Xerox Corporation v. Google Inc. et al

Filing 128

REDACTED VERSION of 121 Letter by Xerox Corporation. (Attachments: # 1 Exhibit A part 1, # 2 Exhibit A part 2, # 3 Exhibit B - K)(Mayo, Andrew)

Xerox Corporation v. Google Inc. et al

Doc. 128 Att. 1

Dockets.Justia.com

infringement and validity"); see also Atlantic Thermoplastics, 970 F.2d at 846, 23 U.S.P.Q.2D (BNA) at 1491. The claim analysis employed in this Request generally sets forth claim interpretations asserted by the Patent holder during litigation. In analyzing the claims in this Request by setting forth these interpretations, and otherwise, Requestor neither admits nor acquiesces as to any construction of any claim to be used in litigation by either its analysis of the patent claims or by operation of the particular prior art references applied herein, including the Patent Owner's asserted claim constructions. See In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007).

IV.

THE REFERENCES RELIED UPON HEREIN PROVIDE NEW, NON-CUMULATIVE TECHNICAL TEACHINGS

A.

Reader

u.s.

Patent Application Publication No. 2002/0147738 to Reader qualifies as prior art under 35

U.s.c. § 102(e) because it was filed on April 6, 2001 prior to the earliest claimed priority date of the '979 patent (i.e., August 13, 2001) but it was published on October 10,2002 after the filing date of the '979 patent (i.e., August 13, 2001). The Reader reference was not before the Examiner during original prosecution of the '979 patent, and as such, the Reader reference presents new teachings relative to items previously considered by the

u.s.

Patent and Trademark Office.

The Reader reference describes an electronic search system that automatically generates queries from patent documents to find patent-relevant publications on the Internet. Specifically, Reader recognizes that the continued expansion of the Internet has made the Internet a valuable resource for patent practitioners when attempting to find "prior art" publications to invalidate a patent. (Appendix K at paragraphs 0001-002) Reader notes that practitioners have historically relied on relatively manual Internet search techniques to find patent-relevant publications on the Internet. (Appendix Kat paragraph 0002) Reader proposes a system that automates the searching process for such "prior art" publications by enabling a user to select the content of a patent (e.g., the full text of the patent or one or more claims of the patent) and then, using a computer, automatically generates a query from the selected patent content to find relevant publications on the Internet. (Appendix K at paragraph 0004) Reader's system, as shown in Fig. 3 of Reader (reproduced below), includes an end user station (EUS) 310 that communicates with a patent server 330 having a patent database 332 and a Website database 334. (Appendix K at paragraph 0014)

01002.51305/3643576.1

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