Overture Services, Inc. v. Google Inc.

Filing 82

DECLARATION in Support re 70 (Christine P. Sun) Opposition to Overture's Motion for Protective Order filed by Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit I# 8 Exhibit J# 9 Exhibit K# 10 Exhibit L# 11 Exhibit M# 12 Exhibit N# 13 Exhibit O# 14 Exhibit P# 15 Exhibit Q# 16 Exhibit R)(Related document(s) 70 ) (Sun, Christine)

Overture Services, Inc. v. Google Inc.

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Doc. 82 Att. 13

Case 3:02-cv-01991-JSW

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CERTIFICATE OF MAILING

I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail, with sufficient postage , in an envelope addressed to: Assistant Commissioner for Patents

Washington , D. C. 20231 , on
f)d~

Date o Deposit
EI

2-2/ (7'97

1(. Le~
Name of Applicant, Assignee or

Signature

Z2 f

(199
Our Case No. 9623/112

Date of Signature

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of:

Darren J. Davis e1 al.
Serial No. 09/322 677

Examiner
Group Art Unit No. 2771

Filing Date: May 28 , 1999

For

SYSTEM AND METHOD FOR INFLUENCING A POSITION ON A SEARCH RESULT LIST GENERATED BY A COMPUTER NETWORK SEARCH ENGINE

DECLARATION IN SUPPORT OF PETITION AND MOTION UNDER 37 CFR . 91. 102 (d) TO MAKE APPLICATION SPECIAL

Assistant Commissioner for Patents Washington , D- C. 20231
Dear Sir.

1.

I am a named inventor in the Davis et al. application. I have reviewed and

understand the contents of the Davis et al. application , including the specification and all

claims.

OUTSIDE COUNSEL ONLY UNDER PROTECfJVE ORDER

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.I
(a)

There is an Internet search engine service now being marketed on

the Internet under the domain name www. searchtJp. com. This service is being offered

by SearchUP , Inc. of Honolulu , Hawaii. A copy of a web page entitled "About

SearchUP , Inc, , obtained at the Internet address http://www. searchup. com/aboutcfril
and printed on July 15 , 1999 is attached hereto at Exhibit 1, In addition , a copy ora
web page entitled " Benefits , obtained at the Internet address
http://www. searchup. com/benefits, cfm , and printed on July 15 , 1999 is attached hereto
at Exhibit 2.

(b)

SearchUP' s web page About SearchUP , Inc. , shown at Exhibit 1

asserts that the Internet search engine services offered by SearchUP , Inc, utilize an
automated bid placement service " to recognize the "importance of top URL search

:engine placements for Internet businesses

. In Exhibit 2

, SearchUP, Inc. states that its

automated bid placement service " allows web sites to control their URL placement" and

permits web sites to " quickly add , update or remove URL submissions

. To control the

approximate placement of their web site " within minutes , web sites may bid mon

amounts for their web site listing to appear within a particular category or when

searcher-selected k~ywords are entered. Web sites may be listed on SearchUP
service free ,

, Inc.'s

but a money amount is collected by SearchUP , Inc. for web sites wishing

increased visibility and IMMEDIATE URL placement" URL positions arerClnked in

order of bid amount , with the highest bid amount listed on the top of the page for

greatest visibility~
(c)
A July 1

, 1999 letter from Emilia F. Cannella , intellectual property counsel

to GoTo com , Inc. assignees of the Davis et al application , to Bryan Buck , president of

. OUTSIDECOUNSELONLY
r UNDER PROTECfIVE ORDER

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SearchUP , Inc. , regarding SearchUP'

s employment

of

a "pay for placement" business

model for its Internet search engine services , is attached at Exhibit 3.
(d)

The Internet search engine services offered by SearchUP

, Inc, would

Infringe at least some claims presented May 28 1999 , in U. S. Patent Application Serial
No. 09/322 677 to Davis et al. (hereinafter the " Davis et aL application

On information and belief, the Internet search engine services offered by

SearchUP

. Inc. and described above was first discovered to exist by employees

GoTo, com , Inc. , assignee of the Davis et aL application , on or about May
(a)

1999

I have made a rigid comparison between the Internet search engine

service offered by SearchUP , Inc. and the following claims presented in the Davis et aL
app1ication.
(b)

Claim 15 of the Davis et aL application reads (except for differences

formatting) as follows:

A method of enabling a network informatic;Jn provider to update information
relating to a search. listing on a search result list generated by a computer network
search engine , comprising the steps
of:

maintaining an account database having at least one account record for each of
a plurality of network information providers , said account record including at least one

search listing having a search term and a bid amount; and an account identifier;

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receiving from a network information provider a change request for a search
listing in the network information provider's account;

updating the search listing in the network information provider's account record in

response to the change request; and
determining. a position substantially in real time for the updated search listing in a
search result list generated by the search engine in response to a search request
received from a searcher using the computer network , where the search term of the

updated search listing generates a match with the search request and the position of
the updated search listing in the search result list is determined using the bid amount.

(c)

Claim 30 of the Davis et al. application , as amended in the accompanying

Preliminary Amendment , reads (except for differences in formatting) as follows:

A method of enabling a web site promoter using a computer network to update
information relating to a search listing within a search result list generated by a search
engine substantially in real time in response to a search request received from a remote computer over the computer network , comprising the steps of:
maintaining an acCount database having at least one account record for each of

a plurality of web site promoters of the computer network , said account record including
an account identifier , and at least one search listing having a search term and a bid

amount;

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Overture

, ND , CO2-Q1991 . '

. Dogie

providing the web site promoter with authenticated login access , wherein the web
site promoter's login access permits the web site promoter to modify the web

site

promoter's account record;
modifying a search listing of the account record upon receiving a request from

said web site promoter; and
generating a search result list comprised of search listings wherein the search
term for each search listing generates a match with the search request

, the search

listings in the search result list arranged in an order corresponding to the bid amounts of
the search listings,

(d)

A screen shot of a search result list generated by SearchUP

, Inc.'s

Internet search engine service described above is attached hereto at Exhibit 4.

The

search result list contains entries obtained from a database containing a plurality of

search listings , where each search

listing

is associated with a bid amount and a search

term. In Exhibit 4 , each entry in -the search result list is associated with one search
listing, The bid amount , e.
with ' cars

$20Iyear is shown for each entry, and the text ' Web Sites

" shown in Exhibit 4 indicates that each entry in the search result list is
. The search

associated with the search term " cars

result list of Exhibit 4 was

generated after a search request was received from a searcher who wished to find listings associated with the term "cars , and contains an entry for each search listing in
the database whose search tertn generates a match with the term "

cars

. The position

of the entries of the search result list of Exhibit 4 is determined , at least 'in part

, in order

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of decreasing bid amount , with the highest bid amount appearing at the top of the
search result list page

Exhibit 5 comprises a screen shot from SearchUP , Inc.'s online account

manager , showing that authenticated login access is provided to web site owners
having user accounts. Exhibit 6 is a screen shot taken from within SearchUP
, Inc.

online account manager displaying a form requesting web site owner information prior

to creating a user account. The user's email address is used as the account identifier
and a password is generated by SearchUP , Inc. for the newly created user account. As
shown in the screen shots of Exhibit 7 , the creation of a user account permits users to

manage their accounts online. For example , screens can be displayed permitting users
to perform functions such as adding a Uniform Resource Locator (URL) to the

database , specifying search terms and a bid amount , changing the bid amounts

, or

deleting a URL. Payment information is requested when the specified bid amount is
nonzero.
my opinion , at least claims 15 and 30 presented in the Davis et at

In

application would unquestionably be infringed if contained in an issued U.

S. patent

which was not assigned to the provider of the Internet search engine service described.

above.
(a)

Furthermore , I am aware of several other Internet search engine

services that utilize a "pay for placement" business model that may now or in the future

infringe claims presented in the Davis et at application if such claims are contained in
an issued U. S,

patent which was not assigned to the providers of these several Internet

OUTSIDE COUNSEL ONLY ; UNDER PROTECfIVE ORDER

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.i

search engine services. One such service is now being marketed on the Internet under
the domain name www. hitsgalore. com , and is being offered by Hitsgalore

com , Inc, of

Rancho Cucamonga , California. The Internet search engine service offered by
Hitsgalore. com , Inc. was first known to exist by employees of GoTo com , Inc.
assignees of the Davis et at application , on or about May 10

, 1999.

A June 30 , 1999 letter from Emilia F. Cannella , intellectual property counsel for
Go To. com , Inc. , to the administrative contact for the domain name www.

hitsgalore. com

is attached at Exhibit 8. A copy of a press release dated July 13

, 1999 and entitled
, obtained at

Hitsgalore. com Announces New ' Portal Services ' and New Site Layout"

the Internet address http://www. hitsgaJore. com/press 071399. shtml is attached hereto

at Exhibit 9 ,

In addition ,

a web page entitled " Keyword Bid &- Rank" , obtained at the

Internet address http://www. hitsgalore. cOnifbidrank, shtml and printed on September 8

1999 is attached hereto at Exhibit 10 .

Finally, a

screen shot of a search result list

generated by Hitsgalore. com s Internet search engine service is attached at
(b)

~ibit 11.

Another Internet search engine service utilizing a " pay for placement"

. business model is now being marketed on the Internet under the domain name
www. iseekit.com , and is being offered by I Seek It of Columbus
search engine service offered by I Seek It was first known to exist by employees

, Ohio, The Internet

Go To. com,

Inc.

, assignees of the Davis et at application , on or about May 20

, 1999.

A July 1

, 1999 letter from Emilia F. Cannella , intellectual property counsel for

GoTo. com, Inc. , to Robert G. Schuler , counsel for I Seek It , is attached hereto at Exhibit
12. A copy of a web page entitled "About Us , obtained at the Internet address

Dve

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Overture v, Google
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http://www. iseekiLcom/faq. htm and printed on September 8 , 1999 is attached hereto at

Exhibit 14. A copy of a web page entitled ' Terms and Conditions , obtained at the
Internet address http://www.iseekiLcom/terms htm and printed on September 8 , 1999 is

attached hereto at Exhibit 14. A screen shot of an online form to add or change URL

listings , keywords , and bid amoul')ts is attached at Exhibit 15, An online form

for web

site owners to make additional deposits to an existing account for bidding for search

result list positions is shown in Exhibit 16. Finally, a screen shot of a

search result list

generated by I Seek It' s Internet search engine service is attached at Exhibit 17.
(c)
Another Internet search service offering a "pay for placement" business

model is now being marketed on the Internet under the domain name
wwW, findwhaLcom , and is being offered by BeFirsLcom of New York ,

New York. The

Internet search engine service offered by BeFirst.com was first known to exist by
employees of GoTo, com ,
Inc.

, assignees of the Daviset al. application , on or about July

, 1999. A July 20 , 1999 letter from Emilia F. Cannella , intellectual property counsel

for GoTo, com , Inc. , to Robert Brahms of BeFirst.com is attached at Exhibit 18.

Exhibits

19 and 20 , entitled "Promote Your Web Site on FindWhat" and " Frequently Asked

Questions " respectiv~ly, are printouts of web pages , obtained on September 8
containing descriptions of the " pay for placement" type search result ranking

, 1999

. methodology used in BeFirsLcom s Findwhat.com search engine. Exhibit 21 is a screen

shot of an online fonn for web site owners to apply for bidding accounts. Exhibit
press release dated August 18 , 1999 entitled " BeFirstcom Selects Inktomi'
Platform for FindWhat.com " further describing the Findwhat.com " pay-

22 is a

s Search

for--placement"

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UNDER PROTECfIVE ORDER

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. search engine, Finally, a screen shot of a search result list generated by the
FindwhaLcom Internet search engine is attached at Exhibit 23

(d)

The Internet search engine services offered or proposed by

Hitsgalore, com , I Seek It , and BeFirsLcom would infringe at least one claim presented

May 28 , 1999, in the Davis et al. application.
(a)
I have made a rigid comparison between the Internet search engine
I Seek It , and BeFirstcom , and the following claim

services offered by Hitsgalore, com ,

presented in the Davis et al. application.
(b)
al. applicatio~, as amended in the accompanying

Claim 1 of the Davis

et

Preliminary Amendment , reads (except for differences in formatting) as follows:
A method of generating a search result list substantially in

real time in response

to a search request from a searcher using a computer network

, comprising:

maintaining a database including a plurality of search listings

, wherein each

search listing is associated with a bid amount and a search

term;

receiving a search request from the searcher,
identifying the search listings having search terms generating a match with the

search request;
ordering the identified search listings into a search result list in accordance with
the values of the respective bid amounts for the identified search listings;

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receiving a retrieval request from the searcher to retrieve information associated
with a search listing in the search result list; and recording a retrieval request event in the database corresponding to the
searcher's retrieval request.

(c)

The sample search result list shown for Hitsgalore. com s service in Exhibit

11 shows that the service maintains a database containing a plurality or'search listings

where each search listing is associated with a bid amount and a search term. The bid

amount , e. g.

$0. 05

is shown for each entry. Furthermore , Exhibit 10 shows that a

keyword as well as a bid amount must be associated with each search listing. The

Hitsgalore. com service is capable of receiving a search request from a searcher , as
shown by the search box ~t the top of Exhibits 9 , 10, and 11 , where the searcher can

type in a search request , which may comprise one or more keywords. The

Hitsgalore. com service then identifies the search listings having search terms
generating a match with the search request. These identified search listings are
orden:~d in accordance with the values of the respective bid amounts for the identified

search listings , as shown in Exhibit 11 , which shows a se~rch result list generated by

Hitsgalore. com s service for a search request of "cars . Exhibits 9 and 10 state that
each time a searcher " clicks through" a search listing, that is , each time a web site
corresponding to

a search listing on a search result list is accessed , the bid amount

corresponding

that search listing is deducted from the appropriate web site owner's

account. A "click through" is therefore a retrieval request from the searcher to retrieve
information associated with a search listing in the search result list. Furthermore , in

order for the bid amount to be properly deducted from the web site owner's account , this
ave

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retrieval request is received and recorded by the hitsgalore. com service in conjunction
with the searcher's browser's retrieval of information from the selected web site.

(d)

The sample search result list shown for I Seek It's service in Exhibit 17

shows that I Seek It' s service also maintains a database containing a plurality of search

listings , where each search listing is associated with a bid amount and a search term.
The bid amount , e. g.
$0. 05

is shown for each entry, Furthermore , the online bidding

form of EXhibit 15 shows that a keyword as well as a bid amount must be associated

with each search listing, The I Seek It service is capable of receiving a search request
from a searcher , as shown by the search box at the top af Exhibit 17 , where the
searcher can type in a search request which may comprise -one or more keywords,
I Seek It service then identifies the search listings having search terms generating a

The

match with the search request These identified search listings are ordered in
accordance with the values of the respective bid amounts for the identified search

listings , as shown in Exhibit 17 , which shows a search result list generated by I Seek It'

service for a search request. of " books

. Exhibit 13 states that the bid

amount

associated with a search listing is a " bid per click" .

That is ,

each time a searcher

accesses a web site ,corresponding to a search listing on a search result list , the bid

amount corresponding ta that search listing is deducted from the appropriaie web site

owner's account. A " click" is therefore a retrieval request from the searcher to retrieve

information associated with a search listing in the search result list Furthermore , in
order for the bid amount to be properly deducted from the web site owner's account , this
retrieval request is received and recorded by ttw I Seek It service in conjunction with the
searcher's browser's retrieval of information from the selected web site.

OurSIDECOUNSELONLY
UNDER PROTECfJVE ORDER
per

NON- CONFIDENTIAL
4/17/03

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(e)

The sample search result list shown

in

Exhibit 23 for BeFirsLcom

service , FiCldwhatcom , also shows that the

service

maintains a database containing a

plurality of search listings. Findwhat.com does not display the bid amount in the search

result list entries shown in Exhibit 23. However, FindwhaLcom states

in

the descriptive

materials of Exhibits 20 and 21 that each search listing includes a search term and a bid

amount Findwhat.com is capable of receiving a search requestfrom a searcher
shown by the search boxes at the top of the screen shots of Exhibits 20

, as

, 22 , and 23

where the searcher can type in a search request , which may comprise one or more

keywords. The FindwhaLcom service then identifies the search listings having search
. terms generating a

match with the search request. These identified search listings are

ordered in accordance with the values of the respective bid amounts for the identified
search listings , as discussed in Exhibit 20. Exhibits 19 and 20 state that the bid amount

associated with a search listing is only deducted from a web site owners

account when

a searcher "clicks through" to the web site associated with that search listing.

That is

each time a searcher accesses a web site corresponding to a search listing on a search
result

list the bid amount, corresponding to that search listing is deducted from the
click

appropriate web site owners account. A

through" is therefore a retrieval request

from

the searcher to ret~ieve information associated with a search Hsting in the search

result list. Furthermore , in order for the bid amount to be properly deducted from the

web site owners account

, this retrieval request

is

received and recorded by the

Findwhatcom service in conjunction with the searcher's browsers retrieval of
information from the selected web

site

i OUTSIDE COUNSEL ONLY , UNDER PROTECfJVE ORDER

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per 4/17/03

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In my opinion , at least daim 1 presented in the Davis et al. application

would unquestionably be infringed if contained in an issued U, S. patent which was not

assigned to each of the providers of the Internet search engine services described
above in paragraphs 5 and 6,

I have knowledge that a careful and thorough search of the prior art

relating to the daims of the Davis et al. application was made. The results of this

search , as well as other prior art known to the attorneys of the assignee of the Davis et
al. application that may be relevant to patentability of the claims of the Davis et
application , was cited to the Examiner in an Information Disdosure Statement
filed on

August 27 , 1999.
10.

Based on my review of the prior art cited in the Information Disclosure

Statement in this case , I do not know and do not believe that the invention described in

the Davis et al. application was ever known or used in the United States of America before my or our invention thereof, or patented or described in any printed publication in

. any country before my or our invention thereof or more than year p~ior to the filing date

of this application. I also do not know and do not believe that the invention described in
the

Davis et al. appliCation was in public use or on sale in the United States

of America

more than one year prior to the filing date of this application. I believe that the invention

described in the Davis et at application has not been patented or made the subject of
an inventor's certificate issued before the filing date of the Davis et al. application in any
country foreign to the United States of America on an application filed by me

, any other

named inventors , our legal representatives , or our assignees. Furthermore , I believe

that no application for patentor inventor's certificate on this invention has been filed in

: OUTSIDE

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any country foreign to the United States of America prior to this application by me
other named inventors , our legal representatives , or pur assignees.

, any

11.

It is verY important to the assignee of the Davis et al. application that a

patent for the present invention issue promptly, in order that the infringement of the
rights of the assignee of the Davis et at. application in the invention be abated.

12.

I declare that the foregoing statements made of my own knowledge are

true , and that the foregoing statments made on infor~ation and belief are believed
. be true; and further , that these statements were made with the knowledge that willful
false statements and the like so made are punishable by fine , or imprisonment , or both
under 18 U.

C. ~ 1001; and may jeopardize the validity of the Davis , et al. application

or any patent issuing therefrom.

Respectfully submitted

OUTSIDE COUNSEL ONLY

UNDER PROTECfIVE ORDER

NON-CONFIDENTIAL per 4/17/03 McMahon letter

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