Google Inc. v. Rockstar Consortium US LP et al

Filing 134

MOTION for Issuance of Letters Rogatory to the Superior Court of Justice of Ontario, Canada for Nortel Networks Corporation, Jean-Pierre Fortin, Angela de Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden filed by Google Inc.. (Attachments: # 1 Exhibit A to Google's Notice of Unopposed Motion and Motion for Issuance of Letter Rogatory, # 2 Declaration of Kristin J. Madigan In Support of Google's Unopposed Motion for Issuance of Letter Rogatory, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 Exhibit 21, # 24 Proposed Order)(Curran, Patrick) (Filed on 9/29/2014) Modified on 9/30/2014 (cpS, COURT STAFF).

EXHIBIT 12

EXHIBIT A
Prior art to U.S. Patent No. 5,838,551
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
’551 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 551-01 to 551-25 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 551-01 to 551-25 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

1

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’551 patent, including prior art
cited on the face of the ’551 patent and prior art cited by the Patent Office during prosecution of the ’551 patent. Google will also rely
upon prior art referenced in family members of the ’551 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’551 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)1:

Country
United States
United States
United States
1

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
Patent No. 4,551,746
November 5, 1985
Patent No. 4,922,324
May 1, 1990
Patent No. 5,153,379

October 6, 1992

Inventor(s)
Barry K. Gilbert, Daniel J. Schwab
Toshio Sudo
Andrzej T. Guzuk, Todd W. Roshitsh,
Scoot M. Engstrom, Lonnie L. Bernardoni

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

2

Country

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date

United States

Patent No. 5,313,371

May 17, 1994

United States

Patent No. 5,355,016

October 11, 1994

United States

Patent No. 5,371,404

December 6, 1994

United States

Patent No. 5,394,011

February 28, 1994

United States

Patent No. 5,436,203

July 25, 1995

United States

Patent No. 5,459,368

October 17, 1995

United States

Patent No. 5,639,989

United States

Patent No. 5,717,245

United States

Patent No. 5,796,170

United States

Patent No. 5,866,942

United States

Patent No. 5,986,340

United States

Patent No. 6,262,477

PCT

Pub. No. WO 95/27341

June 17, 1997 (issued)
April 19, 1994 (filed)
February 10, 1998 (issued)
March 24, 1995 (filed)
August 18, 1998 (issued)
February 15, 1996 (filed)
February 2, 1999 (issued)
April 26, 1996 (filed)
November 16, 1999 (issued)
May 2, 1996 (filed)
July 17, 2001 (issued)
March 19, 1993 (filed)
October 12, 1995

3

Inventor(s)
Thomas A. Knecht, Brian M. Mancini,
Jean-Robert Achille, David J. Sieben
Thomas J. Swirbel, Lonnie L. Barnardoni,
Melanie Williams, James L. Davis
Frank J. Juskey, Anthony B. Suppelsa
Hiryasu Yamamoto, Takayuki Konuma,
Akira Shika, Hiroyoshi Suzuki, Masanori
Katuono, Kaori Sato
Paul T. Lin
Keiji Onishi, Sunichi Seki, Yutaka Taguchi,
Kazuo Eda
Leo M. Higgins, III
David J. Pedder
Gabriel Marcantonio
Katsunobu Suzuki, Katsuhiko Suzuki,
Akira haga, Isamu Sorimachi, Hiroyuki
Uchida
Shahram Mostafazadeh, Joseph O. Smith
Deepak Mahulikar, Paul R. Hoffman,
Jeffrey S. Braden
Robert J. Lamp, Robert Wannemacher

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:
Title
A Handbook Series on Electromagnetic
Interference and Compatibility Volume 3
Electromagnetic Shielding

Author(s)
Donald R.J White,
Michel
Mardiguian

ESD Packaging Requirement for an OptoElectronic Receiver Module
Grounding and Shielding Techniques in
Instrumentation, 2nd Ed.
(3)

Publication

Date

Interference Control Technologies,
Inc

1988

Eric M Foster,
Richard J. Wolff

IEEE Trans. On Components,
Hybrids, and Manfacturing
Technology. Vol. 13, No. 4

December
1990

Ralph Morrison

John Wiley & Sons, Inc.

1977

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

Items Offered
for Sale or
Publicly
Known or
Used
Astro Saber

Person or Entity Involved
Date of Offer or Use*

No later than April 8, 1994

Digital
Personal
No later than August 6, 1991
Communicator

Motorola, Inc., and employees thereof, and individuals identified herein as
having knowledge of ASTRO
Motorola, Inc., and employees thereof, and individuals identified herein as
having knowledge of DPC

4

Items Offered
for Sale or
Publicly
Known or
Used
E-TBT-HB0800/0400A

Person or Entity Involved
Date of Offer or Use*

No later than January 9, 1992

MicroTAC

No later than August 6, 1991

MVX-525

No later than November 1993

NEC P110

No later than December 31, 1993

Transition Engineering, and employees thereof, and individuals identified
herein as having knowledge of E-TBT-HB-0800 and E-TBT-HB-0400A.
Motorola, Inc., and employees thereof, and individuals identified herein as
having knowledge of MicroTAC
Voxx International, Audiovox Corp., Toshiba Corp., and employees thereof,
and individuals identified herein as having knowledge of MVX-525
NEC Corporation of America, NEC Corporation and employees thereof, and
individuals identified herein as having knowledge of NEC P110
VTECH, and employees thereof, and individuals identified herein as having
knowledge of 900 DX
Transition Engineering, and employees thereof, and individuals identified
herein as having knowledge of 10 BaseFL Transceiver E-FRL-MC01

VTECH 900
No later than January 20, 1992
DX
10 BaseFL
Transceiver E- No later than January 1, 1994
FRL-MC01
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery in this
case.

5

EXHIBIT B
Prior art to U.S. Patent No. 6,037,937
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
‘937 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 937-1 to 937-24 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 937-1 to 937-24 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

6

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’937 patent, including prior art
cited on the face of the ’937 patent and prior art cited by the Patent Office during prosecution of the ’937 patent. Google will also rely
upon prior art referenced in family members of the ’937 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’937 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)2:

Country
United States

2

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
Patent No. 5,252,951

October 12, 1993

Inventor(s)
Alan R. Tannenbaum, John M. Zetts, Yu L.
An, Gordon W. Arbeitman, Evon C.
Greanias, Guy F. Verrier

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

7

Country

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date

United States

Patent No. 5,260,697

November 9, 1993

United States

Patent No. 5,491,495

February 13, 1996

United States
United States

Patent No. 5,500,935
Patent No. 5,581,243

United States

Patent No. 5,651,107

March 19, 1996
December 3, 1996
July 22, 1997 (issued)
August 16, 1994 (filed)

United States

Patent No. 5,638,501

United States

Patent No. 5,655,094

United States

Patent No. 5,699,244

United States

Patent No. 5,745,116

United States

Patent No. 5,760,773

United States

Patent No. 6,025,841

United States

Patent No. 6,069,626

United States

Patent No. 6,160,551

June 10, 1997 (issued)
May 10, 1993 (filed)
August 5, 1997 (issued)
September 29, 1995 (filed)
December 16, 1997 (issued)
June 16, 1995 (filed)
April 28, 1998 (issued)
September 9, 1996 (filed)
June 2, 1998 (issued)
January 6, 1995 (filed)
February 15, 2000 (issued)
July 15, 1997 (filed)
May 30, 2000 (issued)
February 27, 1997 (filed)
December 12, 2000 (issued)
March 20, 1995 (filed)
8

Inventor(s)
David M. Barrett, J. Michael McNally,
Patricia A. Martin, Jonathan T. Huntington,
II, Robert M. Doutbart
Jean R. Ward, David M. Barrett, Patricia A.
Martin, Christopher D. Mokoski
Thomas P. Moran, Gordon P. Kurtenbach
Daniel Ouellette, Sylvain D’Auteuil
Edward H. Frank, Patrick J. Naughton,
James Arthur Gosling, John C. Liu
Michael L. Gough, Daniel S. Venolia,
Thomas, S. Gilley, Greg M. Robbins;
Daniel J. Hansen, Jr., Abhay Oswal,
Tommy H. Tam
Troy Lee Cline, Harlan Isensee, Ricky Lee
Poston, Harald Werner
Louis George Clark, Jr., Donald Romaine
Gummow, Jr., Marc Vanacht
Suthirug Num Pisutha-Arnond
Eric Robert Berman, Edward Low Mills,
Michael Hinkley Van Kleeck, Vinayak A.
Bhalerao
Erich Soren Finkelstein, Samuel David
Hobson, Adrian Klein, Benjamin Waldman
Troy Lee Cline, Ricky Lee Poston
Patrick J. Naughton, Charles H. Clanton,
III, James A. Gosling, Chris Warth, Joseph

Country

United States

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date

Patent No. 6,493,006

December 10, 2002 (issued)
May 10, 1996 (filed)

9

Inventor(s)
M. Palrang, Edward H. Frank, David A.
LaVallee, R. Michael Sheridan
Arno Gourdol, Daniel Cooley

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:
Title
A Marking Based Interface for Collaborative
Writing

Author(s)
Gary Hardock, Gordon
Kurtenbach, William Buxton

Avoiding Trouble with Mouse Capture

Chris Branch

Dr. Dobbs.com

December
1, 1997

Newton 2.0 User Interface Guidelines

Apple Computer Inc.

Apple Press

1996

Newton Programmer’s Guide 2.0

Apple Computer Inc.

Apple Press

1996

Using Small Screen Space More Efficiently

Tomonari Kamba, Shawn A.
Elson, Terry Harpold, Tim
Stamper, Piyawadee “Noi”
Sukaviriya

ACM CHI 1996

April 18,
1996

10

Publication
ACM UIST 1993

Date
November
5, 1993

(3)

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

Items Offered for Sale or Publicly Known or
Used

Date of Offer or Use*
No later than 1994

EO Personal Communicator / Samsung Penmaster

No later than November 19, 1996
Conquest of the New World
No later than April 20, 1992
InkWare NoteTaker
No later than 1993
Newton MessagePad
NeXTStation N1100

No later than 1990

11

Person or Entity Involved
GO Corpration, EO, Inc., AT&T Corp. and
employees thereof, and individuals
identified herein as having knowledge of
EO Personal Communicator or the
PenPoint operating system; Samsung and
employees thereof, and individuals
identified herein as having knowledge of
Samsung Penmaster or the PenPoint
operating system
Interplay Entertainment, Quicksilver
Software and employees thereof, and
individuals identified herein as having
knowledge of Conquest of the New World
Ink Development Corp., and employees
thereof, and individuals identified herein as
having knowledge of NoteTaker
Apple Inc., and employees thereof, and
individuals identified herein as having
knowledge of Netwon
NeXT, Inc., and employees thereof, and
individuals identified herein as having

Items Offered for Sale or Publicly Known or
Used

Date of Offer or Use*

Person or Entity Involved

knowledge of NeXT devices
No later than 1992
Sun Microsystems, Inc., and employees
Star 7
thereof, and individuals identified herein as
having knowledge of Star 7
No later than 1993
Xerox PARC, and employees thereof, and
Toolglass and Magic Lenses
individuals identified herein as having
knowledge of Toolglass and Magic Lenses
No later than 1995
Microsoft Corp., and employees thereof,
and individuals identified herein as having
Windows 95 / Microsoft Office
knowledge of Windows 95 and/or
Microsoft Office
No later than 1992
Microsoft Corp., and employees thereof,
and individuals and entities identified
Windows for Pen Computing
herein as having knowledge of Windows
for Pen Computing and devices running
same
No later than 1994
Microsoft Corp., and employees thereof,
and Eric Robert Berman, Edward Low
WinPad
Mills, Michael Hinkley Van Kleeck, and
Vinayak A. Bhalerao
No later than 1996
MIT, and employees / students thereof, and
X Window System
individuals identified herein as having
knowledge of X Window System
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery in this
case.

12

13

EXHIBIT C
Prior art to U.S. Patent No. 6,128,298
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
’298 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 298-1 to 298-13 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 298-1 to 298-13 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

14

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’298 patent, including prior art
cited on the face of the ’298 patent and prior art cited by the Patent Office during prosecution of the ’298 patent. Google will also rely
upon prior art referenced in family members of the ’298 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’298 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)3:

Country
United States
United States
3

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
December 6, 1994 (issued)
Patent No. 5,371,852
October 14, 1992 (filed)
February 25, 1997 (issued)
Patent No. 5,606,668
December 15, 1993 (filed)

Inventor(s)
Clement R. Attanasio, Stephen E. Smith
Gil Shwed

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

15

Country
United States
United States
United States
United States

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
June 3, 1997 (issued)
Patent No. 5,636,371
June 7, 1995 (filed)
March 31, 1998 (issued)
Patent No. 5,734,865
June 27, 1995 (filed)
December 16, 1997 (issued)
Patent No. 5,699,513
March 31, 1995 (filed)
August 11, 1998 (issued)
Patent No. 5,793,763
November 3, 1995 (filed)

16

Inventor(s)
Kin C. Yu
Kin C. Yu
Ronald G. Feigen, Paul A. Lambert
John C. Mayes, Brantley W. Coile

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:
Title
Address-Swapping Scheme for On-Demand
Assignemtn of Global Addresses in a TCP/IP
Network
A Transparent TCP/IP Gateway to Connect
Private networks to the Internet
A Virtual Multiprocessor Implemented By an
Encapsulated Cluster of Loosely Coupled
Computers

Author(s)

Publication

Date

Reuven Cohen

HP Laboratories Technical Report
HPL-95-34

January 1,
1995

Heon Y. Yeom,
Ilhwan Kim

INET95

January
30, 1995

C.R. Attanasio,
S.E. Smith

IBM Research

April
29,1992

ACM SIGCOMM

January
1993

Paul F. Tsuchiya,
Tony Eng
Douglas E.
Comer, David L.
Stevens
Il Hwan Kim,
Heon Young
Yeom

Internetworking with TCP/IP.
Prentice-Hall 1991

1991

Journal of Korean Information and
Communications Society ’95-12 Vol.
20, No. 12

April 7,
1995

RFC 792: Internet Control Message Protocol

J. Postel

RFC792

September
1981

RFC 1631: The IP Network Address Translator
(NAT)

K. Egevang, P.
Francis
Y. Rekhter, B.
Moskowitz, D.
Karrenberg, G. de
Groot
Raptor Systems
Incorporated
Milkyway

RFC1631

May 1994

RFC1597

March
1994

Extending the IP Internet Through Address Reuse
Internetworking with TCP/IP
IP Address Reuse Through Transparent PortAddress Translator

RFC 1597: Address Allocation for Private
Internets
Eagle Network Security Management System
User’s Guide
Milkyway Netwworks Blackhole Firewall

17

Raptor Systems Incorporated
Version 2.2
Milkyway Networks Corporation

1992
November

Title

Author(s)
Networks
Corporation

Network (IN)Security Through IP packet Filtering

Brent Chapman

IP Addresses for Low Bandwidth Networks

Chandana
Gamage,
Kanchana
Kanchanasut

Using screend to Implement IP/TCP Security
Policies
Keeping Your Site Comfortably Secure: An
Introduction to Internet Firewalls

(3)

Jeffrey Mogul
John P. Wack,
Lisa J. Carnahan

Publication
Version 3.01E2 for SPARCstations

Date
1997

Third USENIX UNIX Security
Symposium
Technical Report No. TR-CS-95-001
Division of Computer Science,
School of Advanced Technologies,
Asiain Institute of Tachnology
Network Systems Laboratory
NSL Technical Note TN-2

September
1992

NIST Special Publication 800-10

March
1995
July 1991
December
1994

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

Items Offered
for Sale or
Publicly
Known or
Used
JANUS

Person or Entity Involved
Date of Offer or Use*

No later than November 1994

Border Network Technologies, Inc., and employees thereof, and individuals
identified herein as having knowledge of JANUS, including Steven Lamb,

18

Items Offered
for Sale or
Publicly
Known or
Used

Person or Entity Involved
Date of Offer or Use*

Rayan Zachariassen, Glenn Mackintosh, Rod Adkins, Phil Trubey, Peter
Cox, Richard Earle
Ken Eves, Pauline Middlelink,Alan Cox, Linus Torvalds, Rafal Maszkowski,
Toby G. Garner, Andi Kleen, David Edwards, Valient Gough, Oliver
IP Masquerade No later than January 2, 1995
Friedrichs, Mark G. Lentczner, Stef Van Dessel, Emmanuel Charpentier, Nik
Weidenbacher, Thomas Quinot, Bjorn Ekwall, Justin M. Reuther, David W.
Summers
Network Safety Corporation, and employees thereof, and individuals
NetNAT
No later than November 1994
identified herein as having knowledge of NetNAT, including Les Biffle,
Tom Castleberry, Ray Kopsa, Cliff Biffle, Adam Biffle, The Gauge Group
Network Translation, Inc., and employees thereof, and individuals identified
PIX
No later than November 1994
herein as having knowledge of PIX, including John Mayes, Brantley Coile,
Richard Clark
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery in this
case.

19

AMENDED EXHIBIT D
Prior art to U.S. Patent No. 6,333,973
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
’973 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 973-1 to 973-16 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 973-1 to 973-16 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

20

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’973 patent, including prior art
cited on the face of the ’973 patent and prior art cited by the Patent Office during prosecution of the ’973 patent. Google will also rely
upon prior art referenced in family members of the ’973 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’973 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)4:
Patent/Publication No.
4,479,213
4,837,798
5,533,097
5,333,266

4

Country of Origin
United States
United States
United States
United States

Date Published/Issued
October 23, 1984
June 6, 1989
July 2, 1996
July 26, 1994

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

21

Patent/Publication No.
5,448,759
5,533,097
5,550,861
5,568,540
5,579,472
5,682,386
5,742,905
6,233,318
6,335,927
5,611,055

Country of Origin
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States

Date Published/Issued
September 5, 1995
July 2, 1996
August 27, 1997
October 22, 1996
November 26, 1996
October 28, 1997
April 21, 1998
May 15, 2001
January 1, 2002
March 11, 1997

22

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:

Title
Network Architecture and Radio Link Performance of
MOBITEX® Systems

Date of Publication
1994

Author/Publisher
Reza Alavi and M. Khan

Voice Over ATM to the Desktop: The LAN as PBX

Jan/Feb 1997

Byron Brooks and Ernst
Reimann

Standards Policy for Information Infrastructure

1995

Brian Kahin and Janet Abbate

Internet Primer for Information Professionals

1993

Teleservices supported by a GSM Public Land Mobile
Network (PLMN) (GSM 02.03 version 3.4)
Digital cellular telecommunications system (Phase 2+);
General description of a GSM Public Land Mobile Network
(PLMN) (GSM 01.02)
Technical realization of the Short Message Service (SMS)
Point-to-Point
Digital cellular telecommunications system (Phase 2);
Technical realization of facsimile group 3 transparent
Digital cellular telecommunications system (Phase 2+);
General on supplementary services
Digital cellular telecommunications system; Technical
realization of facsimile group 3 non-transparent
Digital cellular telecommunications system (Phase 2+);
Teleservices supported by a GSM Public Land Mobile
Network (PLMN) (GSM 02.03 version 5.3.0)
GSM Full Rate Speech Transcoding

February 1992
October 1993

August 1995
September 1995
December 1995
November 1996
March 1996

February 1992
February 1992

Digital cellular telecommunications system; Full rate
23

Elizabeth Lane and Craig
Summerhill
GSM Technical Specification
02.03, Version 3.4, ETSI
GSM Technical Specification
01.02, Version 4.0.2, ETSI
GSM Technical Specification
03.40, Version 4.11, ETSI
GSM Technical Specification
03.45, Version 4.5, ETSI
GSM Technical Specification
02.04, Version 5.0, ETSI
GSM Technical Specification
03.46, Version 5.0, ETSI
GSM Technical Specification
02.03, Version 5.0.0, ETSI
GSM Technical Specification
06.10, Version 3.2.0, ETSI
GSM Technical Specification

Title
speech; Processing functions
Digital cellular telecommunications system; Full rate
speech; Processing functions
Digital cellular telecommunications system; Full rate
speech; Processing functions
Digital cellular telecommunications system (Phase 2+);
Technical realization of the Short Message Service (SMS)
Point-to-Point (PP)
Digital cellular telecommunications system (Phase 2+);
Network Architecture
GoAnyWhere: plenty of modem bang for buck
Basic GroupWise Concepts for Support Professionals

Date of Publication

NovaLink supports phone links
Messaging Using the Global System for Mobile
Communications
Newton’s Telecom Dictionary, Fifth Edition
The Information Highway: The Convergence of
Telecommunications, Broadcast, Distribution and
Microprocessing
LAN TIMES Encyclopedia of Networking
“Advanced Network Technology”, OTA-BP-TCT-101

July 8, 1996
Aug. 1995

GSM Technical Specification
03.02, Version 5.1.0, ETSI
Matt Kramer
Mike Lee, also at
http://support.novell.com/tech
center/articles/ana19960102.h
tml
Yvonne Lee
Alan Murch and Peter Stiffe

1992

Harry Newton

June 1996

Daniel J. Shaw

1994
June 1993

Tom Sheldon
Office of Technology
Assessment, US Government

October 31, 1995

Business Wire

December 1996
December 1996
December 1995

May 1996
July 8, 1996
January 1, 1996

NovaLink to Offer First Type 2 PC Card Combining
Wireless Data With a Standard Data Fax Modem; Complete
Mobile Data With a Standard Data Fax Modem; Complete
Mobile Data Communications Device is Also Cellular Ready
24

Author/Publisher
06.01, Version 3.0.0, ETSI
GSM Technical Specification
06.01, Version 5.0.0, ETSI
GSM Technical Specification
06.01, Version 5.0, ETSI
GSM Technical Specification
03.40, Version 5.0, ETSI

Title
Intuity Message Manager Release 4.1 Getting Started

Date of Publication
January, 1997

Author/Publisher
Lucent Technologies

Intuity Message Manager Release 2.0 User’s Guide

January, 1995

Lucent Technologies

The GSM System for Mobile Communications

1992

Pulse Code Modulation (PCM) of Voice Frequencies

1993

Michael Mouly and MarieBernadette Pautet
ITU

Nokia 9000 Communicator User Manual

1995

Nokia

Nokia 2190 Owner’s Manual

1996

Nokia

User Guide: Ericsson CF337/CH337

1996

OmniPoint Communications

25

(3)

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

Items Offered for Sale or
Publicly Known or Used

Date of Offer or Use*
No later than 1989

AT&T Unified Messaging System

No later than December 1997
AUDIX
No later than 1996

Boston Technology

26

Person or Entity Involved
AT&T, and employees thereof,
and individuals identified herein
as having knowledge of the
AT&T Unified Messaging
System, including Kenneth
Huber, Deborah Mills-Scofield
and Roberta S. Cohen
AT&T, and employees thereof,
and individuals identified herein
as having knowledge of AUDIX
Donald F. Boston Technology
and employees thereof, Comverse
Network Systems and employees
thereof, and individuals identified
herein as having knowledge of
Boston Technology, including
Donald F. Picard, Thomas Lyman
Root, Gerald William Wear,
Jeffrey John Schleuter

Items Offered for Sale or
Publicly Known or Used

Date of Offer or Use*
No later than June 10, 1996

CallXpress3

No later than November 15, 1995

Ericsson CF337/CH337

No later than December 1994
GroupWise / NetWare

No later than January 1997
Intuity Message Manager
No later than 1995
Nokia 9000 Communicator
No later than January 1997
Nokia 2190

27

Person or Entity Involved
Applied Voice Technology
(AVT), and employees thereof,
and individuals identified herein
as having knowledge of
CallXpress3, including Steve
Tindall
Ericsson and employees thereof,
Omnipoint and employees
thereof, Sprint Spectrum and
employees thereof, and
individuals identified herein as
having knowledge of the Ericsson
CF337 and CH337
Novell, Inc., and employees
thereof, and individuals identified
herein as having knowledge of
GroupWise / NetWare
AT&T, and employees thereof,
and individuals identified herein
as having knowledge of Intuity
Nokia, and employees thereof,
and individuals identified herein
as having knowledge of the
Nokia 9000 Communicator
Nokia, and employees thereof,
Sprint Spectrum and employees
thereof, and individuals identified

Items Offered for Sale or
Publicly Known or Used

Date of Offer or Use*

Person or Entity Involved

herein as having knowledge of
the Nokia 2190
No later than July 8, 1996
Novalink Technologies, Inc., and
employees thereof, and
individuals identified herein as
NovaMail
having knowledge of NovaMail,
including Baldev Krishan,
Kaylan Krishnan, and George A.
Keyworth
OfficeVision
No later than July 1994
IBM Corp.
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery
in this case.

28

EXHIBIT E
Prior art to U.S. Patent No. 6,463,131
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
’131 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 131-1 to 131-33 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 131-1 to 131-33 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

29

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’131 patent, including prior art
cited on the face of the ’131 patent and prior art cited by the Patent Office during prosecution of the ’131 patent. Google will also rely
upon prior art referenced in family members of the ’131 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’131 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)5:
Patent/Publication No.
4,352,091
4,803,487
4,837,798
4,918,438

5

Country of Origin
United States
United States
United States
United States

Date Published/Issued
September 28, 1982
February 7, 1989
June 6, 1989
April 17, 1990

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

30

Patent/Publication No.
5,012,219
5,172,092
5,278,539
5,327,486
5,363,426
5,422,733
5,459,482
5,533,102
5,579,472
5,604,491
5,608,786
5,627,528
5,635,897
5,642,413
5,663,703
5,675,507
5,765,178
5,767,778
5,890,073
5,896,096
5,946,386
5,987,100
6,061,570
6,044,278
6,084,951
6,092,102

Country of Origin
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States
United States

Date Published/Issued
April 30, 1991
December 15, 1992
January 11, 1994
July 5, 1994
November 4, 1994
June 6, 1995
October 17, 1995
July 2, 1996
November 26, 1996
February 18, 1997
March 4, 1997
May 6, 1997
June 3, 1997
June 24, 1997
September 2, 1997
October 7, 1997
June 9, 1998
June 16, 1998
March 30, 1999
April 20, 1999
August 31, 1999
April 23, 1997
May 9, 2000
March 28, 2000
April 23, 1997
July 18, 2000

31

Patent/Publication No.
6,160,489
6,169,911
6,263,190
6,271,764
6,333,973
6,335,927
6,633,630
0 471 023
0 586 906
0 906 790
97/48080

Country of Origin
United States
United States
United States
United States
United States
United States
United States
Europe
Europe
Europe
PCT

Date Published/Issued
December 12, 2000
January 2, 2001
July 17, 2001
August 7, 2001
December 25, 2001
January 1, 2002
October 14, 2003
May 4, 1989
March 16, 1994
April 7, 1999
December 18, 1997

32

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:

Title
The Audio-Graphical Interface to a Personal Integrated
Telecommunications System
Multimedia Nomadic Services on Today’s Hardware

Date of Publication
June 1984

Author/Publisher
Barry Arons

September 1994

Phoneshell: the Telephone as Computer Terminal

1993

Not Just Another Voice Mail System

September 1991

A Conversational Telephone Messaging System

August 1984

Phone Slave: A Graphical Telecommunications Interface

1985

Chris Schmandt, available at
http://media.mit.edu/speech/paper
s/1994/schmandt_IEEE94_multi
media_nomadic_services.pdf
Chris Schmandt, , available at
http://media.mit.edu/speech/paper
s/1993/schmandt_ACM93_phone
shell.pdf
Lisa Stifelman, available at
http://media.mit.edu/speech/paper
s/1991/stifelman_AVIOS91_not_
just_another_voice_mail_system.
pdf
Chris Schmandt and Barry Arons,
available at
http://media.mit.edu/speech/paper
s/1984/schmandt_CE84_conversa
tional_telephone_messaging_syst
em.pdf
C. Schmandt and Barry
Arons, available at
http://www.media.mit.edu/speech
/papers/1985/schmandt_SID85_p
hone_slave.pdf

33

Title
Nokia 9000 Communicator User Manual
Nokia 9000i Communicator User Manual
Nokia 2190 Owner’s Manual
User Guide: Ericsson CF337/CH337

Date of Publication
1995
November 1997
1996
1996

34

Author/Publisher
Nokia
Nokia
Nokia
OmniPoint Communications

(3)

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

Items Offered for Sale or
Publicly Known or Used

Date of Offer or Use*

Person or Entity Involved

No later than June 1995
AOL 3.0

AOL Inc.
No later than 1989

AT&T, and employees thereof, and individuals
identified herein as having knowledge of the
AT&T Unified Messaging System, including
Kenneth Huber, Deborah Mills-Scofield and
Roberta S. Cohen

AT&T Unified Messaging
System
No later than December 1997
AUDIX
No later than June 10, 1996
CallXpress 3
No later than December 1997

Connex

35

AT&T, and employees thereof, and individuals
identified herein as having knowledge of AUDIX
Applied Voice Technology, and employees
thereof, and individuals identified herein as
having knowledge of CallXpress3
Xantel, and employees thereof, and individuals
identified herein as having knowledge of Connex
including Paul C. Rogers, S. Thomas Emerson,
John M. Saltwick, John J. Daleiden, Gregory S.
Wohlenberg, Mark E. Fogle, Peter Buswell,
Terry J. Gustafson, Thomas C. Niccoli, Richard
L. Hamilton

Items Offered for Sale or
Publicly Known or Used

Date of Offer or Use*
No later than November 15, 1995

Ericsson CF337 and CH337
No later than December 1994
GroupWise / NetWare

Person or Entity Involved
Ericsson and employees thereof, Omnipoint and
employees thereof, and individuals identified
herein as having knowledge of the Ericsson
CF337 and CH337
Novell, Inc., and employees thereof, and
individuals identified herein as having
knowledge of GroupWise / NetWare

No later than January 1997

AT&T, and employees thereof, and individuals
identified herein as having knowledge of Intuity

No later than July 1996

Motorola Inc., Motorola Mobility Inc. and
Motorola Solutions, Inc.
Charles R. Bobo, II, Netoffice Solutions, LLC
Nokia, and employees thereof, and individuals
identified herein as having knowledge of the
Nokia 9000 Communicator
Nokia, and employees thereof, and individuals
identified herein as having knowledge of the
Nokia 9000i Communicator
Nokia, and employees thereof, and individuals
identified herein as having knowledge of the
Nokia 2190
Novalink Technologies, Inc., and employees
thereof, and individuals identified herein as
having knowledge of NovaMail, including
Baldev Krishan, Kaylan Krishnan, and George
A. Keyworth
MIT Media Lab, and employees thereof, and
individuals identified herein as having

Intuity Message Manager
Motorola Tango Pager
FaxWeb

No later than April 1997
No later than 1995

Nokia 9000 Communicator
No later than November 1997
Nokia 9000i Communicator
No later than January 1997
Nokia 2190
No later than July 8, 1996
NovaMail

Phone Slave

No later than May 11, 1984

36

Items Offered for Sale or
Publicly Known or Used

Date of Offer or Use*

Person or Entity Involved

knowledge of Phone Slave including Barry
Arons and Chris Schmandt
No later than September 26, 1991
MIT Media Lab, and employees thereof, and
individuals identified herein as having
Phoneshell
knowledge of Phone Slave including Barry
Arons and Chris Schmandt
No later than June 1995
CERN, and employees thereof, and individuals
identified herein as having knowledge of CERN,
Pine
and developers of Pine as identified in source
code and related documents
No later than April 1996
CERN, and employees thereof, and individuals
identified herein as having knowledge of CERN,
TkPostage
and developers of TkPostage as identified in
source code and related documents
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery
in this case.

37

EXHIBIT F
Prior art to U.S. Patent No. 6,765,591
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
’591 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 591-1 to 591-29 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 591-1 to 591-29 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

38

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’591 patent, including prior art
cited on the face of the ’591 patent and prior art cited by the Patent Office during prosecution of the ’591 patent. Google will also rely
upon prior art referenced in family members of the ’591 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’591 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)6:

Country
United States
United States

6

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
Patent No. 5,606,668
February 25, 1997
Patent No. 5,687,315

November 11, 1997

Inventor(s)
Gil Shwed
Satoru Tezuka, Satoru Matsumura, Kenichi
Kihara, Hiroshi Furukawa, Shigeru Miyake,
Yousuke Tsuyuki

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

39

Country
United States
United States
United States
United States

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
Patent No. 5,606,668
February 25, 1997
Patent No. 5,768,271
June 16, 1998
Patent No. 5,784,555
July 21, 1998
Patent No. 5,819,030

October 6, 1998

United States

Patent No. 5,819,042

October 6, 1998

United States

Patent No. 5,821,937

October 13, 1998

United States

Patent No. 5,831,610

November 3, 1998

United States

Patent No. 5.796,951

August 18, 1998

United States
United States

Patent No. 6,079,020

June 20, 2000

Patent No. 6,092,113

July 18, 2000

Patent No. 6,105,027

August 15, 2000

Patent No. 6,199,108

March 6, 2001

Patent No. 6,202,206

March 13, 2001

United States

Patent No. 6,272,537

August 7, 2001

United States
United States

Patent No. 6,295,556
Patent No. 6,344,862

September 25, 2001
February 5, 2002

United States

United States
United States

40

Inventor(s)
Gil Shwed
Howard A. Seid, Albert Lespagnol
Jeremy Stone
John Yun-Kuang Chen, Eric N. Lockard,
Darren A. Shakib, Daniel R. Weisman
Peter A. Hansen
Daniel L. Tonelli, Kevin M. Maloney,
Kevin W. Cronin, Martin H. Katz
Daniel L. Tonelli, Kevin M. Maloney,
Kevin W. Cronin, Martin H. Katz
John F. Hamner, Sandra Janich, Jeffrey L.
Despain, Katherine D. Niemann, Brian D.
Sevy, Dzung D. Tran, Frank K. Welch,
Quentin C. Liu
Osamu Maeshima, Yoshihiro Ito, Masami
Ishikura, Tohru Asami
David S. Schneider, Laurence R.
Lipstone, Daniel Jensen, Michael B. Ribet
Walter William Casey, Jeffrey Randell
Dean, Ingrid Milagros Rodriguez
Jeffrey Randell Dean, Jeffrey Langdon
Howard, Ingrid Milagros Rodriguez
Miodrag M. Kekic, Grace N. Lu, Eloise H.
Carlton
Stephen R. Falcon, Michael C. Miller
Evelyn L. Williams, Lawrence M. Besaw,

Country

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date

United States

Patent No. 6,484,261

November 19, 2002

United States

Patent No. 6,628,965

September 30, 2003

United States

Patent No. 6,636,898

October 21, 2003

United States
United States

Patent No. 6,650,347

November 18, 2003

Patent No. 6,765,591

July 20, 2004

41

Inventor(s)
Robert Raymond, Mark S. Anspach, Jayson
M. Webb
Scott L. Wiegel
Mark I. LaRosa, Patrick Gervasio, Andrew
A. Petrov
David S. Ludovici, Mark J. Melville,
Richard A. Mullock, Frank V. Paxhia
Deepak Nulu, Sanjeev Ukhalkar
Matthew W. Poisson, Melissa L.
Desroches, James M. Milillo

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:
Title
A Comprehensive Guide to Virtual Private
Networks, Volume I: IBM Firewall, Server and
Client Solutions

Author(s)

Publication

Date

Martin
Murhammer et al

International Business Machines Inc.

1998

An Architecture for Managing QoS-enabled VPNs
over the Internet

Manuel Gunter et
al

Assured Digital Integrates High-End VPN
Features

Dennis Williams

Institute of Computer Science and
Applied Mathematics, University of
Berne
Infoworld

Automating VPN Management

Scott Hilton

Communication News

Common User Access-A consistent and usable
human-computer interface for the SAA
environments

R.E. Berry

IBM Systems Journal, Vol 27, No 3

Hewlett-Packard
Company
John Green

Hewlett-Packard Company, Fort
Collins, CO
Windows IT Pro

Hewlett-Packard
Company

Hewlett-Packard Company, Fort
Collins, CO

Net Management Automation Takes Center Stage

Jim Duffy

Network World

Network Security Products To Be Unveiled

Karen Rodriquez

Info World

Networking: Stackable Hubs

PC Magazine

PC Magazine

Nortel Releases New Management Software

Wylie Wong

CNet News

HP OpenView Application Style Guide, Edition 1
HP OpenView Network Node Manager 5.02 for
Windows NT
HP OpenView Network Node Manager 6.0
Technical Evaluation Guide

42

1999
October,
1998
September
1998
1988

November,
1998
October
1998
February,
1999
September
1997
March
1995
January
1994
February
1999

Title
OneStep User Interface Guidelines

The Rinpoche System, A Web-based Integrated
HiNet Network Management System

Author(s)
Sun Soft
Kenneth F. Alden
and Edward P.
Wobber
Hey-Chyl Young
et al

The Windows 95 Developers Guide

Perry, ed.

The Windows Interface Guidelines for Software
Design

Microsoft
Corporation

Virtual Private Networks, First Edition

Charlie Scott et al

Telecommunication Laboratories,
Chunghwa Telecom Co. Ltd
Macmillon Computer Publishing,
Emeryville, CA
Microsoft Press, A Division of
Microsoft Corporation; Redmond,
WA
O’Reilly & Associates, Inc.

Virtual Reality

Denise Pappalardo

Network World

VPN Spells Big Savings for CompuCom

Tim Greene

Network World

The AltaVista Tunnel: Using the Internet to
Extend Corporate Networks

(3)

Publication
Sun Microsystems, Inc

Date
1996

Digital Technology Journal Vol. 9
No. 2

1997
1999
1996
1995
March
1998
September
1998
September
1999

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

43

Items Offered
for Sale or
Publicly
Known or
Used
AltaVista

Person or Entity Involved
Date of Offer or Use*

No later than March 1997

Cisco
ConfigMaker

No later than 1997

IBM AS/400

No later than July 1998

Windows 98

No later than November 1997

Shiva
NetManager
Shiva
LanRover
VPN Manager
HP Openview
NNM
Check Point

No later than 1996
No later than March 1998
No later than 1998
No later than June 1997

Conclave
Administrator
System

No later than November 1997

NetSuite

No later than November 1996

NetPrism

No later than November 1997

The former Digital Equipment Corporation and employees thereof, Compaq
Computer Corporation and employees thereof, and Hewlett-Packard Company
and employees thereof, and individuals identified herein as having knowledge
of Alta Vista
Cisco Systems, Inc., and employees thereof, and individuals identified herein as
having knowledge of ConfigMaker
IBM Corporation, and employees thereof, and individuals identified herein as
having knowledge of IBM AS/400
Microsoft Corporation, and employees thereof, and individuals identified herein
as having knowledge of Windows 98
Shiva Corporation, and employees thereof, and individuals identified herein as
having knowledge of NetManager
Shiva Corporation, and employees thereof, and individuals identified herein as
having knowledge of VPN Manager including Daniel Schwinn and Michael
Horowitz
Hewlett-Packard Company, and employees thereof, and individuals identified
herein as having knowledge of Openview NNM
Check Point Software Technologies, Ltd., and employees thereof, and
individuals identified herein as having knowledge of CheckPoint
Internet Dynamics, Inc. and employees thereof, David S. Schneider, Laurence
R. Lipstone, Daniel Jensen; and Michael B. Ribet
NetSuite Development, L.P., and employees thereof, and individuals identified
herein as having knowledge of NetSuite
Fujitsu Limited, and employees thereof, and individuals identified herein as

44

Items Offered
for Sale or
Publicly
Known or
Used

Person or Entity Involved
Date of Offer or Use*

having knowledge of NetPrism
New Oak Communications and employees thereof, Bay Networks Inc. and
New Oak
No later than December 1997
employees thereof, Nortel Networks Corporation and employees thereof, and
Jeff McCarthy
TunnelBuilder No later than May 7, 1997
Network TeleSystems, Inc., and employees thereof
VPNet Technologies Inc. and employees thereof, and Avaya Inc. and
VPNet
No later than January 1997
employees thereof
Lucent
The former Digital Equipment Corporation and employees thereof, Compaq
Managed
No later than April 2, 1999
Computer Corporation and employees thereof, and Hewlett-Packard Company
Firewall
and employees thereof.
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery in this
case.

45

EXHIBIT G
Prior art to U.S. Patent No. 6,937,572
As set forth below and based on the investigation to date, this exhibit provides the full identity of each item of prior art to the
’572 patent, including: (1) each patent by its patent number, country of origin, and date of issue; (2) each prior art publication by its
title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or
publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made the information known or to whom it
was made known. Prior art under 35 U.S.C. § 102(g) is identified in Exhibits 572-1 to 572-36 by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s).
Exhibits 572-1 to 572-36 are incorporated in the appropriate table below by reference.
The prior art references disclosed below are based on Rockstar’s apparent construction of the claim elements of the patents-insuit. Nothing stated herein shall be treated as an admission or suggestion that Google agrees with Rockstar regarding either the scope
of any of the asserted claims or the claim constructions advanced by it in its Infringement Contentions or anywhere else.
Google’s identification of the patents and publication as prior art below under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103
includes the publications themselves as well as the use of the products and systems described therein. Although Google’s
investigation continues, information available to date indicates that such products and systems were (1) known or used in the country

46

before the alleged invention of the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this country
more than one year before the filing date of the patent, and/or (3) were invented by another who did not abandon, suppress, or conceal,
before the alleged invention of the claimed subject matter of the asserted claim. Upon information and belief, these prior art products
and systems and the associated references anticipate and/or render obvious each of the asserted claims.
To the extent not already identified herein, Google will rely upon prior art referenced in the ’572 patent, including prior art
cited on the face of the ’572 patent and prior art cited by the Patent Office during prosecution of the ’572 patent. Google will also rely
upon prior art referenced in family members of the ’572 patent, including patent applications, child applications, and foreign
counterparts. This prior art is already known to Rockstar, as it is already identified in the ’572 patent, its file histories, and related
family members. Google incorporates that identification of prior art herein, to the extent those references are not already disclosed
explicitly.
(1)

Each prior art patent or patent application by its number, country of origin, and date of issue (for each patent) or date of

publication (for each patent publication)7:

Country
United States
United States

7

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
Patent No. 5,745,682
April 28, 1998
Patent No. 5,815,538

September 29, 1998

Inventor(s)
David L. Keenan
Conrad Grell, Jeremy Guralnick, Ilan J.
Rothmuller, Chris Bennett, Michael TheissAird

Google incorporates by reference all prior art references cited in the patents listed herein and their file histories.

47

Country

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date

United States

Patent No. 5,999,126

December 7, 1999

United States

Patent No. 6,009,469

December 28, 1999

United States

Patent No. 6,088,594

July 11, 2000

United States

Patent No. 6,137,869

October 24, 2000

United States

Patent No. 6,137,876

October 24, 2000

United States

Patent No. 6,141,341

October 31, 2000

United States

Patent No. 6,202,023

March 13, 2001

United States

Patent No. 6,266,512

May 1, 2001

United States

Patent No. 6,310,944

October 30, 2001

United States

Patent No. 6,327,533

December 4, 2001

United States

Patent No. 6,327,535

December 4, 2001

United States

Patent No. 6,446,127

September 3, 2002

United States
United States
United States

Patent No. 6,629,136
Patent No. 6,721,284
Patent No. 6,687,504

September 30, 2003
April 13, 2004
February 3, 2004

48

Inventor(s)
Seigo Ito
Shane D. Mattaway, Glenn W. Hutton,
Craig B. Strickland
Christopher H. Kingdon, Bagher R. Zadeh,
Maya Roel-Ng, Stephen Hayes
Eric A. Voit, Edward E. Balkovich,
William D. Goodman, Jayant G. Gadre,
Patrick E. White, David E. Young
Ping Wong, Lars A. Tovander
Wesley Stuart Jones, Timothy Cotton,
Victor Holland
S. Lee Hancock, Peter H. Dana, Scott D.
Morrison
Robert Paul Macaulay, Brian Egan
Michael Brisebois, Marilyn F. St. George,
Laura Mahan
Yue-Hong Chou
Stephen S. Evans, Gopal Parupudi, Burdette
J. Holtgrewe, Edward F. Reus, Gregory
Burns
Guido M. Schuster, Ikhlaq S. Sidhu, Jerry J.
Mahler, Frederick D. Dean, Jacek A.
Grabiec, Ismail Dalgic
Surendra N. Naidoo
Peter John Mottishaw, Daniele Abbadessa
Alex Krister Raith

Country
United States
United States

PATENTS AND PATENT APPLICATIONS
Patent/Application No.
Publication/Issue Date
Patent No. 6,798,872
September 28, 2004
Patent No. 6,838,998
January 4, 2005

United States

Patent No. 6,853,713

February 8, 2005

United States

Patent No. 6,888,927

May 3, 2005

United States

Patent No. 6,975,619

December 13, 2005

United States

Patent No. 7,796,998

September 14, 2010

N/A

WO 98/00988

January 8, 1998

49

Inventor(s)
Masaharu Matsumoto, Shigehiko Yazawa
William W. Brown, David G. Smith
Joseph Fobert, Srivallipuranandan
Navaratnam, Patrick James Dagert, Steve
John McKinnon
Brian Cruickshank, Paul Michael Brennan,
John Eric Lumsden
Charles Calvin Byers, James Patrick Dunn
Samuel N. Zellner, Robert T. Moton Jr.,
Mark J. Enzmann
David Boltz, Alain Maupin, Xiaohong Mau

(2)

Each prior art publication by its title, date of publication, and, where feasible, author and publisher:

Title

GTrace – A Graphical Traceroute Tool

RFC 1876 – DNS LOC

RFC 2543 – Session Initiation Protocol

PUBLICATIONS AND DOCUMENTS
Author(s)
Publication
USENIX Lisa Conference, available
Ram
at
Periakaruppan, Evi https://www.usenix.org/legacy/events
Nemeth
/lisa99/full_papers/periakaruppan/per
iakaruppan.pdf
Christopher Davis,
Internet Engineering Task Force,
Paul Vixie, Tim
available at
Goodwin, Ian
http://tools.ietf.org/pdf/rfc1876.pdf
Dickinson
Mark Handley,
Henning
Internet Engineering Task Force,
Schulzrinne, Eve
available at
Schooler, Jonathan
http://tools.ietf.org/pdf/rfc2543.pdf
Rosenberg

50

Date

Page(s)

November
10, 1999

N/A

January
1996

N/A

March
1999

N/A

(3)

35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the offer or use took place

or the information became known, and the identity of the person or entity which made the use or which made and received the offer,
or the person or entity which made the information known or to whom it was made known. Google’s investigation is ongoing, and the
identified relevant publications in no way limit the evidence Google may rely on concerning these sales or public uses:

Items Offered for Sale or Publicly
Date of Offer or Use*
Known or Used
Unix Traceroute
No later than December 20, 1988
VocalChat

No later than 1994

WebPhone

No later than October 8, 1996

Visual Route

Nortel Companion W-CTI Handset

No later than November 17, 1997

No later than June 4, 1998

51

Person or Entity Involved
Van Jacobson, Eric Wassenaar
VocalTec Inc., and employees
thereof, and individuals identified
herein as having knowledge of
VocalChat, including Alon Cohen
NetSpeak Corporation, and
employees thereof, and individuals
identified herein as having
knowledge of WebPhone, including
Shane D. Mattaway, Glenn W.
Hutton, and Craig B. Strickland
Datametrics Systems Corp., and
employees thereof, and individuals
identified herein as having
knowledge of Visual Route,
including Hank Harris, John Kelly,
Jerry Jongerius, Julie Lancaster, and
Julian Palmer
Nortel Networks Corp., and
employees thereof, and individuals
identified herein as having

Items Offered for Sale or Publicly
Known or Used

Ping Plotter

GST-AVL/GlobalTrax

Ericsson Mobile Positioning
System / Mobile Location Solution

Go2 Mobile Local Search

GTrace

Date of Offer or Use*

No later than March 18, 1998

No later than December 1, 1998

No later than April 6, 1999

no later than November 1999

No later than November 5, 1999

52

Person or Entity Involved
knowledge of Nortel Companion WCTI Handset, including Robert P.
Macaulay, Brian Egan
Nessoft LLC, and employees
thereof, and individuals identified
herein as having knowledge of Ping
Plotter, including Pete Ness
Geospatial Technologies, Inc., and
employees thereof, and inviduals
identified herein as having
knowledge of GSTAVL/GlobalTrax, including YueHong Chou, John Lim, Colton
Graham
Ericsson, and employees thereof,
and individuals identified herein as
having knowledge of Ericsson
Mobile Position System / Mobile
Location Solution, including Göran
Swedberg, Alex Krister Raith
Go2 Systems, Inc., 80108 Media,
Go2 Media, xAd and employees of
each thereof, and individuals
identified herein as having
knowledge of Go2 Mobile Local
Search, including Peter H. Dana, S.
Lee Hancock, Scott D. Morrison
Ram Periakaruppan, Evi Nemeth,
University of Colorado at Boulder

Items Offered for Sale or Publicly
Known or Used

Date of Offer or Use*

Person or Entity Involved

Cisco Systems, Inc., and employees
thereof, Selsius Systems, Inc. and
employees thereof, and individuals
identified herein as having
Cisco CallManager
No later than June 15, 2000
knowledge of Cisco Call Manager,
including John Alexander, Paul
Hahn, Mark Nelson, George Platt,
Richard Platt, Jeff Pulver, Jeff
Sanders, and David Tucker
Softnik Technologies, and
employees thereof, and individuals
IP Lookup
No later than July 12, 2000
identified herein as having
knowledge of IP Lookup
*
Provided on information known to date – Google reserves the right to amend to an earlier date in light of further discovery in this
case.

53