Polaris IP, LLC v. Google Inc. et al

Filing 339

RESPONSE in Opposition re 322 SEALED MOTION Emergency Supplemental Brief in Support of January 25, 2010 Motion to Compel Yahoo! Inc. to Comply with Court Order of November 5, 2009 and Produce Source Code in Native Format filed by Yahoo!, Inc.. (Attachments: # 1 Declaration of Scott Sherwin, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Declaration of Jennifer Doan, # 5 Exhibit 3, # 6 Exhibit 4)(Doan, Jennifer)

Exhibit 2

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION BRIGHT RESPONSE, LLC, Plaintiff, v. GOOGLE INC., et al.; Defendants. JURY TRIAL DEMANDED PLAINTIFF'S SUPPLEMENTAL DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS Bright Response, LLC ("Bright Response") provides the following Supplemental Disclosure of Asserted Claims and Infringement Contentions relative to Defendant Yahoo! Inc. ("Yahoo"). This disclosure supplements Bright Response's disclosures of June 6, 2008 and is made solely for the purpose of this action. Discovery in this matter is ongoing. Yahoo has only recently begun producing source code, and additional code productions and technical depositions are anticipated. Bright Civil Action No. 2:07-cv-371-TJW-CE

Response's investigation regarding these and other potential grounds of infringement is ongoing. This supplemental disclosure is therefore based upon information that Bright Response has been able to obtain publicly, and from the documents and source code produced thus far, together with Bright Response's current good faith beliefs regarding the Accused Instrumentalities, and is given without prejudice to Bright Response's right to obtain leave to supplement or amend its disclosure as additional facts are ascertained, analyses is made, research is completed and claims are construed. Restricted Confidential Source Code

These disclosures are based at least in part upon Bright Response's present understanding of the meaning and scope of the claims of U.S. Patent No. 6,411,947 ("the `947 patent") in the absence of claim construction proceedings or discovery. Bright Response reserves the right to seek leave to supplement or amend these disclosures if its understanding of the claims changes, including if the Court construes them. Patent Rule 3-1(a) Based on the information presently available, Bright Response states that Yahoo infringes at least claims 26, 27, 33, and 38-40 of the `947 Patent. With respect to claims 26, 27 and 38-40, see examples in the original Yahoo Exhibit served on June 8, 2008, which is expressly incorporated herein by reference. Further, with respect to claims 26 and 33, see Examples in the attached Supplemental Yahoo Exhibit. Patent Rule 3-1(b) The claims asserted against Yahoo (see claims charted in the examples provided in the Yahoo Exhibit served on June 8, 2008, which is expressly incorporated herein by reference and the Supplemental Yahoo Exhibit, attached hereto) are directed to various claimed methods comprising automatically processing a non-interactive electronic message, for example user queries, searches, clicks, advertising requests, using a computer, for example, the servers and other computers used in connection with the www.yahoo.com website, including Yahoo Search, Yahoo Sponsored Search, Yahoo Search Marketing, Yahoo Partner Network and the various systems, subsystems and components utilized by the foregoing, including, without limitation, Overture services, Yahoo Search Technology, Panama, Smart Ads, Exact Match, Keystone, Content Match, Subphrase Match, Orthographic Match, Domain Match, King Kong, Godzooky, Behavioral Targeting, Fusion, Dynamic Unit Display Engine (DUDE), Modular Dynamic

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Optimized Sets (MODS), Direct Traffic Center (DTC), Hubble, Elcaro, Distro, Prisma, and Vespa (collectively "Yahoo Search" or the "Accused Instrumentalities"). The Accused Instrumentalities further include any methods systems and/or apparatuses, comprising, linked with, functionally operational with and/or integrated with Yahoo Search, including any insubstantially different versions thereof, and including predecessor versions thereof, and further including any or Yahoo's other methods or apparatuses that function in the same or similar fashion, since August 27, 2001. In addition, upon information and belief, Yahoo has methods which are presently either not known or understood by Bright Response, including search and advertising methods whose operation is not publicly known. Bright Response cannot know how such systems function without discovery, including source code. For example, while some source code has been produced, Yahoo has not accurately represented that it has produced all source code sufficient to show the operation of the entirety of the Accused Instrumentalities. Bright Response anticipates that Yahoo will comply with its disclosure obligations relative to such systems, including all other systems that function the same or similar to the Accused Instrumentalities or that otherwise fall within the scope of Bright Response's discovery requests and/or Yahoo's disclosure obligations. Accordingly, Bright Response reserves the right to further supplement and/or amend these infringement contentions in accordance with P.R. 3-6. Patent Rule 3-1(c) Based on the information presently available, Bright Response provides the charts at the Yahoo Exhibit served on June 8, 2008, which is expressly incorporated herein by reference and the Supplemental Yahoo Exhibit attached hereto. Such charts contain representative examples of infringement by the Accused Instrumentalities.

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Bright Response contends that the asserted claims are directly infringed by at least the making and using, including hosting, of the Accused Instrumentalities. Additionally, or in the alternative, if Yahoo is deemed not to directly infringe the asserted claims, then Bright Response contends Yahoo indirectly infringes such claims. Without limitation, Bright Response contends that Yahoo indirectly infringes the asserted claims by actively and knowingly aiding and abetting others -- including without limitation the end users of the Accused Instrumentalities, and/or, on information and belief, any web hosts or other service providers who make or use the Accused Instrumentalities ­ to directly infringe the asserted claims of the `947 patent once Yahoo knew of the `947 patent. Additionally, or in the alternative, Bright Response contends on information and belief that Yahoo indirectly infringes the asserted claims by contributing to the infringement by others, including without limitation by end users of the Accused Instrumentalities, and/or, on information and belief, any web hosts or other service providers who make or use the Accused Instrumentalities, because Yahoo knew that the combination for which their components were especially made was both patented and infringing and that Yahoo's components have no substantial non-infringing uses. Additionally, or in the alternative, if Yahoo is deemed not to directly infringe the asserted claims, then Bright Response contends that Yahoo jointly infringes such claims, including without limitation with end users of the Accused Instrumentalities, and/or, on information and belief, any web hosts or other service providers who make or use the Accused Instrumentalities, under Yahoo's direction and/or control. Patent Rule 3-1(d) At this time, based on the information presently available, it appears that each element of each asserted claim is literally infringed by the Accused Instrumentalities. To the extent any limitation of the asserted claims are found to not be present literally, then Bright Response

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contends that if there are any differences between the claim elements and the Accused Instrumentalities, the differences are insubstantial, and the instrumentalities would therefore infringe under the doctrine of equivalents. Patent Rule 3-1(e) The asserted claims of the `947 patent claim priority to U.S. Provisional Application Serial Nos. 60/042,656 filed April 4, 1997 and 60/042,494 filed April 3, 1997. Upon

information and belief, each asserted claim is entitled, via its earliest effective filing date, at least to the priority date of at least April 3, 1997, and, upon information and belief, each asserted claim may be entitled to a priority date of at least a year prior. Patent Rule 3-1(f) Bright Response does not claim that its own apparatus, product, device, process, method, act, or other instrumentality practices the invention claimed by the `947 patent.

Respectfully submitted, BRIGHT RESPONSE, LLC Dated: January 22, 2010 By: /s/Patrick R Anderson Andrew W. Spangler - Lead Counsel TX Bar No. 24041960 E-mail: [e-mail] SPANGLER LAW P.C. 208 N. Green Street, Suite 300 Longview, Texas 75601 Telephone: [phone] Facsimile: 903/553-0403 David M. Pridham, R.I. Bar # 6625 E-mail: [e-mail] LAW OFFICE OF DAVID PRIDHAM 25 Linden Road Barrington, Rhode Island 02806

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Telephone: [phone] Facsimile: 401/633-7247 John M. Bustamante, TX Bar No. 24040618 BUSTAMANTE, P.C. 54 Rainey Street, No. 721 Austin, Texas 78701 Telephone: [phone] Facsimile: 512/551.3773 [e-mail] Marc A. Fenster, CA Bar No. 181067 E-mail: [e-mail] Stanley H. Thompson, Jr. CA Bar No.198825 Email: [e-mail] Alexander C. Giza CA Bar No. 212327 RUSS, AUGUST & KABAT 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Telephone: [phone] Facsimile: 310/826-6991 Debera W. Hepburn Texas State Bar No. 24049568 Hepburn Law Firm PLLC P.O. Box 118218 Carrollton, TX 75011 214-403-4882 (Telephone) 888-205-8791 (Facsimile) E-mail: [e-mail]
Elizabeth A. Wiley Texas State Bar No. 00788666 P.O. Box. 303280 Austin, Texas 78703-3280 Telephone: [phone] Facsimile: [phone] Email: [e-mail]

Alan Brooks Texas State Bar No. 24064952 Alan Brooks Law Firm, PLLC 1317 California Pkwy South Fort Worth, Texas 76134

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Telephone: [phone] Email: [e-mail] ATTORNEYS FOR PLAINTIFF BRIGHT RESPONSE, LLC

CERTIFICATE OF SERVICE I hereby certify that the lead counsel of record, Jason White is being served today with a copy of this document via electronic mail. Dated: January 22, 2010 /s/ Patrick R. Anderson

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