Overture Services, Inc. v. Google Inc.

Filing 34

Memorandum in Opposition re 25 Google's Motion for an Extension of Time to File Preliminary Invalidity Contentions filed by Overture Services, Inc.. (McMahon, Charles)

Overture Services, Inc. v. Google Inc.

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Case 3:02-cv-01991-JSW

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LATHAM & WATKINS Anthony I. Fenwick (Bar No. 158667) Allon Stabinsky (Bar No. 197642) 135 Commonwealth Drive Menlo Park, California 94025 Telephone: [phone] Facsimile: [phone] BRINKS HOFER GILSON & LIONE Jack C. Berenzweig (Admitted Pro Hac Vice) William H. Frankel (Admitted Pro Hac Vice) Jason C. White (Admitted Pro Hac Vice) Charles M. McMahon (Admitted Pro Hac Vice) NBC Tower - Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff OVERTURE SERVICES, INC.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION
No. C02-01991 CRB (EDL) OVERTURE'S FURTHER OPPOSITION TO GOOGLE'S MOTION FOR AN ORDER EXTENDING GOOGLE'S TIME TO SERVE INITIAL INVALIDITY CONTENTIONS

OVERTURE SERVICES, INC., a Delaware Corporation, Plaintiff, vs. GOOGLE INC., a California Corporation, Defendant.

Dockets.Justia.com

Case 3:02-cv-01991-JSW

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I.

INTRODUCTION Pursuant to the Court's Order of December 2, 2002, Overture files this

supplemental memorandum in opposition to Google's motion.1 Google's motion offers only bald assertions that Overture's Preliminary Infringement Contentions are insufficient. Google does not dispute that Overture has identified both the claims that are infringed and the specific Google system that infringes those claims. Overture also has identified specific infringing features of Google's accused system, and has directed Google to pages from its own website that describe those features. Admittedly, Overture has not identified Google computer code evidencing its infringement, but that is because Google has not yet produced its computer code. Accordingly, Overture's Preliminary Infringement Contentions satisfy Patent L.R. 3-1. II. OVERTURE'S INFRINGEMENT CONTENTIONS The patent in this case, Overture's U.S. Patent No. 6,269,361 (the "'361 patent"), relates to the account management of bidded pay-per-click search systems on networks such as the Internet. In a bidded pay-per-click search system, an information provider or advertiser places a bid for the opportunity of having its search listing included in a search result list for a particular search term. When a searcher enters a search for the search term, the system produces a search result list that includes search listings from advertisers that have bid on that search term. By varying its bid amount, the advertiser is able to influence the position of its search listing within the search result list. The advertiser then pays only for those instances when a searcher "clicks" through to the advertiser's website.

1

Google originally styled its motion as seeking only an extension of time under Local Rule (L.R.) 6-3. (See Overture Opp'n, Dkt. No. 28.) Recognizing that Google's motion actually sought a substantive discovery order, the Court referred the motion to Magistrate Judge LaPorte as a motion to compel. Judge LaPorte subsequently set the present briefing.
OVERTURE'S FURTHER OPP'N TO MOT. FOR EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS C 02-01991 CRB (EDL)

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BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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Overture introduced the first bidded pay-per-click search system on the Internet in 1998. Until earlier this year, Google did not operate a bidded pay-per-click search system. Instead, Google operated an algorithmic search engine that did not require information providers to pay for their search listings to be included in search results lists. In February 2002, however, Google introduced a bidded pay-per-click search system called AdWords Select. The AdWords Select system includes the account management features claimed in Overture's '361 patent. All but one of the asserted claims are method claims. (See '361 patent claims, Exh. 1 to Kwun Decl., col. 22-30.) These method claims do not include mechanical structural limitations that can be applied simply to specific mechanical components in the accused system. Instead, in its Preliminary Infringement Contentions, Overture carefully identified those features of Google's AdWords Select system and the actions performed by that system that Overture believes correspond to the recited method claim limitations. (See Overture's Preliminary Infringement Contention claim chart, Exh. 4 to Kwun Decl.) The only asserted non-method claim is claim 14. Most of the limitations recited in claim 14 relate to computer programming code. Overture explained its belief that the AdWords Select system includes programming code that meets the limitations of claim 14. Until Google produces that code, however, Overture cannot be more specific with respect to those limitations.2 Overture also identified numerous pages from Google's own website that explain the operation of Google's AdWords Select system.3 (See Overture's Preliminary Infringement Contentions, Exh. 3 to Kwun Decl., p. 2.) In its Preliminary Infringement Contentions, Overture directed Google to these website pages to support its assertion

The parties are involved in ongoing negotiations regarding the terms of a protective order that would govern the production of computer source code. Copies of these website pages are attached as Exhibit 1 to the Declaration of Charles M. McMahon (Dkt. No. 29).
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BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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that the AdWords Select system infringes the asserted claims. Read in context with the Google website pages that Overture identified, Overture's Preliminary Infringement Contentions satisfy both the letter and the spirit of Patent L.R. 3-1. III. OVERTURE'S PRELIMINARY INFRINGEMENT CONTENTIONS SATISFY PATENT L.R. 3-1 Overture's Preliminary Infringement Contentions satisfy the requirements of Patent L.R. 3-1 for at least the following reasons:

1.

As described above, the '361 patent is not directed to a simple mechanical

system in which independent parts may easily be identified. Rather, most of the claims are method claims that read on particular actions performed by the infringing AdWords Select system. The only system claim is directed primarily to programming code, and Google has not yet produced its code. Accordingly, Overture's Preliminary Infringement Contentions adequately identify the asserted claims, the infringing system, and the features of that system that infringe the claims.

2.

In many instances, Overture's Preliminary Infringement Contentions are

more specific than Google implies. For instance, Overture identified at least the following specific infringing features of Google's AdWords Select system: (a) multiple search term matching options (i.e., broad matches, negative matches, and exact matches) (claims 1, 11, and 16); (b) subaccounts in the form of ad groups (claim 5); (c) rank values, as shown in an advertiser's hyperlink (claim 8); (d) the Google TrafficEstimator tool, which estimates the cost of a search listing (claims 11, 12, 43, 44, 59, and 60); (e) the ability to bill advertisers' credit cards in real time if they reach a set account limit (claims 14, 39, and 55); and (f) Google's assurance on its website that new ads go live "instantly once you create them" (claims 14 and 53). This list is not exhaustive, but merely illustrates the specificity of Overture's infringement contentions. In addition to the claim chart, Overture also directed Google to particular pages from
OVERTURE'S FURTHER OPP'N TO MOT. FOR EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS C 02-01991 CRB (EDL)
BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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Google's own website that describe in detail the infringing features identified in the claim chart. In this way, Overture provided Google with more detail than Patent L.R. 3-1 requires.

3.

In some instances, Overture was not able to provide the same level of

detail. This is because Overture's patent relates to the account management features of pay-per-click systems. Google acknowledges that AdWords Select is a pay-per-click system. However, many of the details ultimately necessary to establish additional elements of infringement, both of the method claims and the system claim, lie in the AdWords Select computer code, which Google has not yet produced.

4.

Overture has made every effort to provide information to satisfy Google's

concerns. (See McMahon Decl., ¶¶ 4, 7; Kwun Decl., Exh. 6.) In fact, Overture provided Google with additional information regarding the only two claim chart entries that Google has specifically identified as allegedly deficient. (See McMahon Decl., ¶¶ 56; Kwun Decl., Exh. 8.) Since then, Google has declined Overture's invitation to identify any other specific entries alleged to be deficient. (See McMahon Decl., ¶ 7.)

Where Patent L.R. 3-1 calls for infringement contentions that are "preliminary," Google attempts to prematurely and improperly substitute the word "detailed." Google's motion appears to be an attempt to prematurely compel a claim interpretation from Overture, with specific reference to a particular embodiment of the accused AdWords Select system. This is contrary to the schedule set forth in the Patent Local Rules, which contemplates that "preliminary" infringement contentions are the beginning, and not the end, of plaintiff's infringement proofs. Overture satisfied its burden of providing preliminary infringement contentions. As a result, Google now knows (a) which Overture patent claims are allegedly infringed, (b) which Google product is alleged to infringe those claims, and (c) which specific features of the accused product correspond
OVERTURE'S FURTHER OPP'N TO MOT. FOR EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS C 02-01991 CRB (EDL)
BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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to the limitations of each asserted claim. Google should now produce its source code documentation and its Preliminary Invalidity Contentions so that discovery may proceed. IV. CONCLUSION For the foregoing reasons, Overture respectfully requests that the Court deny Google's motion.

Dated: December 9, 2002

By:

/s/ Charles M. McMahon BRINKS HOFER GILSON & LIONE NBC Tower - Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611 Telephone: [phone] Facsimile: [phone] Attorney for Plaintiff OVERTURE SERVICES, INC.

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BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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LATHAM & WATKINS Anthony I. Fenwick (Bar No. 158667) Allon Stabinsky (Bar No. 197642) 135 Commonwealth Drive Menlo Park, California 94025 Telephone: [phone] Facsimile: [phone] BRINKS HOFER GILSON & LIONE Jack C. Berenzweig (Admitted Pro Hac Vice) William H. Frankel (Admitted Pro Hac Vice) Jason C. White (Admitted Pro Hac Vice) Charles M. McMahon (Admitted Pro Hac Vice) NBC Tower - Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff OVERTURE SERVICES, INC.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION
No. C02-01991 CRB (EDL)

OVERTURE SERVICES, INC., a Delaware Corporation, Plaintiff, vs. GOOGLE INC., a California Corporation, Defendant.

[PROPOSED] ORDER

Before the Court is defendant Google Inc.'s ("Google's") motion, pursuant to Civil L.R. 6-1 and 6-3, and paragraph 4 of the Court's Standing Order, for an order extending its time to serve its Preliminary Invalidity Contentions and compelling Overture to serve revised Preliminary Infringement Contentions. Having considered all of the papers filed in support of and opposition to the motions, the Court DENIES Google's motion.

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The parties are ORDERED to meet and confer about the case management schedule, and to file with the Court within ten court days of the date of this Order a joint case management statement addressing any scheduling modifications that may be necessary in light of this Order.

Dated: HON. ELIZABETH D. LAPORTE United States Magistrate Judge

[PROPOSED] ORDER C 02-01991 CRB (EDL)

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BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]