Netflix, Inc. v. Blockbuster, Inc.
Filing
101
Attachment 5
Declaration of Ashok Ramani in Support of
100 Brief
Declaration of Ashok Ramani In Support Of Netflix's Opening Claim-Construction Brief filed byNetflix, Inc.. (Attachments: #
1 Exhibit 1#
2 Exhibit 2#
3 Exhibit 3#
4 Exhibit 4#
5 Exhibit 5#
6 Exhibit 6#
7 Exhibit 7.1#
8 Exhibit 7.2#
9 Exhibit 7.3#
10 Exhibit 8#
11 Exhibit 9#
12 Exhibit 10#
13 Exhibit 11#
14 Exhibit 12#
15 Exhibit 13)(Related document(s)
100) (Ramani, Ashok) (Filed on 12/6/2006)
Netflix, Inc. v. Blockbuster, Inc.
Doc. 101 Att. 5
Case 3:06-cv-02361-WHA
Document 101-6
Filed 12/06/2006
Page 1 of 9
EXHIBIT 5
Dockets.Justia.com
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Case 3:06-cv-02361-WHA
Document 101-6
HPTB SA JÒS CALIFO
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Page 2 of 9
HICKMAN PALERMO TRUONG & BE.CKER LLP 2055 GATBWAY PLACE, Sl,ITE 550
SAN JOSE, CALIFORNIA 95110-1089
TEL: (408) 414-1080
FAX: (408) 414-1076
PACSIMILE TRANSMITTAL SHEET
'1:
FROM:
Exer Anew Joseph Rudy
COMPhNY:
Chrpher). Paleio
Tel (408) 414-1080xz02
DhTE
U.S. Patent and Traem Off
fAX !oUM1i:~
OcrOBER 17,2005
TOTAL NO. 01' PACES INCLUDING COve;
(571) 273-6789
PIlONE NUMBER:
34
SENDER'S REFECE NUMBEIl
(571) 27U78Q
REI
u.s. Seri No.
5655-019
YOUR REFERBCS N1JM8EJ
10/438,727
Grup Ar Uni No.: 3627
Contin No. 7297
NOlF.sCOMMENT:
OFFICIAL COMMUNICATION INTENDED FOR ENTRY.
The following documents follow:
1. Lettr
to Examiner (7 pages)
A to Declaration (7 pages)
2. Declaration (4 pages including duplicate signature pages)
3. Exhibit
4. Exhibit B to Declaration (3 pages)
5.
Complete English trslation of JP-9231279-A (11 pages)
BEST AVAILABLE COpy
TIE INFORMATION CONTAINED IN TIlS FACSIMILII IS INED ONLY FOR THB PBRSONAL ANDCONFOEiTlAL
USE OF THE DESIGNATED RRCIP!E(S) NAMBD ABOVE. TH MESAOS MAY BE AN ATIRNEY~Llwr
COMMICATION, AN AS SUCH IS PRILEGED AN CONFIDEN IF TI REPA OF THIS MESGE IS NOT 1lE INTEDED REIPieNT OR AN AGEN !WFONSmLE ¡:R DEIERlG IT TO TIE INTEED R.lPIB, YOU
ARE IiBRE~Y NOTED THAT YOU HAVE RE6l¡¡D nns DO IN BR.OR AN nIT Am RBIBW,
DISSEMINA.TION, DrsTRUTION OR. COPYIG OF nns MESSAGE is STRCTLY PROHI8llD. IF YOU HAVE
lUElV TH COMMUNICATION IN ERRR, PlESE NOTI US tMMEDIA.T6LY BY TELEHOm AND RH
TH ORIGINAL MSSSAGE TO US DY MA. THANK YOU.
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IN THE UNTED STATES PATENT AN TREMA OmCE
In re Application of
) Group Ar Unit: 3627
)
W. Reed HATINGS, et al.
Aplication No. 10/438,727
) Examer: Andrew 1. Rudy
) )
) )
)
)
Filed: May 14, 2003
For: APPROACH FOR RENTING ITEMS TO CUSTOMERS
)
)
Mail Stop Amendment Commssioner for Patents P. O. Box 1450 Alexandra, VA 22313-1450
LEITR TO EXAR
The Offce mailed an action in tl ca on October 29, 2004, to whch Applicats filed a
tiely reply on Januar 31,2005. The Offce has mailed no otherwritten action, but the
Examner has identified, in inonnal communcations with the Aplicants' reresentave, the
followi references:
1. "Netlix.com Trafonns DVD Business Eliatig Late Fees and Due Dales
From Movie Rentals; Netlix.com's New Marquee Progr Creates Near 4DVD-on-Demd' ,"
Business Wire, September 28, 1999, repulish~d in ProQuest UM database (3 pp.) (refered to
herein as HBusiness Wire'1;
2. .~etlix launched DVd subscription club; Blockbuster set to stock up on
fonnate" (sic), Bilboar, October 16,1999, vol. 11 i, issue 42, pp. 77, republished in Pro
Quest
UM datase (3 pp.) (refered to herei as "Bilboard)¡
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3. "The Talkg Book Library at the Kenton County Public Libra," August 11,
1997, arhived at htt://ww.archive.orglweb/1998013005113 7/ww .kenton.lib.ky.us
talkng.html (refered to herin as ''Kenton Libra1;
4. Japanese published patent aplicaton No. 9231279-A, September 5,1997
(referd to herein as "JP-9231279-A").
The references either do not qualif as pnor ar or do not teach or suggest the subject
matter of the clai. The case was comte for allowabilty months ago, and prosecution in tlus
case has aleady involved multiple levels of revew of
the cla extendig over more than two
years. Therefore, the Offce should issue a Notice of Allowan.
I. Business Wire and Bilboard Describe tbe Applicantß' Own Work and Are Not
Citable as Prior Ar
The Business Wire and Bilboard refernces describe the Applicants' own work and
therefore Business Wir and Bilboar are not citale as pnor ar and should bé removed as
references.
The claim of
ths application are entitled to an effective filig date of Apn128, 2000,
which is the filing date of the parent applicaton. The dates ofBusìe~s Wire and Bilboard are
September 28, 1999 and Ocober 16, 1999, respectively. Thus, neither Business Wir nor
Bilboard can qualify as a statutory bar under 35 U.S.C. § 1 02(b).
Furter, an applicants disclosure of
his or her own work within the year before the
application fig date canot be used agaist the aplicant wider 35 U.S.C. 102(a). In re Katz,
687 F..2d450, 215 USPQ 14 (CCPA 1982); MPEP 2132.01. A rejection bas
on anapplicants
own work is overcome by a declaration of
the applicat estalishg that a referce is
describing the applicant's own work, even if the applicant is not explicitly identified as a
coauthor of
the referce. In re Katz, supra. For example, in Kart, the aplicant stte in a
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declarion that the coauthors of the pUblication ''were students workg under the diection and
superion of the ínventor ..." The cowt held that ths declaration, in combintion with the fac
that the publicaton was a research paper, wa¡ enough to esablis Ka a¡ the sole inventor and
that the work descn'bed in the publication was his own.'In reseah papers, stts involved
only with assay and testig ar normally listed as coauthors but are nÇ)t considere co-inventors.
Simlarly, Business Wir and Bilboard fail to qualîfY as prior ar references under the
Katz rue. As the naed inventors of
ths application st in a formal declaration submitted
herewith the external press anouncements ofNetflx, the assignee hereof and the subjec of
Business Wire and Bilboard, have used the term "Marquee program" to descrbe a computerimplemented commercial service that includes peronng the methods that ar the subject
matter ofihs application. Declaration Under 37 C.F.R. 1.32, atched hereto, at 15. Busess
Wire identifies the serce anounced in Business Wire as the "Marquee program" of
Netfix. ¡d.
Bilboard describes the subject matt of
Bilboard as the Maruee Program. ¡d. Business Wire
and Billboar both descrbe the star of a commercial serce that included and embodied the
subject matter of
this application. Business Wire and Bilboard both describe a servce that
included the invention oftbs application. ld.
Busines Wire is a reublication of a press release origiy authored by employees of
Netfix and prepared at the diecon of one of
the naed inventors, Mr. Hasngs. Id. at ~6.
The Netflx pres release of
which Busines Wir is a republication is submitted as Eidbit B to
the declartion. Mr. Hasgs reviewed, revised and approved a drft of the press relea before
it was sent to meda outlets, and the text of
the press releae is identical to al the substative text
of
Business Wire, ld. Mr. Hass is quoted extensively in Business Wire. ¡d. Thus, withn
itself Busines Wire states that it is descbing the work oithe Applicants. Furer, because Mr.
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Hastigs is quoted extensively with Business Wire and parciated materilly in prearng
Business Wir, Mr. Hastings is equivalent to a coautor of
Business Wire. For al these reasons,
Business Wir does not qualify as prior ar and should be reoved as a referce.
Netfix also sent a copy of the press releae to Bilboar Magaze of
New York, or to
BPI Communicatons Inc. ¡d. at '7. The text at pages 1-2 of
Billboard. prefaced "DVD OF TH
Mr. Hastigs
MONT CLUB::' is clearly based upon the press releae and upon an intervew of
held in the fal of 1999. ¡d. Bilboard describ'es the Marquee progn ofNetflx based in par on
quoted statements ¿fMr. Hastigs. Thus, with its~ Bilboard states that it is descrbing the
work of
the Applicants. Furer, because Mr. Hastings is quoted extensively with Bilboard,
BiIboard. For all these reasns, Billard does not
Mr. Hastings as equivalent to a coauthor of
qualify as prior ar and should be reoved as a reference.
n. Th~ Clais Conta Features Not Found in Kenton Library and JP-923lZ79-A
Kenton Libra descbes a librar-based loan progr for books on recorded cassettes. ,
In the reply of Janua 3 1,2005, Applican addssed simla librar ar, notig tht suh libr
refereces voluntarly s.ubmitted by Applicants do not teah or suggst establish a movie
rental queue based upon inormtion received over the Inteet. The rely observed tht the
librar ar does not teach or suggest renta qu~ues, but raher, only descnbes a written list of
books that an individual desires to borrow; the Iistcaot be updated. it is not electrnic, it is not
estalished over the Interet, it is not orded so as to establish a prionty of desired retals, and
neither the list nor the order oithe list are upateable. The same is tre for Kenton Librar.
Neither Kenton Liòrar, nor any of the prevously disclosed or newly cited libra
references tehes delivery according to the order of a list, or updg a list over the Internet.
The Kenton Librar would lend to a reaer whatever books on a reder's list were available at
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the tie, but there is no teahig about adherig to the order of a lis as claied or updag the
list, as claied In Kenton Librar, the list submitted by a pat al is not estlished in
electronic digital memory over the Inteet. Therefore, the feat of
"establishi, in elecnic
digital form frm electronic digita inormation reeived over the Interet, a movie rental que
associated with a customer comprising an ordered list indicatig two or more movies for renting
to the customer," as recited in independent Clai 55, 65, 75 and 85, is not taught or suggested
by Kenton Libra, alone or in combination with JP-9231279-A.
Librares also do not "rent" movies or other items under the common, ordar meang
of
"rent," wmch involves some fOII of payment based on the rented arcle.
Kenton Librar also does not teach any way for a patrn to self-mange a book list. Ony
a libraan could change tle list of a patrn afer submisson of the list. In contrast, the approach
of
the independent clais, and dependent claims 56-58, supports electrnic self-mangeent of
a movie rental queue by a customer. The approach of
the independent clams perts a computer
electrnically, an automatcaly, to change the order of a cusomers list in response to elecnic
"information recived frm the customer requesti such a chage.
Clai 55, 65, 75 and 85 each reite one or more featues that ar not taght or suggested
by Kenton Libra. Therefore, Clai
55, 65, 7S and 8S are patentable over Kenton Librar.
the clai. In JP-9231279-A, a user
JP-9231279-A also fais to teah the features of
registers with a renta store and receives a catog listi videotapes and videotape identificaton
numbers, To ret videotapes, the user telephones an interative voice resonse system using a
touch-tone telephone numbe. The us enter persona identification inmiation. and then
selects renta videotaps by enterg videotape identification number with touch-tone digits.
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Taken alone, JP-9231279-A lacks many feates of
the clais. For example, JP-
9231279-A ha no provision for providig electrnic digita inrmon that caus one or more
atbutes of
movies to be displayed as claied JP-9231279-A does not allow for estblishig,
in electronic digit3 form from electronic digita inrmtion reeived over the Int~et, a movie
rental queue asociated with a customer comprisin an ordered list indicatig two or more
movies. for reting to the customer- JP-923 i 279-A ha no queue of any kind; rather.
using a
telephone, patons order up to four tapes videotapes, one by one at the time ofiental, without
establishing a queue. JP-923 i 279-A has no teaclùg of the claim featue of
"in response to one
or more delivery criteria being satified, selectig another movie based upon the order of the list
,. and causing the selected movie to be delivered to the customer." JP-923 i 279-A has no
mechansm for receivi other eleconic digita infomiation reeived frm the custòmer over the
Internet. and electrnically updatiiig a movie rental queue.
A combination of
Kenton Ubrar and JP-9231279-A also fails to provide the subject
matter of
the claims. Combing Kenton Librar and JP-9231279-A would merly provide a
libra or rental system in which a patn could select items for deliver, if availale, by touchtone telephone, raer than alowig library sta to select items. Such a combination would not
provide for estalishig an ordered list or queue based on inormaton received over the Internet,
\
as claied. The combination would not provide for selectig and deliverig susequent item
according to the order of the list. The combintion would not provide for updatig the list or
queue based on information received over the mtemet. The combintion would not provide for
providig electronic digita information tht caes one or more atbutes of movies to be
dislayed.
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For at least the preg reasns the cla defie subject matt that is not taght,
disclosed or suggested by Kenton Libra or JP-9231279~A, taen alone or in combinaton.
HI. CONCLUSION
. Applicants respctfully submit that all of
the pendi claim are in condition for
allowance, and Íssce of a formal notice of allowance is respecly requeed. No fees are
believed to be due at ths tie. If the Applicant is in err, the Commssioner is hereby
authoried to chare any applicable fees to our Depsit Accun No. 50- i 302.
The Examner is invited to contact the undergned by telephone if the Exaer believes
tht such contact would assist in advancig prosecution oftls aplication. Pleae diect any
telephone calls to the undersigned at (408) 414-1080, extenon 202.
Respectfly submitted
ffCKAN PALERMO TRUONG & BECKER LLP
Dated: October 17. 2005
Chrstopher J. Palero
. Reg. No. 42,056
~~
2055 Gateway Place, Suite 550 San Jose, Californa 95110-1089 Telephone No.: (408) 414-1080 ext. 202 Facsimile No.: (408) 414-1076
CERTICATE OF TRSMISION
I hereby certfy that this corrspondence is being facimile trsmitted
tQ the U.S. Patet and Trademak Offce Fax No. (703) 27 -6789.
On. Octobe 17. 2005 By .. X~/d ~J. -v P . .~er
.7-
Paler
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