Xerox Corporation v. Google Inc. et al

Filing 185

REDACTED VERSION of 180 Letter by Yahoo! Inc.. (Attachments: # 1 Exhibit 1-6)(Tigan, Jeremy)

MORRIS, NICHOLS, ARSHT & TUNNELL

LLP

1201 N ORTH M ARKET S TREET
P.O. B OX 1347
W ILMINGTON , D ELAWARE 19899-1347
[phone]
[phone] FAX
JEREMY A. TIGAN
[phone]
[phone] FAX
[e-mail]

May 13, 2011 - Original Filing Date
May 20 - Redacted Filing Date
The Honorable Judge Leonard P. Stark
VIA ELECTRONIC FILING
REDACTED - PUBLIC VERSION
U.S. District Court for the District of Delaware
844 North King Street
Wilmington, DE 19801-3556
Re:

Xerox Corporation v. Google Inc., et al., C.A. No. 10-136 (LPS) (MPT)

Dear Judge Stark:
Defendants Yahoo! Inc., Right Media LLC, and Google Inc., respectfully request
that the Court deny Plaintiff Xerox Corporation’s request for supplemental invalidity
contentions.
This Court already considered the general adequacy of Defendants’ invalidity contentions
in February when it granted Defendants’ motion to compel more specific infringement
contentions from Xerox. At that time, the Court, after Defendants’ motion had been fully briefed
and argued, sua sponte ordered Defendants to submit their own contentions for the Court’s
consideration. After that unfiltered review, the Court concluded that Defendants’ invalidity
contentions were “significantly more detailed” than Xerox’s and justified requiring more specific
infringement contentions from Xerox. (Ex. 1 at 29:22-30:14.)
After the Court’s ruling, Defendants agreed to further supplement their contentions to
account for recently asserted dependent claims, which they did on April 15, 2011. In that
supplemental response, Defendants also provided three new claim charts and additional details
concerning their defenses under 35 U.S.C. §§ 102, 103, and 112. (See Xerox Ex. 20 at 20-28 and
Appendices 14-16; Xerox Ex. 21 at 9-13 and Appendices N-P.) Not only did Defendants include
an extended explanation of their defenses, but they also identified significant supporting
documentary and testimonial evidence. (See Xerox Ex. 20 at 20-28; Xerox Ex. 21 at 9-13.) On
May 11, Defendants provided new claim charts for a recently discovered prior art reference and

The Honorable Leonard P. Stark
May 13, 2011
Page 2
Google supplemented its explanation of its § 101 defense in response to Xerox’s complaints.
(Ex. 2 at 29 and Appendix B-17; Ex. 3 at Appendix Q.)1
Defendants’ invalidity contentions are detailed and specific. First, Xerox’s surprising
claim that Defendants have not provided a single anticipation or obviousness chart (Xerox Ltr.
Br. at 2) is incorrect. Defendants have thus far provided 17 claim charts that pinpoint where
specific limitations may be found in specific prior art references.2 Certain charts demonstrate
where every claim limitation of one or more asserted claims may be found in a single reference.
(See Ex. 2 at Appendices B-1-3, B-7-13, B-17; Ex. 3 at Appendices A-J and Q.)3 Others
demonstrate where each limitation may be found in specific combinations of references. (See
Ex. 2 at Appendices B-4-6, B-14-16; Ex. 3 at Appendices K-P.) While these reference-specific
charts include cross-references to additional pieces of prior art (to account for the possibility of
alternative readings of a particular limitation), it is apparent that the charts locating all claim
limitations in a single reference are anticipation charts while those showing combinations are
exemplary obviousness contentions. See Keithley v. The Homestore.com, Inc., 553 F. Supp. 2d
1148, 1150 (N.D. Cal. 2008) (holding invalidity contentions satisfactory because one can
determine whether a chart is an anticipation or obviousness chart based on whether a single
reference is charted against every element of the claims at issue). Indeed, this should be clear
from references to §§ 102 and 103 and to anticipation and obviousness in the narrative response
accompanying the claim charts. (See, e.g., Xerox Ex. 20, at 18-20.)
Second, each invalidity chart provided by Defendants identifies where each claim
limitation may be found in a particular prior art reference by providing the specific language
from that reference. This is standard practice in patent cases across the country and Xerox has
cited no authority to suggest that further detail is required. See, e.g., Avago Techs. Gen’l IP PTE
Ltd. V. Elan Microelectronics Corp., No. C04-05385 JW (HRL), 2007 WL 951818, at *2 (N.D.
Cal. Mar. 28, 2007) (finding disclosure of page numbers in claim charts sufficient). While
Xerox highlights what it no doubt believes is the single best example of Defendants’ purported
1

Despite Xerox’s assertion in the second paragraph of its letter, Yahoo! provided the basis for its
defense under § 101 in its first supplemental response to Xerox’s Interrogatory No. 7, which
was served on July 09, 2010. (See Ex. 4 at 2-3.)

2

Xerox correctly notes that Defendants have not provided a chart for every single prior art
reference it has identified. Defendants have provided charts for the references identified to
date that they believe to be most significant given Xerox’s apparent contentions, unresolved
claim disputes, and the current state of discovery. Defendants will provide additional charts if
additional facts or arguments come to light or the Court’s claim constructions affect the
relevance of the additional references.

3

Xerox improperly creates its Exhibit 7 out of thin air. Not only is the newly-minted exhibit an
attempt to avoid the Court’s restriction on the length of discovery dispute letters, but it also
obscures the clear identification of the corresponding claim limitation in Defendants’ charts (in
this case, the “automatically categorizing” step).

The Honorable Leonard P. Stark
May 13, 2011
Page 3
shortcomings, that example demonstrates the specificity of Defendants’ contentions. (Xerox Ltr.
Br. at 2-3.) The cited portion of Ford states that “[t]he appearance of such keywords would be
used to infer the general topic or subject matter of the communication or conversation” and that
“[o]nce the general subject area of the conversation has been (probabilistically) deduced, the
present invention may be used to present advertisements in the chat room that match the theme
of the conversation.” It is hard to imagine that Xerox does not understand that a “class” may
correspond to “general topic” or “subject matter” or that (especially in view of Xerox’s proposed
constructions) the selection of advertisements to match the subject matter could indicate a search
of “categories of information” in an “information retrieval system” where the ads are stored.
Indeed, this concept is central to Xerox’s infringement theories.
Third, Defendants have explained why the ‘979 Patent’s admitted “combination of
known technologies” was obvious under § 103. (See Ex. 5 at XRX01040280.) In addition to
providing the basis for their contentions, Defendants have provided citations to supporting
inventor testimony and documentary evidence as well as exemplary charts showing how specific
references may be combined. (See Ex. 2, at 24-26 and Appendices B-4-6, B-14-16; Ex. 3, at 1112 and Appendices K-P.) Apparently, Xerox would now have Defendants go further and provide
a chart for every combination of identified prior art, resulting in hundreds if not thousands of
claim charts of every single precise combination possible, and separate narrative explanations for
each of these combinations. Such an exercise would be unduly burdensome and is not
warranted. See, e.g., Keithley, 553 F. Supp. 2d at 1150 (permitting invalidity contentions that
grouped combination references into categories). Moreover, Xerox would undoubtedly have
complained had Defendants produced that many charts in the first instance given that it is now
complaining that Defendants included too many cross-references in its current charts.
While Xerox suggests that its demands are somehow justified in light of its infringement
contentions, the comparison fails. As the Court previously highlighted, Defendants’ invalidity
contentions are in no way equivalent to Xerox’s previous bare-boned infringement contentions
that merely repeated the claim language. (Ex. 1 at 29:22-30:14.) Moreover, even after
supplementation, Xerox’s contentions remain ambiguous in many respects. Further, although
Xerox complains that Defendants merely quote from prior art references, Xerox’s infringement
contentions do the very same thing. For each claim element, Xerox repeats the claim language
and states that the accused product practices that element. Xerox then summarizes Defendants’
documents and, to give the illusion of length and substance, pastes images of those documents
into the contentions, rather than a simple cite to that document. It includes images of different
documents that say the very same things or make the very same points over and over again—also
giving the illusion of substance. (See, e.g., Ex. 6.)
To the extent that any ambiguity exists as to how a specific cite in Defendants’ charts
reads on a corresponding claim limitation, it arises from the need to account for Xerox’s unclear
infringement theories and various possible claim constructions. To require Defendants to
supplement their invalidity contentions in the manner proposed by Xerox now would impose a
meaningless make-work project designed simply to impose costs.
For the foregoing reasons, Defendants request that the Court deny Xerox’s request.

The Honorable Leonard P. Stark
May 13, 2011
Page 4
Respectfully,

/s/ Jeremy A. Tigan
Jeremy A. Tigan (#5239)
JAT/dla
cc:
Clerk of the Court (Via Hand Delivery)
John G. Day, Esquire (Via Electronic Mail)
Richard J. Stark, Esquire (Via Electronic Mail)
Richard L. Horwitz, Esquire (Via Electronic Mail)
Charles K. Verhoeven, Esquire (Via Electronic Mail)
Andrea Pallios Roberts, Esquire (Via Electronic Mail)
Anthony I. Fenwick, Esquire (Via Electronic Mail)