Lupercal LLC v. CitiBank, N.A.

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

Exhibit PC27

Interested in this case?

Current View

Full Text

0 EXHIBIT PC27 0 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 REPLY CLAIM CONSTRUCTION BRIEF 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief I, Stephen Gray, declare as follows: I. INTRODUCTION I have been asked to submit this declaration on behalf of PlainsCapital Bank ("PlainsCapital"), which I understand will be filed with PlainsCapital's Reply Claim Construction Brief. 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. 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 proceeding. To prepare this declaration, I reviewed Lupercal's Opening Claim Construction Brief and Lupercal's Responsive Claim Construction Brief. I also reviewed other materials as indicated below. In this declaration, I provide my opinions based on my review. I prepared and submitted an expert declaration dated November 15, 2019 (Exhibit PC23) in this litigation. My opinions in this declaration supplement the opinions in my earlier declaration. This declaration does not replace, modify, or withdraw any of my earlier opinions or analyses offered in this litigation. II. MATERIALS REVIEWED In forming my opinions, I have reviewed the materials listed in my earlier declaration (Exhibit PC23) and any other materials that I identify in this declaration or in my earlier declaration, in addition to the following documents: Exhibit No. Description PC25 McGraw-Hill Computer Desktop Encyclopedia at 1053 ["Web-based application"] (9th ed. 2001) 2 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief Exhibit No. Description PC26 Microsoft Press Computer User's Dictionary 142 ["File"] (1st ed. 1998) I have also considered the following documents filed in the present litigation:  Lupercal, LLC v. Citibank, N.A., No. 6:19-cv-00201, Lupercal's Opening Claim Construction Brief, and Exhibits 1-7 attached thereto, ECF No. 34 (November 15, 2019);  Lupercal, LLC v. Citibank, N.A., No. 6:19-cv-00201, Lupercal's Responsive Claim Construction Brief, ECF No. 38 (December 10, 2019); All of the opinions contained in this declaration are based on the documents I reviewed and my knowledge and professional judgment. III. GUIDING LEGAL PRINCIPLES A. Claim Construction In this declaration, I have applied my understanding of the legal principles for claim construction as I described in paragraphs 20-23 in my earlier declaration (Exhibit PC23). B. The Level of Ordinary Skill in the Art As explained in paragraphs 29-30 of my earlier declaration (Exhibit PC23), a person of ordinary skill in the art ("POSITA") 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, or equivalent work experience. It is also my opinion that work experience would substitute for formal education and that additional formal education, such as graduate studies, could substitute for work experience. My opinions in this declaration are based on this definition. 3 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief I understand that Lupercal has not indicated a definition of a person of ordinary skill in the art. IV. SUMMARY OF OPINIONS REGARDING CLAIM INTERPRETATION "Image Submission Tool" I have reviewed Lupercal's arguments that the term "image submission tool" should be given its plain and ordinary meaning and not construed to require a "web-based" tool. Pl. Br. at 8-9; Pl. Resp. 3-5. In my opinion, Lupercal's argument that the claimed "image submission tool" is not "web-based" does not reflect a POSITA's understanding of this term reading the '094 patent. The basis for my opinion is set forth in my earlier declaration (Exhibit PC23) at paragraphs 47-69. In my opinion, Lupercal confuses several distinct concepts: (1) whether a program is "web based" and (2) whether a program operates "in the context of a web-page" or operates solely within a "browser." Pl. Resp. 3-4. A POSITA, in my opinion, would have understood that the '094 patent describes the image submission tool only as web-based programs, as I explained in my earlier declaration (Exhibit PC23) at paragraphs 53-54, 62-66. Whether the image submission tool operates within a "web-page" or within a "browser" does not change that the web-based programs in the '094 patent are downloaded from the Web. '094 patent 5:26-28. In my opinion, a POSITA would have understood that the web-based programs identified in the '094 patent (ActiveX controls, Java applets, JavaScript, and VBScript) are all downloaded from the Internet and that the '094 patent "download[s] all of the needed Prepare and Post submission components" each time to ensure that the web-based programs are able to produce images that are "made to order" "every time." '094 patent, 3:7-9, 5:26-28. This is consistent with how McGraw-Hill Computer Desktop Encyclopedia defines "web-based 4 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief application." See Ex. PC25 at 1053, McGraw-Hill Computer Desktop Encyclopedia (9th ed. 2001) (defining "web-based application" as "[a]n application that is downloaded from the Web each time it is run"). The '094 patent does not describe any embodiment of an "image submission tool" that is not a web-based program. "Pre-process" I have reviewed Lupercal's supporting and responsive arguments for its construction of "pre-process." Pl. Br. 10-11; Pl. Resp. 6-8. In my opinion, Lupercal's argument that the term "image" is not limited to "image files" does not reflect a POSITA's understanding of this term based on the '094 patent. The basis for my opinion is set forth in my earlier declaration (Exhibit PC23) at paragraphs 80-87. In my opinion, a POSITA would have understood that the term "image" as used in the '094 patent does not refer to an image that is raw image data or has not been stored, but rather refers to an image stored on the user device, as I explained in my earlier declaration (Exhibit PC23) at paragraphs 82-83. In the context of the '094 patent, in my opinion a POSITA would have understood that a "file" is a collection of data that has been stored in non-volatile memory. An "image file" is a type of file for image data. Thus, a POSITA would have understood that, in the context of the '094 patent, an "image file" is a collection of image data that has been stored in non-volatile memory of a user device. This is consistent with Microsoft Press Computer User's Dictionary, which defines a "file" as "a named collection of information, such as. . . a set of data used by a program. . . . A file is the basic unit of storage. . . that a user can retrieve, change, . . . or send to an output device." Ex. PC26 at 142, Microsoft Press Computer User's Dictionary (1st ed. 1998). 5 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief In my opinion, a POSITA would have understood that "image," in the context of the '094 patent, refers to an "image file." The '094 patent does not describe any embodiment that pre-processes raw digital data or images that have not been stored to the user device, such as image data in volatile memory. The specification and figures consistently describe the "image" as a file stored in non-volatile memory on the user device. For example, the specification explains that the user may "drag and drop" an existing image file or "browse a directory to select" an existing image file. Ex. PC23 ¶ 8; '094 patent, 3:23-24, 3:34-43; see also '094 patent, 2:28-32 (describing that the image submission tool "generat[es] a thumbnail image of the rich media file that has been selected" (emphasis added)). Fig. 1 also explains that users can locate an image in "the folder on [their] computer" before dragging the image file from the folder to the media object identifier. '094 patent, Fig. 1. A POSITA would have recognized that both the "drag and drop" and "brows[ing] a directory" features search for an image file stored in non-volatile memory on the user device—not a temporary image file, for example. The prosecution history of the '094 patent confirms the POSITA's understanding. As I explained in my previous declaration (Exhibit PC23), during an inter partes review of a related U.S. Patent No. 8,612,515, the patent owner distinguished the claims over the prior art (the "Creamer" reference) because Creamer disclosed manipulating "a raw image" rather than "an existing image that has already been saved in a storage media," which did not constitute an "image file." Ex. PC23 ¶ 85 (citing 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)). Similarly, during an inter partes review of related U.S. Patent No. 7,765,784, the patent owner distinguished prior art as not disclosing "processing of image files" because manipulating "raw image data. . . before initially being saved in general purpose memory" did not constitute "how 6 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief to process an existing image file." Ex. PC08 at 15, 31-32 (emphasis added). This is also consistent with statements by the patent owner's expert, Dr. Kaliski, who distinguished the "pre-processing of an image" with raw image data because "the digital image. . . does not exist until a JPEG compressed image is stored in general purpose memory." Ex. PC23 ¶ 87 (citing Ex. PC09, Declaration of Dr. Martin Kaliski, IPR2015-00807, Exhibit 2058, ¶¶ 110, 146). Thus, in my opinion, a POSITA would have understood that images selected by either "drag and drop" or "brows[ing] a directory" are image files because they are images stored in non-volatile memory on the user device. Such files typically have file names, which for example, allow them to be identified externally. This is consistent with the specification, which describes the media object placed in a "media object identifier" as having a file name and identifies the media object, for example, within a folder or "by specifying a path name". See '094 patent, 3:34-43; 5:50-57, Figs. 3-4. Thus, a POSITA would have understood that in the context of the '094 patent, an "image" is an "image file." For the reasons set forth above and in my earlier declaration, it is my opinion that a person of ordinary skill in the art would have understood the disputed terms to have the following meanings: 7 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief Term Proposed Construction "image submission tool" "web-based program capable of being integrated into a webpage and configured to perform a variable amount of intelligent preprocessing on media objects prior to upload" "pre-process[ing]" "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" "configurable values directing the preprocessing, as opposed to merely default values" "the pre-processing by the image submission "pre-processing the one or more image files tool controlled by one or more preprocessing using the image submission tool to meet the parameters received from a device separate pre-processing parameters specified by a from the user device in a conversion of the receiving party, the pre-processing parameters one or more images or the one or more being received by the image submission tool replacement images as specified for use by a from a device other than the user device while receiving party" the image submission tool performs a change of the one or more image files from one form to another"1 "enabling a user to determine whether the one Indefinite or more images should be replaced with one or more replacement images" 1 In my previous declaration, I opined that a POSITA would understand the term "the pre- processing by the image submission tool. . . in a conversion" to mean "pre-processing the one or 8 0 Declaration of Stephen Gray in Support of PlainsCapital's Reply Brief I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code. Dated: December 23, 2019 Stephen Gray more image files. . . during a change." Ex. PC23 at 35-36. The opinions contained in my previous declaration are consistent under the construction "pre-processing the one or more image files. . . while the image submission tool performs a change." 9