Personalized User Model LLP v. Google Inc.

Filing 644

Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding reply to Google's March 11 letter - re 643 Letter. (Attachments: # 1 Exhibit A)(Jacobs, Karen)

EXHIBIT A

EXHIBIT 20 TO PRETRIAL ORDER
GOOGLE’S IDENTIFICATION OF OBVIOUSNESS PRIOR ART REFERENCES AND
"COMBINATIONS"

Pursuant to the Court’s oral order on January 27, 2013 and the Court’s January 30, 2014 Order
(D.N. 567), Google identifies herein the reduction of prior art references on which it will rely to
establish obviousness of the asserted claims of the patents-in-suit. Under that Order, the Court
held that Google may not rely on more than ten prior art references to make its obviousness case.
The Court further held that Google may rely on no more than 15 obviousness “combinations” of
no more than six references each. In light of the foregoing, Google intends to rely on the prior
art references and “combinations” of references listed below to establish obviousness of the
asserted claims.
Set forth below are the eight prior art references Google identified pursuant to the Court’s Order:
1. “Personal WebWatcher: design and implementation” by Dunja Mladenic (“Mladenic”);
2. “Collecting User Access Patterns for Building User Profiles and Collaborative Filtering”
by Ahmad M. Ahmad Wasfi (“Wasfi”); “
3. "A Personal Evolvable Advisor for WWW Knowledge-Based Systems” by M.
Montebello, W.A. Gray, and S. Hurley (“Montebello”);
4. Autonomy Agentware (“Autonomy”);
5. U.S. Patent No. 7,631,032 to Refuah (“Refuah”);
6. "WebWatcher: A Tour Guide for the World Wide Web" by Joachims, Freitag, and
Mitchell ("Joachims");
7. "Syskill & Webert: Identifying interesting web sites," by Michael Pazzani, Jack
Muramatsu & Daniel Billsus ("Pazzani 1"); and
8. "Learning and Revising User Profiles: The Identification of Interesting Web Sites," by
Michael Pazzani and Daniel Billsus ("Pazzani 2").
Set forth below are the fifteen groups of prior art references, the “combinations,” identified by
Google pursuant to the Court’s Order that Google may rely to show the obviousness of the
asserted claims:
1. Mladenic and Wasfi and Montebello
2. Mladenic and Wasfi and Montebello and Joachims
3. Mladenic and Wasfi and Montebello and Pazzani 1 and Pazzani 2
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4. Mladenic and Wasfi and Montebello and Refuah
5. Mladenic and Wasfi and Montebello and Joachims and Refuah
6. Mladenic and Wasfi and Montebello and Autonomy
7. Mladenic and Wasfi and Montebello and Joachims and Autonomy
8. Mladenic and Refuah
9. Mladenic and Montebello
10. Mladenic and Autonomy
11. Montebello and Refuah
12. Montebello and Autonomy
13. Wasfi and Montebello
14. Wasfi and Refuah
15. Wasfi and Autonomy
In KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007), the Supreme Court noted “[t]o
determine whether there was an apparent reason to combine the known elements in the way a
patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to
the effects of demands known to the design community or present in the marketplace; and to the
background knowledge possessed by a person having ordinary skill in the art.” As in KSR,
Google may supplement the disclosures of the references identified above by experience and
background information and knowledge of one of skill in the relevant art, such as known
concepts, tools, and features used in machine learning, search engines, and information retrieval.
In relation to the state of the art and the knowledge of one skilled in art, Google may also rely on,
among other things, admissions and statements in the patents-at-issue, admissions and statements
from PUM, and its witnesses and experts, and testimony of other witnesses, including Google’s
experts.
Further, Google's "combinations" may change based on changes in PUM's allegations, asserted
claims, and stated positions and expert opinions and testimony on the state of the art, ordinary
skill in the art, or disclosures in the art, subsequent Court rulings, or as part of further narrowing
of the issues.

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