the database management implementation for their application  Collaborated with FileNet to develop an IBM-to-UNIX interconnection strategy for their optical disk-based document imaging and filing system  Defined high speed interconnection and relational database methods using SQL language for Marriott Corporation to handle large transaction volumes in a hotel reservations system  Collaborated with Xerox in mid 1990s development of an electronic printing system front end supporting a wide range of advanced printing services, including resolution enhancement technology  Advised Northern Telecom on the performance of IBM's Net View product  Authored two technical seminars: SNA Technology Update, OS/2 and SAA, Introduction to Client/Server Technology with special emphasis on relational database management. Published articles in trade journals such as Interface Age, CASE World and Info World From: 2001 Networld Exchange Incorporated To: 2002 Bonsall, CA Position: Chief Technical Officer Confidential Resume of Stephen Gray Page 2 Printed: 11/15/19 5 Networld Exchange, Inc. (NEI) provides Fortune 2000 companies private trading exchange (PTX) solutions that automate their B2B commerce activities. NEI is a restart. NEI is funded by institutional investors in New York and Florida. Mr. Gray was recruited in 4Q01 by the investors as part of the new management team. From: 2000 NTN Communications To: 2001 Carlsbad, CA Position: Chief Technical Officer NTN Communications, Inc. (AMEX: NTN) is the parent corporation of two operating divisions: Buzztime Entertainment, Inc. and the NTN Network®. Mr. Gray serves as CTO for the parent corporation and each of its operating divisions. Buzztime Entertainment, Inc. develops and distributes sports and trivia games to a variety of interactive platforms including interactive television, the Internet, PDS and mobile phones. The NTN Network, NTN's hospitality business, operates two interactive television (ITV) networks that broadcast games to millions of consumers each month at 3500 restaurants, sports bars and taverns in North America. Mr. Gray is responsible for all of the technical aspects of the corporations as well as forward looking programs and business opportunities. From: 1987 Simpact Associates To: 1988 Position: Director, Product Marketing Directed the full life cycle of definition, delivery, marketing and enhancement of four sets of IBM connectivity products, including:  SNA protocol support hardware and software for DEC VAX systems  An IBM PC-based gateway product that supports SNA and other industry-standard communications architectures  A Netware-based Token Ring Network adapter board and software for DEC VAX systems  A hardware/software product that receives financial market feeds and reformats the information for presentation to programs running a VAX via a proprietary applications programming interface (API) From: 1982 Xerox Corporation To: 1987 Position: General Manager, Host Software Products 1985-87 As the founder and leader of the product delivery organization of a Xerox independent business unit, Mr. Gray managed 21 employees and Confidential Resume of Stephen Gray Page 3 Printed: 11/15/19 5 33 contract professionals. He directed the definition, architecture, design, development, test, product transfer and sustaining engineering of six products for electronic page printers connected to IBM mainframes (MVS, VSE, VM), DEC VAX (VMS) and IBM PC's (DOS). 1982-85 Manager, Foreign System Interconnect. Managed four professionals who defined and developed the technical interconnect strategy for electric page printers to wide-and local-area networks. Mr. Gray's group delivered host software, network and printer engineering services. He invented a new printer interconnection technique, developed interfaces to Ethernet local area network, and designed connections to IBM mainframes using SNA and the System/370 channel. From: 1979 Computer Communications, Inc. To: 1982 Position: Manager, Communication Controller Software Development As leader of the architecture, design, development, and testing of an SNA communications controller in the MVS operating environment, Mr. Gray managed 24 professionals. His group successfully designed, developed and deployed the controller's operating software, diagnostics, host-based compilers, and system support software. Before that, he was the product manager for front-end processors and remote concentrators. Also, he engineered an X.25 multi-channel controller. From: 1977 Olivetti Corporation To: 1979 Position: Regional Support Manager Started as a district manager and later became a regional software support manager for a series of mini- and microcomputer business systems. Applications included general business and on-line front- office banking. From: 1973 Burroughs Corporation To: 1977 Position: Systems Programmer, Systems Analyst Specializing in data communications software and held several design and product implementation positions in the mid range and small system development groups (MCP). Additional Professional Experience:  Designed and implemented numerous relational database management systems using Sybase, Informix, Microsoft Access, DB2. Confidential Resume of Stephen Gray Page 4 Printed: 11/15/19 5  Knowledgeable in C, C++, SQL, COBOL, RPG, Basic, Java, various Assembler languages, HTML, XML and others.  Designed IBM SNA Distribution Services compatible electronic mail interface product. The product interfaced to MCI mail services.  Designed peer-to-peer printing network product for MCI  Designed image-processing system for TRW on contract with the Internal Revenue Service. Participated in the implementation of a prototype of the system.  Designed image based item processing system for TRW and IBM Participated in the implementation of a prototype of the system.  Defined IBM interoperability strategy for FileNet products.  Defined distributed network printing product for Xerox.  Defined and managed several networking products for Simpact Associates. Used the System Strategies Inc. Express SNA package.  Defined, designed and implemented several interoperability interfaces to Xerox Electronic Printers.  Defined, designed and implemented telecommunications control devices for Computer Communication Incorporated.  Developed and presented numerous public and in-house courses in IBM, Unix, Internet and related operating system and networking technologies.  Member of UCSD Connect "Most Innovative Product Award" Selection Committee (2002, 2003, 2004). Member of Association of Computing Machinery and Institute of Electronic and Electrical Engineers Litigation Support Experience (Note: Those entries marked with * indicate testimony by trial, hearing or deposition in the last 5 years. The retaining party is underlined.) Date: 2018 Thompson Hine Ameranth v. O-Web Technologies (Case No. 1:17-cv-01810-DMS- WVG, SD CA) Patent Infringement – Hospitality Information Management Active Date: 2018* Cooley Godward Mirror Worlds Technologies v. Facebook (Case No. 3:17-cv- 03473-JGK, SD NY) Patent Infringement – Document Stream Operating System Active Date: 2018 Holland & Knight Advice Interactive Group v. Web.com (Case No. 3:17-cv-00801- BJD-MCR, MD FL) Copyright and Trade Secret – Directory Management Active Confidential Resume of Stephen Gray Page 5 Printed: 11/15/19 5 Date: 2018 Brooks Kushman Ameranth v. Domino's Pizza (Case No. 3:11-cv-01810-DMS- WVG, SD CA) Patent Infringement – Hospitality Information Management Active Date: 2017* Greenberg Traurig Team Express Distributing LLC v. Microsoft (Case No. 5:15-cv- 00994-DAE, WD TX) Contract Dispute – Software Development Active Date: 2017* Cooley Godward SoundView v. Facebook (Case No. 1:16-cv-00116, DE) Patent Infringement – Web Technologies Active Date: 2017 Greenberg Traurig Yahoo! v. AlmondNet (Inter Partes Reviews and Covered Business Method Reviews, Pet. No. unknown, PTAB) Patent Infringement – Internet Advertising Active Date: 2017* The Sladkus Law Group Broker Genius v. NRZ (1:17-cv-02099-SHS, SD NY) Copyright and Trade Secret – Online Sales Inactive Date: 2017 Lapp, Libra, Thomson, Stoebner & Pusch Midwest Veterinary Supply v. Insite Software Solutions (case no. unknown, St. Court of MN) Contract Dispute – Software Development Active Date: 2017 Covington & Burling Verizon v. Bridge & Post (Inter Partes Reviews, Pet. No. unknown, PTAB) Patent Infringement – Directed Media Active Date: 2016* Quinn Emanuel Telesocial v. Orange (Case No. 3:14-CV-03985-JD ND CA) Trade Secret Misappropriation – Smartphone Telephony Inactive Confidential Resume of Stephen Gray Page 6 Printed: 11/15/19 5 Date: 2016 Fish and Richardson Phoenix Licensing v. TIAA-CREF, LifeLock (Case No. 2:15-cv-1367, ED TX) Patent Infringement – Web Marketing Inactive Date: 2016 Benesch, Friedlander, Coplan and Aronoff LLP PCCA v. Sogeti (Case No. 3:15-cv-00239, SD OH) Breach of Contract, etc. – System Re-write Active Date: 2016 Locke Lorde Bluespike v. Huawei, InfoSonics, et al. (Case No. 6:13-CV-679-RWS, ED TX) Patent Infringement – Address Space Layout Randomization Active Date: 2016 Wilson Sonsini Goodrich and Rosati Acceleration Bay LLC v. Activision Blizzard Inc. (Case No. 1:16- cv-453, D. Del.) Consulting Expert for Bungie Active Date: 2016 Holland and Knight, LLP HyVee v Inmar Inc. (Case No. 4:15-CV-00275-JEG-CFB, SD IA) IPR – Coupon management Active Date: 2016 Bryan Cave Skyline v Freeney (Pet. No. unknown, PTAB) IPR – Distributed pricing Inactive Date: 2015 Baker Botts Phoenix Licensing v. DISH Network L.L.C. CBM – eCommerce technology Inactive Date: 2015 Paul Hastings Summit 6 LLC v. HTC Corp. (Case No. 7:14-cv-14, N.D. Tex.) Patent Infringement – Media management Inactive Date: 2015 Orrick, Herrington & Sutcliff LLP Esselte v. Dymo (Pet. No. unknown) IPR – label printing Confidential Resume of Stephen Gray Page 7 Printed: 11/15/19 5 Active Date: 2014* Orrick, Herrington & Sutcliff LLP Good Technology Corp. v. MobileIron, Inc. (Case No. CV-12- 05826 PSG, ND CA) Patent Infringement – mobile data management in IOS and Android mobile phones. Inactive Date: 2014* Bracewell & Giuliani LLP Droplets, Inc. v. Overstock.com, Inc., Sears et al (Case No. 2:11- CV-401-JRG-RSP, ED TX Patent Infringement – distributed processing Inactive Date: 2013* Neal, Gerber & Eisenberg LLP Transunion v. Experian (Pet. No unknown, PTAB) CBMR Inactive Date: 2014 Mayer Brown, LLP M Seven v. Leap Wireless (Cricket) (Case No.: 12-CV-1424-CAB (BLM), SD CA) Copyright – mobile phone software Inactive Date: 2014* Jackson Walker Personal Audio v. Lotzi Digital, Inc. (Case No. 2:13-cv-00014, ED TX) Patent Infringement – distributed processing Inactive Date: 2014* Fish and Richardson, et al Diet Goal Innovations v. Chipotle, et al (Case No. 2:12-cv-00761- JRG-RSP, ED TX) Patent Infringement – distributed processing Inactive Date: 2014* Mayer Brown, LLP B.E. Technology v. Google (Pet. No. unknown, PTAB) Inter Partes Review Active Date: 2014 Greenberg Traurig, LLP PersonalWeb Technologies, LLC; et al v. Microsoft Corporation (Case No. 6:12-cv-663, E.D. Tex.) Patent Infringement – distributed processing Confidential Resume of Stephen Gray Page 8 Printed: 11/15/19 5 Inactive Date: 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Datatreasury Corp v. Fidelity National Information Service (Pet. No. unknown, PTAB) Patent Infringement – distributed processing CBMR Inactive Date: 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP CheckFree Corp., et al. v. Metavante Corp, et al. (Case No. 3:12- cv-15, M.D. Fl.) Patent Infringement – distributed processing Inactive Date: 2013* Perkins Coie LLP Enfish, LLC v. Microsoft Corp., et al. (Case No. 12-cv-7360-MRP, CD CA) Patent Infringement – Windows OS data management Inactive Date: 2013 Klarquist Sparkman, LLP Optimize Technology Solutions, LLC v. Staples, Inc., et al. (Case No. 2:11-CV-00419-JRG, ED TX) Patent Infringement – targeted advertising Inactive Date: 2013* Shibolleth, LLP TJAT v. Amdocs (Case No. 50 117 T 00845 13, NYC NY) Copyright and Trade Secret Infringement Arb. – mobile telephony Inactive Date: 2013* Mayer Brown, LLP B.E. Technology v Google (Pet. No. unknown, PTAB) IPR – targeted advertising Active Date: 2013 Ostrow Kaufman Geotag, Inc. v. Burberry Ltd. (Case No. 2:10-cv 00265-JRG, ED TX) Patent Infringement – search engine technology Inactive Date: 2013 Locke Lord LLP Geotag, Inc. v. Rolex Watch USA (Case No. 2:11-CV-405, ED TX) Patent Infringement – search engine technology Inactive Confidential Resume of Stephen Gray Page 9 Printed: 11/15/19 5 Date: 2013 Fish & Richardson Ingeniador v. Adobe Systems Inc. (Case No. 5:14-cv-1169, N.D. Cal.) Patent Infringement – data management Inactive Date: 2013* Ostrow Kaufman ComScore v. Moat (Case No. 2:12-CV-695-HCM-DEM, ND VA) Patent infringement – website monitoring in Mozilla based systems Inactive Date: 2013 Silicon Edge Law Group Alacritech v. Hewlett-Packard (Patent Interference No. 105,909, BPAI) Patent interference – network performance Inactive Date: 2013 Park, Vaughan, Fleming & Dowler Wisconsin Technology Venture Group v. FatWallet (Case No. 3:12-cv-326, WD WI) Patent infringement – distributed processing Inactive Date: 2013* Jones Day Hartford v. Progressive (Case No. 1:12-cv-02444, ND OH) Patent infringement – distributed processing Inactive Date: 2013 Norton Rose Fulbright BNP v. United Health et al (Case No. 1:09-cv-04690 ND IL) Patent infringement – distributed processing Inactive Date: 2012 Merchant & Gould Phoenix Licensing v. First Premier et al (Case No. Not Available, ED TX) Patent infringement – distributed processing Inactive Date: 2012 Haltom Doan eLynxx v. InnerWorkings (1:10-cv-02535-CCC, MD PA) Patent infringement – distributed processing Inctive Date: 2012 Jackson Walker Global Sessions v Travelocity et al (Case No. 6:10-cv-671, ED TX) Patent infringement – distributed processing Confidential Resume of Stephen Gray Page 10 Printed: 11/15/19 5 Inactive Date: 2012* Cooper & Dunham DDR Holdings v. Hotels.com, et al (National Leisure Group) (Case No. 2:06-CV-42, ED TX) Patent infringement – travel web site Inactive Date: 2012 Fish & Richardson Summit 6 v. RIM (Case No. 3:11-CV-00367, ND CA) Patent infringement – media handling Inactive Date: 2012* Quinn Emanuel Apple v. Samsung (Case No. 11-cv-01846-LHK, ND CA) Patent infringement – user interface operations in Android mobile systems Active Date: 2012* Morrison & Foerster Augme v. Yahoo! (Case No. C-09-5386 JCS, ND CA) Patent infringement – distributed processing Inactive Date: 2012 Wilson Sonsini Goodrich & Rosati Home Bondholders v. Salesforce.com (Case No. 2:11-CV-02409 AHM, CD CA) Patent infringement – distributed processing Inactive Date: 2011* Jackson Walker Transunion v. Experian (Case Info Not Available) Patent infringement – distributed processing Active Date: 2011 Vinson & Elkins Ariba v. Rearden (Case No. CV11-01619, ND CA) Contract Dispute Inactive Date: 2011* Quinn Emanuel Catalina Marketing v. Coupons Inc. (Ref. No. 11000654507, SF CA) Contract Dispute Inactive Date: 2011 Alston & Bird Confidential Resume of Stephen Gray Page 11 Printed: 11/15/19 5 Openwave v. Apple, et al (Case No. 1:11-cv-765, D. Del.) Patent infringement – distributed processing Inactive Date: 2011* DLA Piper Motorola v. Tivo (Case No. 5:11-CV-00053-JRG, ED TX) Patent infringement – audio/video processing in DVDs Inactive Date: 2010* Law Office of Christian E. Mammen, Lieff Cabraser Heimann and Bernstein, LLP and Tousley Brain Stephens, LLP Deep9 v. Barnes & Noble (Case No. 11-cv-35, W.D. Wa.) Patent infringement – distributed processing using Android based mobile systems Inactive Date: 2010* McDermott Will & Emery, Alston & Bird Bedrock v. Soft Layer, et al (Yahoo!, AOL, MySpace) Patent infringement – distributed processing in Linux systems Inactive Date: 2010 Quinn Emanuel Soverain v. J.C. Penney, et al (Case No. 6:09-cv-274, E.D. Tex.) Patent infringement – distributed processing Inactive Date: 2009* Jones Day Oracle v. SAP (Case No. 07-01658, N.D. Cal.) Copyright infringement – enterprise software Inactive Date: 2009* Foley & Lardner DataTreasury v. US Bank Patent infringement – distributed processing Inactive Date: 2009* Gibson, Dunn & Crutcher IPI v. Red Hat, Novell Patent infringement – distributed file systems in Linux systems Inactive Date: 2009* Jackson and Walker ICR v. Harpo Patent infringement – e-Commerce Inactive Confidential Resume of Stephen Gray Page 12 Printed: 11/15/19 5 Date: 2009 Cooley Godward Leader v. Facebook Patent infringement – distributed file systems Inactive Date: 2009* Jones Day SuperSpeed v. IBM Patent infringement – distributed file systems Inactive Date: 2008 Baker & Botts Fotomedia v. Yahoo! Patent infringement – file sharing Inactive Date: 2008* PaulHastings Datascape v. Kyocera, et al Patent infringement – Internet protocols on feature phones Active Date: 2008 Hogan & Hartson ODS v. Magna Entertainment Patent infringement – E-Commerce Inactive Date: 2008* Winston & Strawn CNET v. Etilize Patent infringement – E-Commerce Inactive Date: 2008* Weil, Gotshal & Manges i4i v. Microsoft Patent infringement – Data formatting, representation in MS Word Inactive Date: 2008* Jones Day MathWorks v. COMSOL Patent infringement - interoperability, Copyright Inactive Date: 2008 Townsend, Townsend & Crew Anthurium v. Spheris Patent infringement – Distributed Processing Inactive Confidential Resume of Stephen Gray Page 13 Printed: 11/15/19 5 Date: 2008 Jones Day Soverain v. CDW, et al Patent infringement – e-commerce Inactive Date: 2008 Paul Hastings Sify v. Yahoo! Trade secrets Inactive Date: 2007 Finnegan Henderson Cisco v. Telcordia Patent infringement – system monitoring Inactive Date: 2007 Brown Raysman WebSide Story v. NetRatings Patent infringement – web monitoring in Mozilla bases systems Inactive Date: 2007 Paul Hastings MediaTek v. Sanyo Patent infringement – data compression Inactive Date: 2007 Sutherland FedEx v. U.S. Tax Credit Inctive Date: 2006 Jones Day IBM v. Amazon Patent infringement – Electronic commerce Inactive Date: 2006 Brown Raysman NetRatings v. SageMetrics Patent infringement – web monitoring Inactive Date: 2006 Young Conaway Stargatt & Taylor Sungard v. PHI Breach of contract Inactive Date: 2006 Paul Hastings Confidential Resume of Stephen Gray Page 14 Printed: 11/15/19 5 Autobytel v. Dealix Patent Infringement – Electronic commerce Inactive Date: 2005 Brown Raysman NetRatings v. Coremetrics, et al Patent Infringement – Electronic commerce Inactive Date: 2005 Kim & Wilcox HealthFirst v. HealthTrio Contract Dispute – Electronic information portals Inactive Date: 2005 Ropes & Gray (Fish & Neave) Ampex v. Kodak, et al Patent Infringement – Image transformation Inactive Date: 2005 Sedgwick Detert Moran & Arnold LLP Waltrip Associates v. Kevin Kimperlin & Spencer Trask Ventures Contract Dispute - Theft of trade secret, EDI and ecommerce Inactive Date: 2005 Orrick, Herrington & Sutcliffe LLP Metilinx v. Hewlett-Packard Contract Dispute - Large scale software deployment, QA, system management Inactive Date: 2005 Morrison & Foerster BEA v. SoftwareAG Patent Infringement - Web Services, Software development tools, OOP Inactive Date: 2005 Jones Day Orion v. American Honda Patent Infringement – Electronic Catalogs and Brochures Inactive Date: 2004 Keker & Van Nest AB Cellular v. City of Los Angeles Contract Dispute – Tax Authority, Source Code Analysis Inactive Confidential Resume of Stephen Gray Page 15 Printed: 11/15/19 5 Date: 2004 Silicon Edge Law Group Oracle v. Mangosoft Patent Infringement – Web System Personalization Inactive Date: 2003 Smith Katzenstein & Furlow LLP S. Rakoff et al v. Dot Com Group, A. Nash et al Contract Dispute – Web Analytics Inactive Date: 2003 Jones Day Hill v. IBM Patent Infringement – Electronic Catalog, distributed data management Inactive Date: 2003 Fish & Richardson Mirror Imaging LLC v. Affiliated Computer Services Patent Infringement – Electronic Document Storage Inactive Date: 2003 Jones Day VPS LLC v. Eastman Kodak Co. and Ofoto Patent Infringement – Digital Media distribution Inactive Date: 2002 Fish & Neave LLP Harrah's Casino v. Station's Casino Patent Infringement – Player loyalty system in a network Inactive Date: 1984 O'Melveny & Myers IBM v. NCR Comten Copyright Infringement - Code comparison and product analysis and design of alternative technologies. Inactive Education Year College/University Degree 1973 California Polytechnic University BS, Economics Confidential Resume of Stephen Gray Page 16 Printed: 11/15/19