Red Bend Software, Inc. et al v. Google

Filing 79

Document disclosure by Google Inc.. (Attachments: # 1 Exhibit A - Invalidity Chart (Anticipation), # 2 Exhibit B - Invalidity Chart (Obviousness))(Magee, David)

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UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS RED BEND LTD. and RED BEND SOFTWARE INC., Plaintiffs, v. GOOGLE INC., Defendant. GOOGLE INC., Counterclaim-Plaintiff, v. RED BEND LTD. and RED BEND SOFTWARE INC., Counterclaim-Defendants. CIVIL ACTION NO. 09-cv-11813 GOOGLE INC.'S PRELIMINARY INVALIDITY CONTENTIONS Pursuant to the Court's May 10, 2010 scheduling order and Local Rule 16.6, Google, Inc. ("Google") hereby serves its Preliminary Invalidity Disclosures for U.S. Patent Number 6,546,552 ("the `552 patent") on Plaintiffs Red Bend Ltd. and Red Bend Software Inc. (collectively, "Red Bend"). PRELIMINARY STATEMENT, RESERVATION OF RIGHTS, AND GENERAL OBJECTIONS 1. This disclosure is directed to invalidity issues only and does not address noninfringement, unenforceability, or claim construction issues. Google reserves all rights with respect to such issues. A/73378224.6 2. These Preliminary Invalidity Contentions are preliminary and are based on Google's current knowledge, understanding, and belief as to the facts and information available as of the date of these contentions. Discovery in this action is ongoing, Red Bend has not completed its document production, and Google has not completed its investigation, discovery, or analysis of information related to this action. While Google has made a good-faith effort to provide a comprehensive list of prior art relevant to this case, Google reserves the right to amend, supplement, or materially modify its prior art list and invalidity contentions as discovery progresses. This reservation of rights includes the right to supplement prior art under 35 U.S.C. 102(a), (b), (c), (d), (e), (f), and (g) based on information Google may learn during discovery in this case. 3. Google provides these Preliminary Invalidity Contentions prior to any claim construction ruling by the Court with respect to the claims of the `552 patent asserted by Red Bend in its Infringement Contentions. Any invalidity analysis depends, ultimately, upon claim construction, which is a question of law reserved for the Court. Google reserves the right to amend, supplement, or materially modify its prior art list and invalidity contentions after the claims have been construed by the Court. Google also reserves the right to amend, supplement, or materially modify its prior art list and invalidity contentions based on any claim construction positions that Red Bend may take in this case. Google also reserves the right to assert that a claim is indefinite, not enabled, or fails to meet the written description requirement based on any claim construction position Red Bend may take or based on any claim construction the Court may adopt in this case. A/73378224.6 2 PRELIMINARY INVALIDITY CONTENSIONS I. Identification of Prior Art Red Bend accuses Google's Courgette of infringing 34 claims of U.S. Patent No. 6,546,552: claims 8-12, 21-25, 28-34, 42-46, 55-60, and 62-67 (collectively, the "Asserted Claims"). See Plaintiffs Red Bend Ltd. and Red Bend Software Inc.'s Preliminary Infringement Disclosures at 1. The Asserted Claims of the `552 patent are invalid for at least the reasons discussed herein and in Google's Jan. 22, 2010 Request for Reexamination, Google's Opposition to Red Bend's Motion for Preliminary Injunction, its Surreply thereto, the declaration and testimony of Dr. Martin G. Walker, and Google's presentation at the April 14, 2010 preliminary injunction hearing (each of which Google incorporates herein by this reference). On January 22, 2010 Google filed and served a Request for Reexamination at the U.S. Patent and Trademark Office. In its Request for Reexamination, Google demonstrated that the `552 patent was invalid under 35 U.S.C. 102 and 103 in light of five prior art references: (1) U.S. Patent No. 5,481,713 to Wetmore, et al.; (2) G.D. Batalden, et al. "Maintainable ROS Code Through the Combination of ROM and EEPROM," 32 IBM Technical Disclosure Bulletin, No. 9A, 273-76 (1990); (3) Kris Coppieters, "A Cross Platform Binary Diff," Dr. Dobb's Journal, May 1995, at 32; (4) U.S. Patent No. 4,111,853 to Dummermuth; and (5) U.S. Patent No. 5,790,796 to Sadowsky. On March 23, 2010, the U.S. Patent and Trademark office instituted a reexamination of the patent-in-suit based upon Google's Request, finding that there is a "substantial new question of patentability" affecting all claims of the `552 patent. In addition to the prior art identified in the `552 patent and prosecution history, at least the following prior art references are relevant to the validity of the `552 patent. These references can alone, or in combination, render the asserted claims of the `552 patent invalid under 102 or 103: A/73378224.6 3 Prior Art Reference 1. U.S. Patent No. 5,481,713 to Wetmore, et al. 2. G.D. Batalden, et al. "Maintainable ROS Code Through the Combination of ROM and EEPROM," 32 IBM Technical Disclosure Bulletin, No. 9A, 273-76 (1990). 3. Kris Coppieters, "A Cross Platform Binary Diff," Dr. Dobb's Journal, May 1995, at 32. 4. U.S. Patent No. 4,111,853 to Dummermuth 5. U.S. Patent No. 5,790,796 to Sadowsky 6. U.S. Patent No. 5,465,258 to Adams 7. U.S. Patent No. 5,966,541 to Agarwal 8. U.S. Patent No. 6,282,698 to Baker 9. Brenda S. Baker, et al., "Compressing Differences of Executable Code," (1999). 10. U.S. Patent No. 5,307,492 to Benson 11. U.S. Patent No. 5,502,439 to Berlin 12. Randal Burns, "Differential Compression: A Generalized Solution for Binary Files," University of California, Santa Cruz, Dec. 1996. 13. Randal C. Burns, et al., "In-Place Reconstruction of Delta Compressed Files," In Proceedings of the 1998 Conference on the Principles of Distributed Computing, ACM, 1998. 14. WO 97/12508 to Cahill, et al. 15. Cristina Cifuentes, "Reverse Compilation Techniques," (July 1994) (Ph.D. thesis, Queensland University of Technology). 16. Cristina Cifuentes, et al., "Decompilation of Binary Programs," Software-Practice and Experience, 25(7) Software - Practice and Experience 811829 (July 1995). Filing/Priority Date May 6, 1993 Issue/ Publication Date Jan. 2, 1996 Feb. 1990 Applicability 102(b) & (e) 102(b) May 1995 Dec. 21, 1976 June 14, 1996 Nov. 13, 1989 Dec. 4, 1997 Dec. 4, 1998 Sept. 19, 1978 Aug. 4, 1998 Nov. 7, 1995 Oct. 16, 2001 Aug. 28, 2001 April 22, 1999 March 7, 1991 May 16, 1994 April 26, 1994 March 26, 1996 1996 102(b) 102(b) & (e) 102(b) & (e) 102(b) & (e) 102(b) & (e) 102(a) 102(a) 102(b) & (e) 102(b) & (e) 102(b) 1998 102(b) Oct. 4, 1995 April 10, 1997 July 1994 102(b) 102(b) July 1995 102(b) A/73378224.6 4 Prior Art Reference Filing/Priority Date 17. U.S. Patent No. 5,764,994 to Craft Sept. 16, 1996 18. European Pat. App. EP665496A1 to Gramlich, et al. 19. Robert M. Gray, "Fundamentals of Data Compression," In International Conference on Information, Communications and Signal Processing, Singapore, 1997. 20. U.S. Patent No. 5,835,701 to Hastings June 21, 1991 21. U.S. Patent No. 5,260,693 to Horsley 22. U.S. Patent No. 5,974,254 to Hsu 23. J.W. Hunt, "An Algorithm for Differential File Comparison," Computer Science Technical Report 41, July 1976. 24. James Hunt, "Delta Algorithms: An Empirical Analysis," ACM Transactions on Software Engineering and Methodology, vol. 7. No. 2, April 1998, pp. 192-214. 25. U.S. Patent No. 6,330,712 to Iwaya 26. U.S. Patent No. 6,526,574 to Jones 27. U.S. Patent No. 3,969,723 to Kennicott 28. U.S. Patent No. 6,289,509 to Kryloff 29. James R. Larus, et al. "Rewriting Executable Files to Measure Program Behavior," University of Wisconsin Computer Sciences Technical Report 1083 (March 1992). 30. James R. Larus, et al. "Rewriting Executable Files to Measure Program Behavior," 24 Software - Practice & Experience Iss. 2, 197-218 (1994). 31. U.S. Patent No. 5,790,856 to Lillich 32. Webb Miller, et al. "A File Comparison Program" 15(11) Software Practices and Experience 1025-1040 (Nov. 1985). Oct. 11, 1991 June 6, 1997 Issue/ Publication Date June 9, 1998 Jan. 4, 1995 Sept. 9, 1997 Applicability 102(b) & (e) 102(b) 102(b) Nov. 10, 1998 Nov. 9, 1993 Oct. 26, 1999 July 1976 April 1998 102(e) 102(b) & (e) 102(e) 102(b) 102(b) Nov. 9, 1998 July 15, 1997 July 3, 1974 Sept. 1, 1998 Dec. 11, 2001 Feb. 25, 2003 July 13, 1976 Sept. 11, 2001 March 1992 102(a) 102(e) 102(b) & (e) 102(a) 102(b) Oct. 24, 1994 102(b) May 8, 1995 Aug. 4, 1998 Nov. 1985 102(b) & (e) 102(b) A/73378224.6 5 Prior Art Reference 33. Jeffrey Mogul, et al. "Potential benefits of delta encoding and data compression for HTTP," Digital Equipment Corporation Western Research Laboratory, 1997. 34. U.S. Patent No. 6,360,363 to Moser 35. Raju Pandey, "Providing FineGrained Access Control for Mobile Programs Through Binary Editing," Computer Science Department, University of California, Davis Technical Report TR-98-08. 36. U.S. Patent No. 6,466,999 to Sliger 37. U.S. Patent No. 5,479,654 to Squibb 38. U.S. Patent No. 5,745,906 to Squibb 39. U.S. Patent No. 5,752,039 to Tanimura 40. U.S. Patent No. 5,546,586 to Wetmore, et al. Filing/Priority Date Issue/ Publication Date Sept. 17, 1997 Applicability 102(b) Dec. 30, 1998 Mar. 19, 2002 1998 102(a) 102(b) Mar. 31, 1999 April 26, 1990 Nov. 14, 1995 Mar. 22, 1993 May 6, 1993 Oct. 15, 2002 Dec. 26, 1995 April 28, 1998 May 12, 1998 Aug. 13, 1996 102(a) 102(b) & (e) 102(e) 102(b) & (e) 102(b) & (e) Red Bend's United States application claimed priority to Israeli Application PCT/IL 99/00446, filed with the Israeli Patent Office on August 19, 1998. The U.S. application, App. No. 09/376,512, was filed on August 18, 1999. The Israeli application is directed entirely to "programs." The term "data table" does not appear anywhere in the specification or claims of the Israeli application, and first appears in the United States application. Therefore, to the extent "data table" is construed not to be synonymous with "program" in the context of the `552 patent, claims 42-46, 55-60, and 62-67 are entitled to a priority date no earlier than August 18, 1999. II. Anticipation Independent claims 8, 21, 42, and 55, and asserted dependent claims 11, 24, 28, 45, 58, and 62 are anticipated by the Wetmore `713 patent, and therefore invalid under 35 U.S.C. 102. Attached hereto at Appendices A and B are charts detailing the correspondence between the asserted claim elements and the Wetmore `713 patent. A/73378224.6 6 The Wetmore `713 patent discloses all of the steps required by the asserted independent claims of the `552 patent, namely: (a) generating a modified old program (a vectorized program that replaces references with invariant values); (b) generating a modified new program (a vectorized program where the invariant references are the replaced, vectorized addresses); and (c) generating a difference result between the modified old and modified new programs (generating a difference result between the vectorized programs) to generate a difference result. Wetmore thus anticipates all of the asserted claims, rendering them invalid under 35 U.S.C. 102 and/or 103. Specifically, Wetmore discloses methods and apparatus for patching or updating an executable program that would normally reside in read-only memory ("ROM"). To allow patching, the ROM code is first modified--or "vectorized" in the language of Wetmore-- to replace references with labels that are jumps to modifiable code residing in random access memory ("RAM"). Program patches or updates are then created by generating the difference results between the "vectorized" versions of the old and new executable programs. The difference result is provided to the user's computer to update or patch the executable program, and the user's computer generates the updated executable program based upon the difference results and executable program already present at the user's computer. III. Obviousness All asserted claims of the `552 patent are rendered obvious, and therefore invalid under 35 U.S.C. 103, by at least the following references: the Wetmore `713 patent, the Batalden reference, the Dummermuth `853 patent, the Sadowsky `796 patent, and the Coppieters reference. It would have been well within the grasp of a person of ordinary skill in the art at the time of the alleged invention to combine these references. A/73378224.6 7 As described above, the Wetmore `713 patent discloses a pre-processing step whereby the old and new programs are modified before being compared to generate the difference result, and also discloses the updating of executable programs. The Batalden reference is likewise directed to executable programs and requires pre-processing of the old and new programs before being loaded into memory. The Dummermuth `853 patent expressly discloses the problem of line shifting that occurs with deletions and insertions into executable program code and provides the same solution to the problem that the `552 patent relies upon, namely that the internal references in the program code are replaced by invariant references. The Sadowsky `796 patent and the Coppieters reference both disclose the well known step of transmitting difference results over a communications network, with the Sadowsky `796 patent disclosing updating software using a host server, a conventional Web page, or a file server, and that the communications channel may be the Internet. The Sadowsky `796 patent also discloses that programs can be updated either by new disks (as is disclosed in the Wetmore `713 patent), via a BBS, an Internet service provider, or the Internet. Attached hereto at Appendix B are charts detailing the correspondence between the asserted claim elements and, respectively, the Wetmore `713 patent, the Batalden reference, the Dummermuth `853 patent, the Sadowsky `796 patent, and the Coppieters reference. In addition, the Larus reference, the Benson `492 patent, the Craft `994 patent, the Hastings '701 patent, the Tanimura `039 patent (which is cited on the face of the `552 patent), the Agarwal `541 patent, and the Baker "Compressing Differences of Executable Code" reference, for example, qualify as prior art as set forth above and render the `552 patent invalid under 35 U.S.C. 103. A/73378224.6 8 The validity of the Asserted Claims is not supported by secondary evidence of nonobviousness such as industry acquiescence in the form of patent licenses, unexpected results, the prior failure of others, skepticism, long-felt need, commercial success, or copying. Red Bend has not licensed the `552 patent to any third party. Although Red Bend has licensed its proprietary software, those software licenses make no mention of the `552 patent and are not evidence of industry acquiescence as to its validity. Red Bend has never provided a claim chart identifying what elements of its software products practice the claimed invention, and has thus failed to present cognizable evidence that its product(s) practice the `552 patent. Even if one or more Red Bend products has been shown to practice the `552 patent, there is no evidence that any purported commercial success of those product(s) is attributable to the invention of the `552 patent. IV. Additional Bases for Invalidity A. The `552 patent is not enabled. Independent claims 8, 12, 21, 25, 42, 46, 55, and 59 are not enabled under 35 U.S.C. 112 because the specification does not teach a person having ordinary skill in the art how to make and use the full scope of the claimed invention without undue experimentation. For example, the method described for computing the desired invariant references, and in particular determining the position and size of deleted or inserted program fragments and applying the equivalent changes, cannot be implemented as described without undue experimentation. B. Independent claims 8, 12, 21, 25, 42, 46, 55, and 59 are indefinite. Independent claims 8, 12, 21, 25, 42, 46, 55, and 59 are invalid under 35 U.S.C. 112, 2 because they fail to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Specifically, the terms "directly or indirectly," "substantially A/73378224.6 9 each reference," and "compact difference result" are indefinite within the meaning of 112, 2, because one skilled in the art would not understand the bounds of the claims in which they appear when read in light of the specification. Because independent claims 8, 12, 21, 25, 42, 46, 55, and 59 are indefinite and therefore invalid, all claims depending from them are also indefinite and invalid. Google reserves its right to supplement or amend its contentions based upon further investigation, discovery, the Court's claim construction rulings, or as otherwise warranted. A/73378224.6 10 Respectfully Submitted, GOOGLE, INC. By its attorneys, /s/ David M. Magee Jonathan M. Albano, BBO # 013850 jonathan.albano@bingham.com David M. Magee, BBO # 652399 david.magee@bingham.com BINGHAM McCUTCHEN LLP One Federal Street Boston, MA 02110-1726, U.S.A. 617.951.8000 William F. Abrams william.abrams@bingham.com BINGHAM McCUTCHEN LLP 1900 University Avenue East Palo Alto, CA 94303-2223 650.849.4400 Robert C. Bertin robert.bertin@bingham.com Susan Baker Manning susan.manning@bingham.com Elizabeth B. Austern Elizabeth.austern@bingham.com BINGHAM McCUTCHEN LLP 2020 K Street, NW Washington, DC 20006-1806 202.373.6000 Dated: May 26, 2010 Certificate of Service I hereby certify that this document filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) and paper copies will be sent to those indicated as non-registered participants, by federal express, on May 26, 2010. /s/ David M. Magee David M. Magee, BBO # 652399 . A/73378224.6 11

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