Mirror Worlds, LLC v. Apple, Inc.

Filing 221

MOTION for Summary Judgment THAT THE ASSERTED CLAIMS OF U.S. PATENT NOS. 6,006,227, 6,638,313, 6,725,427 AND 6,768,999 ARE INVALID AS ANTICIPATED AND OBVIOUS by Apple, Inc.. (Attachments: #1 Text of Proposed Order, #2 Declaration of Jeffrey G. Randall in Support of Motion for Summary Judgment, #3 Exhibit 1, #4 Exhibit 2, #5 Exhibit 3, #6 Exhibit 4, #7 Exhibit 5, #8 Exhibit 6, #9 Exhibit 7, #10 Exhibit 8, #11 Exhibit 9, #12 Exhibit 10, #13 Exhibit 11, #14 Exhibit 12, #15 Exhibit 13, #16 Exhibit 14, #17 Exhibit 15, #18 Exhibit 16, #19 Exhibit 17, #20 Exhibit 18, #21 Exhibit 19, #22 Exhibit 20, #23 Exhibit 21, #24 Exhibit 22, #25 Exhibit 23, #26 Exhibit 24, #27 Exhibit 25, #28 Exhibit 26, #29 Exhibit 27, #30 Exhibit 28, #31 Exhibit 29)(Randall, Jeffrey)

Mirror Worlds, LLC v. Apple, Inc.

D

Doc. 221 Att.

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION

MIRROR WORLDS, LLC, Plaint iff, v. APPLE INC., Defendant. APPLE INC., Counterclaim Plaintiff, v. MIRROR WORLDS, LLC, MIRROR WORLDS TECHNOLOGIES, INC., Counterclaim Defendants.

Civil Action No. 6:08-cv-88 LED

JURY TRIAL DEMANDED

DECLARATION OF JEFFREY G. RANDALL IN SUPPORT OF APPLE INC.'S MOTION FOR SUMMARY JUDGMENT THAT THE ASSERTED CLAIMS OF U.S. PATENT NOS. 6,006,227, 6,638,313, 6,725,427 AND 6,768,999 ARE INVALID AS ANTICIPATED AND OBVIOUS

ockets.Justia.com

I, Jeffrey G. Randall, hereby declare as follows: 1. I am a partner at the law firm of Paul, Hastings, Janofsky & Walker LLP, counsel The facts stated in this

for Defendant and Counterclaim Plaintiff Apple Inc. ("Apple").

Declaration are true and correct of my own personal knowledge, and if called as a witness, I could and would competently testify thereto. 2. No. 6,006,227. 3. No. 6,638,313. 4. No. 6,725,427. 5. No. 6,768,999. 6. Attached hereto as Exhibit 5 is a true and correct copy o f U.S. Patent Attached hereto as Exhibit 4 is a true and correct copy o f U.S. Patent Attached hereto as Exhibit 3 is a true and correct copy o f U.S. Patent Attached hereto as Exhibit 2 is a true and correct copy o f U.S. Patent Attached hereto as Exhibit 1 is a true and correct copy o f U.S. Patent

No. 5,499,330, produced by Apple and bearing production numbers APMW0000705 ­ APMW0000732. 7. Attached hereto as Exhibit 6 is a true and correct copy of excerpts from the Expert

Report of Steven K. Feiner, Ph.D. Re: Invalidity of U.S. Patent No. 6,006,227, U.S. Patent No. 6,638,313, U.S. Patent No. 6,725,427 and U.S. Patent No. 6,768,999, dated May 20, 2010. 8. Attached hereto as Exhibit 7 is a true and correct copy of a video produced by

MAYA Design, Inc. and bearing the production number MD001043. 9. Attached hereto as Exhibit 8 is a true and correct copy o f Peter Lucas and Lauren A Scriptable Document Management Environment," CHI '94

Schneider, "Workscape:

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(April 24-28,1994), produced by Apple and bearing production numbers APMW0075775 ­ APMW0075776. 10. Attached hereto as Exhibit 9 is a true and correct copy of Joseph M. Ballay, An Interdisciplinary Experience," CHI '94 (April 24-28,1994),

"Designing WorkscapeTM:

produced by Apple and bearing production numbers APMW0075777 ­ APMW0075782. 11. Attached hereto as Exhibit 10 is a true and correct copy of U.S. Patent

No. 6,243,724, produced by Apple and bearing production numbers APMW0000001 ­ APMW0000049. 12. Attached hereto as Exhibit 11 is a true and correct copy of excerpts from

Retrospect User's Guide (Dantz Development Corp. 1993), produced by Apple and bearing production numbers APMW0076037 ­ APMW0076263. 13. Attached hereto as Exhibit 12 is a true and correct copy of excerpts from

Retrospect User's Guide (Dantz Development Corp. 1995), produced by Apple and bearing production numbers APMW0000367 ­ APMW0000704. 14. Attached hereto as Exhibit 13 is a true and correct copy of Mirror Worlds' Second

Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions Under Patent Rule 3-1 and Disclosures Under Patent Rule 3-2, served May 19, 2010. 15. Attached hereto as Exhibit 14 is a true and correct copy of an Order by the U.S.

Patent Office Granting/Denying Request for Ex Parte Reexaminat ion in Reexamination Control No. 90/010,506, U.S. Patent No. 6,006,227. 16. Attached hereto as Exhibit 15 is a true and correct copy of an Order by the U.S.

Patent Office Order Granting / Denying Request For Ex Parte Reexaminat ion in Reexamination Control No. 90/010,513, U.S. Patent No. 6,638,313.

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17.

Attached hereto as Exhibit 16 is a true and correct copy of an Order by the U.S.

Patent Office Granting/Denying Request for Inter Partes Reexaminat ion in Reexamination Control No. 95/001,172, U.S. Patent No. 6,725,427. 18. Attached hereto as Exhibit 17 is a true and correct copy of an Order by the U.S.

Patent Office Granting/Denying Request for Inter Partes Reexaminat ion in Reexamination Control No. 95/001,171, U.S. Patent No. 6,768,999. 19. Attached hereto as Exhibit 18 is a true and correct copy of an Office Action by the

U.S. Patent Office in Ex Parte Reexaminat ion in Reexamination Control No. 90/010,506, U.S. Patent No. 6,006,227. 20. Attached hereto as Exhibit 19 is a true and correct copy of an Office Action by the

U.S. Patent Office in Ex Parte Reexaminat ion in Reexamination Control Control No. 90/010,513, U.S. Patent No. 6,638,313. 21. Attached hereto as Exhibit 20 is a true and correct copy of an Office Action by

the U.S. Patent Office in Inter Partes Reexaminat ion in Reexamination Control No. 95/001,172, U.S. Patent No. 6,725,427. 22. Attached hereto as Exhibit 21 is a true and correct copy of an Office Action by the

U.S. Patent Office in Inter Partes Reexaminat ion in Reexamination Control No. 95/001,171, U.S. Patent No. 6,768,999. 23. Attached hereto as Exhibit 22 is a true and correct copy o f Declaration of John

Levy, Ph.D. Regarding Claim Construction, dated November 27, 2009. 24. Attached hereto as Exhibit 23 is a true and correct copy of Expert Rebuttal Report

of John Levy, Ph.D. Regarding Validity, dated June 4, 2010.

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25.

Attached hereto as Exhibit 24 is a true and correct copy of Preliminary Claim

Construction Order, filed February 16, 2010 [Docket No. 178]. 26. Attached hereto as Exhibit 25 is a chart prepared at my direction entitled

"Invalidity of U.S. Pat. No. 6,006,227 as Disclosed by Lucas Workscape." 27. Attached hereto as Exhibit 26 is a chart prepared at my direction entitled

"Invalidity of U.S. Pat. No. 6,638,313 as Disclosed by Lucas Workscape." 28. Attached hereto as Exhibit 27 is a chart prepared at my direction entitled

"Invalidity of U.S. Pat. No. 6,725,427 as Disclosed by Lucas Workscape." 29. Attached hereto as Exhibit 28 is a chart prepared at my direction entitled

"Invalidity o f U.S. Pat. No. 6,768,999 as Disclosed by Lucas Workscape." 30. Attached hereto as Exhibit 29 is a true and correct copy of excerpts from the

transcript of the deposition of Peter Lucas, Ph.D. taken on June 16, 2010. I declare under penalty of perjury that the foregoing is true and correct. Dated this 1st day of July, 2010. /s/ Jeffrey G. Randall Jeffrey G. Randall
LEGAL_US_E # 88739447.1

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