Netflix, Inc. v. Blockbuster, Inc.

Filing 179

NOTICE by Blockbuster, Inc. Final Invalidity Contentions for U.S. Patent No. 7,024,381 (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G# 8 Exhibit H# 9 Exhibit I# 10 Exhibit J# 11 Exhibit K)(Chen, Tony) (Filed on 4/11/2007)

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Netflix, Inc. v. Blockbuster, Inc. Doc. 179 Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 1 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP ALSCHULER GROSSMAN LLP Marshall B. Grossman (No. 35958) William J. O'Brien (No. 99526) Tony D. Chen (No. 176635) Dominique N. Thomas (No. 231464) The Water Garden 1620 26th Street Fourth Floor, North Tower Santa Monica, CA 90404-4060 Telephone: 310-907-1000 Facsimile: 310-907-2000 Email: mgrossman@agsk.com wobrien@agsk.com tchen@agsk.com dthomas@agsk.com Attorneys for Defendant and Counterclaimant, Blockbuster Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA NETFLIX, INC., a Delaware corporation, Plaintiff, vs. BLOCKBUSTER INC., a Delaware corporation, DOES 1-50, Defendants. BLOCKBUSTER INC., a Delaware corporation, Counterclaimant, vs. NETFLIX, INC., a Delaware corporation, Counterclaim Defendant. Pursuant to Patent Local Rule 3-6, Defendant and Counterclaimant Blockbuster Inc. hereby states its Final Invalidity Contentions as to United States Patent No. 7,024,381 issued on April 4, 2006 ("the '381 Patent"). 925468_2.DOC BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA CASE NO. C 06 2361 WHA BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 Complaint Filed: April 4, 2006 Dockets.Justia.com Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 2 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP This statement of Final Invalidity Contentions is based on the information currently available to Blockbuster and is subject to revision. Discovery remains pending, and other investigations are still in progress. This statement is provided without prejudice to all rights to supplement or modify Blockbuster's contentions as additional information is obtained, further research and analysis are completed, and patent claims are construed. This statement is also made without waiver or limitation of any attorney-client privilege, work product protection or any other privileges or evidentiary objections whatsoever. I. INVALIDITY CONTENTIONS BASED ON 35 U.S.C. 102 AND 103 A. IDENTIFICATION OF PRIOR ART 1 Prior Art Patents and Published Patent Applications Prior art patents and published patent applications identified for purposes of these Final Invalidity Contentions are listed in Exhibit A attached hereto. 2 Prior Art Publications Prior art publications (other than published applications) identified for purposes of these Final Invalidity Contentions are listed in Exhibit B attached hereto. 3 Prior Art Public Use Prior art public use, public knowledge, sales, and offers for sale identified for purposes of these Final Invalidity Contentions are listed in Exhibit C attached hereto. B. CLASSIFICATIONS, COMBINATIONS AND MOTIVATIONS Classifications, combinations and motivations for combinations of prior art are listed in Exhibits D (Part 1), E (Part 2) and F (Part 3) attached hereto. 925468_2.DOC BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA 2 Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 3 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP C. CLAIM CHARTS 1 Claims 1 through 13 A Claim Chart for Claims 1 through 13 of the '381 Patent is attached hereto as Exhibit G. 2 Claims 14 through 23 A Claim Chart for Claims 14 through 23 of the '381 Patent is attached hereto as Exhibit H. 3 hereto as Exhibit I. 4 hereto as Exhibit J. 5 Claims 44 through 51 A Claim Chart for Claims 44 through 51 of the '381 Patent is attached hereto as Exhibit K. II. INVALIDITY CONTENTIONS BASED ON 35 U.S.C. 112 Claims 1-51 of the '381 Patent are invalid for failing to comply with the requirements of 35 U.S.C. 112. A. 35 U.S.C. 112, PARAGRAPH 2 The '381 Patent and all claims thereof are invalid for indefiniteness under 35 U.S.C. 112 2. Blockbuster's grounds for this contention include, without limitation, that the following claim terms are indefinite: (1) (2) 925468_2.DOC Claims 24 through 33 A Claim Chart for Claims 24 through 33 of the '381 Patent is attached Claims 34 through 43 A Claim Chart for Claims 34 through 43 of the '381 Patent is attached "computer-implemented method;" "renting;" 3 BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 4 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP (3) (4) (5) (6) (7) (8) (9) "providing electronic digital information;" "attributes;" "movie rental queue;" "associated with a customer;" "ordered list;" "causing to be delivered to the customer up to a specified "based upon the order of the list;" number of movies;" (10) "selecting another movie based upon the order of the list;" (11) "electronically updating the movie rental queue;" (12) "determining the order of the two or more movies based upon one or more preferences of the customer;" (13) "a number of movies delivered to the customer and not yet returned does not exceed the specified number;" (14) "establishing over the Internet a rental agreement with a customer that provides for charging the customer a periodic fee;" (15) "a computer system;" (16) "a computer that is coupled to a digital telecommunications network by a digital telecommunications link;" (17) "an electronic digital memory in the computer;" (18) "one or more sequences of computer program instructions stored in the electronic digital memory which, when executed, cause the computer to performer the steps of;" (19) "computer-implemented steps;" and (20) "movie selection criteria. In addition, claims 44 through 51 of the '381 Patent are invalid for indefiniteness under 112 2 because they recite both an apparatus and a method of using that apparatus. Such claims are invalid under 35 U.S.C. 112 2. See 925468_2.DOC BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA 4 Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 5 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384-85 (Fed. Cir. 2005); see also Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope). "The Board of Patent Appeals and Interferences (`Board') of the PTO . . . has made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte Lyell, 17 USPQ 2d 1548 (1990). . . . This rule is well recognized and has been incorporated into the PTO's Manual of Patent Examination Procedure. 2173.05(p)(II) (1999) (`A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.'); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting 60A (2001) (`Never mix claim types to different classes of invention in a single claim.'). " IPXL, 430 F.d at 1384. B. 35 U.S.C. 112, PARAGRAPH 1 Blockbuster contends that the '381 Patent and all claims thereof are invalid for failure to comply with the written description requirement under 35 U.S.C. 112 1. Blockbuster's grounds for this contention include, without limitation, that the specification of the `381 Patent does not describe the limitation of "providing electronic digital information that causes one or more attributes of movies to be displayed," as recited in all claims of the `381 Patent. As a result, all of the claims of the `381 Patent are invalid for lack of a written description under 35 U.S.C. 112, 1. 925468_2.DOC BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA 5 Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 6 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP The Court's Patent Local Rules do not require any disclosure in Final Invalidity Contentions concerning best-mode defenses. Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., No. C 03-1431 SBA, 2006 WL 1329997 (N.D. Cal. May 15, 2006); see Pat. L.R. 3-3(d). Blockbuster provides the following information as a courtesy, without prejudice to its presentation of any additional or different defenses at any time. Blockbuster contends that the '381 Patent and all claims thereof are invalid for failure to disclose best mode as required by 35 U.S.C. 112 1. Blockbuster's grounds for this contention include, without limitation, the following: 1. Claims of the '381 Patent recite selecting movies for delivery to a customer. The '381 Patent does not disclose any mode of selecting movies that prioritizes between requests of different customers. For example, and without limitation: a. The '381 Patent does not disclose any mode of selecting movies for customers that takes into account how often a customer returns movies and receives new ones; b. The '381 Patent does not disclose any step, method, device, or feature for categorizing customers or varying the speed or priority of, or location used for, fulfilling a customer's rental request because of the number or frequency of the customer's rentals. 2. Claims of the '381 Patent recite delivery of movies to customers a. The '381 Patent does not disclose any mode of delivery of and delivery by mail. movie to customers by mail that includes any particular type, design, or features for the envelope or package used for such delivery. Indeed, the '381 Patent does not refer to an envelope or packaging at all. BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA 925468_2.DOC 6 Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 7 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP b. c. The '381 Patent does not disclose any particular type, The '381 Patent does not disclose any step, method, design, or feature for return of monies by a customer. device or feature involving or including delivery of a single disk and not multiple disks in each envelope or package delivered by mail. d. The '381 Patent does not disclose any step, method, device or feature involving or including use of letter-shaped or rectangular envelopes or packages. III. INVALIDITY CONTENTIONS BASED ON 35 U.S.C. 101 The Court's Patent Local Rules do not require any disclosure in Final Invalidity Contentions concerning 101 defenses. See Pat. L.R. 3-3(d). Blockbuster presents the following information as a courtesy, without prejudice to its presentation of any additional or different defense at any time in the future. Claims 1-51 of the '381 Patent are invalid under 35 U.S.C. 101. A. UNPATENTABLE SUBJECT MATTER Blockbuster contends that the '381 Patent and each and every individual claim thereof are invalid under 35 U.S.C. 101 because the subject matter of each such claim is not patentable under that section or under Article I, Section 8 of the United States Constitution. Blockbuster's grounds for these contentions include, without limitation: 1. 2. 38 U.S.C. 101; 3. Each such patent and claim improperly attempts to provide BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA Each such claim fails to set forth a patentable invention or Each such claim fails to set forth a patentable invention under "discovery" by an "inventor" within the meaning of Article I, Section 8; patent protection for a business method; 925468_2.DOC 7 Case 3:06-cv-02361-WHA Document 179 Filed 04/11/2007 Page 8 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ALSCHULER GROSSMAN LLP 4. 5. Each such patent and claim improperly attempts to provide Each such patent and claim otherwise fails to meet patent protection for an algorithm; and Constitutional, statutory, or case law requirements for patentability. B. DOUBLE PATENTING Blockbuster further contends that the '381 patent and each claim to the '381 patent are invalid under 35 U.S.C. 101 for double patenting. Blockbuster's grounds for this contention include, without limitation: 1. 2. The '381 Patent and each of its claims set forth the same The '381 Patent and each of its claims are nothing more than invention claimed in U.S. Patent No. 6,584,450 (the "'450 Patent"); and obvious modifications of claims of the '450 Patent. Based on the reasons stated above, Blockbuster contends that the `381 Patent and each and every individual claim thereof are invalid. DATED: April 11, 2007 ALSCHULER GROSSMAN LLP By /s/ Tony D. Chen Attorneys for Defendant and Counterclaimant, Blockbuster Inc. 925468_2.DOC 8 BLOCKBUSTER'S FINAL INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,024,381 C 06 2361 WHA

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