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. 4

Case 3:02-cv-01991-JSW

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Overture v. Google, N.
CaI. CO2-o1991

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~

2.21 Date

('797
Deposit

E(~ 1(. Le-&
Signature cJ.cT~

Name of Applicant, Assignee or

22 ( (191
Date of Signature

Our- Case No. 9623/112
IN

THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of:
Darren J. Davis. et at.

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 NE1WORK SEARCH ENGINE

DECLARA nON

SUPPORT OF PETITION AND MOTION UNDER 37 CFR ~1. 102 (d) TO MAKE APPLICATION SPECIAL
IN

Assistant Commissioner for Patents

Washington , D. C. 20231
Dear Sir.

1.

J am a named inventor in the DaVis et at. application. J have reviewed and

. understand the contents of the Dc;!vis et at. application , including the specification and all

claims.

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(a)

Overture v . Google , N. CaI. CO2-o1991

There is an Internet search engine service now being marketed on

the Internet under the domain name www. searchup. 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/aboutcfm

and printed on July 15 , 1999 is attached hereto at Exhibit 1. In addition , a copy of a

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 money

amounts for their web site listing to appeC\r

within a particular

category or when

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

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

increased visibility and IMMEDIATE URL placement" URL positions are ranked in

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

greatest visibiliti
(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

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SearchUP ,

Overture v. Google, N.
Cal. CO2-01991

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 $earch 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 at application

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

SearchUP . Inc. and described above was first discovered
GoTo. com , Inc. , assignee
(a)
of

to

exist by employe es

of

the Davis et al. application , on or abDut May 20 , 1999.

I have made a rigid comparison between the Internet search engine
in

service offered by SearchUP , Inc. and the following daims presented
application.
(b)

the Davis et al.

Claim 15 of the Davis et al. application reads (except for differences in

formatting) as follows:
. A method of enabling a network informati,?n 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 identifie~

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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 terr:.n of the

updated search listing generates a match with the search requ~st 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 at. 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 v

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, N.D CO2-o1991 .

. oog/e

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 s~arch
listings in the search result list arranged -in an order correspondi~g 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. g. $20/year, is shown for each entry, and the text: ' Web Sites
with ' cars

" shown in Exhibit 4 indicates that each entry in th~ 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 teriTI 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.

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.
In my opinion, at least claims 15 and 30 presented in the Davis et at.

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 al. application if such claims are contained in
an issued U. S.

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

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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 al. application, on or about May 10, 1999.
A June 30, 1999 letter from Emilia F. Cannella, intellectual property counsel for

GoTo. com , Inc. , to the administrative contact for the domain name www. hitsgalore. com
is attached at Exhibit 8. Acopy of a press release dated July 13, 1999 and entitled

Hitsgalore. com Announces New 'Portal Services' and New Site Layout" , obtained at
the Internet address http://www.hitsgalore. 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. hitsga"lore. comlbidrank. shtmi 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 Exhibit 11.
(b)

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

business model is now being marketed on the Internet under the domain name
www. iseekiLcom , and is being offered by I Seek It of Columbus , Ohio. The Internet

search engine service offered by I Seek It was first known to exist by employees of

GoTo. 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

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http://www. iseekitcom/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. iseekit.com/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 amounts 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. findwhatcom and is being offered by BeFirstcom of New York , New York. The

Internet search engine service offered by BeFirslcom was first known to exist by
employees of GoTo. com , Inc. , assignees of the Davis et at. 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 BeFirstcom is attached at Exhibit 18. Exhibits
19 and 20, entitled "Promote Your Web Site on FindWhat" and " Frequently Asked

Questions" respectiv!3ly, are printouts of web pages, obtained on September 8 , 1999
containing descriptions of the " pay for placement" type search result ranking

methodology used in BeRrstcom s Findwhatcom search engine. Exhibit 21 is a screen
shot of an online form for web site owners to apply for bidding accounts. Exhibit 22 is a press release dated August 18 , 1999 entitled "BeFirstcom Selects Inktomi' s Search

Platform for FindWhatcom " further describing the Findwhatcom "pay-for-placement"

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Overture v. Google, N. Cal. CO2-o1991

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 at application.
(a)
I have made a rigid comparison between the Internet search engine

. services offered by Hitsgalore. com , I Seek It, and BeFirsLcom , and the foUQwing claim

presented in the Davis et at. application. (b)

Claim 1 of the Davis et at applicatio:" as amended in the accompanying

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 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 , ExhibJt 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 at 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
ordered in accordance with the values of the respective bid amounts for the identified
search listings, as shown in Exhibit 11 , which shows a searCh .result list generated

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 to. 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

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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.
$O. O~

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 of Exhibit 17 , where the

searcher can type in a search request which may comprise one or more keywords. The
I Seek It 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 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 asearch listing is a "bid per click".

That is ,

Gach 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 appropriate 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 the I Seek It service in conjunction with the

searcher's browser s retrieval of information from the selected web site.

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(e)

The sample search result list shown in Exhibit 23 for BeFirst.com

service , Fi\ldwhatcom, also shQWS that the service maintains a database containing a
plurality of search listings. Findwhatcom does not display the bid amount in the search

result list entries shown in Exhibit 23. However, Findwhatcom states in the descriptive
materials of Exhibits 20 and 21 that each search listing includes a search term and a bid

amount. Findwhatcom is capable ' of receiving a search request from a searcher , as
shown by the search boxes at the top of the screen shots of Exhibits 20 , 22, and 23

where the seardler 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 Exhibit20. Exhibits 19 and 20 state that the bid amount

associated with a search listing is only deducted from a web site owner's 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

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

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Overture v. Google, N
Cal. CO2- 01991

lri my opinion , at least claim 1 presented in the Davis et al. application

would unquestionablybe 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 claims 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 al.

application , was cited to the Examiner in an Information Disclosure Statement filed on

August 27, 1999.
10.
Based on my review of the prior art cited in the Information Disclosure

Statementin this case , I do not know and do not believe that the invention described in
the Davis et at. application was ever known or used in the United States of America

before my or our invention thereof, or patented or desO"ibed 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 at. applicC\tion 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 at. 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 patent or inventor's certificate on this invention has been filed in
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any country foreign to the United States of America prior to this application by me , any
other named inventors , our legal representatives , or our assignees.
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.
. true ,

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

and that the foregoing statements made on information and belief are believed to

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

or any patent issuing therefrom.

Respectfully submitted

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