Match Group, LLC v. Bumble Trading Inc.

Western District of Texas, txwd-6:2018-cv-00080

Declaration of Dr. Mark T. Jones

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3 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION MATCH GROUP, LLC Plaintiff, No. 6:18-cv-00080-ADA v. BUMBLE TRADING INC. and JURY TRIAL DEMANDED BUMBLE HOLDING, LTD., Defendants. DECLARATION OF DR. MARK T. JONES I, Mark T. Jones, declare as follows: 1. I have been retained by Caldwell Cassady Curry P.C., counsel for Plaintiff Match Group LLC as an expert in the lawsuit captioned above. I submit this declaration based on personal knowledge and following a reasonable investigation. If called as a witness, I could and would competently testify to the truth of each statement herein. I. Background 2. I am a Professor of Electrical and Computer Engineering at Virginia Tech in Blacksburg Virginia. I graduated summa cum laude from Clemson University in 1986 with a B.S. in Computer Science and a minor in Computer Engineering while holding a National Merit Scholarship and the R. F. Poole Scholarship. I then graduated from Duke University in 1990 with a PhD in Computer Science while holding the Von Neumann Fellowship. A detailed record of my professional qualifications is set forth and attached to this Declaration as Exhibit 1, including my curriculum vitae, a list of publications, awards, research grants, and professional activities. 3 II. The Patent-in-Suit 3. I understand that the patents-in-suit are U.S. Patent No. 9,733,811 (the "'811 Patent"); U.S. Patent No. 9,959,023 (the "'023 Patent"); and U.S. Patent No. 10,302,854 (the "'854 Patent"). I understand that the application maturing to these patents was filed on March 15, 2013. The '811 Patent issued Aug. 15, 2017, the '023 Patent issued May 1, 2018, and the '854 Patent issued February 12, 2019. A listing of these claims is attached as Exhibit 2. III. Level of Skill in the Art 4. A person of ordinary skill in the art of the patent-in-suit at the time of the invention would have had a bachelor's degree in computer engineering or computer science or their equivalents, or at least 5 years of experience in engineering or software design or equivalent experience. IV. Understanding of the Law 5. I have been informed by counsel and understand that a claim is invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. 6. I understand that the definiteness requirement does not demand absolute precision. 7. I understand that terms of degree and relativity are not inherently indefinite where it provides enough certainty to one of skill in the art when read in the context of the invention. 8. I understand that a claim term is generally given its plain and ordinary meaning in light of the specification unless there is an explicit definition or disclaimer or disavowal. 2 3 9. I understand for prosecution disclaimer to attach, there must be a showing of a clear and unmistakable disclaimer that would have been evident to one of ordinary skill in the art. 10. I understand that vague or ambiguous statements do not qualify as clear and unmistakable disclaimer. Similarly, I understand that statements that are amenable to multiple reasonable interpretations do not qualify as clear and unmistakable disclaimer. V. "Graphical Representation" ('811 Patent, All Claims; '023 Patent, All Claims; '854 Patent, All Claims) 11. Based on my experience, training, education, and knowledge in the field of the patent, a person having ordinary skill in the art (a "POSITA") would understand that the term "graphical representation," as used in the '811, '023, and '854 Patents, refers to a pictorial portrayal of the "potential matches," "online dating profile[s]," "item of information" or "user," to which the graphical representation description attaches. 12. I understand that Bumble contends that the term "graphical representation" in the patents-in-suit refers to a "summary of information displayed on a graphical user interface," about these subjects. I disagree. 13. A POSITA would not understand that all information displayed on a graphical user interface ("GUI") is "graphical representation" of that information. In my opinion, a POSITA at the time of the invention would understand the term "graphical representation" in the context of the asserted claims to distinguish from a "textual representation" displayed on a graphical user interface. 3 3 14. For example, the Authoritative Dictionary of IEEE Standards Terms, 7th Edition defines "graphical" as "pertaining to the pictorial representation of data." I note that I have attached relevant terms from this dictionary as Exhibit 3 to this declaration. 15. Similarly, non-technical dictionaries do not define "graphic" as being simply any information displayed on a GUI. The 11th Edition of Merriam-Webster's Collegiate Dictionary defines "graphic," in reference to computer displays, as "a pictorial image displayed on a computer screen." The Oxford Dictionary of English defines graphic, in reference to computing, as "relating to or denoting a visual image." Similarly, it defines "graphical" as "related to visual art or computer graphics." 1 The Merriam-Webster and Oxford Dictionary definitions are attached as Exhibits 4 and 5, respectively. 16. Similarly, in the context of the claims of the asserted claims, a POSITA would also understand the term "representation" to require something that portrays the relevant category of information to which the graphical representation description attaches. 17. For example, the Authoritative Dictionary of IEEE Standards Terms, 7th Edition defines "representation" as, in relevant part, "a likeness, picture, drawing, block diagram, description, or symbol that logically portrays a physical, operational, or conceptual image or situation." 18. Non-technical dictionaries also support this understanding of the term "representation." The 11th Edition of Merriam-Webster's Collegiate Dictionary contains one definition of "representation" as "one that represents as a: an artistic likeness or image." The 1 I also note that, although definitions of the word "graphic" are relevant to the ordinary meaning of "graphical representations," they are less relevant than definitions for the word "graphical." 4 3 Oxford Dictionary of English contains a similar definition, defining representation as "the description or portrayal of someone or something in a particular way," further describing this definition as "the depiction of someone or something in a work of art" or "a picture, model, or other depiction of someone or something." 19. I understand that Bumble has not identified definitions from any other source indicating the ordinary meaning of "graphical representation" can include representations that have no pictorial component so long as they are displayed on a graphical user interface. 20. A POSITA reviewing the claims in light of the specification would understand these terms in the context of the claims to refer to a representation with a pictorial component representing the various terms to which the graphical representation modifier attaches. 21. For example, each claim of the '811, '023, and '854 Patents already claims that these "graphical representations" are displayed on a "graphical user interface." Even if there were some meaning of graphical representation with a scope that reached anything displayed on a GUI, a POSITA would understand from this context that the term graphical representation indicated a pictorial component. VI. "Without Allowing" ('854 Patent, All Claims) 22. Based on my experience, training, education, and knowledge in the field of the patent, a POSITA would not understand the term "without allowing" communication to require "an affirmative act to ensure no communication between two users." Instead, a POSITA would understand that the term has its plain and ordinary meaning. 23. "Allow" has a commonly understood meaning of "permit." Oxford Dictionarry of English (3d Ed. 2010). Other similar definitions include the act of "forbear[ing] or neglect[ing] 5 3 to restrain or prevent," "let (someone) have or do something" or "let (someone) enter a place or go in a particular direction." Merriam-Webster's Collegiate Dictionary (11th Ed. 2014). 24. In light of these common understandings, a skilled artisan would not understand the term "without allowing" to require any "affirmative act." 25. Systems can be designed to not allow certain functions. Most notably, if a system is defaulted to having functionality turned off until certain conditions are met, a skilled artisan would understand that the system is not allowing that functionality to be used when those conditions are not met. 26. The claim language of the '854 Patent, where the "without allowing" limitation is found, would further inform a POSITA that, under its ordinary meaning, the "without allowing" limitation can be achieved by ways other than an "affirmative act." 27. For example, the claims all describe "determining to allow" or "allowing" communication in response to certain conditions being met. A skilled artisan would understand that a system could be designed that, under default settings, does not allow certain communication and requires some sort of action to enable or create the ability to partake in that communication. In such a system, a POSITA would understand the enablement of the communication to meet the "allowing" or "determining to allow" limitations and, in such a system, the "without allowing" limitation would simply confirm that this allowance has not occurred. 28. I see nothing in the specification or the prosecution history that requires that "without allowing" limitation be met only with an affirmative act. The specification does not describe that the "not allowed" description must be "affirmatively" executed in any way. See '811 Patent at Figs. 10 and 11; 3:22-29; 23:25-30. A skilled artisan would understand the 6 3 teachings of these embodiments to contemplate systems designed to not allow communication as a default and then allowing that communication in response to mutual positive preference indications. Further, the identified segments of the prosecution history, which I note are about the claims of the '811 Patent and discuss different claim terms, are entirely consistent with the absence of any affirmative act requirement. In this context, the "without allowing" limitations would merely describe maintaining that status upon an explicit negative preference. VII. "prevent[ing] communication" ('811 Patent, All Claims) 29. Based on my experience, training, education, and knowledge in the field of the patent, a POSITA would not understand the term "preventing communication" to require "an affirmative act to ensure no communication between two users." Instead, a POSITA would understand that the term has its plain and ordinary meaning. 30. "Prevent" has a commonly understood meaning of "to keep from happening or existing" or to "hold or keep back." See Merriam-Webster's Collegiate Dictionary (11th Ed. 2014). See also Oxford Dictionarry of English (3d Ed. 2010) ("1. Keep (something) from happening. . . ▪ stop (someone) from doing something"). A skilled artisan would have this same common understanding. 31. A skilled artisan would not understand the term "prevent" to require any "affirmative act" 32. In the field of computer science, systems can be designed to "prevent" certain functions in a variety of ways. For example, a system can be designed to have functionality turned off or not enabled as a default setting. A skilled artisan would still consider this functionality prevented. 7 3 33. I see nothing in the specification or the prosecution history that requires that preventing be done with an "affirmative" act. To the contrary, where the specification describes the embodiment involving communication after mutual opt-in, it describes the communication status after non-mutual preference as "not allowed." '811 Patent at Figs. 10 and 11; 3:22-29; 23:25-30. As discussed above, not allowing something does not require an affirmative act. Further, the identified segments of the prosecution history are entirely consistent with the full scope of "preventing" including omissions as well as "affirmative act(s)." In fact, the applicant used the word "prevented" to describe the default state of communication prior to the mutual opt-in enabled initial communication. A skilled artisan would understand the teachings of these embodiments to be that the contemplated system defaulted to a non-communication status that was then allowed or enabled upon a mutual preference. The "prevent" limitations merely describe maintaining that status upon an explicit negative preference, i.e., not enabling or allowing communications. VIII. "Social Networking Platform" ('811 Patent, All Claims; '854 Patent, Claims 2, 5, 8, and 11) 34. Based on my experience, training, education, and knowledge in the field of the patent, a POSITA would not understand the term "social networking platform," in the context of the asserted patents and claims, to mean only a "social networking platform" that is "independent of the system for profile matching." Instead, a POSITA would understand that the term has its plain and ordinary meaning. 35. In my opinion, a skilled artisan at the time of the invention would not understand the term "social networking platform" to exclude all platforms other than those that are "independent" of the "system for profile matching." For example, a POSITA would understand 8 3 that there could be social networking platforms that are not independent of various systems for profile matching. 36. I see nothing in the specification or the prosecution history that requires that the "social networking platform" be independent of the system for matching. The written description discloses, in Col. 16, ll. 14-19 of the '811 Patent, the use of the matching server in a way that is entirely contained within a social networking platform. Specifically, this portion of the specification contemplates the matching server searching through only profiles affiliated with the social networking platform and presenting the results within the social networking platform. A skilled artisan, reviewing this teaching, would not understand the social networking platform term to require a social networking platform that is independent of the system for matching. A skilled artisan would also understand from the specification's use of the term "other" when describing benefits of importing from outside "social networking systems," that the matching system itself can be within the scope of the social networking platform term. See, e.g., '811 Patent at 2:42-46; 19:38-44. 37. As is clear from the teaching above, a skilled artisan would also not view these teachings as clearly disavowing the full scope of the claimed social networking platform. IX. "Associated" ('811 Patent, All Claims; '023 Patent, All Claims; '854 Patent, All Claims) 38. I also understand that Bumble contends that all of the asserted claims are indefinite for including the word "associated." Based on my experience, training, education, and knowledge in the field of the patent, I disagree. 9 3 39. I understand that Bumble identified no evidence, intrinsic or extrinsic, to support its position that, where used in the patent, the term associated does not inform a skilled artisan with reasonable certainty about the scope of the various limitations. 40. I further understand that Bumble has identified only the word "associated," as indefinite, and has not otherwise identified any particular use of the word that it contends is indefinite. 41. In light of this lack of disclosure, it is difficult to respond to Bumble's position with any specific detail. I note, however, that I have reviewed the uses of the word "associated" in light of the remainder of the claims and in light of the intrinsic evidence. The usage of the term in the claims comports with its ordinary and commonly understood meaning as, for example, provided in the 11th Edition of Merriam-Webster's Collegiate Dictionary and Oxford Dictionary of English. See Merriam-Webster's Collegiate Dictionary (11th Ed. 2014) (listing definition "associate" as to "to join or connect together: combine," "to bring together or into relationship in any of various intangible ways (as in memory or imagination)," and "to combine or join with other parts"); Oxford Dictionary of English (3d Ed. 2010) (listing definition of "associated" as "connected with something else"). 42. In my opinion, a skilled artisan reviewing the claims would understand with reasonable certainty the scope of this term is consistent with that commonly understood meaning. X. "Automatically" ('811 Patent, All Claims; '023 Patent, All Claims) 43. I understand that Bumble also contends that some of the asserted claims (the ones from the '811 and '023 patents) are indefinite for including the word "automatically." Based on my experience, training, education, and knowledge in the field of the patent, I disagree. 10 3 44. Automatically has a commonly understood meaning. For example, the Authoritative Dictionary of IEEE Standards Terms, 7th Edition defines "automatic" as "pertaining to a function, operation, process, or device that, under specified conditions, functions without intervention by a human operator." Alternative, similar definitions all relate to functions occurs "without personal intervention," or "self-acting," or "without intervention by a human operator." Similar definitions are contained in 11th Edition of Merriam-Webster's Collegiate Dictionary and Oxford Dictionary of English. See Merriam-Webster's Collegiate Dictionary (11th Ed. 2014) (listing definition of "automatic" as "largely or wholly involuntary" or "having a self-acting or self-regulating mechanism"); Oxford Dictionary of English (3d Ed. 2010) (listing definition of "automatic" as "working by itself with little or no direct human control"). 45. The term is used consistent with that common understanding. In my opinion, a skilled artisan reviewing the claims would understand with reasonable certainty the scope of this term is consistent with that commonly understood meaning. 46. I understand that Bumble's position may be that the term is indefinite because, in the context of the claims, functions are described as being done "automatically," in response to human input. Given the common definition of "automatically," as done "without human intervention," Bumble presumably contends that the claims cannot be met because they describe automatic function while also claiming human intervention or input. 47. To the extent this is Bumble's position, I disagree that this renders the term indefinite. In computer science, describing a software operation as being "automatic" or happening "automatically," connotes that some operation, under a given condition or upon some trigger, occurs without human intervention. The trigger to begin the "automatic" action can be a human intervention, so long as the operation described as occurring automatically occurs without 11 3 further intervention after the triggering event. A POSITA would have read the claims with this understanding. XI. "The text area" ('811 Patent Claims 2 and 5) 48. I understand that Bumble contends that the term "the text area" is invalid for indefiniteness. I disagree. 49. A review of the relevant prosecution history confirms that a POSITA would understand the term "the text area" to be an administrative, typographical error. 50. On October 23, 2017, the applicant filed a Request for Expedited Issuance of Certificate of Correction. The applicant put forth a number of errors in the claim language printed by the PTO. 51. The Applicant filed certain documents in support of its request that these were printing errors. The Applicant filed two supporting prosecution documents, the Response Accompanying Request for Continued Examination dated May 26, 2016 and the March 31, 2017 Notice of Allowance. These documents show the status of the claims for which allowance was granted. 52. A review of those documents indicates that the applied-for claims had been amended from "the text area" to "a text area" in each dependent claim of the '811 Patent. However, it appears that when the Applicant went to ask for a certificate of correction to address the numerous printing errors contained in the '811 Patent, the Applicant inadvertently overlooked the change to "a text area" from "the text area" in Claims 2 and 5. The Applicant did make the change in Claim 8. 53. Also, Claims 2, 5, and 8, both during prosecution and after they were issued, shared substantially similar claim language as well as parallel claim structures. This would have 12 3