Xerox Corporation v. Google Inc. et al

Filing 127

REDACTED VERSION of 126 Letter to The Honorable Judge Stark from Maryellen Noreika regarding Responses to Xerox's Interrogatories by Right Media LLC, Yahoo! Inc.. (Attachments: # 1 Exhibits A-B)(Noreika, Maryellen)

Xerox Corporation v. Google Inc. et al

Doc. 127 Att. 1

EXHIBIT A

Dockets.Justia.com

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE XEROX CORPORATION, Plaintiff, v. GOOGLE, INC., YAHOO! INC., RIGHT MEDIA INC., RIGHT MEDIA LLC, YOUTUBE, INC., and YOUTUBE, LLC, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 10-136 (JJF) (MPT) JURY TRIAL DEMANDED

YAHOO! INC. AND RIGHT MEDIA LLC'S SUPPLEMENTAL RESPONSES TO INTERROGATORY NOS. 7 THROUGH 9 OF XEROX'S FIRST SET OF INTERROGATORIES Defendants and Counter-Claim Plaintiffs Yahoo! Inc. and Right Media LLC (collectively, "Yahoo") provide the following supplemental responses to Plaintiff Xerox Corporation's ("Xerox") April 23, 2010 First Set of Interrogatories.1 These supplemental responses are made in light of ongoing discovery and are based on information presently known to Yahoo, which reserves the right to supplement or modify these supplemental responses based on the discovery of additional or different information and/or in light of expert opinion and/or the Court's claim construction. These supplemental responses are provided without the benefit of the Court's claim construction or knowledge of Xerox's claim construction positions, and with the understanding that a range of claim construction positions may potentially be advanced by the parties and/or adopted by the Court. These supplemented responses therefore should not be

Right Media LLC responds on its own behalf and as the successor in interest to Right Media Inc., which no longer exists.

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deemed to admit the correctness or incorrectness of any construction of any limitation of any asserted patents claim. SUPPLEMENTAL RESPONSES TO INTERROGATORIES INTERROGATORY NO. 7: If you contend that any claim of the Patents in Suit is invalid and/or unenforceable, specify each claim that you contend is invalid and/or unenforceable and describe in full for each such claim the basis for your contention, identifying all prior art, all documents and all facts that you believe support your contention. RESPONSE TO INTERROGATORY NO. 7: Yahoo maintains and fully incorporates herein each of the general objections and specific objections to this interrogatory listed in Yahoo's May 27, 2010 Objections and Responses to Xerox's First Set of Interrogatories. Subject to and without waiving these objections, Yahoo responds that the asserted claims of the Patents in Suit are invalid for at least the following reasons. `979 Patent Invalidity Under 35 U.S.C. § 101 Claims 1 and 18 of the `979 Patent are invalid under 35 U.S.C. § 101 because they claim unpatentable abstract ideas. Moreover, both claims fail the "machine-or-transformation" test indicative of § 101 patent eligible subject matter. Under the machine-or-transformation test, a claimed method is not patentable unless it (1) is tied to a particular machine or apparatus, or (2) transforms a particular article into a different state or thing. See Bilski v. Kappos, 561 U.S. __, slip op. at 3 (2010). The method of Claim 1, which analyzes document content to generate abstract queries, recites only general purpose computing equipment and does not meet the statutory requirements for patentable subject matter. Claim 18 is also invalid under 35 U.S.C. §

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101 because the mere recitation of general purpose computer and software components does not transform unpatentable method steps into patent-eligible subject matter and does not constitute recitation of a "particular machine." Invalidity Under 35 U.S.C. §§ 102 and 103 Claims 1 and 18 of the `979 Patent are invalid under 35 U.S.C. §§ 102 and/or 103 in view of the prior art, including that identified below. The following patents and patent applications are prior art under at least 35 U.S.C § 102(e): U.S. Patent Application 2002/0147738; U.S. Patent 6,122,647; U.S. Patent 6,473,752; U.S. Patent 6,606,644; U.S. Patent 6,829,780; U.S. Patent 7,076,443; U.S. Patent 7,225,142; U.S. Patent 7,418,657; and U.S. Patent 7,451,099 (collectively the "`979 Prior Art Patents"). The following systems were in public use prior to the invention date of the `979 Patent and are prior art under 35 U.S.C. §§ 102(a) and/or 102(b), and are 102(g)(2) prior inventions: eZula, YellowBrix IntelliClix, WebACE, IntelliZap / Zapper, and SemioMap Discovery Search (collectively the "`979 Prior Art Systems"). The following publications are prior art under 35 U.S.C. §§ 102(a) and/or 102(b): Finkelstein et al., Placing Search in Context: The Concept Revisited, Proc. of the 10th International World Wide Web Conference (May 1-5, 2001); Han et al., WebACE: A Web Agent for Document Categorization and Exploration, Proc. of the 2nd International Conference on Autonomous Agents (May 1998) (the "`979 Prior Art Publications"); and Wiesner et al., Context Matching System and Method, WO/2001/044992 (June 21, 2001). The `979 Prior Art Patents, the `979 Prior Art Systems and the `979 Prior Art Publications are collectively referred to as the "`979 Prior Art." The status of certain pieces of the `979 Prior Art may be affected by the Court's claim construction. In addition, some items of

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art are presently believed to disclose certain elements of the asserted claims inherently. To the extent it is found that such elements are not inherently disclosed, it may be that the relevant claims are alternatively rendered obvious by the asserted reference and the knowledge of a person of ordinary skill in the art alone, or by various other art in combination with the asserted reference. A person of ordinary skill in the art would have found it obvious to combine each `979 Prior Art reference with one or more of the other `979 Prior Art references at least because each such reference relates to analyzing document content, and primarily the content of webpages, to find related information and/or relevant advertisements. Yahoo incorporates by reference herein the identification by other defendants of any Prior Art as invalidating claims 1 and/or 18 of the `979 Patent under sections 102 and/or 103, to the extent such Prior Art is not specifically identified above. Yahoo reserves the right to use any of the identified references in support of an argument based on a disclosed system in prior use. Invalidity Under 35 U.S.C. § 102(f) and 116 Pending further investigation, claims 1 and/or 18 `979 Patent may be invalid under 35 U.S.C. §§ 102(f) and 116 for failing to include all inventors of the claimed subject matter. `994 Patent Invalidity Under 35 U.S.C. § 101 Claim 9 of the `994 Patent is invalid under 35 U.S.C. § 101 because it claims an unpatentable abstract idea. Moreover, it fails the "machine-or-transformation" test indicative of § 101 patent eligible subject matter. The method of Claim 9, which relates to generic approaches to integrating abstract data and results of analyses thereof with abstract electronic documents, recites only general purpose computing and database equipment and does not meet the statutory requirements for patentable subject matter.

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Invalidity Under 35 U.S.C. §§ 102 and 103 Claim 9 of the `994 Patent is invalid under 35 U.S.C. §§ 102 and/or 103 in view of the prior art, including that identified below. The following patents are prior art under at least 35 U.S.C § 102(e): U.S. Patent 5,564,044; U.S. Patent 5,630,126; U.S. Patent 5,694,192; U.S. Patent 5,659,676; U.S. Patent 5,913,032; U.S. Patent 6,094,684 (collectively the "`994 Prior Art Patents"). The following systems were in public use prior to the invention date of the `994 Patent and are prior art under 35 U.S.C. §§ 102(a) and/or 102(b), and are 102(g)(2) prior inventions: Amazon.com Product Listings, the Internet Movie Database (IMDB), and Crystal Reports (collectively the "`994 Prior Art Systems"). The following publications are prior art under 35 U.S.C. §§ 102(a) and/or 102(b): Silvano Pozzi, et al., ALIVE: A Distributed Live-link Documentation System, Electronic Publishing, Vol. 5(3) (Sept. 1992), 131-142 and Premysl Brada, et al., Dynamic Information Access Using WWW, Proceedings of the 4th Conference on Interdisciplinary Information Management (1996), 97-102 (the "`994 Prior Art Publications"). The `994 Prior Art Patents, the `994 Prior Art Systems and the `994 Prior Art Publications are collectively referred to as the "`994 Prior Art." The status of certain pieces of the `994 Prior Art may be affected by the Court's claim construction. In addition, some items of art are presently believed to disclose certain elements of the asserted claims inherently. To the extent it is found that such elements are not inherently disclosed, it may be that the relevant claims are alternatively rendered obvious by the asserted reference and the knowledge of a person of ordinary skill in the art alone, or by various other art in combination with the asserted reference. A person of ordinary skill in the art would have found it obvious to combine each

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`994 Prior Art reference with one or more of the other `994 Prior Art references at least because each such reference relates to managing relationships between documents and data and analysis results. Yahoo incorporates by reference herein the identification by other defendants of Prior Art as invalidating claim 9 of the `994 Patents under sections 102 and/or 103, to the extent such art is not specifically identified above. Yahoo reserves the right to use any of the identified references in support of an argument based on a disclosed system in prior use. Invalidity Under 35 U.S.C. § 112 Claim 9 of the `994 Patent is invalid under at least plaintiff's apparent construction (to the extent discernable, if at all, from its response to plaintiff's interrogatory responses) for at least the following reasons: The claim limitations "storing knowledge," "validating the accuracy of the knowledge", "managing the flow of information between the first database and the document database to enable the integration of the data and analysis results with the documents and to automatically update the documents upon the occurrence of a change in the data or analysis results" and "to generate data and analysis results" do not meet the written description and enablement requirements of 35 U.S.C. § 112. To the extent that the term "knowledge" and the phrases "validating the accuracy of the knowledge", "managing the flow of information", "data and analysis results" and "data or analysis results" are insolubly ambiguous, claim 9 is indefinite. Yahoo reserves the right to supplement, revise or render more specific its response to Interrogatory No. 7.

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INTERROGATORY NO. 8: If you contend that any of your '979 Accused Products do not infringe any claim of the '979 Patent, specify, separately for each '979 Accused Product, each claim that you contend is not infringed and describe in full for each such claim the basis for your contention, identifying all documents and all facts that you believe support your contention. RESPONSE TO INTERROGATORY NO. 8: Yahoo provides its supplemental response to this interrogatory in view of Xerox's May 27, 2010 response to Yahoo and Right Media's first interrogatory. While Xerox clearly identified the claims of the Patents in Suit that it is asserting in this action, Xerox's response lacks meaningful detail in setting forth the factual bases for its infringement contentions and does not provide sufficient information for Yahoo to discern the nature of Xerox's infringement allegations. Yahoo reserves the right to supplement its response to this interrogatory if and when Xerox provides substantive responses to Yahoo's interrogatories. Xerox's response is also unclear in identifying the accused products, in particular with respect to its contention that "Yahoo! Search Marketing" and "Yahoo! Publisher Network" infringe claims 1 and 18 of the `979 Patent. Based on correspondence with counsel for Xerox, Yahoo understands that Xerox's references to Yahoo! Search Marketing and Yahoo! Publisher Network are intended in substance to accuse certain Yahoo! Content Match processes to the extent (if any) offered in association with these names. Accordingly, Yahoo provides this supplemental response with the understanding that the instrumentalities that Xerox accuses of infringing the `979 Patent are Yahoo! Content Match, Y!Q Contextual Search, and Right Media Exchange (collectively the "`979 Accused Instrumentalities"). In addition, Yahoo maintains and fully incorporates herein each of the general objections and specific objections to this

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interrogatory listed in Yahoo's May 27, 2010 Objections and Responses to Xerox's First Set of Interrogatories. Subject to and without waiving these objections, Yahoo responds that the `979 Accused Instrumentalities do not infringe the asserted claims of the Patents in Suit for at least the following reasons. REDACTED

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Yahoo reserves the right to supplement, revise or render more specific its response to Interrogatory No. 8. INTERROGATORY NO. 9: If you contend that any of your '994 Accused Products do not infringe any claim of the '994 Patent, specify, separately for each '994 Accused Product, each claim that you contend is

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RESPONSE DESIGNATED CONFIDENTIAL OUTSIDE COUNSEL ONLY not infringed and describe in full for each such claim the basis for your contention, identifying all documents and all facts that you believe support your contention. RESPONSE TO INTERROGATORY NO. 9: Yahoo provides its supplemental response to this interrogatory in view of Xerox's May 27, 2010 response to Yahoo and Right Media's first interrogatory. While Xerox clearly identified the claims of the Patents in Suit that it is asserting in this action, Xerox's response lacks meaningful detail in setting forth the factual bases for its infringement contentions and does not provide sufficient information for Yahoo to discern the nature of Xerox's infringement allegations. Yahoo reserves the right to supplement its response to this interrogatory if and when Xerox provides substantive responses to Yahoo's interrogatories. In addition, Yahoo maintains and fully incorporates herein each of the general objections and specific objections to this interrogatory listed in Yahoo's May 27, 2010 Objections and Responses to Xerox's First Set of Interrogatories. Subject to and without waiving these objections, Yahoo responds that Yahoo's '994 Accused Products do not infringe the asserted claims of the Patents in Suit for at least the following reasons. REDACTED

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Yahoo reserves the right to supplement, revise or render more specific its response to Interrogatory No. 9.

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By: /s/ Jesse Dyer Matthew B. Lehr (#2370) Anthony I. Fenwick (admitted pro hac vice) Jill Zimmerman (admitted pro hac vice) Jesse Dyer (admitted pro hac vice) DAVIS POLK & WARDWELL LLP 1600 El Camino Real Menlo Park, CA 94025 650-752-2000 650-752-2111 (fax) Attorneys For Defendants Yahoo! Inc. and Right Media LLC July 9, 2010

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CERTIFICATE OF SERVICE I, hereby certify that on July 9, 2010, copies of the foregoing were caused to be served upon the following in the manner indicated: Lawrence C. Ashby, Esquire John G. Day, Esquire Lauren E. Maguire, Esquire ASHBY & GEDDES 500 Delaware Avenue, 8th Floor Wilmington, DE 19801 Richard J. Stark, Esquire Andrei Harasymiak, Esquire Peter A. Emmi, Esquire Scott A. Leslie, Esquire Allison M. Snyder, Esquire CRAVATH, SWAINE & MOORE LLP 825 Eighth Avenue New York, NY 10019 Richard L. Horwitz, Esquire David E. Moore, Esquire POTTER ANDERSON & CORROON LLP Hercules Plaza ­ 6th Floor 1313 North Market Street Wilmington, DE 19801 Charles K. Verhoeven, Esquire David A. Perlson, Esquire Brian C. Cannon, Esquire QUINN EMANUEL URQUHART & SULLIVAN, LLP 50 California Street 22nd Floor San Francisco, CA 94111 VIA ELECTRONIC MAIL

VIA ELECTRONIC MAIL

VIA ELECTRONIC MAIL

VIA ELECTRONIC MAIL

/s/ Jesse Dyer Jesse Dyer

EXHIBIT B