Performance Pricing, Inc. v. Google Inc. et al

Filing 166

NOTICE by Performance Pricing, Inc. Parties' Compliance with Patent Rule 4-3 (Cho, Christin)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION PERFORMANCE PRICING, INC., Plaintiff, v. GOOGLE INC., AOL LLC, MICROSOFT CORP., YAHOO! INC., IAC SEARCH & MEDIA, INC., and A9.COM, INC., Defendants. CASE NO. 2:07-cv-432 (LED) JURY TRIAL DEMANDED

Parties' Compliance with Patent Rule 4-3 Pursuant to Patent Rule 4-3, Plaintiff Performance Pricing, Inc. and Defendants Google Inc., AOL LLC, Microsoft Corporation, Yahoo! Inc., and IAC Search & Media, Inc. submit this Joint Claim Construction and Prehearing Statement. I. Pursuant to P. R. 4-3(a), the parties agree to the following: Claim term or phrase Agreed construction "product" means "product or service" "a second price" means "price for the product to be paid by the second buyer" "the price" and "said price" mean "the price of the product" The following phrases use the articles "a" and "the" to indicate a repeated instance of the same thing: · "a price range" and "the price range" refer to the same price range · "a product" and "the product" refer to the same product

"product"

"a second price" "the price," "said price" Construction of certain nouns preceded by "the" and "a":

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· ·

"a buyer" and "the buyer" refer to the same buyer "at least one participant" and "the at least one participant" refer to the same participant or participants "a first product" and "the first product" refer to the same product

· "bid" II.

"bid" means "offer of a price in an auction" Pursuant to P. R. 4-3(b), the parties dispute the construction of the claim terms, phrases,

or clauses set forth in the table attached as Exhibit A. For the convenience of the Court, the parties' proposed constructions for the disputed claim terms and phrases, and each party's identification of intrinsic and extrinsic evidence in support of their respective proposed constructions are found in Exhibit A. III. Pursuant to P.R. 4-3(c): A. Both parties anticipate the length of time necessary for the claim construction hearing is approximately 2 hours per side for a total of 4 hours. IV. V. Pursuant to P.R. 4-3(d), the parties state as follows: None of the parties anticipates calling any witnesses at the claim construction hearing. A. Pursuant to P.R. 4-3(e), the parties do not believe that a prehearing conference prior to the claim construction hearing is necessary.

Dated February 12, 2009 By:

Respectfully submitted, /s/ Christin Cho Christin Cho

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CA State Bar No. 238173 Email: [e-mail] Gregory S. Dovel CA State Bar No. 135387 Email: [e-mail] Sean Luner CA State Bar No. 165443 Email: [e-mail] Dovel & Luner, LLP 201 Santa Monica Blvd., Suite 600 Santa Monica, CA 90401 Telephone: [phone] Facsimile: 310-657-7069 S. Calvin Capshaw State Bar No. 03783900 Elizabeth L. DeRieux State Bar No. 05770585 Capshaw DeRieux, L.L.P.

Energy Centre 1127 Judson Road, Ste 220 P. O. Box 3999 (75606-3999) Longview, Texas 75601-5157 Telephone: [phone] Facsimile: [phone]

Email: [e-mail] Email: [e-mail] Robert M. Parker State Bar No. 15498000 Email: [e-mail] Robert Christopher Bunt State Bar No. 00787165 Email: [e-mail] Parker & Bunt, P.C. 100 East Ferguson, Ste. 1114 Tyler, TX 75702 Telephone: [phone] Facsimile: 903/533-9687 Franklin Jones, Jr. State Bar No. 00000055 Email: [e-mail] Jones & Jones, Inc., P.C. 201 W. Houston St. P.O. Drawer 1249 Marshall, TX 75670 3

Otis W. Carroll, Jr. State Bar No. 03895700 Email: [e-mail] 6101 S. Broadway, Suite 500 Tyler, TX 75703 ATTORNEYS FOR PLAINTIFF PERFORMANCE PRICING, INC.

By:

/s/ David A. Perlson

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Charles K. Verhoeven David A. Perlson Jennifer A. Kash Antonio R. Sistos Emily C. O'Brien 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] BECK REDDEN & SECREST, L.L.P. David J. Beck Michael Ernest Richardson One Houston Center 1221 McKinney St. Suite 4500 Houston, Texas 77010-2010 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] Attorneys for Defendant Google Inc., AOL LLC, IAC Search & Media, Inc.

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By:

/s/ Richard S.J. Hung

Michael A. Jacobs [e-mail] Rachel Krevans [e-mail] Richard S.J. Hung [e-mail] MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105 Telephone: [phone] Facsimile: [phone] Michael E. Jones [e-mail] POTTER MINTON, P.C. 110 North College, Suite 500 Tyler, Texas 75702 Telephone: [phone] Facsimile: [phone] Attorneys for Yahoo! Inc. By: /s/ Richard A. Cederoth

David T. Pritikin Richard A. Cederoth Laura L. Kolb Sidley Austin LLP 1 South Dearborn Street Chicago, Illinois 60603 Tel. [phone] Fax [phone] Email: [e-mail] [e-mail] [e-mail]

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Eric H. Findlay Brian Craft Findlay Craft LLP 6760 Old Jacksonville Hwy. Suite 101 Tyler, TX 75703 Tel. [phone] Fax [phone] E-mail: [e-mail] [e-mail] Attorneys for Defendant Microsoft Corp.

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E xhib it A The Parties' Proposed Constructions with Intrinsic and Extrinsic Evidence 1 Claim Term "PriceDeterminingActivity"/ "PDA" Plaintiff's Construction Proposal: "Price-Determining-Activity" and "PDA" mean "any activity or combination of activities, other than offering or accepting a price, that is used to determine the price paid for the product or service." Intrinsic Evidence: 1:55-57, 1:57-62, 2:23-25, 3:64-4:3, 4:3-11, 4:47-5:3, 5:23-28, 5:49-60, 7:14-24, 7:25-39, 7:54-65, 2:14-23, P0007-Abstract(Application, P0311- Decision on Appeal, Appeal No. 2005-0956(7/21/05), P0317Decision on Appeal, Appeal No. 2005-0956(7/21/05), P0019Abstract(Application), P0022Summary and Description(Application), P0025Detailed Description of the Invention(Application), P0191Appellant's Brief on Appeal(1/23/01), Extrinsic Evidence Support: See Exhibit B, D, and G, including but not limited to: · "collateral." Random House Webster's Dictionary (4th Defendants' Construction Proposal: "Inherently entertaining activity, such as a game, puzzle or quiz, that is used to set the product's price, but otherwise is collateral to its sale." Intrinsic Evidence: Abstract, 1:8-13, 1:49-62, 2:4-11, 2:1720, 2:23-25, 2:28-35, 2:52-59, 3:51-54, 2:52-59, 3:64-4:11, 4:47-5:3, 5:22-27, 5:37-6:18, 6:49-50, 7:14-8:67, Fig. 2; Interview Summary (April 25, 2002); Appellant's Supplemental Appeal Br. at *7-8, 10, 12, 16-20 (Aug. 5, 2002); Patent Application at *1 (June 29, 1999); Decision on Appeal at *1-2, 8 (July 21, 2005); Application No. 09/585,902, Office Action, at *8 (August 6, 2003) (P1306) ("Rossides discloses methods and systems that permit buyers to lock prices during collateral gaming activities."). PCT application # PCT/US99/30811, titled: "SYSTEM AND METHOD FOR DETERMINING PRICES OF GOODS BASED ON THE BUYER'S PERFORMANCE PLAYING A GAME." (See e.g., P000540). Korean patent application # 10-20007016629, titled "SYSTEM AND METHOD FOR DETERMINING THE

Defendants have not received final versions of the depositions of Wayne Lin or Neal Cohen, which occurred on 1/28/09 and 2/11/09. Defendants reserve the right to rely on additional extrinsic evidence from those depositions.

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·

·

Edition). [P 22768] "collateral." The American Heritage Dictionary of the English Language (4th Edition). [P 22635] "collateral." Webster's Third New International Dictionary Unabridged. [P 22742]

PRICES OF GOODS BASED ON THE BUYER'S PERFORMANCE PLAYING A GAME." (See e.g., VIP00230); Applicant's Written Amendment at DEF00005653 ("The present application inventions deals with a system and method of doing business over a global communications network including the Internet, and specifically provides the system and method of determining a merchandise price, wherein the transaction price between a buyer and a seller is determined based on the game activities of a buyer who users various forms of competitions and entertainments."); DEF00005656 ("while the cited invention provides discount services according to the buying performance of a buyer, the present application invention provides a discount service for a certain activity such as a game instead of buying depending upon the activity performance.... the objective of the present application inventions is completely different from said cited invention in that any non-purchase activities that can be enjoyed by a buyer may have influence on the pricing between a buyer and a seller."); DEF00005658 ("in the present application invention, buyers can have an opportunity to buy a product at a price lower than its original price within the prescribed price range if certain performance on a specific activity is achieved and also obtain incidental gains of enjoying entertainments from said activities"); DEF00005659 ("Present Application Invention . . . Provides a discount service for a certain activity such as a game for not buying depending on the activity performance."; "a discount service is provided by the performance of nonpurchase activities"). Japanese Patent Application # 0334446373, Office Action (E.g., "Cited

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Literature 1 describes . . . having the purchaser play a game . . . . Cited Literature 2 describes . . . a chance to play a game . . . . Cited Literature 3 describes . . . an electronic commerce transaction system wherein a game is made to be played . . . . Cited Literature 4 describes a casino . . . wherein a user selects a desired game . . . . Cited Literature 5 describes . . . providing an entertaining theme such as a game . . . .") (See DEF00005603-5604). Extrinsic Support: E-mail from Wayne Lin to Joseph Lee (e.g., "Also, if a buyer changes the class, date of travel, or destination, the product is already different.") (P20941-20942). Priceplay website: DEF00007067 ("The buyers who want to buy at your current price will still do so. Those potential buyers who visit your web site but do not want to buy at your list price will now have a chance to Play For Price"); DEF00007014 (describing PricePlay as "an add-on" for existing ecommerce sites); DEF00007025-27 ("(". . . a fun, enjoyable, and rewarding engagement . . . For example, an etailer of used golf clubs can enable interactive pricing on all or some of their web pages . . . A site visitor may choose an online golf game to play for some of the golf clubs."). Trademark Applications: VIP-00017 (Mark "PLAY YOUR PRICE!": Class of goods/services: "Electronic retail services via computer, featuring entertainment-enabled pricedetermining activities such as video games, puzzles, and contests, which are used to determine the purchase price of a wide variety of goods and services."); 9

VIP-00050 (Mark "SHOULD SHOPPING BE THIS FUN?"; Class of goods/services: "Electronic retail services via computer, featuring entertainmentenabled price-determining activities such as video games, puzzles, and contests, which are used to determine the purchase price of a wide variety of goods and services."). Sabra Chartrand, Patents: Patent Application of Web Sends Inventor to the Drawing Board, N.Y. TIMES (April 2, 2001) ("Mr. Lin's invention . . . includes, Mr. Cohen said, a method of setting prices for products sold on the Internet by playing a game.") (See VIP00068). "Business Concept" (e.g., "The essence of our business models: Buyers will have fun while buying.") (P370). "Invention: Entertainment Enabled Trading Portal" (e.g., "The method of electronically utilizing entertainment to determine transaction prices between buyers and sellers") (P396-397). AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4TH ED. 2000) 362 collateral - "of a secondary nature; subordinate" DICTIONARY.COM UNABRIDGED (V 1.1), at http://dictionary.reference.com/browse/co llateral - collateral - "accompanying; auxiliary"; "aside from the main subject, course, etc.; secondary" WEBSTER'S THIRD NEW INT'L DICTIONARY (2002) 444 - collateral "accompanying as a secondary...activity"; "ancillary" RANDOM HOUSE WEBSTER'S DICTIONARY (2001) 138 - collateral - "accompanying; auxiliary"; "secondary or incidental" 10

MERRIAM-WEBSTER'S DICTIONARY OF LAW (1996), at http://dictionary.reference.com/browse/co llateral - collateral - "accompanying as a secondary...activity" Lin Deposition (rough) 141:11 - 142:1 ("Q Okay. Let me ask the question again then. Is it correct that in all of the systems that you developed over the years that practice the invention of the 253 patent, the activities available to potential bidders were either puzzles, games or quizzes? A They included games, puzzles and quizzes, yes. Q Nothing else?

A I can go back and look at the website and see if I can find anything else. Q To the best of your recollection, the activities available to potential bidders that bidders could use to try to influence the price were all either games or puzzles or quizzes, correct? A It includes games, puzzles and quizzes, correct.") "performance Proposal: of the buyer" (i) "performance of the buyer" means "the buyer's actions or deeds in the Price-DeterminingActivity" Proposal: the buyer's level of success (at the PriceDetermining-Activity)

Intrinsic Evidence: 1:57-62, 2:4-8, 2:23-25, 2:35-43, 2:47-51, 3:64-4:11, 4:38-43, 5:22-27, 5:60-67, 6:13-16, 7:40-52, 7:62-65, 8:3-5, 8:19-23, Intrinsic Evidence: 2:23-28, 2:52-56, 5:60-66, 6:13-16, claim 31; Decision on Appeal at *2 (July 1:62-67, P0138-Response (8/20/01), 21, 2005); Application No. 09/585,902, Office Action, at *3 (August 6, 2003) P0155-Appellant's Brief on (P1301) ("The priority documents are Appeal(11/15/01), P0180-181-

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Appellant's Brief on Appeal(1/23/01), P0240Supplemental Brief(8/8/02), P0243Supplemental Brief(8/8/02), P0283Examiner's Answer(10/1/02), P0029-Detailed Description of the Invention(Application) Extrinsic Evidence Support: See Exhibit B, C, and G including but not limited to: · · "performance." Random House Webster's Dictionary (4th ed. 2001). [P 22776] "performance." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22643] "performance." Dictionary.com Unabridged (v 1.1), at http://dictionary.reference.co m/browse/performance. [P 22701] "performance." WordNet® 3.0., available at http://dictionary.reference.co m/browse/performance. [P 22702]

directed to determining the price of the product according to a buyer's performance rating."); Application No. 11/262,527, Supplemental Preliminary Amendment, at *2-10 (March 30, 2007) (P001937-45). Korean patent application # 10-20007016629, Claim 20 ("said PDA comprises the computer-executable code that are sent to the buyer via the global communication network") (DEF5639). Japanese Patent Application # 0334446373, Claim 9 (". . . the price determining activity . . . is executed by a terminal device on the side of the purchaser . . .") (See DEF00005608). Extrinsic Support: 1678 - performance - "the ability to perform: capacity to achieve a desired result: EFFICIENCY <senescence represents a marked decline in function and ~ -George Lawton>"; "the manner of reacting to various stimuli: BEHAVIOR <the ~ of the stock market>"
WEBSTER'S THIRD INT'L DICTIONARY

·

·

- "the manner in which or the efficiency with which something fulfills its intended purpose"
OXFORD ENCYCLOPEDIC ENGLISH DICTIONARY 1079 (1991) - performance

RANDOM HOUSE UNABRIDGED DICTIONARY 1439 - performance

"a person's achievement under test conditions etc. (put up a good performance)"

-

NEW OXFORD AMERICAN DICTIONARY (2d.

ed. 2005) - performance - "an action, task, or operation, seen in terms of how successfully it was performed: pay increases are now being linked more 12

closely to performance")" BusinessDictionary.com - performance "General: Accomplishment of a given task measured against preset standards of accuracy, completeness, cost, and speed", available at http://www.businessdictionary.com/defini tion/performance.html (last visited Dec. 18, 2008) AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4TH ED. 2000) 1306 - performance - "The way in which someone or something functions" DICTIONARY.COM UNABRIDGED (V 1.1), at http://dictionary.reference.com/browse/pe rformance - performance - "the manner in which or the efficiency with which something reacts or fulfills its intended purpose" WORDNET 3.0 (2006), at http://dictionary.reference.com/browse/pe rformance - performance - "process or manner of functioning or operating...`they compared the cooking performance of each oven;' `the jet's performance conformed to high standards'" "Invention: Entertainment Enabled Trading Portal" (e.g., "The final price of the product . . . will then be determined according to the outcome of the chosen mechanism such as the result of a future [] NBA Basketball game or NFL Football game or said video game.") (P396-398). Proposal: the "first" request must precede and is separate from the "second" request Intrinsic Evidence 3:48-50, 4:26- 5:18, 5:37-67, 8:14-23,

"first" and "second"

Proposal: (ii) The terms "first" and "second" are used to distinguish one instance of the same thing from another. For example, the phrase "second request" 13

means a request other than the "first request." The terms "first" and "second" do not refer to time sequence." "auction" Proposal: (iii)

Fig. 1; Patent Application at 18 (June 29, 1999); Applicant's Amendment at 6 (mailed April 2, 2001).

Proposal:

"auction" means a public sale of property to the highest "process for selling a bidder (as by successive increased bids) product or service based on bids." Intrinsic Evidence: 1:31-35, 1:41-43, 4:33-43. Intrinsic Evidence: 1:31-35, 1:41-43, P00165Extrinsic Support: Appellant's Brief on WEBSTER'S THIRD INT'L DICTIONARY Appeal(11/15/01), P0254(2002) (auction: 1: a public sale of Appellant's Supplemental Appeal property to the highest bidder (as by Brief(7/31/02) successive increased bids)). Extrinsic Evidence Support: AMERICAN HERITAGE DICTIONARY OF THE See Exhibit B, D, and G including ENGLISH LANGUAGE (4TH ED. 2000) 117 but not limited to: auction - "public sale of property...to the highest bidder" · "auction." Random House Webster's Dictionary (4th ed. DICTIONARY.COM UNABRIDGED (V 1.1), at 2001). [P 22766] · "auction." " Webster's Third http://dictionary.reference.com/browse/au New Int'l Dictionary (4th ed. ction - auction - "publicly held sale at which property or goods are sold to the 2001). [P 22739] highest bidder" · "auction." The Am. Heritage® Dictionary of the WEBSTER'S THIRD NEW INT'L English Language (4th ed. DICTIONARY (2002) 142 - auction 2000) [P 22632] "public sale of property...to the highest bidder" RANDOM HOUSE WEBSTER'S DICTIONARY (2001) 45 - auction - "public sale at which property or goods are sold to the highest bidder" WORDNET 3.0 (2006), at http://dictionary.reference.com/browse/au ction - auction - "the public sale of something to the highest bidder" 14

MERRIAM-WEBSTER'S DICTIONARY OF LAW (1996), at http://dictionary.reference.com/browse/au ction - auction - "a public sale of property to the highest bidder" "price being ...scaled to the performance of the buyer" Proposal: "price being . . . scaled to the performance of the buyer" means "price being adjusted to a standard according to the performance of the buyer, such that achieving a better performance level results in a lower price and achieving a worse performance level results in a higher price" Intrinsic Evidence: 2:35-40, 2:23-28, 2:52-56, 2:44-47, P0022-Summary(Application), P0023-Summary Application, P0311-Decision on Appeal(6/21/05), P0181Appellant's Brief on Appeal(1/23/01), P0243Supplemental Brief(8/8/02), Extrinsic Evidence Support: See Exhibit B, C, and G including but not limited to: · · "scale." Random House Webster's Dictionary (4th ed. 2001). [P 22782] "scale." Dictionary.com Unabridged (v 1.1) at http://dictionary.reference.co m/browse/scale. [P 22723] "scaled." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22650] Proposal: "price being assigned from a predetermined set of graduated prices and corresponding performance levels, in which a lower price always corresponds to a better performance in the PDA and a higher price always corresponds to a worse performance in the PDA" Intrinsic Evidence: Abstract, 2:23-28; 2:35-59, 3:51-54, 4:3843, 5:23-28, 5:49-52, 5:38-48, 5:60-67, 6:13-15, 6:42-51, 7:16-21, 7:34-52, 7:668:57, 7:64-8:5, 8:14-23; Fig. 2; Applicant's Amendment at 4 (May 17, 2001); Appellant's Supplemental Appeal Br. at *14-15 (Aug. 5, 2002); Decision on Appeal at *2 (July 21, 2005). Japanese Patent Application # 0334446373, Claim 1 ("[A] step for determining the price of a product within said range of prices according to the action of the purchaser at least partially by extracting the data the relates to the rpice determining activity of the purchaser that is stored in said database and associating it with a price that corresponds to an action that has been set in advance") (DEF5607; see also DEF5608, DEF5611, DEF5614-5615); Claim 16 ("said computer server executes a step that determines a range of prices in advance so that prices that show a minimum value associated with the best action and a maximum value that is associated with the worst action are assigned to a product within a range of prices") (See

·

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DEF00005608); Amendment ("and a step for determining the price of a product within said range of prices according to the action of the purchaser at least partially by associating the result of an action in relation to the price determining activity of a purchaser that is stored in said database with a preset price corresponding to an action and for confirming with said purchaser whether or not said price will be determined to be the ultimate purchase price") (DEF00005619). Extrinsic Support:
RANDOM HOUSE UNABRIDGED DICTIONARY

1709 - scale - "to adjust in amount according to a fixed scale or proportion (often fol. by down or up): to scale down wages" 1709 - scale - "a table of graduated rates, as of prices or wages: These unions use different scales."

RANDOM HOUSE UNABRIDGED DICTIONARY

PricePlay website See e.g., DEF00007026 ("The better the performance during the game, the lower the price"); DEF00007042 ("You play in an Interactive Pricing Activity, the better your performance the lower the price"); DEF00008062 (same); DEF00008212 ("Everyone's price is different and scaled to his or her own performance . . . The better or longer the buyer performs or participates in a PDA the better the prices!"). AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4TH ED. 2000) 1553 - scale - "a progressive classification, as of size, amount, importance, or rank [as in scale of 1-10]"; "to make in accord with a particular proportion or scale;" "to rise in steps or stages"

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DICTIONARY.COM UNABRIDGED (V 1.1), at http://dictionary.reference.com/browse/sc ale - scale - "a succession or progression of steps or degrees; graduated series"; "a table of graduated rates, as of prices or wages"; "to adjust in amount according to a fixed scale or proportion" WEBSTER'S THIRD NEW INT'L DICTIONARY (2002) 2023 - scale - "a graduated or ordered series of degrees, stages, or classes"; "to arrange in a graduated series"; "increase or reduce according to a fixed ratio"; "to rise in a graduated series" RANDOM HOUSE WEBSTER'S DICTIONARY (2001) 641 - scale - "a progression or series of steps or degrees" Sabra Chartrand, Patents: Patent Application of Web Sends Inventor to the Drawing Board, N.Y. TIMES (April 2, 2001) ("The higher the score achieved by a player, the lower the price he will pay for a product he wants to buy.") (See VIP00068). Proposal: "accepting from the buyer a selection of the product to buy" Intrinsic Evidence: Abstract, 2:60-65, 3:48-50, 3:38-41, 4:2533, 5:44-48, Fig. 1; Application No. 09/585,902, Office Action, at *6 (August 6, 2003) (P1304) (E.g., "Buyers select items to be purchased by placing a request to buy a product for a price that is to be determined within a price range.").

"accepting a first request from the buyer to buy the product"

Proposal: (iv) "accepting a first request from the buyer to buy the product" means "receiving with consent or approval a request from the buyer to buy the product or service"

Intrinsic Evidence: 2:15-23, 1:31-37, 4:36-43, 1:21-25, 1:63-2:3, 1:55-62, 5:28-36, 2:20-23 Extrinsic Evidence Support: See Exhibit B, D, G including but not limited to: · "accept." Webster's Third

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·

·

New Int'l Dictionary (4th ed. 2001). [P 22736 ­ 22737] "accept." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22629] "accept." Random House Webster's Dictionary (4th ed. 2001). [P 22764] Proposal: "accepting a request from the buyer that the price of the selected product be determined" Intrinsic Evidence: 4:26-5:18, 5:37-67, Fig. 1; Patent Application at 18 (June 29, 1999); Applicant's Amendment at 6 (mailed April 2, 2001).

"accepting a second request from the buyer to allow the price to be determined"

Proposal: (v) "accepting a second request from the buyer to allow the price to be determined" means "receiving with consent or approval a second request from the buyer to allow the price to be determined"

Intrinsic Evidence: 2:15-23, 1:31-37, 4:36-43, 1:21-25, 1:63-2:3, 1:55-62, 5:28-36, 2:20-23, 2:60-3:7 Extrinsic Evidence Support: See Exhibit B, C, D, and G including but not limited to: · · · "determined." Random House Webster's Dictionary (4th ed. 2001). [P 22772] "determined." Webster's Third New Int'l Dictionary (4th ed. 2001). [P 22746] "determined." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22639] "determine." Webster's Third New Int'l Dictionary (4th ed. 2001). [P 22746] "determine." The Am. Heritage® Dictionary of the English Language (4th ed. 18

· ·

· ·

2000). [P 22639] "determine." Random House Webster's Dictionary (4th ed. 2001). [P 22772] "determine." Dictionary.com Unabridged (v 1.1), at http://dictionary.reference.co m/browse/determine. [P 22679] Proposal: "specified upper and lower bounds within which the price may vary" Intrinsic Evidence: Abstract, 2:20-23, 2:47-56, 3:61-4:3, 4:47-54, 5:37-6:18, 7:40-52, 8:14-23; Appellant's Supplemental Appeal Br. at *16 (Aug. 5, 2002); Decision on Appeal at *1 (July 21, 2005). Korean patent application # 10-20007016629, Response to Office Action ("According to the system and method that determine the merchandise price based on game activities of the buyer with the configuration above, such effects are available that buyers can have an opportunity to buy a product at a price lower than its original price within the prescribed price range if certain performance on a specific activity is achieved and also obtain incidental gains from said activities.") (DEF5656). Japanese Patent Application # 0334446373, Response to Office Actoin (E.g., "[T]he transaction price is determined by creating a correspondence between a certain price belt (a range of prices) that is based on the consent and understanding of the purchaser . . . .") (DEF5616). Proposal:

"price range"

Proposal: "price range" means "upper and lower bounds within which the price may vary" Intrinsic Evidence: 2:35-40, 2:23-25, 2:52-57, 2:44-47, 2:60-3:7 Extrinsic Evidence Support: See Exhibit B, D, and G including but not limited to: · "range." Webster's Third New Int'l Dictionary (4th ed. 2001). [P 22751] · "range." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22646] · "range." Random House Webster's Dictionary 594595 (4th ed. 2001). [P 22778 ­ 22779]

"master controller"

Proposal:

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"master controller" means "centralized server" "device or subsystem that has overall control over other devices or Intrinsic Evidence: systems" 3:22-37, 3:51-56, 4:18-25, 4:30-34, 6:1941, 6:60-7:6, Fig. 2, Fig. 3. Intrinsic Evidence: 4:30-34, 4:18-25, P0026-Abstract (Application), P0086-Office Action (2/8/01), P0122-123-Office Action (7/24/01), P0211-212-Office Action (2/25/02) Extrinsic Evidence Support: See Exhibit B, C, D, E, F, and G including but not limited to: · · · "controller." Oxford Dictionary of Computing 114 (5th ed. 2004). [P 22760] "controller." Microsoft Computer Dictionary 128 (5th ed. 2002). [P 22756] "controller." WordNet® 3.0., available at http://dictionary.reference.co m/browse/controller. [P 22667] "master." Random House Webster's Dictionary (4th ed. 2001). [P 22769] "master." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22636] Proposal: information sufficient to identify a particular product Intrinsic Evidence: 3:48-50, 3:51-54, 4:33-36, 5:44-48, 6:4259; 7:16-24, 7:58-65, Fig. 1. Japanese Patent Application # 0334446373, Claim 1 ("a step for

· ·

"description of a product"

Proposal: No construction necessary. Alternate Proposal: "description of a product" means "an identification or account of characteristics or features of a product or service"

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Intrinsic Evidence: 2:60-3:7 Extrinsic Evidence Support: See Exhibit B, C, D, and G including but not limited to: · "describe." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22638] "describe." Webster's Third New Int'l Dictionary 610 (4th ed. 2001). [P 22745] "describe." Random House Webster's Dictionary 191 (4th ed. 2001). [P 22771] "description." Random House Webster's Dictionary 191 (4th ed. 2001). [P 22771] "description." Webster's Third New Int'l Dictionary 610 (4th ed. 2001). [P P 22745] "description." The Am. Heritage® Dictionary of the English Language (4th ed. 2000). [P 22638] "description." WordNet® 3.0., available at http://dictionary.reference.co m/browse/description. [P 22676]

transmitting detailed information to a purchaser about a product via a telecommunications network") (See DEF00005593) Extrinsic Support: WEBSTER'S THIRD INT'L DICTIONARY 610 description - "an individualizing or identifying designation"; "a statement of the properties of a thing or its relations to others things serving to identify it."

· · · ·

·

·

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"data representing a plurality of products"

Proposal: 1) "data representing a plurality of products" means "data communicating information about two or more products or services"

Proposal: data sufficient to identify two or more particular products Intrinsic Evidence: 3:48-50, 4:33-36, 5:44-48, 6:42-59, 7:1624, 7:53-65, Fig. 2. Extrinsic Evidence Support: AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4TH ED. 2000) 1480 - represent - "To present clearly to the mind" WEBSTER'S THIRD NEW INT'L DICTIONARY (2002) 1926 - represent - "to bring clearly before the mind," "to present in words; set forth; describe; state"

Intrinsic Evidence: 3:8-21, 3:22-37 Extrinsic Evidence Support: See Exhibit B, C, D, and G including but not limited to: · · "representing." Webster's Third New Int'l Dictionary (4th ed. 2001). [P 22752] "represent." The Am. Heritage® Dictionary of the English Language 1480 (4th ed. 2000). [P 22648] "represent." Random House Webster's Dictionary 612 (4th ed. 2001). [P 22780] "represent." WordNet® 3.0., available at http://dictionary.reference.co m/browse/represent. [P 22715] "plurality." Webster's Third New Int'l Dictionary 1745 (4th ed. 2001). [P 22749] "plurality." The Am. Heritage® Dictionary of the English Language 1351 (4th ed. 2000). [P 22644] "plurality." Random House Unabridged Dictionary (2006), available at http://dictionary.reference.co m/browse/plurality. [P 22707] "plural." Random House 22

· ·

· ·

·

·

· ·

Webster's Dictionary (4th ed. 2001). [P 22776] "plural." Webster's Third New Int'l Dictionary 1745 (4th ed. 2001). [P 22749] "plural." Random House Unabridged Dictionary (2006), available at http://dictionary.reference.co m/browse/plural. [P 22705]

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"accepting acknowledge ment from the buyer representing an intent of the buyer to buy the first product/ accept acknowledg ment from the buyer representing an intent of the buyer to buy the first product"

Proposal: (i) "accepting acknowledgement from the buyer representing an intent of the buyer to buy the first product" means "receiving with consent or approval an acknowledgment from the buyer representing an intent of the buyer to buy the first product or service." "accept acknowledgment from the buyer representing an intent of the buyer to buy the first product" means "receive with consent or approval an acknowledgment from the buyer representing an intent of the buyer to buy the first product or service."

Proposal: accepting from the buyer a selection of the first product to buy Intrinsic Evidence: Abstract, 3:8-18, 3:22-34, 3:48-50, 3:5154, 3:38-41 4:28-36, 5:44-48, Figs. 1 and 2 Extrinsic Evidence: Letter from Neel Chatterjee to CJ Wolf and accompanying claim charts (OHSPP00245-249) (Claim 18, "accepting acknowledgement ..." term: "The participant then selects one of the gameicons...")

(ii)

Intrinsic Evidence: 3:8-21, 3:22-37 Extrinsic Evidence Support: See Exhibit B, C, D, and G including but not limited to: · · See definitions for "accepting" and "representing" above. "acknowledgment." Webster's Third New Int'l Dictionary (4th ed. 2001). [P 22737] "acknowledgment." WordNet® 3.0., available at http://dictionary.reference.co m/browse/acknowledge. [P 24

·

· · ·

22653] "acknowledge." Random House Webster's Dictionary 7 (4th ed. 2001). [P 22765] "acknowledge." Webster's Third New Int'l Dictionary 17 (4th ed. 2001). [P 22768] "acknowledge." The Am. Heritage® Dictionary of the English Language 14 (4th ed. 2000). [P 22630] Proposal: Defendants assert that the steps of the asserted claims must be performed in order. Intrinsic Evidence: 3:48-50, 4:26-6:18, 8:14-23, Fig. 1; Patent Application at 18 (June 29, 1999); Applicant's Amendment at 6 (mailed April 2, 2001).

Ordering of the steps of the asserted claims

Proposal: Plaintiff asserts that this is not a limitation.

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