Polaris IP, LLC v. Google Inc. et al

Filing 392

SEALED MOTION for Summary Judgment of Invalidity by AOL, LLC., America Online, Inc., Google Inc., Yahoo!, Inc.. (Attachments: # 1 Affidavit of Todd Kennedy, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit L, # 14 Exhibit M, # 15 Exhibit N, # 16 Exhibit O, # 17 Affidavit of Bradley Allen, # 18 Exhibit A, part 1 of 2, # 19 Exhibit A, part 2 of 2, # 20 Exhibit B)(Perlson, David) Modified on 7/2/2010 (ch, ). (Additional attachment(s) added on 7/2/2010: # 21 Text of Proposed Order) (ch, ).

Polaris IP, LLC v. Google Inc. et al

Doc. 392 Att. 9

EXHIBIT H

Dockets.Justia.com

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION BRIGHT RESPONSE, LLC v. GOOGLE INC., et al. 2:07-CV-371-CE JURY

PLAINTIFF'S OBJECTIONS AND SUPPLEMENTAL RESPONSES TO DEFENDANTS'FIRST SET OF INTERROGATORIES Bright Response, LLC ("Bright Response") objects and responds to the Defendants first set of interrogatories, as follows: GENERAL STATEMENTS 1. No incidental or implied admissions are intended by the responses herein. The fact that

Bright Response has responded to or objected to any discovery request should not be taken as an admission that Bright Response accepts or admits the existence of any "fact" set forth or assumed by the same. The fact that Bright Response has responded to part or all of any discovery request is not intended to be, and shall not be construed to be, a waiver by Bright Response of any part of any objection to the discovery request. The fact that Bright Response states a willingness to produce any documents in his possession, custody or control should not be taken as an indication that any such documents exist. 2. These responses are made solely for the purpose of this action. Each response is subject

to all objections as to competence, relevance, materiality, propriety, and admissibility, and to any other objections on any grounds that would require the exclusion of any information produced at time of trial. By responding to the discovery requests, Bright Response does not waive any objection that may be applicable to: (1) the use, for any purpose, of documents or information given in response to the discovery requests; (2) the admissibility, privilege, relevancy,

authenticity, or materiality of any documents or information given in response to these discovery requests; or (3) other discovery involving or relating to the subject matter of these requests or responses. Bright Response expressly reserves the right to object to the use of information provided herewith during any subsequent proceeding, including the trial of this or any other action. 3. These objections are made based on present information and belief predicated upon

information presently available and Bright Response's present understanding, if any, of the discovery requests. These objections are subject to supplementation and amendment should additional information become known to Bright Response. GENERAL OBJECTIONS 1. Bright Response objects to the definitions, instructions and requests to the extent they

require responsive discovery beyond the scope of discovery permitted by the Federal Rules of Civil Procedure and/or Local Rules, or purport to impose any requirement or burden that is beyond or inconsistent with that imposed by the Federal Rules of Civil Procedure and/or local rules. Without limitation, relative to the foregoing the following objections are made: A. Bright Response objects to the terms "Plaintiff," "Polaris," "Bright Response"

and/or "You" to the extent they are overbroad and unduly burdensome, and to the extent they seek to impose any burdens beyond the scope of the Federal Rules of Civil Procedure or local rules. In responding to these discovery requests, Bright Response will interpret "Plaintiff," "Polaris," "Bright Response" and/or "You" to be Bright Response, LLC (f/k/a Polaris IP, LLC) and anyone acting in the capacity as an officer, member, employee or agent of Bright Response, LLC.

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B.

Bright Response objects to the term "Document(s)" to the extent it seeks to

impose any burdens beyond the scope of the Federal Rules of Civil Procedure and/or local rules. C. Bright Response objects to the term "prior art" to the extent it is vague and/or

calls for a legal conclusion as to what constitutes prior art. D. Bright Response objects to the term "Identify" because it is overbroad and unduly

burdensome and to the extent it seeks to impose any burdens beyond the scope of the Federal Rules of Civil Procedure or local rules. In responding to these discovery requests, Bright Response shall reasonably identify and/or describe any responsive documents, communications, etc. E. Bright Response objects to the terms "reflect," reflecting," "relate to," refer to,"

"relating to" and "referring to" to the extent they are vague, overbroad and unduly burdensome. In responding to these discovery requests, Bright Response will use the ordinary and customary meaning of such terms. 2. Bright Response objects to instructions 1 - 3 to the extent they are unduly burdensome or

seek to impose any burdens beyond the scope of the Federal Rules of Civil Procedure or local rules. In responding to Google's discovery requests, Bright Response will use comply only with the requisites of the Federal Rules of Civil Procedure or local rules. In addition, Bright Response will comply with the Court's requirements for privilege logs and not any additional requirements sought to be imposed by Defendants. 3. Bright Response objects to the discovery requests to the extent that they call for

documents or information that are protected by the attorney-client privilege, prepared in anticipation of litigation or for trial, or that are otherwise protected from discovery by the attorney work product doctrine or any other applicable privilege, law, rule, or immunity, 3 ATTORNEY'S EYES ONLY

including without limitation the common interest and/or settlement privilege, in that such material is not properly discoverable. Such privileged documents will not be produced. Without limitation, any of Bright Response's communications with its counsel are protected from disclosure by at least the attorney-client privilege. Also, any acts or communications done in anticipation of litigation are protected from disclosure by at least the work product or common interest privileges. Also, settlement matters including settlement communications are protected from disclosure by at least the settlement privilege. 4. Bright Response objects to the discovery requests to the extent that they are vague, overly

broad, unduly burdensome, or seek the disclosure of documents or information that are not relevant to any claim or defense in this action, nor reasonably likely to lead to the discovery of admissible evidence that is relevant to any claim or defense. 5. Bright Response objects to the discovery requests to the extent they seek information

documents not reasonably available to Bright Response or otherwise within Bright Response's possession, custody or control. 6. Bright Response objects to the discovery requests to the extent that they seek all

information or documents concerning, relating to or referring to a particular document or subject on the grounds of overbreadth and undue burden. 7. Bright Response objects to the discovery requests to the extent they are not confined to a

relevant time period because this is overbroad and unduly burdensome, and seeks information neither relevant nor reasonably calculated to lead to the discovery of admissible evidence. 8. Bright Response objects to the discovery requests to the extent (i) the discovery sought is

unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive; (ii) the requesting party has had ample 4 ATTORNEY'S EYES ONLY

opportunity by discovery to obtain the information sought; or (iii) the burden or expense of the proposed discovery outweighs its likely benefit, taking into account the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the litigation, and the importance of the proposed discovery in resolving the issues. 9. Bright Response objects to the discovery requests to the extent they would require Bright

Response to disclose information, produce documents or take other actions in violation of a protective order. 10. These general objections are incorporated into Bright Response's objections to each and

every discovery request, and are set forth here to avoid the duplication and repetition of restating them for each request. Any documents or information provided by Bright Response responsive to the discovery requests will be made subject to and without waiver of the general and specific objections. The failure to include any generally objection in response to any request shall not constitute a waiver of any general objection to that request. From time to time, a specific objection may restate a general objection for emphasis or some other reason. By making a specific objection to a particular request, Bright Response does not imply that the specific objection is not applicable to any other request, or that the general objections are not applicable to that request. RESPONSES TO INTERROGATORIES INTERROGATORY NO. 1: For each claim of the `947 PATENT, describe in detail all facts RELATING TO its conception and reduction to practice, including IDENTIFYING the date of conception, the date of reduction to practice of its subject matter, all acts YOU contend represent diligence occurring between the dates of conception and reduction to practice, each person involved in such 5 ATTORNEY'S EYES ONLY

conception, diligence and/or reduction to practice, where the invention was first reduced to practice, when, where, and to whom the invention was first disclosed, and IDENTIFYING each person, including third parties, who worked on the development of the alleged invention(s) described and claimed in the `947 PATENT, describing each person's role (e.g., producer, developer, tester, technician, researcher, etc.) and the dates and places each such person assisted, supervised, or was otherwise so involved. RESPONSE: Subject to and without waiving the general objections, Bright Response objects to this interrogatory because it has multiple discrete subparts, at least according to the interpretation of subparts asserted by Defendants relative to Bright Response's interrogatories. Bright Response also objects to this interrogatory to the extent it requests information covered by the attorneyclient privilege and/or work product doctrine. Bright Response further objects to this

interrogatory because it is premature in advance of inventor depositions and/or testimony, and/or premature in advance of expert disclosures. In addition, Bright Response objects to this

interrogatory as being overbroad and unduly burdensome, including because it seeks information from Bright Response which is more properly the subject of inventor and/or expert testimony. Subject to and without waiving the general and specific objections, Bright Response responds as follows: The asserted claims of the `947 patent claim priority to U.S. Patent Application No. 08/853,074 and U.S. Provisional Application 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, due to the 6 ATTORNEY'S EYES ONLY

inventors' conception and diligent reduction to practice of the invention, of at least April 4, 1996. Regarding the facts related to conception and reduction to practice, Bright Responds intends to rely upon the testimony of the inventors, which is incorporated herein as applicable. Bright Response reserves the right to supplement this response as appropriate as discovery in this case proceeds. SUPPLEMENTAL RESPONSE: Subject to and without waiving the general and specific objections, Bright Response supplements its response as follows: the invention claimed in the `947 Patent were conceived and reduced to practice between approximately November 1995 and April 1996. For example, coinventor Amy Rice testified that she and other co-inventors of the `947 Patent began development of an application referred to as "EZ Reader" which incorporated rule-based and case-based reasoning to interpret electronic mail messages. See, e.g., Deposition Transcript of Amy Rice at 29:16-34:6. Between November 1995 and April 1996, Ms. Rice and Julie Hsu attempted to reduce the invention claimed in the '947 Patent to practice by developing and testing the EZ Reader application. Id. Ms. Rice and Ms. Hsu were responsible for the

development of the EZ Reader application. Rice at 26:10-11. Anthony Angotti, Fred Cohen, and Rosanna Piccolo, along with Ms. Rice and Ms. Hsu conceived or contributed to the conception of the invention claimed in the `947 Patent. Rice at 243:24-244:2. The inventors diligently worked to reduce the invention to practice between November 1995 and April 1996, as evidenced by the testimony of Ms. Piccolo, Ms. Rice and Mr. Angotti, each of whom testified about their respective roles with respect to development of the EZ Reader application. See also Rice 137:3-15 and Rice Exhibit 4 (also produced at RICE001403-06). INTERROGATORY NO. 2: 7 ATTORNEY'S EYES ONLY

Identify all patents, patent applications, publication, web sites, products, services, and methods that predate April 3, 1997 and RELATE TO automatic message interpretation and/or routing that were at any time known, made known to, or considered by PLAINTIFF and/or the named inventors of the `947 PATENT and how and when they became known and considered by PLAINTIFF and/or the named inventors of the `947 PATENT, and IDENTIFY all PERSONS who reviewed or considered them. RESPONSE: Subject to and without waiving the general objections, Bright Response objects to this interrogatory because it has multiple discrete subparts, at least according to the interpretation of subparts asserted by Defendants relative to Bright Response's interrogatories. Bright Response also objects to this interrogatory to the extent it requests information covered by the attorneyclient privilege and/or work product doctrine. Bright Response further objects to this

interrogatory because it is premature in advance of inventor depositions and/or testimony. In addition, Bright Response objects to this interrogatory as being overbroad and unduly burdensome, including because it seeks information from Bright Response which is more properly the subject of inventor testimony. Subject to and without waiving the general and specific objections, Bright Response responds as follows: Bright Response is not aware of any patents, patent applications, publication, web sites, products, services, and methods that predate April 3, 1997 and relate to automatic message interpretation and/or routing that were at any time known, made known to, or considered by the named inventors of the `947 patent. Bright Response was not formed in 1997, and it has no historical knowledge of any patents, patent applications, publication, web sites, products, 8 ATTORNEY'S EYES ONLY

services, and methods that predate April 3, 1997 and relate to automatic message interpretation and/or routing. Parties involved in litigation have produced alleged prior art to Bright Response in connection with their P.R. 3-3 contentions, and such documents have been produced in this litigation. Bright Response does not deem any such alleged prior art to be relevant to the '947 patent, and it is not aware of any other alleged prior art that has been asserted by third-parties as relevant to the '947 patent. SUPPLEMENTAL RESPONSE: Subject to and without waiving the general and specific objections, Bright Response supplements its response as follows: Upon information and belief, the prior art identified and deemed relevant by the persons responsible for the preparation and prosecution of the application that led to the `947 Patent is identified on one or more Information Disclosure Statements, Examiner's Notices of References Cited, or described in the body of the specification. Such prior art became known to Bright Response at or around the time Bright Response acquired the `947 Patent. Parties to the present litigation have identified alleged prior art in their P.R. 3-3 contentions, which became known to Bright Response on the dates such contentions were served. INTERROGATORY NO. 3: State whether PLAINTIFF contends there are secondary considerations that should be considered by the Court in connection with its determination pursuant to 35 U.S.C. § 103 of the validity of the `947 PATENT, and if the answer is anything other than an unqualified negative, identify each such secondary consideration and describe in detail PLAINTIFF'S contentions as to why each such secondary consideration demonstrates obviousness or non-obviousness and all facts in support thereof. 9 ATTORNEY'S EYES ONLY

RESPONSE: Subject to and without waiving the general objections, Bright Response objects to this interrogatory because it has multiple discrete subparts, at least according to the interpretation of subparts asserted by Defendants relative to Bright Response's interrogatories. Bright Response also objects to this interrogatory to the extent it requests information covered by the attorneyclient privilege and/or work product doctrine. Bright Response further objects to this

interrogatory because it is premature in advance of inventor depositions and/or testimony; depositions and/or testimony from current and/or former employees of Chase, Brightware and/or Firepond, and/or premature in advance of expert disclosures. In addition, Bright Response objects to this interrogatory as being overbroad and unduly burdensome, including because it seeks information from Bright Response which is more properly the subject of inventor testimony. Subject to and without waiving the general and specific objections, Bright Response responds as follows: Bright Response contends that the invention covered by the asserted claims had a long felt but unresolved need, including as evidenced by the combination of patented features being absent from the prior art, and Bright Response reserves the right to introduce inventor, expert or other testimony regarding this issue. Bright Response contends that others failed at inventing what is covered by the claims, including as evidenced by the combination of patented features being absent from the prior art, and Bright Response reserves the right to introduce inventor, expert or other testimony regarding this issue.

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The patented invention received praise by others, including the AAAI and Chase, as evidenced by the AAAI's publication and award, and as evidenced by press releases and articles about EZ Reader which have been produced in this litigation. Bright Response contends, upon information and belief, that the invention was copied by the Defendants, including as evidenced by their infringement. Bright Response reserves the right to introduce inventor, expert or other testimony regarding secondary considerations. To the extent Bright Response's expert disclosures relate to this issue, they are incorporated by reference herein. Bright Response will supplement this interrogatory response as appropriate. SUPPLEMENTAL RESPONSE: Subject to and without waiving the general and specific objections, Bright Response supplements its response as follows: Bright Response contends that the invention covered by the asserted claims had a long felt but unresolved need, including as evidenced by the combination of patented features being absent from the prior art. For example, in her deposition, Ms. Rice identified a product that used only case-based reasoning. Rice at 37:13-38:25. Further, as discussed at length in the

specification of the `947 Patent, U.S. Pat. No. 5,581,664 to Allen et al. ("Allen"), which was representative of the state of the art at the time of invention of the `947 Patent, failed to present a scalable solution to a company experiencing a growing volume of incoming electronic messages. Bright Response contends that others failed at inventing what is covered by the claims, including as evidenced by the combination of patented features being absent from the prior art. For example, in her deposition, Ms. Rice identified a product that used only case-based reasoning. Rice at 37:13-38:25. Further, as discussed at length in the specification of the `947 11 ATTORNEY'S EYES ONLY

Patent, Allen, which was representative of the state of the art at the time of invention of the `947 Patent, failed to present a scalable solution to a company experiencing a growing volume of incoming electronic messages. Bright Response contends that the inventions covered by the asserted claims, including the Defendants' accused products, have enjoyed commercial success and industry acclaim. The evidence includes, for example,

http://www.businessweek.com/technology/content/feb2010/tc2010027_356976.htm INTERROGATORY NO. 4: IDENTIFY and describe in detail all the manners or techniques by which the `947 PATENT improved upon the PRIOR ART, added functionality that did not exist in the PRIOR ART, or provided a variation on or upgrade of the PRIOR ART and for each such claimed improvement, added functionality, or variation or upgrade, state whether PLAINTIFF contends it was a non-obvious or unpredictable improvement, addition of functionality, variation or upgrade and why and identify all facts in support thereof, addressing in particular whether the use of a rule-based and case-based knowledge engine for interpreting electronic messages existed or was known in the prior art or was obvious to one of ordinary skill, and, if not, whether there were any factors that would dissuade such a person from using a rule-based and case-based knowledge engine to interpret electronic messages. RESPONSE: Subject to and without waiving the general objections, Bright Response objects to this interrogatory because it has multiple discrete subparts, at least according to the interpretation of subparts asserted by Defendants relative to Bright Response's interrogatories. Bright Response also objects to this interrogatory to the extent it requests information covered by the attorney12 ATTORNEY'S EYES ONLY

client privilege and/or work product doctrine.

Bright Response further objects to this

interrogatory because it is premature in advance of expert disclosures. Also, Bright Response objects to this interrogatory because it is vague and unduly burdensome, including because it fails to identify the alleged prior art that Bright Response is supposed to compare against the claimed invention. In addition, Bright Response objects to this interrogatory as being overbroad and unduly burdensome, including because it seeks information from Bright Response which is more properly the subject of expert testimony. Subject to and without waiving the general and specific objections, and without divulging privileged information, and in the absence of expert disclosures, Bright Response responds as follows: Bright Response is not aware of any prior art that practices or that would render obvious any claims of the '947 patent, particularly those directed to methods for automatically processing non-interactive electronic messages using computer, comprising receiving electronic messages from sources, interpreting the electronic messages using a rule base and case base knowledge engine, and retrieving one or more predetermined responses corresponding to the interpretation of the electronic message from a repository for automatic delivery to the source. In addition, Bright Response is not aware of any prior art that practices or that would render obvious the foregoing method wherein the source of the electronic message is not predetermined, wherein the predetermined response is altered in accordance the interpretation of the electronic message before delivery to the source, wherein the electronic message includes fixed data, or wherein the electronic message includes variable data. Bright Response contends that the invention covered by the asserted claims had a long felt but unresolved need, including as evidenced by the combination of patented features being 13 ATTORNEY'S EYES ONLY

absent from the prior art, and Bright Response reserves the right to introduce inventor, expert or other testimony regarding this issue. Bright Response contends that others failed at inventing what is covered by the claims, including as evidenced by the combination of patented features being absent from the prior art, and Bright Response reserves the right to introduce inventor, expert or other testimony regarding this issue. The patented invention received praise by others, including the AAAI and Chase, as evidenced by the AAAI's publication and award, and as evidenced by press releases and articles about EZ Reader which have been produced in this litigation. Bright Response contends, upon information and belief, that the invention was copied by the Defendants, including as evidenced by their infringement. To the extent that Defendants' technical experts submit expert disclosures alleging invalidity of the asserted claims due to prior art, Bright Response expects that its technical experts will submit rebuttal reports and/or testimony as appropriate in accordance with the Court's schedule and procedures. To the extent Bright Response's expert disclosures relate to this issue, they are incorporated by reference herein. Bright Response will supplement this interrogatory response as appropriate. SUPPLEMENTAL RESPONSE: Subject to and without waiving the general and specific objections, Bright Response supplements its response as follows: Bright Response contends that the invention covered by the asserted claims was a nonobvious and/or unpredictable improvement to the prior art. For example, in her deposition, Ms. Rice identified a product that used only case-based reasoning. Rice at 37:13-38:25. Further, as 14 ATTORNEY'S EYES ONLY

discussed at length in the specification of the `947 Patent, Allen, which was representative of the state of the art at the time of invention of the `947 Patent, failed to present a scalable solution to a company experiencing a growing volume of incoming electronic messages. INTERROGATORY NO. 9: IDENTIFY the date the EZ Reader application was first reduced to practice, including IDENTIFICATION of (a) the PERSON that performed such reduction to practice, (b) each PERSON with information RELATING TO such reduction to practice, including the substance of such information, (c) all facts that YOU contend support any diligence exercised in reducing to practice the EZ Reader application, including IDENTIFICATION of each DOCUMENT RELATING TO such diligence, each PERSON with information RELATING TO such diligence, including the substance of such information. RESPONSE: Subject to and without waiving the general objections, Bright Response objects to this interrogatory because it has multiple discreet subparts, at least according to the interpretation of subparts asserted by Defendants relative to Bright Response's interrogatories. Bright Response also objects to this interrogatory to the extent it requests information covered by the attorneyclient privilege and/or work product doctrine. Bright Response further objects to this

interrogatory because it is premature in advance of testimony from the inventors. In addition, Bright Response objects to this interrogatory as being overbroad and unduly burdensome, including because it seeks information from Bright Response which is more properly the subject of third party and/or expert testimony. Subject to and without waiving the general and specific objections, Bright Response responds as follows: 15 ATTORNEY'S EYES ONLY

Bright Response had no involvement with the reduction to practice of EZ Reader. Presumably at least the inventors of the '947 patent are knowledgeable about this issue. Bright Response intends to rely upon inventor testimony relative to this issue, which is incorporated herein by reference. A document that may relate to the reduction to practice of EZ Reader is the 1996 AAAI article entitled, EZ Reader: Embedded AI for Automatic Electronic Mail Interpretation and Routing, which has been produced. SUPPLEMENTAL RESPONSE: Bright Response further objects to this interrogatory as vague and ambiguous, including because Defendants meaning of "reduced to practice" in the context of the EZ Reader application does not make sense. Subject to and without waiving the general and specific objections, Bright Response supplements its response as follows: The EZ Reader application was a software application, which was distinct and separate from the invention claimed in the `947 Patent. Rice at 243:24244:2. Ms. Rice testified that she and other co-inventors of the `947 Patent began development of an application referred to as "EZ Reader," and developed that application between November 1995 and April 1996. Rice at 29:16-34:6. Ms. Rice and Ms. Hsu were responsible for the development of the EZ Reader application. Rice at 26:10-11.

INTERROGATORY NO. 11: IDENTIFY and fully explain the bases for your denial of DEFENDANTS' allegations of unenforceability in DEFENDANTS' Counterclaims for unenforceability, including your bases for denying paragraphs 14-17 and 20-23 of YAHOO's Counterclaims, paragraphs 19-20 and 2526 of GOOGLE's Counterclaims, and paragraphs 20-21 and 26-27 of AOL's Counterclaims. 16 ATTORNEY'S EYES ONLY

RESPONSE: Subject to and without waiving the general objections, Bright Response objects to this interrogatory because it has multiple discreet subparts, at least according to the interpretation of subparts asserted by Defendants relative to Bright Response's interrogatories. Bright Response also objects to this interrogatory to the extent it requests information covered by the attorneyclient privilege and/or work product doctrine. Bright Response further objects to this

interrogatory because it is premature in advance of testimony from the inventors. In addition, Bright Response objects to this interrogatory as being overbroad and unduly burdensome, including because it seeks information from Bright Response which is more properly the subject of testimony from inventors, experts and/or others. Subject to and without waiving the general and specific objections, Bright Response responds as follows: Bright Response denied the Defendants' allegations of inequitable conduct because they are baseless and unsubstantiated. The '947 patent is presumed enforceable by law, and clear and convincing evidence is required to overcome that production. Bright Response is not aware of any evidence, much less clear and convincing evidence, which substantiates the Defendants' allegations of inequitable conduct. Without limitation, Bright Response is not aware of any evidence that EZ Reader constitutes prior art under Section 102 of the Patent Act. For at least that reason, EZ Reader is not material, and/or the Applicant could not have possibly committed inequitable conduct relative to EZ Reader. In addition and without limitation, prior art disclosed relative to the prosecution of U.S. Patent Application No. 08/853,074 (i.e., the '059 parent patent) cannot possibly serve as the basis for inequitable conduct relative to the '947 patent, including without limitation because the Applicant made the U.S. Patent & Trademark Office aware of 17 ATTORNEY'S EYES ONLY

such prior art, and there cannot possibly be any intent to deceive, which is a necessary element of the inequitable conduct that Defendants must prove by clear and convincing evidence. SUPPLEMENTAL RESPONSE: Subject to and without waiving the general and specific objections, Bright Response supplements its response as follows: Bright Response maintains its denial of Defendants' allegations in its counterclaims for unenforceability. Specifically, Bright Response asserts that the testimony of Mr. Angotti, Mr. Cohen, Ms. Piccolo, Ms. Rice and Stephen Weisburd fail to demonstrate any evidence that prior art was withheld from the USPTO and fail to demonstrate any intent to deceive. For example, with respect to the EZ Reader, regardless of whether EZ Reader constitutes prior art, or even material prior art, under 102 or 103, the file history of the `947 Patent clearly shows that the existence of EZ Reader was disclosed to the USPTO, as demonstrated by the provisional applications to which the `947 Patent claims priority. In addition, the disclosure strongly supports that applicants had no intent to deceive the Examiner. Further, Ms. Rice testified that, at least as of the time she stopped working on EZ Reader in April 1996, EZ Reader had not been deployed to respond to e-mails from live customers or otherwise in public use. Rice at 29:16-34:6. See also Rice 137:3-15 and Rice Exhibit 4 (also produced at RICE001403-06). Since EZ Reader was not deployed or otherwise in public use before April 1996, activities related to EZ Reader would not constitute prior art under 102(b).

April 29, 2010

Respectfully submitted, By:_/s/ Patrick R. Anderson_________ Andrew W. Spangler - Lead Counsel TX Bar No. 24041960 [e-mail] 18 ATTORNEY'S EYES ONLY

SPANGLER LAW P.C. 208 N. Green Street, Suite 300 Longview, Texas 75601 Telephone: [phone] Facsimile: 903/553-0403 Marc A. Fenster, CA Bar No. 181067 [e-mail] RUSS, AUGUST & KABAT 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Telephone: [phone] Facsimile: 310/826-6991 David M. Pridham, R.I. Bar # 6625 [e-mail] LAW OFFICE OF DAVID PRIDHAM 25 Linden Road Barrington, Rhode Island 02806 Telephone: [phone] Facsimile: 401/633-7247 Patrick R. Anderson [e-mail] Patrick R. Anderson PLLC 4225 Miller Rd., Bldg. B-9, Suite 358 Flint, MI 48507 Ph. 517/303-4806 Fax [phone] COUNSEL FOR PLAINTIFF BRIGHT RESPONSE LLC

CERTIFICATE OF SERVICE I hereby certify that all known counsel of record are being served on this date via e-mail using the Defendants' e-mail distribution list. . April 29, 2010 _/s/ Patrick R. Anderson__________ Patrick R. Anderson

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