nyndce-94359

CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY (TECHNICAL)

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF NEW YORK

RENSSELAER POLYTECHNIC INSTITUTE and DYNAMIC ADVANCES, LLC,

Plaintiffs,

v.

APPLE INC.,

Defendant.

Case No. 1:13-cv-00633 (DNH/DEP)

JURY TRIAL DEMANDED

DEFENDANT APPLE INC.’S STATEMENT OF MATERIAL FACTS IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

REDACTED VERSION

Case 1:13-cv-00633-DEP Document 198 Filed 04/23/15 Page 1 of 29

CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY (TECHNICAL) 1

Pursuant to L.R. 7.1(a).3, Apple Inc., moving for summary judgment submits the

following Statement of Material Facts set forth, in numbered paragraphs, each material fact

about which there exists no genuine issue.

1. Plaintiffs Rensselaer Polytechnic Institute and Dynamic Advances, LLC (collectively

“plaintiffs”) assert U.S. Patent No. 7,177,798 (the “’798 patent”) against Apple Inc.

(“Apple”). Original Complaint, filed June 3, 2013 (Dkt. 1) at ¶ 16.

2. Plaintiffs assert all 21 claims of the ’798 patent. See, Exhibit A to the Declaration of J.

David Hadden in Support of Apple Inc.’s Motion for Summary Judgment of Non-

Infringement (“Hadden Decl.”), at p. 2 (Aug. 11, 2014 Supplemental Disclosure of Asserted

Claims and Infringement Contentions).

3. Two of the ’798 patent’s claims are independent: method claims 1 and 9. Hadden Decl., Ex.

B (the ’798 patent) at DA0000039, col. 36:37–53 (claim 1) & DA0000040, col. 37:15–29

(claim 9).

I. THE ’798 PATENT

4. The ’798 patent is titled “Natural Language Interface Using Constrained Intermediate

Dictionary of Results.” Id. at DA0000001.

5. The ’798 patent describes the “general case for general natural language processing,” stating:

This paradigm enumerates all concepts—i.e., the logical association of words—that users could use for articulation in the place of a linguistic structure to interpret natural languages. An example would be Microsoft’s MindNet software technology developed by Microsoft Corporation of Redmond, Wash., which derives conceptual networks (webs of concepts) of, say, a standard dictionary and matches human queries against the structure. Here, matching is essentially the interpretation. This is obviously a monumental effort in the general case for general natural language processing. However, enterprise databases already represent a much focused application domain of querying; and more significantly, they also provide a much narrower range of concepts and their logical structures.



Id. at DA0000027, col. 11:66–12:12.

6. The ’798 patent does not address a different problem of general natural language processing.

Id. at DA0000037, col. 31:1–3 (“Generic natural language processing is fundamentally

different since the possible permutations in the latter case are virtually infinite.”).

7. The ’798 patent describes that keywords can be overwhelming, and proposes a way to make

the use of keywords more manageable “if they are based on database objects and other

known enterprise metadata,”:

These keywords are overwhelming when all possible permutations of natural words (phrases) in queries are considered (i.e., a linguistic dictionary). However, keywords could be manageable if they are based on database objects and other known enterprise metadata.

Id. at DA0000025, col. 7:39–44.

8. Plaintiffs’ technical expert—Dr. Carbonell—testified regarding “the crux of the invention” of

the ’798 patent:

The crux of the ’798 patent invention is I have an interface that I have designed and it is limited to a particular database, right? MR. TILLER: Object to the form. BY MR. HADDEN: Q. Correct? A. That’s right.

Id., Ex. C (Depositions of Jaime Carbonell taken March 19 and 22, 2015) at 37:13–19.

9. The specification describes limiting the interface to a specific enterprise database:

A particular enterprise database (or distribution of databases) necessarily has only a finite number of database objects, including data types, data instances, and database computational operators (also referred to as database values). They give rise to only a finite number of possible permutations. All meaningful queries must ultimately refer to these database objects and the articulation of any queries must correspond to some of these permutations. When the system identifies the permutations implied, it has interpreted the query. Then, it has to be able to map the query to the underlying database query language (such as SQL) without having to understand linguistically the human meaning of the words and phrases used.

Id., Ex. B at DA0000036-37, col. 30:2–31:3.



10. Dr. Carbonell testified that one aspect of the claimed invention is that the information about

the underlying database is stored in a single database: a metadata database:

Q. So there has to be a single thing, a metadata database, it has to have these four types of information, right? A. Uh-huh.

Id., Ex. C at 103:20–23.

11. Claim 1 of the ’798 patent requires, among other limitations, “performing, based on the

input, without augmentation, a search of one or more language-based databases.” Id., Ex. B

at DA0000039, col. 36:37–53 (claim 1).

12. Claim 9 of the ’798 patent requires, among other limitations, “database objects being stored

in a metadata database.” Id., Ex. B at DA0000040, col. 37:15–29 (claim 9).

13. The metadata database must contain four types of information according to the claimed

invention: case information, keywords, information models, and database values. Id., Ex. B

at DA0000039, col. 36:37–53 (claim 1) & DA0000040, col. 37:15–29 (claim 9). See also,

Decision and Order re disputed claims terms, dated June 12, 2014 (Dkt. 104) at 43.

14. Dr. Carbonell testified that a single metadata database must include all four elements:

Q. Sure. Right, but there has to be at least one single metadata database that includes those four elements, right? A. Yes.

Hadden Decl., Ex. C at 94:16–19.

15. According to the ’798 patent, a user asks a question to get information from the enterprise

database, such as an example query from the specification: “Get order_id, model, wo_quan,

and num_completed of John Smith’s orders.” Id., Ex. B at DA0000034, col. 25:54–55.

16. The first step in interpreting a user’s question is to search the metadata database using the

words in the user’s input. Id., Ex. B at DA0000034, col. 26:1–3; see also, id., Ex. C at

143:1–9.



17. From the search of the metadata database, “database objects” to be used in generating a

database query are identified. Dr. Carbonell testified:

Q. So let me see if we agree on that, right. So the first step is you take the words and the user’s input and you try to find them in the metadata database, right, and you find objects that correspond to those words? MR. TILLER: Object to the form. BY MR. HADDEN: Q. Correct? A. Correct.

Id., Ex. C at 143:1–9.

18. The specification describes identifying the following database objects corresponding to the

example “John Smith” query above:

Id., Ex. B at DA0000034, col. 26:5–15.

19. The database objects are combined and ordered based on the known arrangement of

information stored in the underlying enterprise database: the database’s information model or

web of concepts. Id., Ex. C at 143:10–23.

20. Based on these relationships between database elements, the ordered combinations of the

identified database objects are linked or connected to each other in a “graph.” Dr. Carbonell

testified:

Q. Once you find those objects you try to find a way to connect them together using this graph of the schema of the database or some elaborated schema so you can map that to a SQL query, right? A. Correct me, whether you map into a SQL query or not, you have done the -- that is part of the search. Q. Right. So the search step in the patent where you search the metadata database is not constructing the query, it’s finding the objects in the metadata



database that you can then use to form a search graph, right? MR. TILLER: Object to the form. THE WITNESS: You’re exactly right. So I don’t see where we’re possibly disagreeing here.

Id.

21. For example, the specification describes how the following query graph is derived from the

metadata database objects in the table above:

Id., Ex. B at DA0000021, Fig. 17.

22. Once these connected elements of the enterprise database are known, a formal computer

query can be generated in a structured query language understood by the database computer

(such as SQL). Id., Ex. C at 143:10–23.

23. The specification describes the following SQL query would result from the natural language

query about John Smith’s orders:

SELECT WORK_ORDER.ORDER_ID, WORK_ORDER.PART_ID, WORK_ORDER.WO_QUAN, WORK_ORDER.NUM_COMPLETED FROM WORK_ORDER, PART, ORDER_ITEM, ORDER_HEADER, CUSTOMER WHERE ORDER_ITEM.ORDER_LINE_ID=WORK_ORDER.ORDER_ID AND ORDER_ITEM.PART_ID=PART.PART_ID AND ORDER_ITEM.CUST_ORDER_ID = ORDER_HEADER.CUST_ORDER_ID AND ORDER_HEADER.CUST_ID=CUSTOMER.CUST_ID AND (CUSTOMER.CUST_NAME = ‘John Smith’);

Id., Ex. B at DA0000036, col. 29:55–67.



II. SIRI’S NATURAL LANGUAGE PROCESSING

24. Siri is not an interface to an enterprise database. Declaration of James Allen in Support of

Apple Inc.’s Motion for Summary Judgment of Non-Infringement (“Allen Decl.”) ¶ 48.

25. Siri performs personal assistant tasks for the user, such as making restaurant reservations,

purchasing movie tickets, sending emails, and making phone calls. Id., ¶ 10. “Siri is a

Virtual Personal Assistant – a new way to interact with the Internet on your mobile phone.

Like a real assistant, Siri helps you get things done.” Id., ¶ 10; Hadden Decl., Ex. J (About

Siri (APL_DynAdv_00155934)).

26.

27. Users can ask Siri anything. Id., ¶ 11.

28.

29.

30.

31.



A.

32.

33.

34.

35.

36.

37.



38.

39.

40.

B.

41.

42.



43.

44.

45.

46.

47.



48.

49.

50.

51.

52.



53.

54.

55.

56.

57.

58.

59.

60.



III. “METADATA DATABASE”

61. Plaintiffs’ original infringement contentions did not identify anything in Siri that contained

all four types of required information: case information, keywords, information models, and

database values. See, Hadden Decl., Ex. D (Mar. 5, 2013 Preliminary Infringement Claim

Chart).

62. Regarding claim limitations related to searching a database, plaintiffs’ original infringement

contentions (served on March 5, 2013) state:

Based on the user’s input, Siri searches language-based databases that include data as well as information about the data, including what it means or how it is used in context, to determine the user’s intent.

Id. at 4.

63. Regarding claim limitations related to searching a database, plaintiffs’ supplemental

infringement contentions (served on August 11, 2014) state:

Id., Ex. A at Appendix A, p. 6.

64. On November 21, 2014, plaintiffs’ served a supplemental interrogatory response on

infringement that state “

.” Id., Ex. E

(Dynamic Advances’ Supplemental Response to Interrogatory 16) at 10.



65. Plaintiffs’ supplemental interrogatory response did not identify the required metadata

database. Id. at 9–10.

66. On December 15, 2014, plaintiffs’ technical expert, Dr. Carbonell, served his expert report

on infringement. Dr. Carbonell’s infringement report states:

“A search of one or more language-based databases including at least one metadata database.” This part of the element is easily met by the

Id., Ex. F (Expert Report of Jaime Carbonell) at ¶ 54(b).

67. On January 15, 2015, Dr. Carbonell served his rebuttal report on invalidity. Dr. Carbonell’s

invalidity report states:



Id., Ex. G (Responsive Expert Report of Jaime Carbonell to Opening Expert Report of James

Allen re Invalidity) at ¶ 108.

68. Regarding whether the theory was disclosed in Dr. Carbonell’s

infringement report, Dr. Carbonell testified:

Id., Ex. C at 94:20–95:7.

69. Regarding whether the theory was disclosed in plaintiffs’ original

infringement contentions, Dr. Carbonell testified:

Id. at 120:9–11.

70. Regarding whether the theory was disclosed in plaintiffs’ supplemental

infringement contentions, Dr. Carbonell testified:

Id., at 183:13–24.



71. As understood by a person of ordinary skill in the art, a database is designed to store data

according to an organizational schema, and to support a query language that allows the

search and retrieval of the data using that schema. Allen Decl. ¶ 42.

72. All useful programs use data in some organized way, but not all programs are databases. Id.,

¶ 46.

73. Virtually all modern software is written in object-oriented languages which

include program components called objects that include data and operations that use the data.

Id., ¶¶ 7–8.

74. Regarding plaintiffs’ theory is that every is a database, Dr. Carbonell testified:

Hadden Decl., Ex. C at 127:23–128:5.

75. On the same topic, Dr. Carbonell testified:

Id., Ex. C at 36:13–20.

76. Similarly, Dr. Carbonell testified that a computer game may be an enterprise database:

Q. Let’s assume it [a computer game program] keeps track of my score and also my position on some playing field. Would that count? A. So you can enrich it so it would contain multiple data items so it would satisfy the collection of data items part rather than a single data item. And if there’s an organization to these such that we know the relations among the various items of information and it is being run in a computer for a systemic purpose such as playing the game, then that would be a kind of rudimentary or minimal --



Q. Enterprise database? A. -- enterprise database, yeah.

Id., Ex. C at 77:19–78:6.

77. In opposing Apple’s motion to stay, Dr. Carbonell distinguished the Shwartz and Janas prior

art references as “not rely[ing] on the database or the claimed metadata database to take part

in the processing of the natural language query.” See Declaration of Jaime Carbonell, dated

Jan. 2, 2014 and filed Jan. 3, 2014, (Dkt. 41-2) at ¶¶ 26–29

78. Regarding plaintiffs’ allegations related to the metadata database and the enterprise database,

Dr. Carbonell testified:


79. Regarding plaintiffs’ allegations related to the metadata database and the enterprise database,

Dr. Carbonell further testified:

Id., Ex. C at 35:8–14.

80. Regarding the relationship between the metadata database and the enterprise database, one of

the two named inventors (Dr. Veera Boonjing) testified:

MR. RIBERA: Q. Two separate databases? A Yes. Q So we’re talking about the database that would have the keywords and the mapping to the underlying database; correct? A Yes.

Id., Ex. H (July 11, 2014 Deposition of Veera Boonjing) at 183:25–184:5.



81.

82.

Id. at 106:12–17.

83.

Id., Ex. C at 110:24–111:7.

IV. “DATABASE OBJECTS”

84. The independent claims require identifying (claim 1) or providing (claim 9) database objects.

Id., Ex. B at DA0000039, col. 36:37–53 (claim 1) and DA0000040, col. 37:15–29 (claim 9).

85. This Court ruled that database objects are included within a database. Dkt. 104 at 34 (“[I]t is

generally understood by persons of ordinary skill in the art that database objects are merely

objects included within a database.”).

86. This Court construed “database objects” as “objects included within a database, including but

not limited to, data types, data instances, database computational operators, data semantics,

data structures, data instances or data values, and data operators.” Dkt. 104 at 35.



87.


88. Dr. Carbonell testified that he has not identified any source code in Siri in his infringement

report that identifies database objects:

Q. You don’t identify any Siri source code here that identifies for one or more language-based databases a finite number of database objects, have you? MR. TILLER: Object to the form. THE WITNESS: That’s essentially right. I cited to the Apple documents because the part of the code that does this wasn’t available at the time I was writing this report.

Id. at159:9–16.

89.

V. DATABASE SEARCH

90. Regarding the claim limitations related to searching databases, Dr. Carbonell testified:

Q. You’re using the term “search” to mean any exploration of possible interpretations? A. I’m not sure I’m using it quite that broadly, but that’s a good approximation. In other words, if it’s part of the interpretation of the natural language and you have to explore multiple possibilities to see which ones would fit well, I would include that as part of the search.


91. Regarding the claim limitations related to searching databases, Dr. Carbonell testified:

Q. Just to be clear, you are identifying in the same steps in Siri to be both part of the search of the metadata database and



determining a plurality of combinations of the finite number of database objects, right? MR. TILLER: Object to the form. THE WITNESS: Right, determining a plurality of combinations of database objects is not a separate distinct step. It is a refinement or explanation or limitation about how the process occurs.

Id. at 168:12–21.

VI. “INFORMATION MODELS”

92. This Court construed “information models” to mean “webs of concepts for enterprise

databases.” Dkt. 104 at 33.

93. Dr. Carbonell never used the words “webs of concepts” for any database in his infringement

report. Dr. Carbonell testified:

You didn’t refer to web of concepts or enterprise database anywhere in this report, did you? MR. TILLER: Object to the form. THE WITNESS: I don’t recall if I used the word “web of concepts.”


94. Regarding the claim limitations related to information models for , Dr.

Carbonell testified:

Id. at 43:6–12.

95. Wolfram|Alpha is a third-party provider of answers for Siri. Wolfram|Alpha is used by some

versions of Siri to answer general knowledge questions such as “How many pints are in a

quart?”, “What is the distance between Jupiter and Mars?”, and “What is the chemical

formula for aspirin?” Treadgold Decl., ¶ 3.



96. Regarding the claim limitations related to information models for , Dr. Carbonell

testified:



testified:

Id. at 45:23–46:8.


testified:

Id. at 50:7–10.

VII. “CASE INFORMATION”

99. This Court construed “case information” to mean “information about prior instances of use of

the natural language processing method.” Dkt. 104 at 44.

100. The specification of the ’798 patent describes tasks associated with cases:

Learning can involve a number of possible tasks throughout the entire query process. The NLI could respond intelligently to the user’s articulation and if needed solicit more information about the query. It could confirm the meanings and results with the user in order to assist evaluation and assure correctness. The



NLI could also retain valuable cases (usage patterns) so that the NLI could improve its performance. The first two tasks of learning could help “close the loop” so that a query is always executed properly (completeness and correctness of query processing), while the third reduces the complexity of interpretation (e.g., the number of possible interpretations).

Hadden Decl., Ex. B at DA0000024, col. 5:31–42.

101. The specification describing cases as being added as the system “ages and evolves”:

Cases and additional keywords, metadata (e.g., changes to the information model) and database values may be added during operation of the system, and thus the system ages and evolves.

Id. at DA0000028, col. 14:17–20.

102. The specification also states that cases are acquired in relation to learning:

The reference dictionary 208 also serves as the basis for interaction with the user (identifying needs and generating meaningful reference points) and acquisition of lessons (determining additional keywords and cases)—i.e., the reference dictionary may be used to assist the user in learning.

Id. at col. 14:24–29.

103. The specification describes how cases can be a result of user interaction, as a part of

learning:

Interaction with the user concerning this estimate, in its own right, could add valuable cases to the system so that it could provide more help for uncertain users when the term “around” is encountered in a following query, which is also a part of learning.

Id. at DA0000034, col. 20:46–51.

104. Plaintiffs no longer accuse Siri’s ability to

as case information. Dr. Carbonell testified:

Id., Ex. C at 116:1–5.



105.

106. Plaintiffs allege is case information. Hadden Decl., Ex. G at ¶ 135.

107.

108.

109.

110.

111.

112.

113.



114.

115.

116.

117.

VIII. “PERFORMING, BASED ON THE INPUT, WITHOUT AUGMENTATION, A SEARCH”

118. Claim 1 requires “performing, based on the input, without augmentation, a search of one

or more language-based databases...” Id., Ex. B at DA0000039, col. 36:37–53 (claim 1).

119. This Court’s construction order states that the “parties’ dispute focuse[d] upon whether

the term precludes any supplementation of the natural language input, or instead precludes

only supplementation by the user through the addition of information or structure, as

plaintiffs now argue.” Dkt. 104 at 18 (emphasis in original).

120. This Court construed “based on the input, without augmentation” to mean “based solely

on the natural language input without augmentation.” Dkt. 104 at 25.

121.



122.

123. Regarding this limitation, Dr. Carbonell stated:

“Performing, based on the input, without augmentation,” refers to the user’s natural language input wherein said user provides only the natural language input and not additional information pertaining to the input …

Id., Ex. F at ¶ 54(a).

IX. “PROVIDING A NATURAL LANGUAGE QUERY INPUT BY THE USER”

124. Claim 1 requires “providing a natural language query input by the user.” Id., Ex. B at

DA0000039, col. 36:37–53 (claim 1).

125. The Claim Construction order stated:

[I]n light of the specification, the phrase “providing a natural language query input by the user” does not suggest that the user performs a part of the patented method, but instead communicates that the method begins, and is prompted, by the user providing a “natural language input.”

Dkt. 104 at 17.

126. The ’798 patent’s specification describes an embodiment of the described interface:

A general-purpose computer system 101 may include a natural language user interface (NLUI or simply NLI), through which a user requests information and performs other transactions. For instance, the user may provide input and receive output from graphical user interfaces.

Hadden Decl., Ex. B at DA0000026, col. 9:65–10:2.

127. The specification states:

For example, system 101 may prompt the user to “Please enter a search (natural language or keyword).” In response, the user may provide a natural language response, asking system 101 “Where is the Houston Field House at RPI located?” The natural language interface may have associated with it a natural language analyzer which determines the meaning of a provided input.



Id. at col. 10:9–16.

X. “PERMUTATIONS”

128. Claim 9 requires permutations of database objects as opposed to the combinations

required in claim 1. Id., Ex. B at DA0000040, col. 37:15–29 (claim 9).

129. This Court discussed that distinction in its Claim Construction order, stating:

In my view, these two words are distinct. A combination is simply a grouping of a collection of objects where order is unimportant. A permutation is similar, except that, unlike with respect to a combination, order is important.

Dkt. 104 at 37.

130.

131. In Dr. Carbonell’s invalidity report, he opined that ordering in the input is not sufficient

to meet this limitation:

Another insufficiency in Meng is its failure to disclose permutations, where order of keywords and/or their underlying meta-data concepts matters. For instance if the query was: “Did IBM in 2012 license software to divisions of Oracle?” then the keyword order matters, as IBM is the licensor and Oracle the Licensee. But trigrams will not help disambiguate since “IBM” and “license” and “Oracle” are not contained within any trigram, nor is “to” contained in the same trigram as “Oracle”. Hence, there is value in ordering of the keywords and database concepts they denote to disambiguate the meaning. However Meng does not disclose ordering of keywords or concepts across the input or across the interpretation and does not mention using the ordering to disambiguate – only aggregate trigram statistics are disclosed for disambiguation.

Id., Ex. G at ¶ 101.

132.



See, id., Ex. C at 347:14–348:5.

133.

Id., Ex. C at 371:2–11.

134.

135.

136.

137.

138.



Dated: April 23, 2015

Respectfully submitted, FENWICK & WEST LLP

By: /s/J. David Hadden J. David Hadden Carolyn Chang Hector Ribera Ryan Marton David M. Lacy Kusters Jeffrey A. Ware William A. Moseley, Jr. 555 California Street, 12th Floor San Francisco, CA 94104 Telephone: (415) 875-2300 Fax: (415) 281-1350 [email protected] [email protected] [email protected] [email protected] [email protected] [email protected] MENTER, RUDIN & TRIVELPIECE, P.C.

Mitchell J. Katz 308 Maltbie Street, Suite 200 Syracuse, NY 13204-1498 Tel: (315) 474-7541 Fax: (315) 474-4040 [email protected]

Attorneys for Defendant APPLE INC.



CERTIFICATE OF SERVICE

I hereby certify that on April 23, 2015, I caused copies of DEFENDANT APPLE

INC.’S STATEMENT OF MATERIAL FACTS IN SUPPORT OF MOTION FOR

SUMMARY JUDGMENT OF NON-INFRINGEMENT to be served in the manner indicated

to:

VIA E-MAIL

Donald E. Tiller Paul J. Skiermont Gordon D. Puckett Alexander E. Gasser Shellie Stephens SKIERMONT, PUCKETT LAW FIRM 2200 Ross Avenue, Suite 4800W Dallas, TX 75201 (214) 978-6600 [email protected] [email protected] [email protected] [email protected] [email protected] Attorneys for Plaintiffs Rensselaer Polytechnic Institute and Dynamic Advances, LLC

VIA E-MAIL

Nicholas Mesiti HESLIN ROTHENBERG FARLEY & MESTI 5 Columbia Circle Albany, NY 12203 [email protected]

Attorneys for Plaintiff Rensselaer Polytechnic Institute

James R. Muldoon HARRIS, BEACH PLLC 333 West Washington Street, Suite 200 Syracuse, NY 13202 (315) 423-7100 [email protected]

Steven P. Nonkes HARRIS, BEACH PLLC 99 Garnsey Road Pittsford, NY 14534 (585) 419-8800 [email protected]

Attorneys for Plaintiffs Dynamic Advances, LLC

/s/ J. David Hadden J. David Hadden


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