Timebase Pty Ltd v. Thomson Corporation, The

Filing 247

Declaration of Jenna J. Bayer in Support of 246 Memorandum in Support of Motion filed by Timebase Pty Ltd. (Attachments: # 1 Exhibit(s) A - Part 1, # 2 Exhibit(s) A - Part 2, # 3 Exhibit(s) B, # 4 Exhibit(s) C, # 5 Exhibit(s) D - Part 1, # 6 Exhibit(s) D - Part 2, # 7 Placeholder for Exhibit E, # 8 Exhibit(s) F, # 9 Exhibit(s) G, # 10 Exhibit(s) H, # 11 Exhibit(s) I, # 12 Exhibit(s) J, # 13 Exhibit(s) K, # 14 Exhibit(s) L, # 15 Appendix A, # 16 Appendix B, # 17 Appendix C, # 18 Appendix D - Part 1, # 19 Appendix D - Part 2, # 20 Appendix D - Part 3, # 21 Appendix E - Part 1, # 22 Appendix E - Part 2, # 23 Appendix F - Part 1, # 24 Appendix F - Part 2, # 25 Appendix F - Part 3, # 26 Appendix F - Part 4, # 27 Appendix F - Part 5, # 28 Appendix F - Part 6, # 29 Appendix F - Part 7, # 30 Appendix F - Part 8, # 31 Appendix F - Part 9, # 32 Appendix F - Part 10, # 33 Appendix F - Part 11, # 34 Appendix F - Part 12, # 35 Appendix F - Part 13, # 36 Appendix F - Part 14, # 37 Appendix F - Part 15, # 38 Appendix F - Part 16, # 39 Appendix G - Part 1, # 40 Appendix G - Part 2)(Hosteny, Joseph)

Exhibit I

(Expert Report of Michael Stonebraker, Ph.D.)

to

TimeBase’s Memorandum in Support of Its Motion
for Summary Judgment of No Invalidity

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

TIMEBASE PTY LTD,
Plaintiff,
vs.

Civil No. 07-CV-1687 (JNE/JJG)

THE THOMSON CORPORATION,
WEST PUBLISHING CORPORATION,
and WEST SERVICES, INC.,
Defendant.

EXPERT REPORT OF
MICHAEL STONEBRAKER, PH.D.
________
INVALIDITY ISSUES
FEBRUARY 28, 2011

TABLE OF CONTENTS
Page
I. 

INTRODUCTION .................................................................................................. 1 

II. 

QUALIFICATIONS ............................................................................................... 1 

III. 

COMPENSATION ................................................................................................. 3 

IV. 

MATERIALS REVIEWED ................................................................................... 3 

V. 

BASIS OF OPINIONS ........................................................................................... 3 

VI. 

DESCRIPTION OF THE PATENTS.................................................................... 4 
A. 

THE ‘592 AND ‘228 PATENTS ................................................................. 4 

B. 

MEANING OF CLAIM TERMS ............................................................... 5 

C. 

THE SUBJECT MATTER OF THE PATENTS....................................... 7 
1.  Multidimensional Space ........................................................................ 8 
2.  Graphical Representation of a Multidimensional Space ................. 13 

VII. 

APPLICABLE LEGAL STANDARDS .......................................................... 16 
A. 

PERSON OF ORDINARY SKILL IN THE ART................................... 16 

B. 

WRITTEN DESCRIPTION ..................................................................... 17 

VIII. OPINIONS ............................................................................................................. 19 
A. 

INTRODUCTION ..................................................................................... 19 

B. 

THE METHOD OF CLAIMS 24 AND 36 IS NOT DISCLOSED
IN THE ‘228 PATENT SPECIFICATION .............................................. 21 
1.  The General Text of the Specification for the ‘228 Patent
Does Not Discuss or Disclose a Graphical Representation of a
Multidimensional Space ...................................................................... 22 
2.  None of the Figures in the Specification Disclose or Describe
a Graphical Representation of a Multidimensional Space .............. 24 
3.  The ‘228 Patent’s Appendices A–E Do Not Disclose a
Graphical Representation of a Multidimensional Space ................. 33 
i

C. 

GRAPHICALLY DISPLAYING A MULTIDIMENSIONAL
SPACE WOULD BE COMPLEX AND WOULD REQUIRE A
DETAILED DISCLOSURE ..................................................................... 33 

ii

I.

INTRODUCTION

I have been asked by defendants The Thomson Corporation, West Publishing
Corporation, and West Services, Inc. (collectively, “West”) to provide a report and to
testify regarding my opinions on topics in this case relating to the invention claimed in
U.S. Patent No. 6,233,592 (“the ‘592 patent”) and U.S. Patent No. 7,293,228 (“the ‘228
patent”). In particular, I have been asked to provide my opinions regarding whether
independent claims 24 and 36 and their dependent claims 25–35 and 37–48 of the ‘228
patent are invalid for failure to meet the written description requirement of 35 U.S.C. §
112.

II.

QUALIFICATIONS

I am an Adjunct Professor of Computer Science and Engineering at the
Massachusetts Institute of Technology (“MIT”) in Cambridge, Massachusetts, with an
appointment in the Computer Science and Artificial Intelligence Laboratory. Prior to
joining MIT, I was a Professor of Computer Science at the University of California at
Berkeley in various roles for nearly 30 years from 1971 to 1999. I have a Ph.D. in
Computer Information and Control Engineering from the University of Michigan (1971)
and a B.S. in Electrical Engineering from Princeton (1965). I also have served as an
advisor to or a principal in various technology companies, including Ingres, Illustra,
Cohera, Informix, Streambase Systems, Vertica, Goby, VoltDB, and Paradigm4.
My research and work over the years has included work on database systems,
operating systems, query languages, data storage, graphical display systems, and
software. In particular, my work has been directed toward, among other things, building
1

high performance database systems, parallel DBMS engines, and engines oriented toward
extendability.
In connection with this work, I was one of the developers of the INGRES and
POSTGRES database systems, as well as systems for catalog management and
publication, data streaming, and data warehousing and storage, as well as query
languages.
I have published over 75 papers in peer-reviewed publications and have given over
25 invited presentations in international and national scientific meetings, many of which
relate directly to the field of database systems. Many of my publications also relate
directly to database design. I am a co-author or co-editor of several books, including
Readings in Database Systems and Object-Relational DBMSs: The Next Wave. In
addition, I have served in a number of professional organizations involved in researching
and developing databases.
Over the years, I have received various awards in connection with my work,
including the IEEE John von Neumann Medal, the ACM/SIGMOD Edgar F. Codd
Innovations Award, and the ACM Software System Award. I am a Fellow of the
Association for Computing Machinery and am a member of the National Academy of
Engineering. I was also recently elected to membership in the American Academy of
Arts and Science.
A copy of my current professional resume is attached as Appendix 1 to this report,
which includes a list of publications I have authored or co-authored within the last ten
years as well as a list of recent cases for which I have been retained as an expert.
2

III. COMPENSATION
I am being compensated at the rate of $500 per hour for my time consulting or
testifying in this case. This compensation is unrelated to the outcome of this case.

IV.

MATERIALS REVIEWED

In forming my opinions and preparing this report, I have reviewed and relied on
the ‘592 and ‘228 patents, the prosecution histories for the ‘592 and ‘228 patents
(including the Ex Parte Reexamination of the ‘592 patent), the Court’s Order of January
21, 2011 (“Claim Construction Order”) (Dkt. 219), and references listed in Appendix 2 of
this report, together with miscellaneous other documents, materials, and references. I
may use some or all of these documents as exhibits during my testimony.

V.

BASIS OF OPINIONS

My opinions are based on my personal knowledge and expertise and my review
and investigation of the items and materials described above. All of my opinions, and the
bases of those opinions, are true and correct to the best of my knowledge and belief,
including those relating to scientific issues, which I believe are true and correct to a
reasonable degree of scientific certainty. I do, however, reserve the right to supplement
this report and my opinions in view of any new material or information provided to me.
In addition, if called upon to testify at trial, I would expect to use various demonstrative
exhibits, animations, videos, and/or models and charts to show the relevant technology
and to present my opinions as set forth in this report.

3

VI. DESCRIPTION OF THE PATENTS
The patents in this case relate generally to systems and methods for electronically
publishing text-based data based on various elements, including an element that the
patents call a “multidimensional space.” In this section, I have summarized background
information about both the ‘592 and the ‘228 patents and their claim terms, and then
focused on particular elements of the ‘228 patent that relate to my opinion on written
description.
A.

THE ‘592 AND ‘228 PATENTS

I understand that the ‘592 patent originally issued on May 15, 2001. I understand
that a third-party initiated an ex parte reexamination of the ‘592 patent and that the patent
subsequently emerged from reexamination on May 5, 2009 with three additional
independent claims, for a total of 61 claims. Six of these claims are independent claims
and the remaining 55 claims are dependent claims. The inventors named on the ‘592
patent are Christoph Schnelle, Abha Lessing, and Peter Mariani. I understand that
TimeBase contends that the ‘592 patent application claims priority to a Patent
Cooperation Treaty application filed on January 30, 1998, which in turn claims priority to
an Australian patent application filed on January 31, 1997.
I understand that the ‘228 patent issued on November 6, 2007 and stems from an
application filed on October 12, 2000. I understand that the original ‘228 patent
application named Abha Lessing, Christoph Schnelle, Paul William Leslie, and Geoffrey
John Nolan as the inventors. The original ‘228 patent application incorporated by
reference the specification of the ‘592 patent application, but did not claim priority to the
4

‘592 patent application. I understand that on August 2, 2006, TimeBase submitted new
claims for the ‘228 patent application, inserted the specification of the ‘592’s application
into the specification of the ‘228 patent application, and then claimed that the ‘228 patent
shared the same priority date of January 31, 1997 as the ‘592 patent. I understand that, as
a consequence, the ‘592 patent’s specification is a subset of the ‘228 patent specification.
I also understand that in November, 2009, TimeBase changed the inventors for the ‘228
patent, claiming that the inventors of all of the claims of the ‘228 patent should be the
same three inventors listed on the ‘592 patent—Christoph Schnelle, Abha Lessing, and
Peter Mariani. I further understand that TimeBase has stated that all of the claims
pertaining to the invention of the ‘592 patent and the ‘228 patent were conceived on
October 14, 1996 by these three inventors.
For convenience, I have attached a copy of the Australian patent application as
Appendix 3; a copy of the PCT application as Appendix 4; a copy of the ‘592 patent as
Appendix 5; a copy of the ‘592 reexamination certificate as Appendix 6; and a copy of
the ‘228 patent as Appendix 7.
B.

MEANING OF CLAIM TERMS

I understand that the Court has construed several terms and phrases of the claims
of the patents in its Claim Construction Order. In particular, I understand that the Court
has issued the following claim construction rulings:

5

Term or Phrase

Court’s Construction

Multidimensional
Space

An area not having boundaries and that is capable of, or
involves, more than three dimensions, where the dimensions
are axes along which, or along some combination of which,
point-to-point movement is allowed

Linking Means

Function: Logically connecting a block of text-based data to
another specific block of text-based data
Structure: Markup language that uses reference IDs, each of
which uniquely identifies a specific block of text-based data

Link

A connection between portions of text-based data utilizing a
markup language

Each

Every one considered separately

Attributes

Characteristics or descriptors of text-based data

Graphical
Representation

A pictorial presentation or pictorial display, which may
include some textual information

Displaying

Showing on an electronic video device capable of changing
in real time in response to inputs, such as a CRT monitor, an
LCD monitor, or a projector and screen

Dividing

Separating into two or more suitable parts

Portion

A part of the text-based data to be published

Predefined Portion

A suitable part of the text-based data to be published that is
chosen for storage at a particular point in the
multidimensional space

I understand that the parties also have agreed on the construction of the following
claim terms and phrases:
Term or Phrase

Parties’ Agreed Construction

Amended

Altered or changed in some way

Modified

Altered or changed in some way
6

Term or Phrase
Means for Searching /
Searching Means

Step of Searching /
Searching Step

Parties’ Agreed Construction
Function: As set forth in the claims
Structure: Software for locating text-based data using
attributes, links, portions, words or phrases, or the equivalent
Function: As set forth in the claims
Structure: Using software to locate text-based data using
attributes, links, portions, words or phrases, or the equivalent

For purposes of forming my opinions, I have adopted and applied these claim
constructions. For terms and phrases that have not been construed by the Court and for
which there is not already an agreed construction, I have applied the ordinary meaning
that, in my opinion, would have been given to the term or phrase in question by a person
of ordinary skill in the art as of January 31, 1997.
I reserve the right to supplement or amend any of my opinions set forth in this
report based on any additional claim construction rulings by the Court or based on any
additional agreements by the parties regarding the meaning of particular claim terms or
phrases.
C.

THE SUBJECT MATTER OF THE PATENTS

Both the ‘592 and ‘228 patents relate generally to systems and methods for
publishing electronic information. The electronic publishing systems and methods
described in the patents focus on text-based information that changes over time,
particularly legislation. In general, the patents describe systems and methods that
organize versions of text-based information (such as a medical record or a legislative Act)
by dividing the text into portions and storing each portion as it changes, encoding the text
7

with markup languages, linking related portions of text to other portions, and using
attributes in connection with a “multidimensional space” to organize, display, link, and
navigate the portions of text contained in the multidimensional space. In the following
sections, I focus my discussion on particular elements of the ‘228 patent that relate to my
opinions on written description. As noted above, because the ‘228 patent fully
incorporates the specification of the ‘592 patent, for convenience my citations are to the
‘228 patent only.
1.

Multidimensional Space

One key element of the patented invention is a “multidimensional space.” The
Court has construed multidimensional space to mean:
An area not having boundaries and that is capable of, or involves, more
than three dimensions, where the dimensions are axes along which, or
along some combination of which, point-to-point movement is allowed.
(Claim Construction Order, 11.)
The patent specification of the ‘228 patent (which incorporates the entire
specification of the ‘592 patent) describes the concept of this multidimensional space.
The claimed multidimensional space conceptually consists of “axes” and “points” along
each axis. Each axis is a type of attribute, such as jurisdiction, type, section number, and
effective date for a legislative Act. Each portion of text-based data within the
multidimensional space is associated with a number of attributes, corresponding to the
number of axes within the multidimensional space. The values of these attributes
correspond to “points” along each axis. For example, the attribute values for a particular
portion of a statute might be “California” for jurisdiction; “statute” for type; “§ 201” for
8

section number; and “January 1, 2003” for the initial effective date. Each point within
the multidimensional space represents a combination of attribute values. Each portion of
text-based data is assigned to the point within the multidimensional space corresponding
to its specific attribute values.
In other words, according to the specification of the ‘228 patent, portions of textbased data are selected for storage as points in the multidimensional space. Attributes are
assigned to each portion of text and, based on the values of these attributes, the portions
of text are assigned to locations that become “points” or “nodes” in the multidimensional
space. Once the portions are assigned to locations, the sequence of the portions along
any “axis” is known.
An important feature of the multidimensional space is that the dimensions are
“axes along which, or along some combination of which, point-to-point movement is
allowed.” (Claim Construction Order, 9.) In other words, the multidimensional space
allows a user to navigate sequentially along each axis from one portion of text to the next
or previous adjacent portion of text. As the specification of the ‘228 patent states, “[t]he
effect of mapping nodes . . . is that a course . . . through the information represented in
the three-dimensional space . . . can be easily plotted.” (‘228 patent, 12:28-30.) Based
on these known coordinates, “it is possible to move easily between points in the
multidimensional space . . . .” (‘228 patent, 12:26-27.) The multidimensional space,
therefore, is one in which a user can, through the use of a user interface, view a portion of
text and move directly to any previous or next portion of text along any axis in the
multidimensional space.
9

The first four figures of the ‘228 patent specification purport to describe the
concept of a multidimensional space and movement along the axes within the space;
however, rather than achieving this difficult task, the figures simply display a bounded,
three-dimensional space, populated with a very small number of points. Indeed, the ‘228
patent specification concedes that although the claimed multidimensional space has more
than three dimensions, or axes (‘228 patent, 12:12-14), the figures illustrate the concept
by using a three-dimensional grid for convenience (‘228 patent, Figs. 1-4, 15:10-11 (“To
simplify the diagram, only three axes are illustrated . . . .”)). In Figure 1 of the ‘228
patent (shown below), for example, the three-dimensional space concept is “represented
by a layered grid.” (‘228 patent, 12:17.) The various axes or pathways are shown as
vertical and horizontal lines, but could appear “at all angles and inclines.” (‘228 patent,
12:20.) The intersections of the lines of the grid are “points” (or “nodes”) where portions
of text are located. (‘228 patent, 12:21-24.)

10

Figure 3 of the ‘228 patent, which is shown below, illustrates a three-dimensional
space that is populated with portions of text-based data depicted by points on the axes
located at the nodes (intersections between axes). The darker lines on Figure 3 depict
point-to-point movement between the portions of text. This movement is from point-topoint along axes (dimensions) in the three-dimensional space. In this example, “the user
begins the course 320 at node 302 and progresses vertically downward to the fourth node
304.” (‘228 patent, 12:30-32.)

11

Figure 4 of the ‘228 patent (shown below) shows specifically how an end-user can
navigate portions of legal text using the conceptual cube depicting the three-dimensional
space. (‘228 patent, 14:53-55.) In particular, the patent states that:
In FIG. 4, the X-, Y-, and Z-axes indicate time (Time), the
legislative provision (location), and type (eg, legislation=L, cases=C,
and journal articles=J). To simplify the diagram, only three axes are
illustrated[;] however, other axes may be included dependent upon the
number of dimensions of the space. In the first embodiment, the
multidimensional space also includes another three axes:
jurisdiction=U, subject=V, and depth=W. Thus, the space according to
the first embodiment has six dimensions. In the six-dimensional case,
it is possible to move along each axis and at the points of intersection
change direction, as well as find and/or follow new or additional
information.
(‘228 patent, 15:8-19.) The patent then goes on to describe how the end-user begins at
node 402, follows a path through nodes 404, 406, and 408, then selects Section 4 of the
legislation as of January 1, 1995 by moving to node 410, from which the end user could
12

move to other information by moving to nodes 412 or 414. (‘228 patent, 15:20-45.) The
patent states that “[t]he foregoing is only one possible route through the multidimensional
space of information,” and that “[o]ther more complicated and interrelated pathways
involving axes U, V and W are possible.” (‘228 patent, 15:39-42.)

According to the ‘228 patent, this movement between portions along pathways “is
a significant functional aspect of the embodiments of the invention.” (‘228 patent, 12:2324.)
2.

Graphical Representation of a Multidimensional Space

Two independent claims of the ‘228 patent specifically involve a “graphical
representation” of the patent’s multidimensional space. Claims 24 and 36 of the ‘228
patent both claim methods that require a display of a graphical representation of the
multidimensional space.

13

Claim 24 claims:
A method for electronically publishing text-based data, the method
comprising:
dividing the text-based data into a plurality of portions of text-based
data;
obtaining an amended portion of text-based data that is amended
relative to one of the plurality of portions of text-based data;
storing each of the plurality of portions of text-based data;
storing the amended portion of text-based data;
providing a plurality of attributes, wherein the attributes define a
manner in which the plurality of portions of text-based data and the
amended portion of text-based data can be organized, displayed and
linked;
encoding each of the plurality of portions of text-based data and the
amended portion of text-based data with a markup language to
include at least one link defined by one of the plurality of attributes;
allowing a user to search the text-based data using at least one of the
plurality of attributes; and
displaying the text-based data to the user by:
displaying at least one of the plurality of portions of text-based data
or the amended portion of text-based data in response to the search;
and
displaying one or more selectable links;
wherein when the user selects the one or more selectable links,
the plurality of portions related to a current portion based on
the current portion’s attributes are displayed as a graphical
representation of a multidimensional space that is configured to
allow a user to select and thereby display text-based data
represented by a point on the multidimensional space.
(‘228 patent, 164:60-67, 165:1-22 (emphasis added).)
14

Similarly, claim 36 claims:
A method for electronically searching text-based data encoded with a
mark-up language, the method comprising:
allowing a user to select a version date as a primary attribute and to
input at least one search request;
producing results based on the text of the text-based data;
displaying the results in a format that is configured to allow the user
to select one of the results;
displaying the result as a portion of text-based data corresponding to
a selected result that corresponds to the at least one attribute and the
at least one search request;
displaying a link;
allowing a user to select the link;
whereupon the plurality of portions related to a current portion
are displayed as a graphical representation of a
multidimensional space; and
allowing the user to select and thereby display text-based data
represented by a point on the multidimensional space;
wherein each point on the multidimensional space is defined by the
value of one or more of a plurality of attributes.
(‘228 patent, 165:60-63, 166:1-19 (emphasis added).)
From the above claim language, it is clear that a key element of the methods of
claims 24 and 36 is a display of a graphical representation of a multidimensional space.
Claims 25-35 and claims 37-48 depend on claims 24 and 36 and therefore also include
this requirement for a graphical representation of a multidimensional space.

15

In addition to its construction of “multidimensional space,” the Court also
construed two other terms relevant to the display of a “graphical representation of a
multidimensional space” in claims 24 and 36 and their accompanying dependent claims.
First, the Court construed graphical representation to mean:
a pictorial presentation or pictorial display, which may include some
textual information.
(Claim Construction Order, 25.) Second, the Court construed displaying to mean:
showing on an electronic video device capable of changing in real time
in response to inputs, such as a CRT monitor, an LCD monitor, or a
projector and screen.
(Claim Construction Order, 25.)
Taken together, these elements of independent claims 24 and 36 require a method
in which a multidimensional space (an area that is capable of or involves more than three
dimensions) is pictorially displayed on a video device, such as a CRT monitor, an LCD
monitor, or a projector and screen.

VII.

APPLICABLE LEGAL STANDARDS

I have been informed of the legal standards relating to a person of ordinary skill in
the art and to the written description requirement. In this section, I set forth my general
understanding of the applicable legal standards. For purposes of my report, I assume that
these legal standards are correct.
A.

PERSON OF ORDINARY SKILL IN THE ART

I understand that the determination of the hypothetical person of ordinary skill in
the art is a finding of fact. In addition, I understand that the person of ordinary skill in

16

the art is a fictitious person presumed to have the typical level of skill of practitioners in
the field and is presumed to be aware of all pertinent prior art in the field. I also
understand that the level of skill in the art is measured as of the effective filing date of the
patent application.
I understand that many factors are considered in defining a hypothetical person of
ordinary skill in the art including: (1) the types of problems encountered in the art; (2)
the prior art solutions to those problems; (3) the rapidity with which innovations are
made; (4) the sophistication of the technology; and (5) the educational level of active
workers in the field. I understand that not each of these factors must be considered in
every case and that additional factors are often relevant.
I understand that TimeBase and West generally agree that a person of ordinary
skill in this art as of January 31, 1997 would have a computer science or similar technical
degree, with experience working with database technology while obtaining their degree,
or, if the person did not have this experience during their academic training, the
commensurate experience in research or development in industry, academia, or an
institutional equivalent in this area. Based on my knowledge and experience working in
the field of database systems and electronic publishing, I agree with this assessment.
B.

WRITTEN DESCRIPTION

I understand that whether a patent specification satisfies the written description
requirement is a question of fact that is determined on a claim-by-claim basis. This
question of fact, I understand, is an objective inquiry that is analyzed from the

17

perspective of a person of ordinary skill in the art as of the effective filing date of the
patent.
I understand that the purpose of the written description requirement is to ensure
that the public is put on notice of the boundaries of the invention being claimed and that
the claims do not overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.
I understand that, under the written description requirement, the test is whether the
disclosures in the patent reasonably convey to those skilled in the art that the inventor had
possession of the claimed subject matter as of the effective filing date. Therefore, an
objective inquiry must be made into the four corners of the specification from the
perspective of a person of ordinary skill in the art. The specification must describe an
invention in a way that is understandable to a person of ordinary skill in the art and show
that the inventor actually invented the invention claimed.
I understand that the level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on the
complexity and predictability of the relevant technology. For example, I understand that
the patentee may need to provide more details for complex, new, or unpredictable
technologies than for comparatively simple, old, or predictable technologies. I
understand that it is not sufficient for purposes of the written description requirement that
the disclosure, when combined with the knowledge of persons of skill in the art, would
have lead one to speculate as to modifications that the inventor might have envisioned,
but failed to disclose. I understand, for example, that the question is not whether a
18

claimed invention would have been obvious based on what is disclosed in the
specification. I also understand that a mere wish or plan for obtaining the claimed
invention does not amount to an adequate written description. Instead, the specification
itself must describe the invention, and do so in sufficient detail that one skilled in the art
can clearly conclude that the inventor invented the claimed invention as of the effective
filing date being sought. Furthermore, I understand that it is not sufficient to disclose a
small subset of a claimed range when the disclosure of the small subset would not convey
to a person of ordinary skill in the art that the inventor had possession of the entire range.
I understand that this is particularly true when the variations over the entire range are
technically unpredictable.

VIII. OPINIONS
A.

INTRODUCTION

In my opinion, the ‘228 patent lacks a written description of independent claims
24 and 36, as well as their dependent claims 25-35 and 37-48. In particular, the
specification of the ‘228 patent does not disclose the “graphical representation of a
multidimensional space” and a method of displaying this graphical representation on a
video display as required by claims 24 and 36 and the accompanying dependent claims.
In my opinion, there is nothing in the specification of the ‘228 patents that would suggest
to a person of ordinary skill in the art that the inventors were in possession of these
method steps in January 1997, the earliest possible effective filing date of ‘228 patent, or
even in October 2000, the actual filing date of the original ‘228 patent application.

19

In forming my opinions on the written description of claims 24 and 36, I have
reviewed the entire specifications of both the ‘592 and ‘228 patents and the specifications
for the original Australian application and the PCT application. As noted above, I
understand that TimeBase contends that all of the matter claimed by the ‘228 patent
claims was fully disclosed in the ‘592 patent application. I further understand that the
two patents now share the same inventors and that TimeBase contends that the claims of
the ‘228 patent are entitled to the same priority date as the ‘592 patent. I understand that
for TimeBase to obtain the priority date of January 31, 1997 for the ‘228 patent claims,
those claims must have been adequately disclosed not only by the specification of the
‘592 patent (filed as United States Patent Application No. 90/108,999 on July 1, 1998),
but also must have been disclosed by PCT Patent Application No. PCT/AU98/00050 filed
January 30, 1998, and Australian Patent Application No. 04892 filed January 31, 1997, to
which the ‘592 patent claims priority.
I understand that the ‘228 patent specification contains additional information not
disclosed by the ‘592 patent specification or the Australian application to which the ‘592
patent claims priority. I understand that if the ‘228 claims are supported only by the
information that appears solely in the ‘228 patent application, then TimeBase would not
be entitled to the filing date of the ‘592 patent or its Australian counterpart.1
Nevertheless, to be thorough, I have reviewed the entire ‘228 specification, and in my

1

My understanding is that if TimeBase argues that claims 24 and 36 were disclosed by
material unique to the ‘228 patent specification, then TimeBase necessarily revokes its
earlier claims to the priority date of the ‘592 patent. If TimeBase revokes that claim, I
may have additional opinions to offer regarding the validity of the ‘228 patent.
20

opinion neither the ‘228 patent specification, the ‘592 patent specification, nor the
Australian application discloses the invention claimed in claims 24 and 36 of the ‘228
patent and their accompanying dependent claims. Therefore, for convenience, in my
discussion below I focus on the entire ‘228 patent, which already includes the disclosures
of the earlier applications.
B.

THE METHOD OF CLAIMS 24 AND 36 IS NOT DISCLOSED IN
THE ‘228 PATENT SPECIFICATION

In forming my opinions, I specifically sought to determine whether a person of
ordinary skill in the art as of the time of any of the filing dates would find a disclosure in
the ‘228 patent specification of the invention claimed by claims 24 and 36 and would
understand that the inventors were in possession of the invention. Both of these method
claims require a “graphical representation of a multidimensional space” and the method
of displaying portions of text as a graphical representation of the multidimensional
space. As described in section VI.C.2, under the Court’s claim construction, this means
that the multidimensional space must be pictorially displayed on a video device, such as
a CRT monitor, an LCD monitor, or a projector and screen. The multidimensional space
as construed by the Court is “an area not having boundaries and that is capable of, or
involves, more than three dimensions.” The Court construed dimensions to be “axes
along which, or along some combination of which, point-to-point movement is
allowed.” Using these definitions, a “graphical representation of a multidimensional
space” is a pictorial display on a video device of an area not having boundaries, showing

21

more than three axes along which, or along some combination of which, point-to-point
movement is allowed.
As explained in more detail below, I searched each and every part of the onehundred-page-plus ‘228 patent for a disclosure of a pictorial display of a
multidimensional space and a method for displaying the portions of text as a graphical
representation of the multidimensional space on a video display. I found none. As
described below, my analysis first looked at the general text of the specification and then
examined all of the figures, the screen shots, the tables, and other appendices, together
with their accompanying text. A chart showing my findings is attached to this report as
Appendix 8.
1.

The General Text of the Specification for the ‘228 Patent Does Not
Discuss or Disclose a Graphical Representation of a Multidimensional
Space

In undertaking my analysis, I first reviewed the specification of the ‘228 patent to
determine whether there was any explicit discussion of a “graphical representation of a
multidimensional space.” In reviewing the specification, I did not find any such explicit
discussion. In fact, those specific words literally do not appear anywhere in the text of
the ‘228 patent other than claims 24 and 36 themselves. In addition, these specific words
in the claim were not added until August 2006 and are not part of any of the patent
applications as originally filed.
Next, I reviewed the text of the specification of the ‘228 patent to determine
whether there might be any disclosure that a person of ordinary skill in the art would
understand to be a description of the graphical representation of a multidimensional space
22

required by claims 24 and 36 and the claimed method of display. I could find no such
disclosure. No aspect of the specification discloses or describes an electronic publishing
system that includes a graphical representation of a multidimensional space. While much
of the specification is devoted to describing how a user might navigate in a conceptual
space containing three dimensions using a primarily text-based user interface, nothing in
the specification describes the graphical depiction of a multidimensional space on a video
display. In particular, no aspect of the specification discloses or describes a method for
electronically publishing or searching text-based data, where a space with more than
three dimensions is displayed pictorially on a video device. In my opinion, a person of
ordinary skill in the art as of the claimed effective date of January 31, 1997 or any of the
other filing dates would have absolutely no idea that the inventors possessed such a
method.
Furthermore, the video displays described by the specification primarily utilize
off-the-shelf text retrieval software, such as Folio Views or Dynatext. To the best of my
knowledge, these software packages are not capable of pictorially displaying a
multidimensional space (having more than three, and at least six or seven dimensions).
In short, in my opinion, nothing in the general text of the specification depicts or
describes a graphical representation of a space with more than three dimensions or the
claimed method of displaying portions of text as a graphical representation of the
multidimensional space.

23

2.

None of the Figures in the Specification Disclose or Describe a
Graphical Representation of a Multidimensional Space

I next reviewed each of the figures in the ‘228 patent and the text in the
specification pertaining to each figure. Nothing in these figures would have conveyed to
a person of ordinary skill in the art that the inventors possessed the claimed “graphical
representation of a multidimensional space” in January 1997 or any of the other filing
dates.
The fact that the inventors portrayed a bounded, three-dimensional space in
Figures 1–4 does not change my opinion. For convenience, Figure 1 is shown below:

The inventors explained that although Figure 1 conceptually represents the
multidimensional space by a “layered grid” containing vertical and horizontal lines, “in
reality (in the case of more than two dimensions)” the lines would be at “all angles and
inclines.” (‘228 patent, 12:16-20 (emphasis added).) In other words, the inventors chose
to rely on a three-dimensional space with a “layered grid,” even though this depiction in
reality does not disclose or describe the claimed multidimensional space. Figures 1–3 do
24

not show a multidimensional space because a multidimensional space must be capable of
or involve more than three dimensions. Moreover, this “layered grid” has finite edges,
showing that it is bounded, whereas the multidimensional space of the patents is an “area
not having boundaries.” Furthermore, Figures 1–3 do not purport to depict a display on
any video screen or computer screen, as required by the claims of the patent. In short, a
person of ordinary skill in the art would not understand that Figures 1–3 were intended to
depict or describe a way of graphically displaying the claimed multidimensional space in
a system for electronically publishing or searching text-based data. Instead, these figures
appear to be conceptual diagrams meant only to help the reader of the patent understand
how a bounded, three-dimensional space might be visualized.
Figure 4 of the ‘228 patent specification, shown below, also does not disclose a
graphical representation of a multidimensional space:

25

The specification says that Figure 4 “illustrates the application of legal information to
mapped nodes according to the first embodiment.” (‘228 patent, 8:29-30.) According to
the specification, Figure 4 “provides an example of how legal information is navigated by
an end user.” (‘228 patent, 14:54-55.) Figure 4 shows seven pieces of legislation that are
located (assigned, or mapped) to points on the three-dimensional grid depending on their
attributes. Once again, the inventors chose to portray a three dimensional space with a
“layered grid,” even though this depiction does not in reality depict the claimed
multidimensional space.
Figure 4 and the accompanying text would not demonstrate to a person of ordinary
skill in the art that the inventors possessed the invention of pictorially displaying
numerous dimensions. To the contrary, the inventors explained: “To simplify the
diagram, only three axes are illustrated, however, other axes may be included dependent
26

upon the number of dimensions of the space.” (‘228 patent, 15:10-11 (emphasis added).)
Here again, the inventors did not disclose anything that would work for more than three
dimensions.
Furthermore, Figure 4 does not purport to depict a display on any video screen or
computer screen, as required by claims 24 and 36 of the ‘228 patent. A person of
ordinary skill in the art would not understand that Figure 4 was intended to depict or
describe a way of displaying a graphical representation of a multidimensional space in a
system for electronically publishing or searching text-based data. Instead, this appears to
be a conceptual diagram meant only to help the reader of the patent understand how a
three-dimensional space might be visualized. In sum, like Figures 1–3, Figure 4 does not
depict a graphical representation of a multidimensional space or the claimed method of
displaying portions of text as a graphical representation of the multidimensional space.
The computer screen illustrations (“screen shots”) in Figures 7–17 also do not
depict a graphical representation of a multidimensional space. These screen shots all
show a Folio Views user interface containing some standard Windows features, such as
drop down menu buttons. The information within these ordinary windows is primarily
textual. For example, Figure 13 is shown below:

27

Figure 13 shows the text of a portion of legislation, namely “Family relationships
definitions-couples.” In addition to the text of the legislation and the standard Windowstype menus along the top, Figure 13 shows a “toolbar,” labeled 1302. This toolbar
contains eight “buttons,” which are described in the ‘228 patent specification at lines
17:62–18:13. These buttons are provided “for accessing time based information” (‘228
patent, 17:63-64) and allow a user to select the previous, next, or all versions of this piece
of legislation. By clicking on other buttons, a user may view other portions of text-based
data, such as “sections dealing with a similar subject, or similar sections in other
jurisdictions, or related information such as cases and articles on or about the section”
(label 1308). (‘228 patent, 18:6-8.) The toolbar also allows a user to view an “overview”
28

of the portion of text-based data (label 1304). (‘228 patent, 18:1.) But all of this
information is presented textually, not graphically. For example, Figure 14 provides a
textual display of the information that appears if the “Section Information” (label 1304)
button is selected. (‘228 patent, 18:14-20). Figure 15 similarly provides a textual display
of the information that appears when the “Previous” button is selected. (‘228 patent,
18:21-28). In short, this toolbar, and the information that appears when these buttons are
selected, are not graphical representations of a multidimensional space.
Finally, Figures 18–20 and 22A–C do not depict a graphical representation of a
multidimensional space. Figure 18 is representative of these figures, and is shown below:

29

The specification of the ‘228 patent says that Figure 18 “is a screen shot of a
Normal axis view of a MALT publication (with a search mode enabled) in accordance
with an embodiment of the present invention.” (‘228 patent, 8:42-44.) Figure 18 shows
“a screenshot 1800 depicting a section of legislation in accordance with an embodiment
of the invention.” (‘228 patent, 22:26-27.) The “content frame” is at 1810, and it
“displays the content of the current node.” (‘228 patent, 22:28-29.) The “content
anchor” is shown at 1805, and it “displays the locators for the current content provision in
a user friendly form . . . .” (‘228 patent, 22:34-35.) The “reference frame” is shown at
1820, and it “contains a set of links 1821 corresponding to the members of a viewing axis
associated with the current base node.” (‘228 patent, 22:43-44.) Label 1823 indicates a
“reference marker” which shows the link currently selected. (‘228 patent, 22:45.) The
buttons 1816 and 1818 are for navigating the sequential axis. (‘228 patent, 22:55.) The
buttons 1812 and 1813 “allow access to the next or previous occurrence of this text [that
is the search result].” (‘228 patent, 22:63-64.) Links 1807 and 1808 allow the user to
select different viewing axes: Versions and Amendments. (‘228 patent, 23:2-3.)
It is readily apparent that this screen is primarily textual, not pictorial.2 Moreover,
the primary content of Figure 18 is a single portion of text-based data. This screen does

2

I understand that the PTO rejected claims in the ‘228 patent covering this “display” of a
multidimensional space, saying that they were obvious in view of (among others) United
States Patent No. 6,144,962 (“Weinberg,” attached hereto as Appendix 9). (Office
Action Mailed July 8, 2004, TB040986-87, attached hereto as Appendix 10). I further
understand that TimeBase defended these claims by attempting to distinguish Weinberg,
telling the PTO that Weinberg “provides a graphical view of dynamically changing web
site links,” which is “in contrast to the claimed invention, which provides a non30

not pictorially display a multidimensional space or a method of displaying portions of
text as point on a graphical representation of the multidimensional space.
The arrows (called “buttons” by the specification) are also not a graphical
representation of a multidimensional space. These arrows provide a user with a
mechanism for moving to another portion of text-based data. The presence of these small
icons does not transform this screen shot into a pictorial representation of a
multidimensional space, with points representing the related portions of text-based data.
For the same reasons, there is no indication whatsoever that Figures 19–20 or
22A–C are graphical representations of a multidimensional space. None of these figures
disclose a pictorial depiction of an area not having boundaries and that has, or involves,
more than three dimensions.
In sum, in my opinion, none of the Figures of the ‘228 patent or the
accompanying text describes the claimed invention. None of them describe or disclose a
graphical representation of a multidimensional space of even four dimensions, much less
the unbounded space claimed by the patent. Indeed, one of the purported advantages of
the invention of the ‘228 patent is its ability to accommodate many dimensions. For
example, the specification states that—beyond the three dimensions shown in the
figures—“other axes may be included dependent upon the number of dimensions of the

graphical view of a fixed pre-prepared multidimensional dataset.” (Amendment After
Office Action Mailed July 8, 2004, TB040951 (emphasis added), attached hereto as
Appendix 11). These earlier statements from TimeBase comport with my opinion that
the inventors did not possess the invention of a display of a graphical representation of a
multidimensional space.
31

space.” (‘228 patent, 15:11-13.) In addition, the specification states that “any number of
axes may be displayed and navigated without increasing the complexity of the screen
view . . . .” (‘228 patent, 20:14-15.) Elsewhere, the ‘228 patent describes as one of the
advantages of its method of electronic publication is that information “is able to be
accessed under any combination of dimensions from the multi-dimensional space . . . .”
(‘228 patent, 11:14-16.) Yet there is no depiction or discussion in the ‘228 patent of what
a graphical representation of a multidimensional space containing even four—much less
six, seven, or more—would look like. None of the figures or screen shots contained in
the ‘228 patent, for example, provide a pictorial representation of the points of a
multidimensional space and their location within the space that involves four, five, six, or
more dimensions. The person of skill in the art would not even know what such a space
might look like. The ‘228 patent specifically declines to depict, even conceptually, a
space with more than three dimensions. Instead, the patent acknowledges the difficulty,
if not the impossibility, of graphically representing a multidimensional space containing a
large number of dimensions. In my opinion, the inventors went out of their way to make
clear that they did not possess this invention. Consequently, a person of ordinary skill in
the art would not have concluded that these inventors invented the step of displaying a
graphical representation of a multidimensional space in an electronic system for
publishing and searching text-based data.
Furthermore, even if the figures in the ‘228 patent were a graphical representation
of a multidimensional space the specification of the ’228 patent never describes
displaying these figures on a computer screen, and never describes using this graphical
32

display in a system for electronically publishing or searching text-based data. There
simply is no description in the text of the specification of any such display, and there is
no statement that any of the figures in the specification are intended to be a graphical
representation of a multidimensional space for display on a computer screen.
3.

The ‘228 Patent’s Appendices A–E Do Not Disclose a Graphical
Representation of a Multidimensional Space

I also reviewed all of the Appendices attached to the ‘228 patent in columns 33–
162. None of these Appendices describe or discuss the graphical representation of a
multidimensional space. These Appendices contain: a description of research on
Australian legislation; Document Type Definitions (DTDs); a relational database design;
and a “keying guide” for Australian documents. None of these Appendices describe how
a multidimensional space might be pictorially displayed on a video screen. In short,
nothing in these Appendices describes a graphical representation of a multidimensional
space, or the method of using a graphical representation of a multidimensional space
required by claims 24 and 36 of the ‘228 patent and their dependent claims.
C.

GRAPHICALLY DISPLAYING A MULTIDIMENSIONAL SPACE
WOULD BE COMPLEX AND WOULD REQUIRE A DETAILED
DISCLOSURE

Finally, in my opinion, a person of ordinary skill in the art in January 1997 (or any
of the later filing dates) would have regarded the display of a graphical representation of
the claimed multidimensional space as a complex task. Simultaneously displaying six,
seven, or even dozens of dimensions of text-based data in a graphical format on a
computer screen is far from trivial and poses numerous problems that were recognized by

33

persons of ordinary skill in the art in January 1997. While displaying up to three
dimensions on a computer screen was known in the art at that time, displaying four or
more dimensions was not inherently known. Indeed, persons of ordinary skill in the art
were not even generally working on this issue, and there certainly was no commonlyunderstood way to display four, five, six or more dimensions graphically on a computer
screen. The few computer scientists who were working on this problem were trying
widely differing approaches that were in various experimental stages.
In addition to the difficulty of graphically displaying a multidimensional space
generally, the display of the claimed multidimensional space of claims 24 and 36 of the
‘228 patent would have been even more complex. Those claims require a graphical
display of a multidimensional space that includes “axes along which, or along some
combination of which, point-to-point movement is allowed.
In short, there is not any clear and obvious way of depicting more than three
spatial dimensions in a three-dimensional world, and trying to do so is a highly complex
and unpredictable problem.
Given these challenges, a person of ordinary skill in the art would be looking for
an especially clear and detailed description of the invention claimed in claims 24 and 36
of the ‘228 patent. In my opinion, not only does the ‘228 patent specification fail to
provide any disclosure of the claimed video display, but it certainly does not provide a
clear and detailed description of such a display. Such a clear and detailed description
would have been required for a person of skill in the art to understand that the inventors
actually possessed their claimed graphical representation of a multidimensional space and
34

the claimed method of displaying portions of text as a graphical representation of a
multidimensional space on a video display. Because the inventors did not do so, this
further supports my opinion that claims 24 and 36 of the ‘228 patent and their dependent
claims do not meet the written description requirements of 35 U.S.C. § 112.

35