Leader Technologies Inc. v. Facebook Inc.

Filing 635

MEMORANDUM in Support re 631 MOTION for Judgment as a Matter of Law of Invalidity filed by Facebook Inc.(a Delaware corporation).Answering Brief/Response due date per Local Rules is 9/13/2010. (Attachments: # 1 Exhibit Exhibit A to Memorandum in Support of Defendant Facebook's Renewed Motion for Judgment as a Matter of Law of Invalidity)(Caponi, Steven)

APPENDIX A
TO
MEMORANDUM IN
SUPPORT OF DEFENDANT
FACEBOOK, INC’S
RENEWED MOTION FOR
JUDGMENT AS A MATTER
OF LAW OF INVALIDITY
(NO. 4 OF 4)

I.

SWARTZ ANTICIPATES CLAIM 1

’761 Patent Claim 1
A computerimplemented networkbased system that
facilitates management
of data, comprising:

a computerimplemented context
component of the
network-based system
for capturing context
information associated
with user-defined data
created by user
interaction of a user in a
first context of the
network-based system,
the context component
dynamically storing the
context information in
metadata associated
with the user-defined
data, the user-defined
data and metadata stored
on a storage component
of the network-based
system; and

Evidence Presented at Trial
“Here he talks about a computer-implemented system, and again
Swartz is talking about a computer system, so it's a computerimplemented system.” Stameshkin Decl. Ex. 1 at 1485:9-12.
“In accordance with the present invention, there is provided a
knowledge integration system for providing application
interoperability and synchronization between heterogeneous
document and data sources, comprising . . . a document source,
including a document database memory, for . . . making the captured
knowledge available across a network. . . .” Stameshkin Decl. Ex. 22
at col. 3:61-4:5.
“We see at the top this thing called the knowledge repository, and this
is the stuff that the system is keeping track of.
If we look at the left, we see the top three things, and maybe we
can highlight those where it says record of transactions. It keeps a
record of the transactions. It keeps a record of the context information
from users and their applications, and it has this information,
metadata catalog, so we see the metadata is there as well.”
Stameshkin Decl. Ex. 1 at 1457:10-20.

See Stameshkin Decl. Ex. 22 at Fig. 5.
1

’761 Patent Claim 1

Evidence Presented at Trial
“Q. Did you prepare some graphics to show how the Swartz patent
could operate?
A. Yes. So this is -- what I've done is I've taken Figure 2 and which
shows the data docket software and in this case two different contexts
or two different systems on the left an [sic] right. And I've added the
bottom part of Figure 5, which is essentially the knowledge.
Sorry. This is the top part of Figure 5. It's essentially the knowledge
repository.
Now, if we abstract a little and the data docket software, that's
doing the context monitoring. And the tracking is shown in the
middle of Figure 2A.
So if we abstract this a little bit, we have our two contexts in this
case, the customer data analysis software and enterprise document
management system.
And at the bottom, if we abstract that, we have our knowledge
repository. This is where stuff gets stored.
So what Swartz does, if we continue on from here, is essentially
we're -- well, this quote kind of captures it. We're watching what
people do as they do their work in a particular system.
And here he says such a system also preferably captures metadata
associated with the information shared, stored and accessed by the
users of the data. And again, so as to characterize the context in
which the information is being used.
So this is all -- you know, clearly this is what's happened. You are
capturing the context. There's software that captures the context
information and that's being stored in this knowledge repository.”
Stameshkin Decl. Ex. 1 at 1461:1-1462:14.

See Stameshkin Decl. Ex. 22 at Fig. 2A.
2

’761 Patent Claim 1

Evidence Presented at Trial
“I'm talking about the data docket software is kind of watching what's
going on, and the data docket software actually has software that's
equivalent to the -- what we'll see here is a context component and
also the tracking component. So now we can move through that.
Later I'll talk about it being a network-based system. But here we
have the data docket context software is a context component and it
captures the context information associated with the user-defined
data.
So if we step through this, again we see here at the bottom, it's
talking about a captured metadata associated with the information. So
it's characterized in context.
….
Q. So which portions of Claim 1 are you saying map to the quote
that we have here on the screen?
A. Okay. Right now I'm looking at the first element of Claim 1.
Q. So is that computer-implemented context component of the
network-based system for capturing context information associated
with user-defined data created by user interaction of a user in the first
context of the network-based system?
A. That's correct.
Q. Okay.
A. And then I went on to talk about the context component
dynamically storing the context information metadata. And we see the
metadata over there.
Q. And which -- which portion of this language -- seems a little
obvious, but which portion of this language tells you that?
A. Well, captures metadata associated with the information shared,
stored and accessed by the users of the data.
Q. So is that just generic metadata or is that a specific type of
metadata?
A. No, this is -- well, it's very specific, because it says below, so as
to characterize the contents. Right.
This is all about what are people doing in a context? What exactly
is happening? As in this case, they're using that customer data
analysis software system.” Stameshkin Decl. Ex. 1 at 1464:101466:18.
“Such a system also preferably captures metadata associated with the
information shared, stored and accessed by the users of the data so as
to characterize the ‘context’ in which the information is being used.”
Stameshkin Decl. Ex. 22 at col. 8:55-59.
“More specifically, knowledge integration middleware is preferably
employed to identify (including tracking, monitoring, analyzing) the
3

’761 Patent Claim 1

Evidence Presented at Trial
context in which information is employed so as to enable the use of
such context in the management of knowledge.” Stameshkin Decl.
Ex. 22 at col. 6:22-26.
“Q. Dr. Greenberg, what is your opinion as to whether or not
Swartz discloses each and every element of Claim 1 of the '761
patent?
A. My opinion is that it does disclose each and every element of
the – of Claim 1 of the '761 patent.
Q. And what does that mean?
A. Well, what it means is essentially -- well, what it means is that
the ideas that are presented in the '761 patent appear in the Swartz
patent. So -- so and I should be more specific.
The ideas that are present in each and every element of Claim 1
are presented in Swartz. Swartz actually had these ideas well before
that and published it.
Q. And do you have an opinion as to whether or not that affects
the validity of the '761 patent, Claim 1?
A. Yes. My understanding of patent law is that prior art essentially
discloses each and every element in the claim and that that claim
would be invalid.” Stameshkin Decl. Ex. 1 at 1469:14-1470:13.

a computerimplemented tracking
component of the
network-based system
for tracking a change of
the user from the first
context to a second
context of the networkbased system and
dynamically updating
the stored metadata
based on the change,

“We see at the top this thing called the knowledge repository, and this
is the stuff that the system is keeping track of.
If we look at the left, we see the top three things, and maybe we
can highlight those where it says record of transactions. It keeps a
record of the transactions. It keeps a record of the context information
from users and their applications, and it has this information,
metadata catalog, so we see the metadata is there as well.
More importantly than that, if you look at the bottom of the
picture, there's a bubble that says "knowledge integration," and below
that, vertical text called "knowledge path." And this is the aspect of
the system that says, let's capture this as a sequence of events that
occurs as people do their work over time.
We're not just talking about within a system, here's what people
are doing, but also as they flow from system to system to system, and
this is the essence of tracking movement.” Stameshkin Decl. Ex. 1 at
1457:10-1458:9.

4

’761 Patent Claim 1

Evidence Presented at Trial

See Stameshkin Decl. Ex. 22 at Fig. 5.

“Now, if we keep on going, so this is also -- now, we get to the
tracking. So here's another quote, which you've actually seen before
where it says knowledge integration middleware is preferably
employed to identify -- and here we see the including tracking,
monitoring and analyzing the context in which information is
employed.
So here we have a person moving across context and that's also
tracking and captured and put in the knowledge repository.
If we go on. And, in fact, even in the claims of Swartz, Swartz
actually says that his system generates this audit trail to represent the
flow of data. So, again, we have this notion of tracking in one of the
claims.
And in Claim 5, he actually says that all this is dy -- that the system
dynamically stores information about these transactions. So this is all
happening as people are doing their work.” Stameshkin Decl. Ex. 1
at 1462:15-1463:11.
“Such a system also preferably captures metadata associated with the
information shared, stored and accessed by the users of the data so as
to characterize the ‘context’ in which the information is being used.”
5

’761 Patent Claim 1

Evidence Presented at Trial
Stameshkin Decl. Ex. 22 at col. 8:55-59.
“More specifically, knowledge integration middleware is preferably
employed to identify (including tracking, monitoring, analyzing) the
context in which information is employed so as to enable the use of
such context in the management of knowledge.” Stameshkin Decl.
Ex. 22 at col. 6:22-26.
“The knowledge integration system of claim 1, wherein the
knowledge integration application generates an audit trail to represent
the flow of data.” Stameshkin Decl. Ex. 22 at col. 21:18-20.
“The knowledge integration system of claim 1, further comprising a
knowledge base that dynamically stores information about integration
transactions.” Stameshkin Decl. Ex. 22 at col. 21:27-29.
“So we have in the second claim, we have a computer-implemented
tracking component of the network-based system for tracking a
change of the user from the first context to a second context of the
system and then dynamically updating the stored metadata based on
the change.
Now, here in this quote, he says we have this knowledge integration
middleware, so that does some of the tracking that's preferably
employed to identify, including tracking, monitoring and analyzing
the context in which information is employed.
So, again, we have the tracking coming into play, which is what that
claim is all about. And if we keep on going.
And here we see in the claim, it generates an audit trail. And that's
part of the storage functionality. Right.
As people are doing what they're doing, it's being stored. And we
see that in Claim 5 as well. That is the dynamically stored. Right.
So we're dynamically storing information about these transactions
as people are doing them.
Q. How do we know that it's the same metadata that's being
updated?
A. Well, this is a whole point of the system. Right. It's about
capturing this knowledge path, which I mentioned before. It's about
what is it that people are doing and can we actually create that as a
knowledge path.
So it's all related. It's not just different stuff. It's related from what
happens within a context. How do we track what people are doing as
they move from one context to the other? How do we store what
happens in the second context? How do we store all that as metadata?
So it presents this knowledge path.” Stameshkin Decl. Ex. 1 at
1466:22-1468:17.
6

’761 Patent Claim 1

Evidence Presented at Trial
“Q. Dr. Greenberg, what is your opinion as to whether or not
Swartz discloses each and every element of Claim 1 of the '761
patent?
A. My opinion is that it does disclose each and every element of
the – of Claim 1 of the '761 patent.
Q. And what does that mean?
A. Well, what it means is essentially -- well, what it means is that
the ideas that are presented in the '761 patent appear in the Swartz
patent. So -- so and I should be more specific.
The ideas that are present in each and every element of Claim 1
are presented in Swartz. Swartz actually had these ideas well before
that and published it.
Q. And do you have an opinion as to whether or not that affects
the validity of the '761 patent, Claim 1?
A. Yes. My understanding of patent law is that prior art essentially
discloses each and every element in the claim and that that claim
would be invalid.” Stameshkin Decl. Ex. 1 at 1469:14-1470:13.

wherein the user
accesses the data from
the second context.

“So this is an example from the Swartz patent, and we can see some - in fact, we can see some of the words he uses here. He says, ‘Such a
system also preferably captures metadata associated with the
information shared, stored, and accessed by the users of the data so as
to characterize the context in which the information is being used.’”
Stameshkin Decl. Ex. 1 at 1453:19-1454:3 (quoting DTX 919 at col.
8:55-59) (emphasis added).
“Such a system also preferably captures metadata associated with the
information shared, stored and accessed by the users of the data so as
to characterize the ‘context’ in which the information is being used.”
Stameshkin Decl. Ex. 22 at col. 8:55-59.

II.

SWARTZ ANTICIPATES DEPENDENT CLAIMS
’761 Patent

4. The system of claim 1,
the context information
includes a relationship
between the user and at
least one of an application,
application data, and user
environment.

Evidence Presented at Trial
“Q. Here's claim four. Are you familiar with claim four?
A. Yes.
Q. And do you have an opinion as to whether or not the Swartz
patent discloses as prior art the information claimed in claim four?
A. Yes, they do, and my opinion is that it does disclose it.
Q. Why is that?
A. Well, claim four adds that the context information includes
a relationship between the users and at least one of an application,
application data user, and environment.
7

’761 Patent

Evidence Presented at Trial
I've already spoken about how Swartz defines a knowledge
path. That captures everything that's going on. We showed a quote
that says this is the user information and the application data.
That's satisfied here.” Stameshkin Decl. Ex. 1 at 1473:24-1474:18.
“Such a system also preferably captures metadata associated with
the information shared, stored and accessed by the users of the
data so as to characterize the ‘context’ in which the information is
being used.” Stameshkin Decl. Ex. 22 at col. 8:55-59.

7. The system of claim 1,
wherein data created in the
first context is associated
with data created in the
second context.

“Claim seven adds that data created in the first context is
associated with data created in the second context.
I addressed this with the tracking and by Swartz's use of
language like "knowledge path," that essentially it's not just
recapturing what happens here, and they're disconnected.
He really is interested in the whole path of knowledge as a
sequence over time. We already saw terms like audit trails. All
these things are to take the data and relate them together across all
these contexts.
Q. What is your opinion regarding Swartz and claim seven?
A. Swartz anticipates claim seven.
Q. When you say anticipate, what do you mean?
A. It means it discloses the idea in claim seven.” Stameshkin
Decl. Ex. 1 at 1475:8-1476:3.
“More specifically, knowledge integration middleware is
preferably employed to identify (including tracking, monitoring,
analyzing) the context in which information is employed so as to
enable the use of such context in the management of knowledge.”
Stameshkin Decl. Ex. 22 at col. 6:22-26.
“The knowledge integration system of claim 1, wherein the
knowledge integration application generates an audit trail to
represent the flow of data.” Stameshkin Decl. Ex. 22 at col.
21:18-20.
“The knowledge integration system of claim 1, further comprising
a knowledge base that dynamically stores information about
integration transactions.” Stameshkin Decl. Ex. 22 at col. 21:2729.

11. The method of claim 9,
further comprising indexing
content of the user

“Claim eleven adds the method of claim nine further comprising
indexing content of the user environment subset of plurality of
users can access the content from an associated plurality of user
8

’761 Patent

Evidence Presented at Trial

environment such that a
plurality of users can access
the content from an
associated plurality of user
environments.

environments.
Q. From a plurality of user –
A. Plurality of users can access the content from an associated
plurality of user environments.
Q. What does that mean?
A. Essentially this means that the content is indexed, so an
index is created so that one or more people can access it from one
or more user environments.
Q. Is that disclosed in the Swartz patent?
A. Yes, it is. I believe I identified the part. Here it is.
Here's an example. This is something that's fairly familiar to
most people, is part of searching. So the ability to initiate and
retrieve information that indexes documents across the enterprise
by accessing industry standard databases and presenting the
results ins an easy-to-use and read format.
Q. What is your opinion regarding claim eleven and the Swartz
patent as it relates to the 761 patent?
A. My opinion is that Swartz anticipates or discloses claim
eleven of the 761 patent.” Stameshkin Decl. Ex. 1 at 1480:231482:5.
“Searching – the ability to initiate and retrieve information that
‘indexes’ documents across the enterprise by accessing industry
standard databases and presenting the results in an easy to use and
read format.” Stameshkin Decl. Ex. 22 at col. 3:5-9.

25. The system of claim 23,
wherein the context
component captures
relationship data associated
with a relationship between
the first user workspace and
at least one other user
workspace.

“So claim twenty-five adds on to claim twenty-three where he
says the context component captures relationship data associated
with the relationship between the first user workspace and at least
one other workspace.
I spoke about this earlier when I talked about the knowledge
path. It's capturing the relationship within a context or system or
user workspace and how they move to the next one over the
knowledge path, what happens over time.” Stameshkin Decl. Ex.
1 at 1487:14-23.
“With respect to claim twenty-five, do you have an opinion?
A. Yes, Swartz anticipates or discloses claim twenty-five of the
761 patent.” Stameshkin Decl. Ex. 1 at 1488:5-8.

9

’761 Patent

Evidence Presented at Trial

See Stameshkin Decl. Ex. 22 at Fig. 5.
“More specifically, knowledge integration middleware is
preferably employed to identify (including tracking, monitoring,
analyzing) the context in which information is employed so as to
enable the use of such context in the management of knowledge.”
Stameshkin Decl. Ex. 22 at col. 6:22-26.
“The knowledge integration system of claim 1, wherein the
knowledge integration application generates an audit trail to
represent the flow of data.” Stameshkin Decl. Ex. 22 at col.
21:18-20.
“The knowledge integration system of claim 1, further comprising
a knowledge base that dynamically stores information about
integration transactions.” Stameshkin Decl. Ex. 22 at col. 21:2729.
31. The system of claim 23,
wherein the storage
component stores the data
and the metadata according
to at least one of a relational

“Claim thirty-one . . . Takes claim twenty-three and adds that the
storage component stores the data and the metadata according to
at least one other relational and object storage methodology, so it
has to do at least one or the other.
Q. What is a relational storage methodology?
10

’761 Patent
and an object storage
methodology.

Evidence Presented at Trial
A. Well, a relational storage method is a relational database.
It's a method used for many decades in the industry to store data
on tables for later retrieval.
Q. Does Swartz disclose this?
A. Yes, I believe what he discloses specifically is the second
part of that, where there's an object.
Can we go back to the claim. Just go back one.
So what he disclosed specifically is an object storage
methodology, although relational storage would be known to one
skilled in the art as well.
If we go back, we see Swartz says another aspect of the present
invention visualizes objects and linkages maintained in the
integration knowledge base, so here he talks about objects being
maintained in the knowledge base.
Q. Do you have an opinion regarding thirty-one?
A. Yes.
Q. What is that?
A. That Swartz anticipates or discloses the claim.
Q. Thirty-one?
A. Thirty-one.”
Stameshkin Decl. Ex. 1 at 1488:11- 1489:24.
“Another aspect of the present invention visualizes objects and
linkages maintained in the integration knowledge base, preferably
using a 3D interface and conceptual schema for access and
manipulation of the enterprise information.” Stameshkin Decl.
Ex. 22 at col. 5:18-22.
“The knowledge integration system of claim 1, wherein the
knowledge integration application provides live linkages between
data source objects and documents associated therewith.”
Stameshkin Decl. Ex. 22 at col. 21:24-27.
“The method of claim 10 further comprising visualizing objects
and linkages maintained in said first database and said document
database, using a 3D interface and conceptual schema for access
and manipulation of the enterprise information.” Stameshkin
Decl. Ex. 22 at col. 21:63-67.

32. The system of claim 23,
wherein storing of the
metadata in the storage
component in association
with data facilitates many-

“So Claim 32 adds onto Claim 23 where it says storing of the
metadata in the storage component in association with data
facilitates many-to-many functionality of the data via the
metadata.
Q. What does that mean?
11

’761 Patent

Evidence Presented at Trial

to-many functionality of the
data via the metadata.

A. Well, what the Court has construed is that many to many
means that essentially two or more people can access -- I'm trying
to remember what the Court's construction was.
Q. You used –
A. Two or more people. I used the Court's. Essentially it means
that two or more people can access two or more things in here.
And what we're really getting at is that this isn't just a system
for one person to access one thing. It's for many people to access
many things from many different places.
I think that's the essence of it. Now, just to remind you what
Swartz is all about is about this knowledge path.
Right. He's talked about this big system where people from a
whole bunch of different places can query to find out what is it
that people did? What is it that they did in this context and that
context? Where were decisions made? How can I understand
what's happened over time?
So -- so this is exactly what Swartz is about. This isn't a single
user system. It's an enterprise-wide system that allows multiple
people to access data from multiple places.
Q. So what is your opinion regarding Claim 32?
A. That Swartz anticipates Claim 32 of the '761 patent.”
Stameshkin Decl. Ex. 1 at 1490:3-1491:15.
“As used herein, the term ‘knowledge integration middleware’
represents any software used to assist in the integration of
disparate information sources and their corresponding applications
for purposes of recording, distributing, and activating knowledge,
knowledge applications, or knowledge services.” Stameshkin
Decl. Ex. 22 at col. 6:17-22.

12

’761 Patent

Evidence Presented at Trial

Stameshkin Decl. Ex. 22 at Fig. 5.
III.

IMANAGE ANTICIPATES CLAIM 1

’761 Patent Claim 1
A computer-implemented
network-based system that
facilitates management of
data, comprising:

Evidence Presented at Trial
“We see a client-server relationship which is vernacular for – for
one application talking to another kind of – sorry, one system
using – usually on a PC talking to another system called the
server or the network.
And we see that – that we have all – all these things are
networked together. Essentially, these little lightening bolts that
says that we can access those stored across different cities or
places. So the network-based system.
Q. Just so the record is clear, where is this in the document?
A. Well, this is Figure 1.1.” Stameshkin Decl. Ex. 1 at
1506:10-23.

13

’761 Patent Claim 1

a computer-implemented
context component of the
network-based system for
capturing context
information associated with
user-defined data created by
user interaction of a user in a
first context of the networkbased system, the context
component dynamically
storing the context
information in metadata
associated with the userdefined data, the userdefined data and metadata
stored on a storage
component of the networkbased system; and

Evidence Presented at Trial

Stameshkin Decl. Ex. 23 at Fig. 1.1.
“iManage actually has many different contexts that you could
use. It talks about the location the computer’s using it on and the
things you’re doing on that computer is one possible context.
It talks about here’s the application. You’re using the
document. You’re using it in an application and the stuff you’re
doing with in that. And that’s another example of a context.”
Stameshkin Decl. Ex. 1 at 1507:21-1508:6.
“And we actually see here some of the things that are attached to
documents. And again, this is something – some of the
information captured by the system.
We see that every document has a document profile record
that includes things like the author of the document, the operator
who or the user had entered into the library, the date it was
created, the version number, the user who last edited it. So these
are being tracked by the system.
Q. And what would – is there a word in the ’761 patent that
would apply to what you just described?
A. Yeah, so this is metadata. We’re talking about capturing
and storing metadata here.” Stameshkin Decl. Ex. 1 at 1503:201504:12.
“Each document in an iManage library has its own document
profile record. The information included in a document’s profile
record can include:
 The author
 The operator who entered it into the library
 The date of creation
 The version number
 The user who last edited it. . . .” Stameshkin Decl. Ex. 23
14

’761 Patent Claim 1

Evidence Presented at Trial
at 14.
“Then if we go on, it says the context component dynamically
storing context information in metadata associated with userdefined data.
Now, we saw that in the history list, the history list says here’s
the data. That is the name of the file that we’re working on and
here’s all the activities that people are doing on it.” Stameshkin
Decl. Ex. 1 at 1508:7-15.
“[T]his is dynamic, because this history list – this history record
is created on the fly.
As people do things, the system will actually record all the
events that they’re doing.” Stameshkin Decl. Ex. 1 at 1512:241513:5.

Stameshkin Decl. Ex. 23 at Fig. 3.26.

a computer-implemented
tracking component of the
network-based system for
tracking a change of the user
from the first context to a
second context of the
network-based system and

“And here’s a quote from Page 19 of the manual, that phrase that,
What is an iManage library? And at the bottom, it says, Each
iManage library is actually composed of these three parts a file
server that stores the actual documents, a set of information tables
or database that stores information about the documents, that’s
the metadata, and a set of index collections of the full text of
documents in the library, which is used for searching.
So this is . . . that’s the storage component. So all the activity
that a person does in their first context – in this case, they’re
using Microsoft Word creating a document – in a certain location
is captured by the iManage history system. . . .
It’s stored in the library as part of that.” Stameshkin Decl. Ex.
1 at 1502:23-1503:18.
“The second element talks about a computer-implemented
tracking component of the network-based system. And this is
software that’s also party of the history system, because we saw
how it could track what people are doing across computer
locations, across applications and, in fact, across many activities
for tracking a change of the user from the first context to a second
context.
15

’761 Patent Claim 1

Evidence Presented at Trial

dynamically updating the
And we saw that in the history window where you could see
stored metadata based on the the sequence of events, how people would do things in one place
change,
and then they would actually do things in a different or separate
context.” Stameshkin Decl. Ex. 1 at 1512:9-22.

Stameshkin Decl. Ex. 23 at Fig. 3.26.
“Okay. So this is the – kind of the after the fact. This is a user
viewing some of the things that the system has tracked.
So we see that in the first line that the system has tracked that
there was a user named Bowen by their log-in name, using an
application WinWord, which is likely Microsoft Word, has
checked in a document at a certain time and has had that for a
certain duration. . . .
And it’s at the location Bowen, which because it’s the same as
the name, I would assume is the user’s computer; that they named
their computer the same as their log-in name.” Stameshkin Decl.
Ex. 1 at 1499:8-21.

wherein the user accesses
the data from the second

“So we – here we see at the bottom Bowen user. Bowen using
the Manage 32 system has created a new version of the
document.
Q. And what is a Manage 32 system?
A. This would probably be an iManage document, the
repository system itself.
So it’s a different context. They are using simply a different
application. They’re going to the iManage system and saying, I
want to use – I want to create a version. . . .
And the next thing that they did is that they checked out that
version from the Manage 32 system and then using WinWord or
Microsoft Windows. They modified that version. . . .
So what we have here is a history of what’s happened to the
document as people move between applications as they work
over time, and also, although we see only one location here, it’s
also as they move across different computers or different
locations.” Stameshkin Decl. Ex. 1 at 1500:13-1502:1.
“So it’s a different context. They are using simply a different
application. They’re going to the iManage system and saying, I
16

’761 Patent Claim 1
context.

Evidence Presented at Trial
want to use – I want to create a new version. . . .
And the next thing that they did is that they checked out that
version from the Manage 32 system and then using WinWord or
Microsoft Windows. They modified that version. . . .”
Stameshkin Decl. Ex. 1 at 1500:20-1501:5.
“And then finally, it says, Wherein the user can access the data
from the second context. . . .
So we’re on Chapter 3, Page 3, Figure 3.26.
So if we expand that. This is the figure we’ve seen before, but
now if you look at the very bottom, we’re in the history tab. But
if you look over one, two three left, we see something called
Quick View.
And Quick View is an ability to look at the document and read
a read-only version of that document. So here we have that last
part of that claim element where users can access the data.
I should add that you can also that – iManage lets you do
more. You can also manage the document version. And there’s a
tab for that or even related documents or the profile of that
document you can access.” Stameshkin Decl. Ex. 1 at 1513:51514:4.

IV.

IMANAGE ANTICIPATES DEPENDENT CLAIMS

’761 Patent
4. The system of claim 1,
the context information
includes a relationship
between the user and at least
one of an application,
application data, and user
environment.

Evidence Presented at Trial

Stameshkin Decl. Ex. 23 at Fig. 3.26.
“So we see at the top that this window is referring to a particular
document underscored which is title 2_2. Document. . . .
So starting at the first row, we see that initially we had a user
whose name was Bowen. . . .
So we see that in the first line that the system has tracked that
there is a user named Bowen by their log-in name, using an
application WinWord, which is likely Microsoft Word. . . .
And it’s at the location Bowen, which because it’s the same as
the name, I would assume is the user’s computer. . . .”
17

’761 Patent

Evidence Presented at Trial
Stameshkin Decl. Ex. 1 at 1497:22-1499:20.

7. The system of claim 1,
wherein data created in the
first context is associated
with data created in the
second context.

11. The method of claim 9,
further comprising indexing
content of the user
environment such that a
plurality of users can access
the content from an
associated plurality of user
environments.

16. The method of claim 9,
further comprising accessing

“Q. What is your opinion regarding claim four of the iManage
reference manual?
A. That the iManage reference manual discloses claim four.”
Stameshkin Decl. Ex. 1 at 1515:5-8.
See Stameshkin Decl. Ex. 23 at Fig. 3.26.
“We saw that again in the history system, where it was shown as
a record of here’s what happened at one step versus another
versus another.
So it shows a movement between these and thus the
relationship.
Q. What is your opinion regarding the iManage reference
manual and claim seven?
A. That the iManage reference manual discloses claim
seven.” Stameshkin Decl. Ex. 1 at 1515:16-1516:1.
“When the iManage system describes itself, it describes itself as
having three distinct entities: A file server, a set of information
tables, or database. And these, by the way, have indexes to them
and then it also says a set of index collections to the full-text
documents in the library.
Q. Where is this in the iManage Reference Manual?
A. This is chapter one, page nineteen. If you look at the
bottom, it says these three components work together to organize
and index your documents, so for emphasis of that.
Q. With that, what is your opinion regarding how the
iManage Reference Manual applies to claim eleven?
A. My opinion is that iManage discloses what’s in claim
eleven.” Stameshkin Decl. Ex. 1 at 1524:11-1525:5.
“When we refer to an iManage Database, or Library, we are
actually talking about a library that includes three distinct entities.
Each iManage library is actually composed of these three parts:
 a fileserver, which stores the actual documents
 a set of information tables, or database, that stores
information about the documents
 a set of index collections of the full text of documents in
the library, which is used for searching
These three components – the fileserver, the information tables,
and the full text index – work together to organize and index your
documents.” Stameshkin Decl. Ex. 23 at 19.
“Q. What is your opinion regarding claim sixteen?
A. That iManage discloses claim sixteen.
18

’761 Patent
the user environment via a
portable wireless device.

Evidence Presented at Trial
Q. How does it do that?
A. I brought an identified part in the reference manual that
talks about iManage portable, and if we look at the first
paragraph, it says a portable mode of operation allows you to take
an iManage desk site document management system on the road
with you, and it helps you synchronize your work with the
network.
So this is around the year 2000 and – sorry. 1999. I can’t
recall the exact date, but at that time there was a lot of stuff about
what we called road warriors. These are people who would work
in the office and then would take their stuff on the road and
access their materials from computers elsewhere, a portable
computer, or wireless laptop computer.
And what iManage has in this disclosure, it says that you can
take your stuff on the road with you, and you can access – not
only will we let you work disconnected, but if you’re connected
at any time – and that could be through your wireless device –
you would be able to access all the information as you were
wired.
Q. And where in the iManage Reference Manual are we
looking at?
A. We’re on the first page of chapter eight.” Stameshkin
Decl. Ex. 1 at 1525:19-1527:2.
“A portable mode of operation allows you take the iManage
DeskSite document management system on the road with you and
helps you synchronize your work with the network when you get
back to the office. The process works like this:
1. A user checks out the desired iManage DeskSite
documents, individually or en masse.
2. Once disconnected from the network, you can access
portable documents through the iManage Portable
application or through the standard commands (open,
save, etc.) of an integrated application.
3. When the user re-attaches to an iManage DeskSite
database, you can automatically check in the checked out
documents and synchronize them with iManage
DeskSite.” Stameshkin Decl. Ex. 23 at 173.

25. The system of claim 23,
wherein the context
component captures
relationship data associated
with a relationship between
the first user workspace and
19

’761 Patent
at least one other user
workspace.

Evidence Presented at Trial
Stameshkin Decl. Ex. 23 at Fig. 3.26.
“We saw that again in the history system, where it was shown as
a record of here’s what happened at one step versus another
versus another.
So it shows a movement between these and thus the
relationship.” Stameshkin Decl. Ex. 1 at 1515:16-21.

31. The system of claim 23,
wherein the storage
component stores the data
and the metadata according
to at least one of a relational
and an object storage
methodology.

“I’ve already described that, in that people are working, user
workspace, and this is shown as part of the history system. . . .
Q. Where is that? Here?
A. Yes.
Q. And here, for the record, would be in figure 3.26, is that
correct?
A. That’s correct. We see that as part of the user’s view of
the history.
Q. What is your opinion regarding claim twenty-five?
A. That the iManage Reference Manual discloses claim
twenty-five.” Stameshkin Decl. Ex. 1 at 1532:15-1533:3.
“ Q. With respect to claim thirty-one, do you have an opinion?
A. Yes, this claim says that the storage component stores the
data and the metadata according to at least one of a relational or
object storage methodology, and we’ve seen that before in the
description of what iManage does. It actually talks about
databases. It talks about tables and things like this.
Q. Where is that in the reference manual?
A. I believe I identified it.
If we look at this here, we see the second one talks about
information tables or databases. We talked about the file server
and source of file. Files are objects, so all that’s covered.
Q. If we go back to the claim language, and why does the
mention simply of tables tell us that we have a relational and/or
object storage methodology?
A. It said databases before, and it said a table, so that’s a
relational database.
Q. What’s your opinion regarding claim thirty-one?
A. That iManage discloses claim thirty-one.” Stameshkin
Decl. Ex. 1 at 1533:4-1534:6.
“When we refer to an iManage Database, or Library, we are
actually talking about a library that includes three distinct entities.
Each iManage library is actually composed of these three parts:
 a fileserver, which stores the actual documents
 a set of information tables, or database, that stores
20

’761 Patent

32. The system of claim 23,
wherein storing of the
metadata in the storage
component in association
with data facilitates manyto-many functionality of the
data via the metadata.

Evidence Presented at Trial
information about the documents
 a set of index collections of the full text of documents in
the library, which is used for searching.” Stameshkin Decl. Ex.
23 at 19.
“As I mentioned at the beginning, it says so thousands of users
can access millions of documents and all the information within
them. This is for multiple people to access multiple things.
Q. What is your opinion regarding claim thirty-two vis-à-vis
the iManage Reference Manual?
A. That the iManage Reference Manual discloses what is
found in claim thirty-two.” Stameshkin Decl. Ex. 1 at 1534:191535:4.
“What is iManage Desksite?
iManage DeskSite is an enterprise-wide, mission-critical DMS.
With iManage DeskSite, you can greatly simplify the task of
managing repositories of millions of documents and making them
available to thousands of users.” Stameshkin Decl. Ex. 23 at 13.

V.

HUBERT ANTICIPATES CLAIM 1
’761 Patent Claim 1

A computer-implemented
network-based system that
facilitates management of
data, comprising:

a computer-implemented
context component of the
network-based system for
capturing context
information associated with
user-defined data created by
user interaction of a user in a
first context of the networkbased system, the context
component dynamically
storing the context
information in metadata
associated with the user-

Evidence Presented at Trial
“So we see a computer-implemented, network-based system.
That’s what Hubert is describing, that it’s network based. Well,
it’s running over the internet. . . .” Stameshkin Decl. Ex. 1 at
1546:5-9.
See, e.g., Stameshkin Decl. Ex. 24, ¶ 0023 (“Meta-document 20
is then transmitted over the Internet 36 to source (or
environment) 32).”)
“[A]nd we see the first element, a computer-implemented
context component of the network-based system for capturing
context information. . . . [T]ool eighteen is an embedded
software program which generates and stores processing
information for this, and associated metadata for indexing and
retrieving the processing information, it follows by saying
whenever the metadocument is accessed or processed, the tool
generates a piece of processing information and metadata to
record that fact. And this is exactly what a context component is
supposed to do.” Stameshkin Decl. Ex. 1 at 1546:9-1547:6.
“ Q. We’re at dynamically storing the context information.
A. That claim essentially says the same thing, that
21

’761 Patent Claim 1

Evidence Presented at Trial

defined data, the user-defined information is captured and stored as it happens.” Stameshkin
data and metadata stored on a Decl. Ex. 1 at 1547:15-19.
storage component of the
network-based system; and
See, e.g., Stameshkin Decl. Ex. 24, ¶ 0006 (“In order to store
documents in a document management repository, certain
additional data called metadata is stored with the document.”)
a computer-implemented
“Hubert says there is also a need for a system and method
tracking component of the
managing documents which tracks all of the information about
network-based system for
what happened to a document during its whole lifetime. . . .
tracking a change of the user [T]here is a further need for a system and method of managing
from the first context to a
documents that can track a document’s path of distribution, so by
second context of the
path we’re talking about its movement from environment to
network-based system and
environment, context to context.” Stameshkin Decl. Ex. 1 at
dynamically updating the
1545:14-24.
stored metadata based on the
change,
“And it says a record of the fact that the meta-document 20 was
received at Source 32 is stored as processing information and
processing information is part of the metadata. So this is
tracking the movement.” Stameshkin Decl. Ex. 1 at 1548:12-16.

wherein the user accesses the
data from the second context.

See, e.g., Stameshkin Decl. Ex. 24, ¶ 0009 (“There is also a need
for a system and method of managing documents that can track
document distribution data. There is a further need for a system
and method of managing documents that can track a document’s
path of distribution a document’s changes. There is also a need
for a method and a system of managing documents that can
transfer information about or contained in the document to other
sources and environments.”).
“Q. And what about the final portion wherein the user
accesses the data from the second context?
A. Well, again, Hubert is all about we have documents, and
people should be able to access that document and all the
information at any time. This is precisely what Hubert was
trying to do.” Stameshkin Decl. Ex. 1 at 1549:4-11.
See, e.g., Stameshkin Decl. Ex. 24 at Fig. 2.

VI.

HUBERT ANTICIPATES DEPENDENT CLAIMS
’761 Patent

Evidence Presented at Trial

4. The system of claim 1, the “It says clearly, part of the value of the metadata model depends
context information includes on namespaces and some of the namespaces are associated to an
a relationship between the
application or domain.
22

’761 Patent

Evidence Presented at Trial

user and at least one of an
application, application data,
and user environment.

Q. Dr. Greenberg, was is a namespace?
A. A namespace is a way to essentially uniquely identify a
set of data. So in this case, the name space would say, Here are
things that happen within this application or within this domain.
So later on it’s the last – the second to last line. It says
suppose we want to encode the identity of the reader, the rating
he or she gives an associated comment. So we – here we see that
the system also will capture the user and that’s enough to satisfy
that claim element.
Q. So what is your opinion regarding claims regarding this
Claim 4?
A. That Hubert discloses Claim 4.” Stameshkin Decl. Ex. 1
at 1550:10-1551:6.
“Now, remember, we talked about the meta for – of the bee
carrying pollen from place to place. So there’s the association.
It’s capturing – the meta-document is capturing not only what
happens in one environment, but also what’s happening between
environments as things are moved around between these
contexts.
Q. So what is your opinion regarding Claim 7 vis-à-vis the
Hubert prior art reference?
A. That Hubert discloses everything in Claim 7.”
Stameshkin Decl. Ex. 1 at 1551:12-22.

7. The system of claim 1,
wherein data created in the
first context is associated
with data created in the
second context.

11. The method of claim 9,
further comprising indexing
content of the user
environment such that a
plurality of users can access
the content from an
associated plurality of user
environments.

“When meta-document is transmitted from source to source and
processing information is created (stored in the meta-document)
this is similar to a bee travelling to a flower and picking up
pollen.” Stameshkin Decl. Ex. 24, ¶ 0026.
“So here we see in – if you look at the end of the second line or
it’s – well there it says information pertaining to each processing
step is stored with the document along with metadata for
indexing and retrieving the processing information.
Q. So do you have an opinion regarding Claim 11 vis-à-vis
the Hubert patent?
A. Yes I do.
Q. And what is that opinion?
A. That Hubert discloses Claim 11.” Stameshkin Decl. Ex. 1
at 1554:19-1555:5.
“Metadata 16 is used to index and retrieve its associated
processing information.” Stameshkin Decl. Ex. 24, ¶ 0020.
“Information pertaining to each processing step is stored with
the document along with metadata for indexing and retrieving
23

’761 Patent

25. The system of claim 23,
wherein the context
component captures
relationship data associated
with a relationship between
the first user workspace and
at least one other user
workspace.

31. The system of claim 23,
wherein the storage
component stores the data
and the metadata according
to at least one of a relational
and an object storage
methodology.

32. The system of claim 23,
wherein storing of the
metadata in the storage
component in association
with data facilitates many-tomany functionality of the
data via the metadata.

Evidence Presented at Trial
the processing information. By storing a record of all the various
processing and the results of the processing performed on a
particular document, and making that information retrievable,
users in an organization have the opportunity to come back to
some piece of information about a document that later turned out
to be of great importance.” Stameshkin Decl. Ex. 24, ¶ 0010.
“But remember that bee with the pollen. This is essentially – it
is capturing their relationship, in this case, in the meta-document
itself.”
Q. And so what is your opinion regarding Claim 25?
A. That Hubert discloses Claim 25.” Stameshkin Decl. Ex. 1
at 1559:22-1560:4.
“When meta-document is transmitted from source to source and
processing information is created (stored in the meta-document)
this is similar to a bee travelling to a flower and picking up
pollen.” Stameshkin Decl. Ex. 24, ¶ 0026.
“Here we see emerging technology such as RDF metadata and
DOM, document object model, will readily enable
implementation of meta-documents. . . .
Q. So what is your opinion regarding Claim 31?
A. That Hubert discloses Claim 31.” Stameshkin Decl. Ex. 1
at 1560:14-1561:1.
“The Resource Description Framework (RDF) is an abstract
model for defining metadata. The basic data model consists of
three object types: Resources, Properties and Statements which
correspond to a resource associated with a property.”
Stameshkin Decl. Ex. 24, ¶ 0031.
“So this goes back to the many-to-many functionality. And
again, Hubert was all about how can people access information
about these documents?
And this is – you know, goes to the heart of the Hubert
system. It’s all about multiple people accessing information.
He even uses the example of people trying to access ratings
that people may give on documents. So it’s all about finding
what’s happened.
Q. And so what is your opinion regarding Claim 32 vis-à-vis
the prior art Hubert patent?
A. That Hubert discloses what’s in Claim 32.” Stameshkin
Decl. Ex. 1 at 1561:8-23.
“Information pertaining to each processing step is stored with
the document along with metadata for indexing and retrieving
24

’761 Patent

Evidence Presented at Trial
the processing information. By storing a record of all the various
processing and the results of the processing performed on a
particular document, and making that information retrievable,
users in an organization have the opportunity to come back to
some piece of information about a document that later turned out
to be of great importance.” Stameshkin Decl. Ex. 24, ¶ 0010.

25