NetJumper Sofware L. L. C. v. Google, Incorporated

Filing 86

MARKMAN BRIEF by Google, Incorporated. (Attachments: # 1 Index of Exhibits Index of Exhibits# 2 Exhibit Exhibit 1 Proposed Claim Constructions# 3 Exhibit Exhibit 2 U.S. Patent No. 5,890,172# 4 Exhibit Exhibit 3 (1 of 3) '172 Pat. Pros. History# 5 Exhibit Exhibit 3 (2 of 3) '172 Pat. Pros. History# 6 Exhibit Exhibit 3 (3 of 3) '172 Pat. Pros. History# 7 Exhibit Exhibit 4 IEEE Dictionary p. 747# 8 Exhibit Exhibit 5 (1 of 2) '655 Pat. Pros. History# 9 Exhibit Exhibit 5 (2 of 2) '655 Pat. Pros. History)(Wolff, Jason)

NetJumper Sofware L. L. C. v. Google, Incorporated

Doc. 86 Att. 2

Case 2:04-cv-70366-JAC-RSW

Document 86-3

Filed 07/11/2006

Page 1 of 3

EXHIBIT 1

Dockets.Justia.com

Exhibit 1: Proposed Constructions for Claims 1-8 of the '172 Patent
Term 1 First Found at Claim [1a], [5a] Google's Construction The preambles are not limitations, but even if they were, there is no support for NetJumper's construction, which ignores the majority of the terms and inserts new limitations that have no relationship to the plain language of preambles. NetJumper's Construction2 The "concept of a `search'" is required. This includes "enter[ing] keywords or terms to search the Internet," but does not cover "enter[ing] an already known URL into a small display field generated by the software."3

(1) [Preambles] "...for searching on a local computer a network of nodes with data files stored at corresponding ones of the nodes and each of the data files identifiable by a location identifier and several of the data files containing location identifiers for others of the data files..." [1e], [5e] (2) "parsing", "parse" (3) "form"

[1e], [5e]

The act of examining a string of text, Extracting information or data from a file. breaking it into subunits, and establishing the relationships among the subunits.4 The act of forming or creating, but not storing, typically in volatile computer memory. 5

The dispute on issues (1) and (6) concern the prior art and the validity of the '172 patent. The dispute on issues (2)-(5) (all part of the "parsing clause") concern the alleged infringement of claims 1-8 of the '172 patent. 2 Assumed from NetJumper's Opposition to Google's Motion for Summary Judgment (Document No. 54), updated infringement contentions (Document No. 62, Exhibit 4), and NetJumper's expert reports on liability. 3 NetJumper's Expert Rebuttal Report of Bernard Galler, at 12 and 16. NetJumper's Opposition to Google's Motion for Summary Judgment argued that CyberPilot did not anticipate the patent because it "lack[ed] a search capability: one does not enter keywords or terms to search the Internet for, but enters an already known URL." See Document No. 54, at 32. The new construction adds the "small display field generated by the software." The intrinsic support for these limitations, including the new ones, is not apparent. 4 See Exhibit 4, Institute of Electrical and Electronic Engineers ("IEEE"), Dictionary of Electrical and Electronic Terms (1996), at 747; see also Exhibit 5 ('655 patent prosecution history), at G 351 (claim 1) and G 446-447 (response to Office action). 1

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Exhibit 1: Proposed Constructions for Claims 1-8 of the '172 Patent
(4) "storing" (5) "in response to selection of a first icon" [1e], [5e] [1e], [5e] The act of persistently storing or saving, such as to a computer disk drive, for example as a file.6 Referring to the acts of parsing, forming, and storing, they are performed in direct response to, and only if, the first icon was selected, which cannot happen until after the initial data file is retrieved and displayed.7 One member of the group is required.

(6) "a group consisting of [members]"

[4], [8]

Contends that parsing is not "optional" and may be automatic; also contends that selection of the first icon does not have to happen after the initial data file is retrieved and displayed, in other words, it may happen before the initial data file is retrieved and displayed too. All members of the group are required; has also suggested, but not clarified, that there is an "automation" limitation.8

See, e.g., Exhibit 2 ('172 patent), at 7:15-21; see also 6:41-7:15 (describing Figure 3), 8:22-28 (describing Figure 5B), and 10:1-17 (describing Figure 8A, steps 802 and 804), Exhibit 3 ('172 patent prosecution history), at G 260. 6 Id. 7 See Exhibit 2, at 6:41-7:15, describing Figure 3, 7:15-21, 10:1-17, describing Figure 8A, steps 802 and 804; Exhibit 3, at G 125, G 208, G 213, and G 260-61. 8 NetJumper's Opposition to Google's Motion for Summary Judgment (Document No. 54), at 36 and its attached Exhibit 2 (Galler Declaration), at 30-31. 2

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