IconFind, Inc. v. Google, Inc.

Filing 93

STATEMENT of Joint Claim Construction Chart by Plaintiff IconFind, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit B, Part 1, # 4 Exhibit B, Part 2, # 5 Exhibit B, Part 3, # 6 Exhibit B. Part 4, # 7 Exhibit B, Part 5)(Haan, Brian)

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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]
400 Capitol Mall, 22nd Floor
Sacramento, CA 95814
Phone: [phone]
Fax: [phone]

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NIRO, HALLER & NIRO
Raymond P. Niro (Admitted Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Admitted Pro hac vice)
[e-mail]
Brian E. Haan (Admitted Pro hac vice)
[e-mail]
Anna B. Folgers (Admitted Pro hac vice)
[e-mail]
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Phone: [phone]
Fax: [phone]

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Attorneys for Plaintiff, IconFind, Inc.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA

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Case No. 2:11-cv-00319-GEB-JFM

ICONFIND, INC.,
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Plaintiff,
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JOINT CLAIM CONSTRUCTION
CHART

v.
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GOOGLE INC.,
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Defendant.
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Pursuant to the Court’s Order on October 7, 2011 adopting the parties’ proposed order
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setting additional claim construction deadlines (Dkt. No. 72), the Parties provide the following
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Joint Claim Construction Statement. A copy of the U.S. Patent No. 7,181,459 (“the ‘459
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Patent”) and its corresponding file history are attached to this joint statement as Exhibit A and B,

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respectively.

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The following terms that are disputed are bolded as they are found in asserted Claims 1,

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6, 30 and 31. The remaining asserted claims, which depend from independent Claims 1, 30 and

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31 are not included because they do not specifically include the disputed language:

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Claim 1

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1. A computer implemented method of categorizing a network page, comprising:
providing a list of categories, wherein said list of categories include a category for transacting
business and a category for providing information, and wherein said list of categories include a
category based on copyright status of material on a page; assigning said network page to one
or more of said list of categories; providing a categorization label for the network page using
the copyright status of material on the network page; and controlling usage of the network page
using the categorization label and the copyright status of the network page.

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Claim 6

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6. The method of claim 1, wherein said plurality of categories based on the copyright
status of material on a page comprise categories related to public domain, fair use only, use
with attribution, and permission of copyright owner needed.

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Claim 30

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30. A computer implemented method for categorizing a network page, comprising:
providing a list of categories, wherein said list of categories include a category for transacting
business and a category for providing information, and wherein said list of categories include a
plurality of categories based on the copyright status of material on a page; providing a
categorization code for labeling the network page with a categorization label, wherein said
categorization label indicates a set of categories and subcategories to which the network page
is assigned, and wherein said categorization label indicates the copyright status of material on
the network page; and controlling usage of the network page using the categorization label and
the copyright status of the network page.

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Claim 31

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31. A computer implemented method of categorizing a network page, comprising:
providing a list of categories, wherein said categories include a category based on the copyright
status of material on a page, and wherein the copyright status comprises categories related to
public domain, fair use only, use with attribution, and permission of copyright owner
needed; assigning said network page to one or more of a plurality of said list of categories;
providing a categorization label for the network page using the copyright status of material on

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JOINT CLAIM CONSTRUCTION CHART

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the network page; and controlling usage of the network page using the categorization label
and the copyright status of the network page.

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The following chart includes the disputed claim terms, the parties proposed constructions
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and supporting evidence:
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Claim
Language
network page
(Claims 1,30,
31)

IconFind’s Proposed Constructions
Google’s Proposed Constructions
and Evidence in Support
and Evidence in Support
Page on the Internet, private Page on the Internet, private
corporate network, intranet, local corporate network, intranet, local
area network or other network
area network or other network.
wherein an image on a page does not
Evidence in support:
constitute a page.

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
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

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

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

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otball.jpg

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‘459 Patent: Abstract, 1:22-25, Evidence in support:
3:39-42, 3:43-46, 3:47-50,
 ‘459 Patent: Abstract, 1:223:51-54, 3:55-58, 4:46-49,
25, 3:39-42, 3:43-46, 3:47-50,
5:62-6, 7:3-4, 9:41-42.
3:51-54, 3:55-58, 4:46-49,
5:62-6, 7:3-4, 9:41-42, 12:24Iconfind Inc. v. Yahoo! Inc.,
38, 14:15-50.
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
2009).
 Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
Iconfind Inc. v. Yahoo! Inc.,
2009).
Reporter’s
Transcript
Of
Proceedings,
Defendant’s
Motion
For
Claim
 Iconfind Inc. v. Yahoo! Inc.,
Reporter’s Transcript Of
Construction
Monday,
Proceedings,
Defendant’s
December 7, 2009 (Dkt. 54).
Motion
For
Claim
Construction
Monday,
http://www.statefansnation.
December 7, 2009 (Dkt. 54):
com/wppp. 71-76.
content/uploads/2009/06/fo



‘459 Patent File History:
Notice of Allowability filed on
Oct. 6, 2006, Applicant
Amendment and Remarks
filed on July 26, 2006,
Applicant Amendments and
Remarks filed on Apr. 10,
2006, Applicant Amendment
and remarks filed on Oct. 26,

JOINT CLAIM CONSTRUCTION CHART



‘459 Patent File History:
Patent Application of Lee H.
Grant and Susan A. Capizzi
for Method of Coding,
Categorizing, and Retrieving
Network Pages and Sites
dated February 22, 2002 in
U.S. Patent Application No.
10/082,596; Office Action
Summary dated January 27,
2005
in
U.S.
Patent
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1

Claim
Language

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3
4
5

IconFind’s Proposed Constructions
and Evidence in Support
2006, Applicant Amendments
and Remarks filed on Sept. 8,
2005, Applicant Amendment
and Remarks filed on Apr. 27,
2005, Applicant Amendment
and Remarks filed on Jun. 22,
2004

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Google’s Proposed Constructions
and Evidence in Support
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 27, 2005 in U.S.
Patent
Application
No. 10/082,596;
Office
Action Summary dated July
11, 2005 in U.S. Patent
Application No. 10/082,596;
Amendment
After
Final
Action (37 C.F.R. Section
1.116) dated September 8,
2005
in
U.S.
Patent
Application No. 10/082,596;
Office Action Summary dated
January 9, 2006 in U.S. Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 10, 2006 in U.S.
Patent
Application
No. 10/082,596.

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
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assigning said
network page
to one or
more of [a
plurality of]
said list of
categories
(Claim 1
[Claim 31])

Plain and ordinary meaning. If the The creator of the web page choosing
Court deems a construction is which one or more of [a plurality of]
necessary, IconFind proposes:
said list of categories characterize
said network page.
Assigning the network page to at least
Evidence in support:
one of the categories.
Evidence in support:




Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
2009)

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

‘459 Patent: Abstract, 1:2764, 3:11-15, 5:62-67, 6:12-22,
6:28-33, 6:39-40, 6:43-45,
6:47-60, 6:63-7:3, 7:1-2, 7:1215, 7:40-47, 7:66-8:9, 9:1621, 9:33-37.



Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
2009).

‘459 Patent: Abstract, 3:12-15,
5:64-67, 6:12-22, 6:28-33,
6:39-40, 6:43-45, 6:50-60,
7:1-2, 9:33-37,

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Deposition Transcript for Lee
H. Grant, pp. 141-48.

JOINT CLAIM CONSTRUCTION CHART

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Claim
Language

IconFind’s Proposed Constructions
and Evidence in Support
 American
Heritage
Dictionary,
dated
2000,
definition of “assign.”


‘459 Patent File History:
Notice of Allowability filed on
Oct. 6, 2006, Applicant
Amendment and Remarks
filed on July 26, 2006,
Applicant Amendments and
Remarks filed on Apr. 10,
2006, Applicant Amendment
and remarks filed on Oct. 26,
2006, Applicant Amendments
and Remarks filed on Sept. 8,
2005, Applicant Amendment
and Remarks filed on Apr. 27,
2005, Applicant Amendment
and Remarks filed on Jun. 22,
2004

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JOINT CLAIM CONSTRUCTION CHART

Google’s Proposed Constructions
and Evidence in Support
 Iconfind Inc. v. Yahoo! Inc.,
Reporter’s Transcript Of
Proceedings,
Defendant’s
Motion
For
Claim
Construction
Monday,
December 7, 2009 (Dkt. 54):
pp. 19-21.


Deposition Transcript for Lee
H. Grant, pp. 85-95, 98, 111113.



‘459 Patent File History:
Patent Application of Lee H.
Grant and Susan A. Capizzi
for Method of Coding,
Categorizing, and Retrieving
Network Pages and Sites
dated February 22, 2002 in
U.S. Patent Application No.
10/082,596; Office Action
Summary dated January 27,
2005
in
U.S.
Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 27, 2005 in U.S.
Patent
Application
No. 10/082,596;
Office
Action Summary dated July
11, 2005 in U.S. Patent
Application No. 10/082,596;
Amendment
After
Final
Action (37 C.F.R. Section
1.116) dated September 8,
2005
in
U.S.
Patent
Application No. 10/082,596;
Office Action Summary dated
January 9, 2006 in U.S. Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 10, 2006 in U.S.
Patent
Application
No. 10/082,596.
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Claim
Language
a set of
categories
and
subcategories
to which the
network page
is assigned
(Claim 30)

IconFind’s Proposed Constructions
Google’s Proposed Constructions
and Evidence in Support
and Evidence in Support
Plain an ordinary meaning. If the A set of categories and subcategories
Court deems a construction is that were chosen by the creator of the
web page as characterizing the
necessary, IconFind proposes:
network page
A set of categories and subcategories
to which the network page is assigned Evidence in support:
where
subcategories
are
combinations of categories.
 ‘459 Patent: Abstract, 1:2764, 3:11-15, 5:62-67, 6:12-22,
Evidence in support:
6:28-33, 6:39-40, 6:43-45,
6:47-60, 6:63-7:3, 7:1-2, 7:1215, 7:40-47, 7:66-8:9, 9:16 ‘459 Patent: Fig. 4, Fig. 9,
21, 9:33-37.
4:22-24, 4:37-39, 4:49-48,
5:4-9, 6:28-33, 10:2-3, 10:2328, 10 11:3-10, 11:15-26,
 Iconfind Inc. v. Yahoo! Inc.,
11:34-37,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
2009).
 Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
 Iconfind Inc. v. Yahoo! Inc.,
2009)
Reporter’s Transcript Of
Proceedings,
Defendant’s
Motion
For
Claim
 American
Heritage
Construction
Monday,
Dictionary,
dated
2000,
December 7, 2009 (Dkt. 54):
definition of “subcategory.”
pp. 19-21.
 ‘459 Patent File History:
 Deposition Transcript for Lee
Notice of Allowability filed on
H. Grant, pp. 85-95, 98, 111Oct. 6, 2006, Applicant
113.
Amendment and Remarks
filed on July 26, 2006,
Applicant Amendments and
 ‘459 Patent File History:
Remarks filed on Apr. 10,
Patent Application of Lee H.
2006, Applicant Amendment
Grant and Susan A. Capizzi
and remarks filed on Oct. 26,
for Method of Coding,
2006, Applicant Amendments
Categorizing, and Retrieving
and Remarks filed on Sept. 8,
Network Pages and Sites
2005, Applicant Amendment
dated February 22, 2002 in
and Remarks filed on Apr. 27,
U.S. Patent Application No.
2005, Applicant Amendment
10/082,596; Office Action
and Remarks filed on Jun. 22,
Summary dated January 27,
2004
2005
in
U.S.
Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action

JOINT CLAIM CONSTRUCTION CHART

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Claim
Language

IconFind’s Proposed Constructions
and Evidence in Support

categories
related to
public
domain, fair
use only, use
with
attribution,
and
permission of
copyright
owner needed
(Claims 6,
31)

Plain and ordinary meaning. If the
Court deems a construction is
necessary, IconFind proposes:

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Categories related to material that
can be used freely without any
restrictions, material meant to be
used in accordance with accepted fair
use guidelines, material accompanied
by an attribution to the author or
copyright owner, and material that
cannot be used unless the copyright
owner is first contacted for
permission.

Google’s Proposed Constructions
and Evidence in Support
dated April 27, 2005 in U.S.
Patent
Application
No. 10/082,596;
Office
Action Summary dated July
11, 2005 in U.S. Patent
Application No. 10/082,596;
Amendment
After
Final
Action (37 C.F.R. Section
1.116) dated September 8,
2005
in
U.S.
Patent
Application No. 10/082,596;
Office Action Summary dated
January 9, 2006 in U.S. Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 10, 2006 in U.S.
Patent
Application
No. 10/082,596.
Categories that indicate that the
network page may be subject to each
of
the
following
licensing
restrictions: (1) the network page
may be used by others without any
restrictions; (2) the network page
may only be used for fair uses; (3) the
network page may be used if
attribution to the copyright owner is
given; and (4) the network page may
be used only when permission is
granted by the copyright
owner.
Evidence in support:

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Evidence in support:









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‘459 Patent File History:
Patent Application of Lee H.

Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
2009).



‘459

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Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS
115923 (E.D. Cal. Dec. 14,
2009).

‘459 Patent: 5:48-58, 6:45-49,
8:10-16.

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‘459 Patent: 5:48-58, 6:45-49,
8:10-16.

JOINT CLAIM CONSTRUCTION CHART

Patent

File

History:

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Claim
Language

IconFind’s Proposed Constructions
and Evidence in Support
Notice of Allowability filed on
Oct. 6, 2006, Applicant
Amendment and Remarks
filed on July 26, 2006,
Applicant Amendments and
Remarks filed on Apr. 10,
2006, Applicant Amendment
and remarks filed on Oct. 26,
2006, Applicant Amendments
and Remarks filed on Sept. 8,
2005, Applicant Amendment
and Remarks filed on Apr. 27,
2005, Applicant Amendment
and Remarks filed on Jun. 22,
2004

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Google’s Proposed Constructions
and Evidence in Support
Grant and Susan A. Capizzi
for Method of Coding,
Categorizing, and Retrieving
Network Pages and Sites
dated February 22, 2002 in
U.S. Patent Application No.
10/082,596; Office Action
Summary dated January 27,
2005
in
U.S.
Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 27, 2005 in U.S.
Patent
Application
No. 10/082,596;
Office
Action Summary dated July
11, 2005 in U.S. Patent
Application No. 10/082,596;
Amendment
After
Final
Action (37 C.F.R. Section
1.116) dated September 8,
2005
in
U.S.
Patent
Application No. 10/082,596;
Office Action Summary dated
January 9, 2006 in U.S. Patent
Application No. 10/082,596;
Amendment in Response to
Non-Final Office Action
dated April 10, 2006 in U.S.
Patent
Application
No. 10/082,596.

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JOINT CLAIM CONSTRUCTION CHART

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The parties have agreed to the constructions of the following terms, which adopt the

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constructions set forth by the Court in the Yahoo! Litigation. Iconfind Inc. v. Yahoo! Inc., 2009

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U.S. Dist. LEXIS 115923 (E.D. Cal. Dec. 14, 2009). The parties respectfully and jointly request

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that this Court adopt these four constructions:

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Claim Language
Construction
Evidence in Support
category for
A category for network pages that have Iconfind Inc. v. Yahoo! Inc.,
transacting business as a purpose transacting business
2009 U.S. Dist. LEXIS 115923
(E.D. Cal. Dec. 14, 2009)

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category for
providing
information

A category for network pages that have Iconfind Inc. v. Yahoo! Inc.,
as a purpose the provision of
2009 U.S. Dist. LEXIS 115923
information, for example, network
(E.D. Cal. Dec. 14, 2009)
pages that contain articles, journals, or
publications

categorization label

Label indicating a category or
categories to which a page is assigned

Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS 115923
(E.D. Cal. Dec. 14, 2009)

categorization code

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System of characters or symbols that
represent categories

Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS 115923
(E.D. Cal. Dec. 14, 2009)

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Respectfully submitted,

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NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Pro hac vice)
[e-mail]
Brian E. Haan (Pro hac vice)
[e-mail]
Anna B. Folgers (Pro hac vice)
[e-mail]

Brian E. Haan
/s/
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]

Attorneys for Plaintiff IconFind, Inc.

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JOINT CLAIM CONSTRUCTION CHART

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that on May 11, 2012 the foregoing:

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JOINT CLAIM CONSTRUCTION CHART

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was filed with the Clerk of Court using the CM/ECF system, which will then send a notification
of such filing to the following counsel of record.

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Michael J. Malecek
[e-mail]
Kenneth Maikish
[e-mail]
Kaye Scholer LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant Google Inc.
I certify that all parties in this case are represented by counsel who are CM/ECF participants.

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/s/
Brian E. Haan
Attorneys for Plaintiff

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JOINT CLAIM CONSTRUCTION CHART