Personalized User Model LLP v. Google Inc.

Filing 276

STATEMENT re 116 Claim Construction Opening Brief, 131 Claim Construction Answering Brief [LOCAL RULE 7.1.2(b) NOTICE OF SUPPLEMENTAL INTRINSIC EVIDENCE FOR DEFENDANT GOOGLE INC.'S CLAIM CONSTRUCTION BRIEFS] by Google Inc.. (Attachments: # 1 Exhibit 1-2)(Moore, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
GOOGLE, INC.
Counterclaimant,
v.
PERSONALIZED USER MODEL, LLP and
YOCHAI KONIG
Counterdefendants.

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C.A. No. 09-525-LPS
JURY TRIAL DEMANDED

LOCAL RULE 7.1.2(b) NOTICE OF SUPPLEMENTAL INTRINSIC EVIDENCE FOR
DEFENDANT GOOGLE INC.’S CLAIM CONSTRUCTION BRIEFS
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Joshua Lee Sohn
Margaret Pirnir Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: June 1, 2011
1014903 / 34638

Richard L. Horwitz (#2246)
David E. Moore (#3983)
POTTER ANDERSON & CORROON LLP
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

On May 31, 2011, after claim construction briefing was complete, Google received a
Decision Granting Inter Partes Reexamination of U.S. Patent No. 6,981, 040 ("the '040 patent") from
the U.S. Patent and Trademark Office. The Decision Granting Inter Partes Reexamination is
attached hereto as Exhibit 1. Local Rule 7.1.2(b) (permitting citation to subsequent authorities after
submission of reply briefs).1
In the Decision Granting Inter Partes Reexamination, the Examiner made statements that are
relevant to the parties' dispute regarding the construction of the phrase "unseen document." Google
has proposed the phrase be construed as "document not previously seen by any user," while Plaintiff
Personalized User Model, LLC ("PUM") proposed the phrase be construed as "document not
previously seen by the user." (See Google's Opening Brief on Claim Construction, at 21-23, D.I.
116; Plaintiff's Opening Claim Construction Brief, at 25-26; D.I. 119; Google's Responsive Brief on
Claim Construction, at 17-18, D.I. 131; Plaintiff's Responsive Claim Construction Brief, at 19-20,
D.I. 132; see also 1/11/11 Hearing Tr., 39:18-44:3, 97:20-102:16) (emphasis added).
In the Decision Granting Inter Partes Reexamination, the Examiner made the following
statements that are consistent with, and support, Google's construction that an unseen document is
one that is unseen by any user:


Describing the "pertinent" prosecution history, the Examiner stated: "The Applicants further
argued that Gerace required an initial set of users to view a given document before
determining whether to show that document to similar users. Accordingly, the Applicants
argued that Gerace had no way of recommending a document that was entirely unseen by
any user. The Examiner subsequently allowed these all [sic] claims. Based on the above,
during the prosecution of the '975 application, claims 1-62 were deemed allowable because
step (e) of the independent claims originally required 'estimating a probability P(u/d) that the
document d is of interest to the user u,' the amended step (d) required 'estimating a

1

That same day, Google received a non-final Office Action, attached hereto as Exhibit 2,
rejecting each of the asserted claims of the '040 patent on the bases on which Google sought reexam. Ex. 2.

probability that an unseen document d is of interest to the user u." (Ex. 1, Decision Granting
Inter Partes Reexamination, at 5) (internal citations omitted).


In reference to the disclosures in Mladenic, the Examiner stated: "As recounted above, the
ability to recommend documents that had not been previously viewed by anyone was one of
the ways in which the applicants sought to distinguish the '040 patent over the prior art
during prosecution." (Ex. 1, Decision Granting Inter Partes Reexamination, at 6).



In reference to the disclosures in Wasfi, the Examiner stated: "As recounted above, the
ability to recommend unseen documents—i.e., documents that had not been previously
viewed by any user—was one of the ways in which the Applicants sought to distinguish the
Konig '040 patent over the prior art during prosecution." (Ex. 1, Decision Granting Inter
Partes Reexamination, at 7.)



In reference to the disclosures in Refuah, the Examiner stated: "As recounted above, the
ability to recommend documents that had not been previously viewed by anyone was one of
the ways in which the applicants sought to distinguish the '040 patent over the prior art
during prosecution." (Ex. 1, Decision Granting Inter Partes Reexamination, at 8.)

Exhibits 1 and 2 are part of the prosecution history of the '040 patent and, thus, Google
respectfully submits that they should be considered along with the prosecution history filed as
Exhibit C to Google's Opening Claim Construction Brief. (D.I. 118); St. Clair Intellectual Property
Consultants, Inc. v. Canon Inc., slip op., 2011 WL 66166 (Fed. Cir. Jan. 10, 2011) ("Reexamination
statements 'are relevant prosecution history when interpreting claims'") (quoting E.I. du Pont de
Nemours & Co. v. Philips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1988)); Hemphill v.
Proctor & Gamble Co., 258 F.Supp.2d 410, 415 (D. Md. 2003) (same).

2

POTTER ANDERSON & CORROON LLP
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Joshua Lee Sohn
Margaret Pirnir Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]

By: /s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: June 1, 2011
1014903 / 34638

3

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CERTIFICATE OF SERVICE
I, David E. Moore, hereby certify that on June 1, 2011, the attached document was
electronically filed with the Clerk of the Court using CM/ECF which will send notification to the
registered attorney(s) of record that the document has been filed and is available for viewing and
downloading.
I further certify that on June 1, 2011, the attached document was Electronically Mailed to
the following person(s):
Karen Jacobs Louden
Jeremy A. Tigan
Morris, Nichols, Arsht & Tunnell LLP
1201 North Market Street, 18th Fl.
Wilmington, DE 19899-1347
[e-mail]
[e-mail]

Marc S. Friedman
SNR Denton US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[e-mail]

Jimmy M. Shin
Jennifer D. Bennett
Matthew P. Larson
SNR Denton US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[e-mail]
[e-mail]
[e-mail]

Mark C. Nelson
Robert Needham
SNR Denton US LLP
2000 McKinney, Suite 1900
Dallas, TX 75201
[e-mail]
[e-mail]

Christian E. Samay
SNR Denton US LLP
101 JFK Parkway
Short Hills, NJ 07078
[e-mail]
/s/ David E. Moore
Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
[phone]
[e-mail]
[e-mail]
932168 / 34638