Overture Services, Inc. v. Google Inc.

Filing 186

Declaration of Ravind S. Grewal in Support of 183 Motion to Compel Production of Documents and Testimony Re Prosecution of '361 Patent filed by Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D)(Related document(s) 183 ) (Grewal, Ravind) (Filed on 7/6/2004)

Overture Services, Inc. v. Google Inc.

Doc. 186 Att. 4

Case 3:02-cv-01991-JSW

Document 186-5

Filed 07/06/2004

Page 1 of 44

EXHIBIT D

Dockets.Justia.com

':~:-,--, &" '

Case 3:02-cv-01991-JSW IDENTIAL 186-5 Filed 07/06/2004 IF Document - UNDER PRO1 TIVE Page 2 of 44 ORDER

f~'
2.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

OVERTURE SERVICES, INC.,
a Delaware Corporation

Plaintiff
vs. GOGGLE INC., a California
Corpora t ion
CO2- 01991 JSW

Defendant.

r""
The videotaped deposition of JOHN
RAUCH , taken before DEBORAH A. MILLER , a Notary

Publ ic wi thin and for the County of

DuPage,

State

of Illinois ,
Plaza Drive,

and a Certified Shorthand Reporter of

said. state, at Suite

3600, 455 North Cityfront

Chicago, Illinois, on the 23rd day

July, A. D. 2003 , at 9:08 a.

OR'Gf~JAL

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0 ("

t8

drafted by Elaine Lee.
Did you have an understanding as to why
Ms. Lee was not continuing to work on the
I did.

file?

09:19

Which was what?

She had left

the firm.

Okay.

Did your starting work on the

GoTo. com application coincide with Ms. Lee

departure?
09: 19

No, it did not.

Okay.

Was there ~ gap between when she

left and when you began working?

Yes.
How long was that gap?
09: 19

I don t know the answer to that

question.
Could you give me any estimate?

I would guess anywhere from a few weeks
to a couple of months.

09:19

Okay.

Do you know who at Brinks Hofer

was responsible for handling the prosecution of
the GoTo application during that period of
I don
t know the answer

time?

no.

When you were involved in prosecuting

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the GoTo application

did you work wi th

any

attorneys from Brinks Hofer other than

Mr. Naughton?
Not that I recall.
09: 20

When you first began working on the

GoTo. com application

did you review the entirety

of the file history as it existed as of that time?

What do you mean by " revi

ew

Did you read it?
09: 20

I read closely portions of the file

history.
Were there any portions
history that you did not

of the file

read?

Yes.

09:20
exhibi ts.

What were those?
The petition to make

special and its
to

Why didn
make special?
09: 20

t you read the peti tion

Because I saw that the petition to make
special had been granted and didn t see a need to

study closely the contents of

it.

What is your understanding as to the

criteria for when a petition to make special will

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0(

that would have suggested to you that it was not
necessary to perform any independent search for
prior art?

No.
09: 39

Did you ask anyone whether it would be
advisable to conduct a further search for prior

art in connection wi th
patent application?

the prosecution of this

No, I didn
09: 40

Why not?
I don t know.

Did you ever direct that any further
search for prior art be done either by Brinks

Hofer or by the client in connection with
09: 40

prosecuting this patent application?
I reminded inventors and others

involved in the prosecution of the obligation to
come forward with and disclose to the PTO any
information that we had documents and other
09: 40

information

but I did not direct anyone to go out

and search for anything that I recall.

Okay.

When did you remind the

inventors of that obligation?
Specific times I don t recall.

It'

s my

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more than one year prior to

the filing date

of

the

application?
I believe I saw press releases,

other
time,

information that had been cited in an IDS
10:

announcing

some sort

of

system before the

more than one year prior to the application.
Did reviewing those press releases

cause you to question whether

the invention that

was being claimed in the application might have
10:

been in public use more than one year prior to the
filing date?
It did.

Did you conduct any investigation to determine whether the invention that was being
10:

claimed in the application had been in prior

public use more than one year prior to

the filing

date?
I didn t need to conduc t an

investigation.
10:15
Why not?
Because I had been told by Jim Naughton

about a beta system that had been announced in

press releases prior to filing the patent

application.
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What did Mr. Naughton tell you about

10: 15

that beta system? that time I think he simply told me that beta system had been made available to the public. And that' s all that I recall him telling
me at that

time.
Okay.
What did you understand

Mr. Naughton to mean by a beta

system?
a beta

A system with some features of the
10: 16

final system or perhaps a later system

system.

I also understood to include only partial

availabili ty perhaps only
test system.
10: 16

to some

ome members

of the public or some advertisers or

customers,

Did Mr. Naughton tell you that the beta
system had been available only to certain
specified users?
I don t recall if he told me that or

I surmised that or drew that supposition from the

10:16

name beta

system.
Okay.

Did you draw any conclusions

from this initial conversation with, Mr. Naughton

as to how many people had had access to this
so-called beta system?

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one year prior to the filing

date?

He indicated that he had been aware
along with Elaine Lee in preparing the patent

application of the beta system and that the patent
10 : 20

application had taken that into

account.

In terms of evaluating the

patentability of

the claims that were then pending
did you deem the fact that

in the application

Mr. Naughton referred to the prior system as a
10: 21

beta system to be in any way significant?
ll say yes,
I did.

How so?
My understanding of the term "beta
system" is that it has limited functionality,
10: 21

maybe exposed. to a limited number of customers,

and probably not including all of the features

that are ultimately

included.

I take it then that you did not

understand the beta system to constitute an

10:21

experimental use?
MR. BERENZWEIG:

May I hear that question
there is a double

back

please. I believe negative in there, and I that' s the case.

want a clarification

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(WHEREUPON

the record was

read by the reporter.
BY THE WITNESS:

You asked
10: 32

if I did not do anything,

and

I don t think that' s true.

BY MS. DURIE:

Okay.

What did you do in order to try

to ascertain which elements had not been in prior

public use or had not been invented prior to

10:33

commencing to prepare the Rule 132 declaration?
I think it probably came up as a matter

of discussion between me and Mr. Naughton at

different times,
10: 33

and as we talked about different

aspects of the system

I became aware of it in

that way.
Okay.
7

What do you recall Mr. Naughton

telling you during those conversations about which
elements of the claims had either not been in

prior public use or had not been invented until
10: 33
20

less than a year prior to the filing date?

I recall being told that the direct

on- line advertiser access to their
23

-- the

advertiser
the beta

s search listings was not available in
That a -- an editorial process

system.

,I
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was available prior to the development of a

subsequent system.
What did you understand
process to be?
10: 34

that editorial

The editorial process involved an

advertiser who wanted to make a change to a search
listing of the advertiser , making that change

contacting a representative of GoTo either by

E-mail
10:34

telephone

or perhaps some other way, and
In response to
a GoTo

specifying the change to be made.
that contact,

an Overture - -

I' m sorry,

editor would make the change on behalf of the

advertiser and the search listing would be updated
that way.
10: 35

Is there anything else that you can recall learning from Mr. Naughton prior to when

you commenced drafting the Rule 132 declaration
about which elements of the claims were new?

Nothing that I recall right now.
10: 35

Okay.

And is there anything that you

did to learn which elements of the claims were new

prior to drafting the Rule 132 declaration other
than talking to Mr. Naughton?
MR.

BERENZWEIG:

May I hear that question

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Case 3:02-cv-01991-JSW IDDocument 186-5 Filed 07/06/2004 ORDER F ENTIAL - UNDER PROTf IVE Page 11 of 44

No, I don

m afraid I don

Can you recall the substance of any of

your conversations with Mr. Metzger which took
place during this same time frame between when you
10: 38

started working on the application and when you

started drafting the Rule 132 declaration?

My conversations with Mr. Metzger

tended to be about the status of the

application,
ther

progress through the U. S. Patent and Trademark

10:38

Office,

the examining process, and other

patent mat

ters.
Can you remember any specifics?

At some point in

time,

and I don t know

if this falls into the time frame you re asking

10:38

about,

the foreign filing of this application
know we talked quite a bit

became an

issue. I about that, and the

opportunity for filing

applications overseas.

What were the issues surrounding the
10: 38

foreign filing of this application?
MR. BERENZWEIG:

m going to object at this

point on the basis of

privilege.

ve allowed you

to inquire into this area because it'

s relevant to

the file history; but once you re going beyond the

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a result of your conversations with Mr.

Soulanille

as to the nature of his duties at GoTo?

Yes,

I did.

Did you discuss with Mr.

Soulanille

10:43

during these conversations prior to the filing

the Rule 132 declaration whether he had
contributed in any way to the invention that was
being claimed?

m sorry.
10:43

Could you ask it once

again?

I lost the first few

words.

Yes.
During the conversations that you had

with Mr. Rule 132
10: 44

Soulanille prior to the filing of the
declaration

did you discuss with him

whether he had contributed in any way to the
invention that was being claimed in the
17

application?
No.
Why

not?
reason to discuss inventorship

10: 44

20

had
ma t t e r .

or any contribution he might have made to
sub j e c t
23

that

And was that because someone else had
already made a decision about who would be listed

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as the inventors on the application?

In part, yes.
What were the other reasons?

His invol vement
10: 44

in development of that

invention was not something we discussed at that

time.
I understand

that.

But was there any

reason for your not asking him about that other
than that someone else - had already made a decision
10: 45

about who the inventors on the application would

be?

There was - - there was no reason for me
to inquire,
is no.
10: 45

so I guess the answer to your question

Did it occur to you when you spoke wi th

Mr. Soulanille during this time frame, based upon

the nature of his job responsibilities,
that was being claimed?

that he

might have had some involvement in the invention

10:45

No.
During this time frame prior to the

filing of the Rule 132 declaration

did you have

an understanding of any of the specific

contributions of any of the inventors who were

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(WHEREUPON

the record was

read by the reporter.
BY THE WITNESS:

I had no reason to doubt tha t

the

10:48

correct inventors and all the correct inventors

had been listed.
BY MS. DURIE:

But you were simply relying on whatever
it was that Ms. Lee and Mr. Naughton had

done,

10:48

correct?
That'
s correct.

Did you yoursel f have any knowledge

apart from simply relying on the work that they

had done that the correct inventors had been
10: 48

listed?
When?

At any

time.

After the patent was

Mr. Soulanille inquired
10: 48

what goes into being an

granted, of me about inventorship, inventor.
"Then I should

I explained to him my understanding of
that determination,

and he said,

probably - - "

meaning Mr. Soulanille should

probably be listed as an

inventor.

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Do you know what it was that prompted

Mr. Soulanille to ask that question?
I really don

Okay.
LO: 49

Prior to the conversation with

Mr. Soulanille in which he inquired as to the

criteria for inventorship,

did you have any basis

for believing that the patent application recited
the correct inventors other

than simply relying

on the work that had been done by Ms. Lee and

10: 49

Mr. Naughton?

No.

Okay.
wi th

Had you had any conversations

Mr. Soulanille about his involvement in the

development of the GoTo system prior to
10: 50

the

conversation in which he asked about the criteria
for inventorship?

No.
How many times had you spoken with him
up to that point?

10:50

At what point?
The point at which he inquired about

the criteria for

inventorship. Perhaps 10 to 20 times.
If you added up those 10 to 20 times'

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how many hours are we talking

about? About one to two hours, I would During the entirety of the

guess.

prosecution of the application
10: 51

did you ever ask

Mr. Soulanille whether he had contributed in any
way to the development of the GoTo system?
MR.

BERENZWEIG:

Can you de fine

" GoTo

system"?
MS. DURIE:

Fair enough.

BY MS. DURIE:

Let me define the GoTo system as being

whatever GoTo system was that was up on its Web
site at a particular point in
MR.

time.

BERENZWE IG:

What is that particular

10:51

point in time as to your
MS. DURIE:

question?

The system changed over time

m including all the various iterations of the
system as they existed at various points in
MR.

time.

BERENZWEIG:

And what is your question

now?
BY MS. DURI E :

My question

is: During the period of
Soulanille

time when you were prosecuting the patent

application

did you ever ask Mr.

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whether he had made any contributions to the GoTo

system as it may have changed over

time?

What - - what

do you mean by

contributions"
10: 52

Whether he had had any role whatsoever

in the development of that

system.

I didn t ask him about

that, no.

Did you have an understanding as to

that?
10:52
Over the course of the prosecution of
this application, my awareness of his position at

GoTo came to be one that he was a supervisor of
technical people.
I didn

't

know wi th any degree

of certainty his technical involvement or
10: 53

technical contribution or if he was just a manager
or what.
17

What was Mr.

Soulanille

s title during

the prosecution -- during your involvement in the

prosecution of the patent application?

10:53
was chief
22
23

m not certain

but I think that it

engineer.
When did you learn what
s title was?

Mr.

Soulanille

I think during correspondence with him

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regarding a continuing application that we filed

on his

behalf.
Do you remember when that was?

Either shortly before or shortly after
10 : 53

this patent was

granted.
When you first had conversations
do you recall whether you

Okay.

with Mr. Soulanille,
A.
10: 54

asked him, "Hey, what' s your title
I recall that I didn t ask him that

ques t ion.
Do you recall whether you asked him

what his job was?
I recall that I didn t ask him
Why not?

that.

10:54

Because we were talking about technical

issues,

and I believe he called me with questions

about patent

matters, patent application matters,

and so forth.
During the time that you were

10:54

prosecuting the patent application,
was?
No.

did you ever

ask anyone at GoTo who the head of engineering

When you were prosecuting the patent

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MR.

BERENZWEIG:

And you re talking about

this -MS. DURIE:

The second conversation.
Second.
Okay.

MR. BERENZWEIG: BY THE WITNESS:

I would estimate 15 to 20 minutes.
BY MS. DURIE:

What did you and he discuss?

I explained to him the status of the

11:19

application at that

point.

I explained to him the

interview that we had had with the

examiner.

explained to him the examiner s request for more

information about the differences between the

systems.
11: 19

I guess I should say between the claims

and the beta

system.

. asked him if he had
I explained that

information about that and could help me prepare

that,

the necessary declaration.

we concluded that a declaration on the part of

someone at GoTo was the appropriate way to respond
11: 20

to the examiner s request for information.

Did you tell Mr. Davis anything about

the qualifications that the person signing that
declaration would need to have other than
employment at GoTo?

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Okay.

Other than the assumption that

you made based upon the fact that Mr. Davis was
listed as an inventor and whatever information you
gleaned from reading the petition to make special

11:26

did you have any other basis for assuming that he

had worked at GoTo from time immemorial as you put

it?
No.

During
11:27
Mr.

Davis,

you

this conversation with told recall whether

you

anything about the features of the GoTo beta

system?
I believe he told me that the beta

system was just an editorial driven system

that

11: 2

what they referred to as the DTC system or the

on- line access provided to advertisers was wasn t existing in the beta system.
Can you recall anything else

that
Da vi s

Mr. Davis told you during that conversation?
11: 28

During that conversation

Mr.

and

I at our respective locations looked at each of

the independent

claims,

and I asked him to tell me

in each respective claim what was not

existing,

least one limitation that was not existing in the

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beta system.
This was what the examiner had asked

for

and this was already

explained,

and I needed

to
11:28

rom Mr. Davis in order to complete the

declaration.

And this was specifically what
s what he told me.

asked him for and that'
MS. DURIE:

Okay.

Let me mark as Exhibi t

28

a copy of a

response.

It'

s bates stamped GOG31652

and it'

s part of the file history in the
(WHEREUPON

case.

a certain document

was marked Rauch Deposition
Exhibit No. 28
as of 7/23/03.

for identification

BY MS. DURIE:
11: 29

Mr. Rauch

do you recogni ze

wha

t' s

been

marked as Exhibit 28?

Yes.
Did you draft

it?

Yes,

I did.

11:30

d like you to turn to the second page

under claim rej ections, and I'
read it to

d like to direct

your at tention to the second paragraph.

Please

yourself.
Okay.

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100

YJ4

away?

Yes.
Okay.
When you read

- - well ,

strike

that.
11: 44
Obviously you were aware of the

existence of Exhibit 10 as of the date that you
drafted Exhibit 28 , right?

Yes.
Okay.
When you read Exhibi t 10, did

11:44

raise any concerns in your mind as to whether
invention that was being claimed in any of the

the

claims of the patent application had been in prior

public use more than a year before

the filing

date?

ll:45

Yes,

it did.

I t made

me wonder about

that.
Did you conduct any investigation to

satisfy yourself that that was not the case?
I spoke to Jim Naughton.

I showed him

Ll:45

a copy of the Office Action , including the

rejection and the references cited , and discussed

the nature or the basis of the rej ection.
What did Mr. Naughton tell you?

m trying to recall

completely.

All I

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liO5

recall is that he said this related to the beta

system which was announced publicly before

the

time, a year before the patent application was

filed, and that the currently claimed system was
11: 46

different from

that.

Did Mr. Naughton tell you why he

believed that the currently claimed system was

different from the system disclosed in Exhibit 10?
I don t recall what he stated about

11:46

that.
Okay.
You see that the date of

Exhibit 10

is May 19th, 1998?
I see that.

I will represent to you that the patent

11:46
17,

application was filed on May 28th , 1998.

Okay.
I mean , 1999.

m sorry.
1 998 ,

I understand.

If I
11:47

referred then to May 2Bth
date, ~ will ybu

as " the

critical

understand what I

mean by that?
I do.

Okay.

Did you have any discussion with

Mr. Naughton about whether the patent application

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application

the subject matter of this claim as a

whole was not disclosed in the May 19th

1998

press release.

First of all
02: 44

did you draft this

declaration?
Yes,
Okay.
respect to Claim
I did.

Is there a reason that with

15 you did ' not

recite the

limitation that you had recited in Exhibit
02: 44

28 in

Mr.

Davis' declara t ion?
I was repeating in this declaration

what Mr. Davis told me in response to my request

conveyed to him from the

examiner.

Okay.

Did you ask Mr. Davis whether

02:45

the limitation that you had specified in

Exhibit 28

for Claim 15 was present in the GoTo

beta system?
I did not.

Why not?

02:45

I asked him to review each of the

independent claims and tell me what was new in the

claim.
Did you ask him whether the statement

that you had made to the examiner about Claim

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173

0:

for Claim 30 was present in the

beta' system?

No, I did not.
Was there any reason you didn' t ask him

that?
02:47

No reason that I' m aware of.
And I take it your answers would be the
same with respect to Claim

52 and Claim 68?

You

didn
02:47

t ask him and you don' t know why?
I didn t ask

him.

I asked him other

questions.

I didn t ask him that specific

question you re inquiring

about.

What other questions did you ask him?
I asked him wi th respect to each claim

what' s new in this claim that wasn t present in

02:48

the beta system.
And wi th re spec t to Claims

15, 30,

and 68,

he told you the subject matter of the

claim as a whole?

He told me the whole

thing.

This

02:48

didn

t exist at that

time.

Okay.

Did you ask him on a

limitation -- did you understand that to mean that
each and every limitation of the claim was not
present in the beta system?

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174

The claim as a

whole, the whole claim.

Okay.

I understand

that, but
words.

understand those words

but I want to make sure

that I understand what you mean by those

02: 48
new

When Mr. Davis said the whole thing
did you understand that to mean that none

the limitations in those claims were present in
the prior system?

No.
02 : 49

I understood that to mean that the

system or method that is claimed or def ined by
that claim wasn t present.

Okay.
system were new?

Did you ask Mr. Davis to be more

specific as to which features or aspects of

that

02:49

I did not.

Why not?
He was very adamant that the whole
thing wasn t existent

- - wasn t existing then.

Okay.
02: 49

Did you understand that there

were at least some elements of Claim 15 that had,
existed in the prior system?
I don

't

know that I really considered

it.

I asked him for the information and he

provided it -- provided it to me.

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009
having - 02:50

Okay.

If you take a look at Claim 15,

leaving the preamble to one

side, the first

limitation is " maintaining
MR. BERENZWEIG:
MS. DURIE:

an account database

Which Claim 15?

Claim 15 as it existed.

looking at the January 18th , 2000 preliminary
amendmen t .

BY THE WITNESS:
02 : 50

Okay.
BY MS. DURIE:

Okay.
amendmen t ,

So if you take a look at
2000 preliminary

Claim 15 in the January 18th

the first limitation after the preamble

02:50

is:

maintaining an account database having at
providers,
said account

least one account record for each of a plurality

of network information

record including.
Was it your understanding that what
02: 50

Mr. Davis was telling you was that that element
was new?

My understanding was that the claim as
a whole was new

the whole method in this case was

new.

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TIVE ORDER

184
retrieval request

0~

.J 2

event,

et cetera, as be ing new

correct?
Correct.
With respect to Claim 15
03: 03

he told you

the claim as a whole is new

Correct. correct?
Okay.
03 : 03

Did you - -

when Mr. Davis told
did you

you that the claim as a whole is new

understand that to mean something different from
there being at least one new limitation in the

claim?
Yes
I did.

Okay.
03 : 03

What was the difference?

The difference is what Mr.

Davis told

me as being
But I want to understand what you
what you understood that difference to

be, not

just the

- - not the
be.

words he

used,

but what you

03:03

understood it to

What I understood was that Mr.

Davis

identified this particular claim limitation of

Claim 1
system

as being something not present in the beta

and the overall systems of ~- forgive me,

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185

0~

method

of

Claim 15
Okay.

as defined by the entire claim

in its entirety starting at the preamble.
Based on what Mr.

Davis told

you, would it have been accurate to summarize
03 : 04

as to Claim 1 by saying the system as a whole

new?
It could have

been.
it here

I don t know.

Well

as you

today, ,do

you

have any reason to think that that would not have

03:05

been an accurate way to summarize what Mr.
told you wi th respect to Claim

Davis

The system - - the method defined by

Claim 1
03:05

is novel

and that includes previously

known features.

Okay.

So when Mr. Davis told you with

respect to Claim 15 a system as a whole is new
what you

understood that to mean was the system as

a whole had some

novelty;

is that right?

Right.
03 : 05

Okay.

Is there any reason that you

with respect to Claim 1 specified a limitation and
with respect to Claim 15 simply said the invention

as a whole -- the invention claimed as a whole

new?

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186
There is a

reason.

Which is what?

That'
Okay.

s what Darren told me.

03:06

I was drafting Mr. Davis ' declaration

using the information he gave me.

And al though you understood - -

well

strike that.
I want to be
03: 06

clear.

So when Mr. Davis

said to you the invention of Claim 15 as a whole
is new , what you understood that to mean is at

least
was new?

at least one of the elements of Claim

What I understood that to mean is that

03:06

the entire invention defined by Claim 15 was new.

Let' s say that wi th

respect to

Claim 15 - -

strike

that.
claim and one
were

Let' s

say you had

aspect
03: 07
not

was new and

would

other aspects misleading any way

say with

respect to that claim the invention as a whole

new?
MR. BERENZWEIG:

Obj ection speculative,

hypothetical.

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196

understand?
That'
Okay.
s not my practice.

Did you discuss Paragraph

i th Mr.
03 : 20

Davis?
I did.

What did you tell him?

I explained that the paragraph at the

end is a recitation of his legal obligation under
U. S.

patent law to make truthful

statements.
I give to

03 : 20

That' s the conventional explanation

inventors when they re signing declarations for

their patent applications and other documents as

well.

Did Mr. Davis ask you any questions
03:20
about what Paragraph 12' meant?

Not that I recall.
At the time that Mr. Davis executed

Exhibit 12,
03: 21

did you have a belief as to whether he

had personal knowledge of the facts that are set
forth in Exhibit 12?
I think it was my belief that he did

yeah.
What was the basis of that belief?
My awareness of his responses to the

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197

request for information that I presented to him in

order to prepare this declaration
involvement in the file history

his level of

previous affidavit in

before, making the connection with the
his status as an

03:21

previously filed

petition,

inventor of the application.

Is your belief that he had personal

knowledge of the facts recited in Exh~bit

12 the

reason that you did not identify any statements
03 : 22

Exhibit 12 belief?

that were being made on information and

No,

that'

s not -- that information and

belief language is not something I have used

before, so it'
03:22

s not part of my practice to use

it.

Have you ever before submitted an

affidavit where a witness was relying on
secondhand information where you did not specify
that the witness

declaration was being made on

information and belief?
03 : 22

I have not.

Okay.

Do you understand that it is

your obligation as an attorney in drafting a
declaration to specify if statements are being
made on information and belief?

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fIVE ORDER

203

0:"

)0

That sounds reasonable, yes.
Okay.
So if you were to learn

that

Mr. Davis had only secondhand knowledge about the
features of the beta system and today you were
03: 30

drafting a declaration for him to sign

would you

specify that the information that he was providing
was being provided on information and belief?
MR. BERENZWEIG:

Objection, hypothetical.

BY THE WITNESS:
03 : 30

At this time I suppose I would change

it.
MR. BERENZWEIG:

Daralyn

ve been going

for almost an hour and a
MS. DURIE:
03: 31

half. Fine. That' s fine.

We can take

a break.

THE VIDEOGRAPHER:

Off the record at

3:31

(WHEREUPON

a recess was had.

THE VIDEOGRAPHER:
03 : 39

Back on the video record

at 3:39 p.

BY MS. DURIE:

Mr. Rauch
Page 6

m looking at Exhibit 31
It says,

the first paragraph.

"Claim 1 is

amended to clarify that a retrieval request event

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253

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVIS ION

OVERTURE SERVICES,

INC. ,

a Delaware Corporation

Plaintiff
vs.
GOGGLE INC. , a California
CO2 - 01991 JSW

Corpora t ion

Defendant.
I hereby certify that I have read the
foregoing transcript of my deposition given at the

time and place aforesaid, consisting of Pages 1 to 252 inclusive, and I do again subscribe and make
oath that the same is a true
correct and complete

transcript of my deposition so given as
and includes changes
if any,

aforesaid,

so made by me.

JOHN G. RAUCH
SUBSCRIBED AND SWORN

before

this
Notary Public

day
200

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254

STATE OF ILLINOIS
SS:
COUNTY OF C

OK
DEBORAH A. MILLER

a Notary Public

within and for the County of DuPage,

State of
Reporter of

Illinois and a Certified Shorthand said state, do hereby certify:
the examination of the

That previous to the commencement of

witness,

the witness was

duly sworn to testify the whole truth concerning

the matters herein;
That the foregoing deposition

transcript was reported stenographically by me,

was thereafter reduced to typewriting under my
personal direction and constitutes a true record

of the testimony given and the proceedings

had;

That the said deposition was taken

before me at the time and place specified;
That I am not a relative or employee or
attorney or counsel

nor a relative or employee of

such attorney or counsel for any of the parties

hereto

nor interested directly or indirectly in

the outcome of this

action.

IN WITNESS WHEREOF, I do hereunto set

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my hand and affix my seal of office at Chicago

Illinois

this 28th day of

July, 2003.
ct~. Dupage County,

Ndtary Public ,

)~aA.

Illinois.

My commission expires

3/01/06.
OFFICIAL SEAL

R. Certificate No. 84- 3889.

DEBORAH A MILlER
NOT ARV PUBUC. ITA TE OF

MY COMMISSION ecPIAES:03/'O11O6

IllJl'lOS

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02/09

Case 3:02-cv-01991-JSW
Jason C. White
312-321-4225 E-JD3i1: jcw!B)brinkshofer..com

Document 186-5

Filed 07/06/2004

Page 37 of 44

BRINKS

HOFER
GILSON
&LlONE
A PROHSSIONAI. CoRl'OKATION

August 27 2003

IN1!u.ECTI!AlI'ROI'ERTY /tITORNrn

VIA FACSIMILE (312)

704-4950

!'lac Town. Sum 3600
"55 N. CnnRONI Pu.lA DRivE (HI~A50, IWNOI~ 60611. 5599

brink:,hofer. com

Deborah A. Miller Esquire Deposition Services th Floor 155 N. Wacker Drive, 10 Chicago , nIinois 60606

FA)( 312. 321. 4299 Tnl'!-rtONf 312. 321. 4200
SAN Jo~, CA
INDIANAPOUS ,

ANN AKBOR,

IN MI

ARLlNCi1ON, VA

Re:

John G. Rauch Deposition Transcript
July 23 ,

2003

Overture Services,

Inc. v. Google Inc.

Dear Ms- Mi11er:

Enclosed herewith are an emta sheet (6 pages) indicating the changes to be made to John Rauch' s deposition transcript and a signature page for Mr. Rauch' s transcript.
Please note that in addition to the changes detaHed in the errata sheet, page 8, line 9 thrOtlgh page 9, line 9 and page 11 , line 19 through page 251 , line 24 should be classified as CONFIDENTIAL. The remainder of the transcript should be non-confidentiaL
Please feel :free to contact me if you have any questions.

Sincerely,

;::. ~t
enclosures

cc Michael S. Kwun w/enclosures (via facsimile 415- 397- 7188)

AUG-27-2003 17:01
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Case 3:02-cv-01991-JSW

Document 186-5

Filed 07/06/2004

Page 38 of 44

Deletions are in (brackets), adclitions are

underlined

Page 5,

lines 20-21:
University of Minnesota

Arizona State University (~ and the

Page 5, lines 21Illinois Institute of Chicago (in) Chicago(, Kent College of Law.
Page 10,
the (graded)

line 18

Davis patent its~lf
line 22Ericsson Incorporated
line 1 Schrader

Page 11 ,
(Erickson)

Page 12.
(Trader)

.. Page 18,

line 7 (petition s) petitions

Page 21~ lines 16offic e. being given special treatment
Page 22 , line 3 generally~ to see

Page 23, line 22
(supposed)

Rosed

, because

Page 29, line 7: ofthe negatives

Page 40, line 22 passed (past)
Page 42 , line 8
(preferences)

references

Page 47, line 11 I also understood it to include
Page 67, line 4
(inventors)

inventors

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Page 39 of 44

page 71, line 12
(one)

Page 81, line 13
differences

and

Page 88 ,

line 23

(He) It was clear that
Page 108 ,
(That-tO)

lines 20-24

~ that sentence is drawing a distinction between advertisers paying for (the wordJ " exposures ~ as it' s used here, or its analo& impressions~ versus paying for

what it says~ actual visits to sites of an advertiser.
Page 110,

line 17

(the) !! retrieval request event

Page 111, lines 12-

For the exemplary embodiment described in this patent application, (I guess its) line 29 of page 15 states that
(I was going to state that for)

Page 112 , lines 13(And a - well limited to)

The term "retrieval request event" also includes other
the Datent without going through (it) the term "retrieval reQuest event" also

embodiments 1 might not be aware of.. as 1 sit here..

application more closely.. and (equivalence J includes equivalents of this disclosed embodiment.

Page 115, lines 21of that claim limitation (with a)
Page 116,

line 9

(a distinguished -) a prior art

Page 118 ,

line 8

advertiser (system J

~stems

Page 125 ,

line16

Positions..
Page 128,

lines 14asking

(1 guess the first question) 1 have to ask you (is) when? at what time are YOU about? (And the second , could you - it) It sounded

,..--.

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Page 40 of 44

Page 129, line 11

(Internet -) conventional Internet technology
Page 139, linesl4-15
and say~'Uris isn t there:":

Page 139, line 20 Related to that. one other reason is just the general
Page 148, line9
~)oeceiving from a

network infonnation provider a

Page 148

Information provider s accoun~ is receipt over an
Page 149,

, line 11
lines 3lines 8-

I think (at -- as the tennJ

that as the terminoJogywe re discussing here is used in this

patent application, (it' s - ) it doesn t include that option of making a telephonic request
Page 149,

Well, I don't think it' s descn"bed that way in here. It' s descn"bed in the patent application as an on-line access. Also. making a telephonic reauest to change a listine: was in the prior art beta system. A claim can not be interpreted so broadly as to read on the prior art. so claim 15 can not include that option.

Page 150, lines 5(And equivalence yeah, and any other embodiments that might be described that aren The scoQe ofilia claim element "UDdating a that aren t jumping off the page at me now). search listing" should be inteIpTeted to have the full range of its ordinary meaning as understood by Demons ordinarily skil1ed in the art to which the invention pertains. The
orclinary meaning may be determined using sources such as
dictionaries and treatises. If

necessary. the intrinsic record should be consulted to identify which of different possible dictionary meanines ofthe claim element ~'J.lPdating a search listing" is consistent with the inventors' meaning. Also. the intrinsic record should be consulted to detennine whether the presumution that the ordinary and customary meaning intended for the claim element "updating a search ljsting" has been rebutted.

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Page 150, line 14

And (equivalence thereoft yes. My understanding is , that the scope ofilia! claim element should be interpreted to have the full range of its ordinary mearring as understood by persons ordinarily skilled in the art. The ordinarY meaning: may be determined using sources such as dictionaries and treatises. Ifnecessarv. the intrinsic record should be consulted to identify which of different possible dictionary meanings of that claim element is consistent with the inventors ' meaning:. Also. the intrinsic record should be consulted to determine whether the presumption that the ordinary and customary meaning intended for that claim element has been rebutted.
Page 150, lines 19-

(It could be. I th~ ifthere s a suggestion here that --that said alternatively it could be. Alternatively, it could done by receiving an E-mail.) to do an on ~line to pick up the pbone I'm not sure what the question means by the words
and call someone. . .. " This lane:uage is confusing and seems contradictorY. However~ in my view. "picking up the phone and calling someone and asking that account information be changed" would not bean equivalent to receiving a change request for a search listing. since a claim can not encompass as an equivalent subject matter which is in the prior art. claim 15 Here. receiving a phone call was part ofthe GoTo beta system. so the scope of
Page 152, tine 5

No. it would not be equivalent since that was part of (I think it probably would be yes. J the prior art beta system. and a claim' s scope can not be extended under the doctrine of equivalents to coyer something in the prior art.
Page 152 ,

lines 12It is my understandin-i (I think my understanding is that the - what you - what I believe) . and the scope of Claim 15 that what you just de5Cribed was present in the beta system

could not encompass such a prior art system under the doctrine of equivalents. Therefore. the scope of Claim 15 can not encompass a system in wlrich a. search listine is updated by picking: up the phone and ca1line an account administrator and asking that a change to the search listing.
Page 152 ,

line 23- page 153 line 3

Focusing just on this claim limitation, (because) as I understand it. that feature was apart The scope of Claim 15 could not include that feature as I of the beta system. (. the) re describing it. understand you

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Page 156, line 3 From the perspective of the embodiments and eQuivalents thereof that are described in the soecification. updating: a search listing could hypotheticallY include updating a search listing telephonically. to the extent that does not read on the "rior art. However. as previously stated. that was disclosed in the beta system. Under the Doctrine ~uivalents. considering both what is described in the specification and what is in the

prior art. the range of eQuivalents can not be so broad as to include updating a search
1istin~ teleDhonica1lv.

(Equivalently, yes, I do):
Page 157, line 4 stated in response to these questions . including that my understanding is that a search 11Stin2 updated telephonically was Dart ofthe GoTo beta system and therefore in the prior art. so that the range of equivalents for the term "UDdated search listing" Claim 15 can not encompass a search listed uDdated telephonically.
Page 159, line 18
(promoter)

promoters

Page 173, lines 19-

He told me~'the whole this. This didn t exist at that time.

Page 177, line 14 To the best of my knowledge, he (didn' t) did.

Page 183, lines 16limitation :"~ording a retrieval request (--excuse me, retrieval request) event in an account database corresponding to the searcher s retrieval request.~
Page 185, lines 12The (system - the) method defined by Claim 1 .. taken as a whole, is novel, and that includes previously known features.
Page 189 , lines 18-

I think the 1anguage~'was not yet in existence~ means that it had not yet been invented,
Page 206, line 5
April 6th ,
I think was the date I (saw)

called. him.

Page 223, line 23 telephonic interview.

page 224 ,

line 2

(The) phone call was initiated (I don t know) from our end or from the examiners calling us. The supervisor, Mr. Millin stated that he and (seen) reviewed with Mr. Nguyen our draft

I don t know if the

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Page 224 , line 5
that we proposed (it had)

to add

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253

Case 3:02-cv-01991-JSW IDENTIDocument 186-5 NF AL - UNDER

7f.t!

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

OVERTURE SERVI CES,

INC.,

a Delaware Corporation,

Plaintiff
vs. GOGGLE INC., a California Corporation
Def endant .
I hereby certify that I have read the
foregoing transcript of my deposition g~ven at the
time and place aforesaid, consisting of ' Pages
) CO2-01991 JSW

1 to

252 , inclusive, and I do again subscribe and make
oath that the same is a true, correct and complete
transcript of my deposition so given as

aforesaid,

and includes changes, if any, so made by me.

JOHN G. RAUCH
SUBSCRIBED AND SWORN TO
before me

this

;2. 1 ~~

day

Au. ~~-T

2003
OFFICIAL SEAL"
BRENDA S. SKINNER
NorARY puauc. STArE; OF IlliNOIS
MY COMMISSION EXPIRES 3.

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