Overture Services, Inc. v. Google Inc.

Filing 65

STIPULATION REQUEST FOR LEAVE TO DEFER ADJUDICATION by Google Inc.. (Attachments: # 1 Proposed Order)(Kwun, Michael)

Overture Services, Inc. v. Google Inc.

Doc. 65

Case 3:02-cv-01991-JSW

Document 65

Filed 05/29/2003

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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 and Counterdefendant OVERTURE SERVICES, INC. KEKER & VAN NEST, LLP JOHN W. KEKER - #49092 DARALYN J. DURIE - #169825 MICHAEL S. KWUN - #198945 710 Sansome Street San Francisco, CA 94111-1704 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant and Counterclaimant GOOGLE TECHNOLOGY INC., sued under its former name GOOGLE INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

OVERTURE SERVICES, INC., a Delaware corporation, Plaintiff and Counterdefendant, v. GOOGLE INC., a California corporation, Defendant and Counterclaimant.

Case No. C 02-01991 JSW (EDL) STIPULATED REQUEST FOR LEAVE TO DEFER ADJUDICATION OF WHETHER 35 U.S.C. § 112 ¶ 6 GOVERNS CERTAIN LIMITATIONS Judge: Hon. Jeffrey S. White

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STIPULATED REQUEST FOR LEAVE TO DEFER ADJUDICATION OF WHETHER 35 U.S.C. § 112 ¶ 6 GOVERNS CERTAIN LIMITATIONS CASE NO. C 02-01991 JSW (EDL) Dockets.Justia.com

Case 3:02-cv-01991-JSW

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STIPULATED REQUEST FOR LEAVE TO DEFER ADJUDICATION OF WHETHER 35 U.S.C. § 112 ¶ 6 GOVERNS CERTAIN LIMITATIONS Overture Services, Inc. ("Overture") and Google Technology Inc. ("Google") hereby jointly request that the Court defer briefing and resolution of whether 35 U.S.C. § 112 ¶ 6 governs certain claim terms. Patent Local Rule 4-1(a) requires that each party simultaneously exchange "a list of claim terms, phrases, or clauses which that party contends should be construed by the Court" and that each party "identify any claim element which that party contends should be governed by 35 U.S.C. § 112(6)." The parties timely exchanged disclosures pursuant to Patent Local Rule 41(a). After meeting and conferring about these disclosures, the parties agreed that twelve terms or phrases should be briefed for construction by the Court, and so notified the Court in a letter dated May 14, 2003. In addition to identifying terms requiring construction, Google identified the following eight clauses in claim 14 of the patent-in-suit that it contends are governed by 35 U.S.C. § 112 ¶ 6: programming code for providing the advertising web site promoter with login access in response to authentication, wherein the advertising web site promoter's login access grants the advertising web site promoter access to modify the advertising web site promoter's account, the advertising web site promoter not being provided with access to modify the accounts of others; programming code on said computer system for adding money to the account of an advertising web site promoter in substantially real time upon receiving a request from said advertising web site promoter; programming code on said computer system for adding a search listing to an account of an advertising web site promoter in substantially real time upon receiving a request from said advertising web site promoter; programming code on said computer system for deleting a search listing to an account of an advertising web site promoter in substantially real time upon receiving a request from said advertising web site promoter; programming code on said computer system for modifying in substantially real time the search listing of an advertising web site promoter upon receiving a request from said advertising web site promoter; programming code for generating in substantially real time an activity report for an advertising web site promoter upon receiving a request from said advertising web site promoter; 2

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STIPULATED REQUEST FOR LEAVE TO DEFER ADJUDICATION OF WHETHER 35 U.S.C. § 112 ¶ 6 GOVERNS CERTAIN LIMITATIONS CASE NO. C 02-01991 JSW (EDL)

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programming code for receiving a search request from a remote computer, the search request including at least one keyword, the search request being received over the computer network from the remote computer through a web site that is publicly accessible without authentication; and programming code for generating in substantially real time a search result list in response to the search request, the search result list including search listings from the accounts on the database, wherein the search term for each search listing in the search result list generates a match with the search request, the search listings in the search result list arranged in an order determined using the bid amounts of the search listings. Overture contends that these clauses are not governed by 35 U.S.C. § 112 ¶ 6. The eight clauses identified by Google appear only in claim 14. Given that this dispute relates to only one of the 62 asserted claims (Overture has asserted that Google infringes claims 1-2, 4-5, 7-18, 20-30, and 33-67 of the patent-in-suit), the parties propose to defer briefing of this issue until after the Court has issued a claim construction order addressing the twelve terms identified in the May 14, 2003 letter to the Court. The parties jointly request that the Court enter an order deferring adjudication of whether the eight clauses identified above are governed by 35 U.S.C. § 112 ¶ 6, and the subordinate issue of what structure, acts, or materials correspond to those elements, if any of the identified clauses are governed by 35 U.S.C. § 112 ¶ 6. The parties further request that the Court hold a further case management conference shortly after issuing a claim construction order addressing the twelve terms identified in the May 14, 2003 letter to the Court, at which time the Court and the parties can discuss whether and how the § 112 ¶ 6 issue should be addressed, and other case management issues. Dated: May 29, 2003 BRINKS HOFER GILSON & LIONE

By:

s/Jason C. White_________________ JASON C. WHITE Attorneys for Plaintiff and Counterdefendant OVERTURE SERVICES, INC.

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STIPULATED REQUEST FOR LEAVE TO DEFER ADJUDICATION OF WHETHER 35 U.S.C. § 112 ¶ 6 GOVERNS CERTAIN LIMITATIONS CASE NO. C 02-01991 JSW (EDL)

Case 3:02-cv-01991-JSW

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Dated: May 29, 2003

KEKER & VAN NEST, LLP

By:

s/Michael S. Kwun________________ Defendant and Counterclaimant GOOGLE TECHNOLOGY INC., sued under its former name GOOGLE INC.

DECLARATION OF MICHAEL S. KWUN I, Michael S. Kwun, declare that prior to filing the above Stipulated Request, I sent it to Jason C. White for his review, and he authorized me to file the Stipulated Request on his behalf. I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on this 29th day of May 2003 at San Francisco, California.

__s/Michael S. Kwun____________________ MICHAEL S. KWUN

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STIPULATED REQUEST FOR LEAVE TO DEFER ADJUDICATION OF WHETHER 35 U.S.C. § 112 ¶ 6 GOVERNS CERTAIN LIMITATIONS CASE NO. C 02-01991 JSW (EDL)