Software Rights Archive, LLC v. Google Inc. et al
Filing
213
RESPONSE to Motion re 198 Opposed MOTION Granting Defendants Leave to Amend and Supplement Invalidity Contentions filed by Software Rights Archive, LLC. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Affidavit, # 9 Text of Proposed Order)(Kaplan, Lee)
Software Rights Archive, LLC v. Google Inc. et al
Doc. 213 Att. 1
Exhibit 1
Dockets.Justia.com
IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
SOFTWARE RIGHTS ARCHIVE, LLC,
Plaintiff,
v.
Civil Case No. 2:07-cv-511 (CE)
GOOGLE INC., YAHOO! INC., lAC SEARCH & MEDIA, INC., AOL LLC, AND LYCOS, INC.,
Defendants.
DEFENDANTS' P. R. 3-3 DISCLOSUR
DEFENDANTS' P. R. 3-3 DISCLOSUR
SRA wil contend that limitations of the asserted claims are not disclosed in the prior art
identified by Defendants. To the extent that such an issue arises, Defendants reserve the right to
identify other references that would have made the addition of the allegedly missing limitation to
the disclosed device or method obvious.
The accompanying invalidity claim charts list specific examples of where prior art
references disclose, either expressly or inherently, each limitation of
the asserted claims and/or
examples of disclosures in view of which a person of ordinary skill in the art would have
considered each limitation, and therefore the claim as a whole, obvious. The references,
however, may contain additional support upon which Defendants may rely. Furhermore, where
Defendants cite to a particular figure in a reference, the citation should be understood to
encompass the caption and description of the figure and any text relating to the figure. Simlarly,
where Defendants cite to particular text referrng to a figure, the citation should be understood to
include the corresponding figure as welL. Defendants may also rely on other documents and
information, including cited references and prosecution histories for the patents-in-suit, and
expert testimony to provide context or to aid in understanding the cited portions of the
references.
The '494 and '571 Patents issued from applications claiming priority to the '352 Patent.
In its Infrngement Contentions, SRA has alleged a "priority date" of June 14, 1993 for each
asserted claim of
the patents-in-suit. Defendants dispute this allegation, and SRA has not carred
proving priority. The patent examiner has already determined that the claims of
its burden of
the
, 494 Patent are not entitled to a priority date earlier than May 17, 1996 (see, e.g., Notice of
Allowability, Paper NO.7 at 3 in the '494 prosecution history; EGG_0012228) and likewise with
respect to the claims of
the '571 Patent (see, e.g., Offce Action dated July 19,2000, Paper No.
Page
4
The following patents and publications are prior art under at least 35 U.S.C. §§ 102(a),
(b), (e), and/or (g).
Table 3: Patents and Printed Publications Anticipating
the Asserted Claims of the '352 Patent
Exhibit A Ex A-I Chart Prior Art
Salton, 1963
Chen, Gamer, 1992 1967
ExA-2 ExA-3 ExA-4 ExA-5 ExA-6 ExA-7 ExA-8 ExA-9
Salton, 1968
Goffman,1969 Salton, 1970
Salton, 1971
Schiminovich, 1971
Bichte1er & Parsons, 1974
Shimko, 1974
ExA-I0
Ex A-II
ExA-12
Ex A-13
Pinski, 1976 Bichteler & Eaton, 1977 Garfield, 1979
Tapper, 1982
Ex A-14
Ex A-15
Kochtanek, 1982
Fox/Smart, 1983
Fox Thesis, 1983
Fox Collections, 1983
ExA-16
Ex A-17 Ex A-18
ExA-19 ExA-20
Ex A-21
Salton and McGil, 1983
Fox Agricultue, 1984
Fox, Belew, 1985 1986
ExA-22
Ex A-23
Arstrong, 1988
ExA-24 ExA-25 ExA-26 ExA-27 ExA-28
Ex A-29 Ex A-30 Ex A-31
Croft, Lucia & Cohen, 1988
Frisse, 1988
Salton, 1988
Fox, 1988
Croft & Turtle, 1989
Frisse/Cousins, 1989
Rose, 1989
ExA-32 ExA-33 ExA-34 ExA-35
Ex A-36
Thompson, 1989 Kommers, 1990
Lucarella, 1990 Nielsen, 1990 Nielsen, 1990b
Shepherd, 1990
ExA-37
Berk,1991
Page 15
Exhibit A Chart
Ex A-38
Burt, 1991
Prior
Art
ExA-39 ExA-40 Ex A-4l ExA-42 ExA-43 ExA-44
Ex A-45
Dunlop, 1991
Gelbart, 1991
Rada,1991
Rose, 1991
Shaw Part I, 1991 Shaw Part II, 1991
Turtle, 1991
ExA-46 ExA-47
Ex A-48 Ex A-49
Ex Ex Ex A-50 A-51 A-52
Turtle & Croft, 1991
Alain, 1992
Frei & Stieger, 1992
Botafogo, 1992
Chen/Thesis, 1992
Guinan, 1992
UCINT,1992
Betrabet, 1993
Ex A-53 Ex A-54 Ex A-55
Ex A-56
Brunei, 1993
Croft, 1993
U.S. Pat. No. 5,446,891
Chen, 1992
Ex A-57
The asserted claims of
the '352 Patent are invalid for public use and/or offers for sale of
products and services that anticipate such claims under 35 U.S.C. § 102(a) or (b) and/or the
purported invention of the claims was made in this country by another inventor who had not
abandoned, suppressed, or concealed it under 35 U.S.C. § 102(g). The following description and
events are provided on information and belief and are supported by the information and
documents that wil be produced by February 13,2009.
Table 4: Public Use/Prior Sale References Anticipating
the Asserted Claims of the '352 Patent
ExhibitB Chart
Ex Ex Ex B-1 B-2 B-3
Prior Art
TIP ENVISION SMART Intermedia STRUCTURE UCINET
ExB-4
(see Ex A-38) (see Ex A-52)
Page 16
B. Disclosure ofInvalidity Due to Obviousness Pursuant to P. R. 3-3(b) and (c)
The asserted claims of
the '352 Patent are invalid as obvious under 35 U.S.C. § 103.
1. Obviousness Combinations
Each prior art reference disclosed in the preceding sections (see § lILA), either alone or
II combination with other prior art, also renders the asserted claims invalid as obvious.
Furthermore, Defendants identify the following additional exemplary prior art references that
either alone or in combination with other prior art (including any of the above anticipatory prior
art) renders the asserted claims invalid as obvious under 35 U.S.C. § 103:
· Salton, 1975 (see, e.g., Ex A-57).
· Conklin, 1987 (see, e.g., Ex A-58). · Conklin, 1988 (see, e.g., Ex A-59).
Seeley, J., "The New of Reciprocal Influence," Can. Jour. Psych. 234-241 (1949).
· Katz, L., "A New Status Index Derived From Sociometric Analysis,"
Psychometrika, VoL. 18, NO.1 pp. 39-43 (1953).
· Bar-Hilel, Y., "A Logician's Reaction to Recent Theorizing on Information
Search Systems," American Documentation 8(2): 103-113 (1957).
· Harary, F., Norman, R.Z., Cartright, D, "Structural Models: An Introduction to
the Theory of
Directed Graph," John Wiley & Sons, Inc., (1965), (see, e.g.,
Preface, Ch. 1 (Digraphs and Structures), Ch. 5 (Digraphs and Matrces), and Ch.
14 (Networks)).
· Bell Laboratories, "s - A Language for Data Analysis" (1981).
· Hubbell, C., "An Input-Output Approach to Clique Identifcation," (1965).
Hierarchical Clustering in
· Jardine, N., van Rijsbergen, C.l., "The Use of
Information Retrieval," (1971).
Page 17
· Salton, G., Bergmark, D., "A Citation Study of
the Computer Science Literature,"
IEEE Trans on Professional Communication 22(3): 146-158 (also published as
Cornell TR 79-364) (1979).
· van Rijsbergen, C.J., "Information Retrieval," (1979).
· Jain, A., Dubes, R., "Algorithmsfor Clustering Data," (1988).
· Salton, G., Buckley, C., "On the Use of
Spreading Activation Methods in
Automatic Information Retrieval," (Proc. 11th SIGIR, pp. 147-160, also published
as Cornell TR 88-907) (April
1988).
· Pao, M., Worthen, D., "Retrieval Effectiveness by Semantic and Citation
Searching," J. Am. Society Info. Sci. 40(4):226-235 (1989).
· Golub, G., Van Loan, C.F., "Matrix Computation," (Johns Hopkins University
Press) (1989).
· Consens, M.P. and Mendelzon, A.O., "Expressing Structural Hypertext Queries
in GraphLog," Hypertext '89 Proceedings, pp. 269-292 (1989).
· Kaufìan, L., Rousseeuw, P. "Finding Groups in Data - An Introduction to
Cluster Analysis," (1990).
· Korfhage, "To See, or Not to See - is That the Query," Proceedings of
the 14th
Annual International ACM SIGIR Conference on Research and Development in
Information Retrieval, pp. 134 -141, (1991).
· Li, T., Chiu, V., Gey, F. "X-Window Interface to SMART, an Advanced Text
Retrieval System, " SIGIR Forum, pp. 5-16 (1992).
· Agosti, M., Gradenigo, G., Marchetti, P., "A Hypertext Environmentfor
Interacting With Large Databases," (IP&M 28:371-387) (1992).
Page 18
· Agosti, M., Marchetti, P., "User Navigation in the IRS Conceptual Structure
Through a Semantic Association Function," (The Computer Journal
35:194-199)
(1992).
· Salton, G., Allan, J., Buckley, C., "Approaches to Passage Retrieval in Full Text
Information Systems," (Proc. 16th SIGIR Conf.) (1993).
· Hearst, M., Plaunt, C., "Subtopic Structuringfor Full-Length Document Access,"
(Proc. 16th SIGIR) (1993).
In addition, Defendants incorporate by reference each and every prior art reference of
record in the prosecution of
the patents-in-suit and related applications, including the statements
made therein by the applicant and the examiner, the prior art discussed in the specification, and
any other statements found in the intrnsic record.
In particular, each prior art reference may be combined with (1) information known to
persons skiled in the art at the time of the alleged invention, (2) any of the other anticipatory
prior art references, (3) any statements in the intrisic record of patents-
in-suit and related
applications, and/or (4) any of
the additional prior art identified above. To the extent that SRA
contends that any of the anticipatory prior ar fails to disclose one or more limitations of the
asserted claims, Defendants reserve the right to identify other prior art references that, when combined with the anticipatory prior art, would render the claims obvious despite the allegedly
missing limitation. Defendants contentions are made subject to its reservations above and based
on Defendants' present understanding of the asserted claims of
the '352 Patent and the apparent
constructions in SRA's Infringement Contentions.
Exhibit C includes claim charts for the asserted claims of
the '352 Patent using specific
and exemplary combinations of references:
Page 19
Table 5: References Rendering Obvious Asserted Claims of the '352 Patent
Exhibit C Chårt
Prior
Art
ExC-l
ExC-2
ExC-3
103 Chart
Nielsen, 1990b and
Frisse, 1988
Salton, 1963 and Pinski,
1976
ExC-4
ExC-5
Salton & McGil, 1983
and Tapper, 1982
Fox Thesis, 1983 and Berk,1991
Belew, 1986 and Rose,
ExC-6
1991
In addition to the exemplary combinations of prior art in Exhibit C, Defendants reserve the right to rely on any other combination of any prior art disclosed herein.
2. Motivation to Combine
The United States Supreme Court recently clarified the standard for what tyes of
inventions are patentable. See KSR Intl Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). In
particular, the Supreme Court emphasized that inventions arising from ordinary innovation,
ordinary skill, or common sense should not be patentable. See id. at 1732, 1738, 1742-1743, 1746. In that regard, a patent claim may be obvious if the combination of elements was obvious
to tr or there existed at the time of the invention a known problem for which there was an
obvious solution encompassed by the patent's claims. In addition, when a work is available in
one field of endeavor, design incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary skil can implement a
predictable variation, 35 U.S.C. § 103 likely bars its patentability.
The '352 Patent is obvious because it simply uses known methods in the field of
information retrieval to obtain predictable results. See KSR, 127 S. Ct. at 1742 (2007). For
Page 20
Defendants' first common Interrogatory No.3, SRA declined to identify with specificity each
passage in which each claim element is described in any earlier filed application.
B. Disclosure of Invalidity Due to Anticipation Pursuant to P. R. 3-3(b) and (c)
In accordance with P. R. 3-3(b) and (c), prior art references anticipating some or all of
the
asserted claims are listed in the tables below. The charts in Exhibits D-E identify specific
examples of where each limitation of the anticipated claims is found in that reference, either
expressly, implicitly in the larger context of
the passage, or inherently as understood by a person
having ordinary skil in the ar.
The following patents and publications are prior art under at least 35 U.S.C. §§ 102(a),
(b), (e), and/or (g).
Table 6: Patents and Printed Publications Anticipating
the Asserted Claims ofthe '494 Patent
Exhibit UChart
Prior Art
Salton, 1963
Gamer, 1967
ExD-l
ExD-2 ExD-3 ExD-4 ExD-5 ExD-6 ExD-7 ExD-8 ExD-9
Ex D-lO
Ex D-ll
Salton, 1968
Goffman, 1969
Salton, 1970
Salton, 1971
Schiminovich, 1971
Bichteler & Parsons, 1974
Shimko, 1974
Chen, 1992
Ex D-12 Ex D-13 Ex D-14 Ex D-15
Pinski, 1976 Bichteler & Eaton, 1977 Garfield, 1979
Tapper, 1982
Kochtanek, 1982
Fox/Smart, 1983
ExD-16
Ex D-17 Ex D-18
Fox Thesis, 1983
Fox Collections, 1983
ExD-19
Ex D-20 Ex D-21 Ex D-22
Salton and McGil, 1983 Fox Agriculture, 1984
Fox, Belew, 1985 1986
Page 34
Exhibit D Chart
Ex D-25 Ex D-26 Ex D-27 Ex D-28 Ex D-29 Ex D-30
Prior
Art
Croft, Lucia & Cohen, 1988
Arstrong, 1988
Frisse, 1988
Salton, 1988
Fox, 1988
Bemers-Lee, 1989
Ex D-3l
Ex D-32 Ex D-33 Ex D-34 Ex D-35 Ex D-36 Ex D-38 Ex D-39
Croft & Turtle, 1989
Frisse/Cousins, 1989
Lucarella, 1990
Thompson, 1989
Rose, 1989
Kommers, 1990
Nielsen, 1990 Nielsen, 1990b
Shepherd, 1990
ExD-40 Ex D-4l ExD-42
Ex D-43
Berk,1991
Burt, 1991
Dunlop, 1991
Gelbart, 1991
ExD-44
Ex D-45
Rada,1991
Rose, 1991
ExD-46
Ex D-47
ExD-48
Ex D-49 Ex D-50 Ex D-51 Ex D-52 Ex D-53 Ex D-54 Ex D-55 Ex D-56 Ex D-57 Ex D-58 Ex D-59 Ex D-60
Ex D-61
Shaw Part I, 1991 Shaw Part II, 1991
Turtle & Croft, 1991
Turle, 1991
Alain, 1992
Botafogo, 1992
Chen/Thesis, 1992
Frei & Stieger, 1992
Guinan, 1992
UCINET,1992
Betrabet Thesis, 1993 Betrabet, 1993
Brunei, 1993
Croft, 1993
Fox Envision, 1993
ExD-62
Ex D-63
Conrad & Utt, 1994
DeBra, 1994
ExD-64
Ex D-65
Herzner,1994
McKee, 1994
ExD-66
Ex D-67 Ex D-68 Ex D-69
Pinkerton, 1994 LA Times Frei & Stieger, 1995 March 21 Press Release
Page 35
Exhibit D Chart ExF-7
Ex D-71
Prior
Art
April 24 Press Release
NetCarta, 1996
ExD-72
Ex D-73
ExD-74
Ex D-75 Ex D-76
Ex D-77 Ex D-78 Ex D-79
Pirolli, 1996 Gansner US 4,953,106 Kaplan US 5,446,891 Mauldin US 5748954 Shoham U.S. Pat. No. 5,855,015 Doyle US 5,838,906
Weiss, 1996
France, 1995
The asserted claims of the' 494 Patent are invalid for public use and/or offers for sale of
products and services that anticipate such claims under 35 U.S.C. § 102(a)(b) and/or the
purported invention of the claims was made in this country by another inventor who had not
abandoned, suppressed, or concealed it under 35 U.S.C. § 102(g). The following description and
events are provided on information and belief and are supported by the information and
documents that will be produced by February 13,2009.
Table 7: Public Use/Prior Sale References Anticipating
the Asserted Claims of
the '494 Patent
Exhibit E Chart (see Ex D-7l)
Ex E-l
Prior Art
CyberPilot
"V -Search"
ExE-2 ExE-3 ExE-4 ExE-5
(see Ex D-56) N/A
ENVISION SMART INTERMEDIA TIP
UCINT
Lyco?
V-Search. "V-Search" was disclosed to the public on or before March 29, 1995 and was
in public use for more than one year prior to May 17, 1996, the priority date for the ' 494 Patent.
See, e.g., Kaplan, LA Times, March 29,1995; Libertech March 21, 1995 Press Release; Libertech
2 See, e.g., Chart for Mauldin US 5748954 and related electronic information.
Page 36
April
24, 1995 Press Release; STC0011254-56; EGG_0009554-93; EGG_0004956-99 at
EGG_0004960. Plaintiff alleges that V-Search meets one or more limitations of claims 1-3, 7-9,
12-15, 18-21,23-25,31-33 of
the '494 Patent. See Plaintiffs Disclosure of Asserted Claims and
Infringement Contentions at 12. Defendants reserve the right to contest Plaintiffs allegation that
V -Search meets one or more limitations of the asserted claims of the' 494 Patent. Plaintiff has
refused to identify how V-Search meets the specific limitations of the claims of
the '494 Patent.
See Softare Rights Archive, LLC's Objections and Responses to Defendants' First Set of
Common Interrogatories (Nos. 1-9) at 5.
Defendants' discovery into V-Search is only just beginning, and Defendants thus reserve
the right to supplement the attached charts identifying how V -Search meets limitations of the
claims of the' 494 Patent after discovery is complete. To the extent that V -Search embodies one
or more elements of any of the claims of the' 494 Patent, the disclosure and public use of V-
Search more than one year prior to the' 494 Patent's fiing renders each such claim of the' 494
Patent anticipated and/or obvious or otherwise invalid, either alone or in combination with the
other prior art disclosed herein.
C. Disclosure ofInvalidity Due to Obviousness Pursuant to P. R. 3-3(b) and (c)
The asserted claims of
the '494 Patent are invalid as obvious under 35 U.S.C. § 103.
1. Obviousness Combinations
Each prior art reference disclosed in the preceding sections (see § IV.B), either alone or
II combination with other prior art, also renders the asserted claims invalid as obvious.
Furthermore, Defendants identify the following additional prior art references that either alone or
in combination with other prior art (including any of
the above anticipatory prior art) renders the
asserted claims invalid as obvious under 35 U.S.C. § 103:
· Conklin, 1987 (see e.g., Ex D-23).
Page 37
· Conkin, 1988 (see e.g., Ex D-24).
Pitkow, 1994 (see, e.g., Ex D-80).
· Seeley, J., "The New of
Reciprocal Influence," Can. Jour. Psych. 234-241 (1949).
· Katz, L., "A New Status Index Derived From Sociometric Analysis,"
Psychometria, VoL. 18, NO.1 pp. 39-43 (1953).
· Bar-Hilel, Y., "A Logician's Reaction to Recent Theorizing on Information
Search Systems," American Documentation 8(2): 103-113 (1957).
· Harary, F., Norman, RZ., Cartright, D, "Structural Models: An Introduction to
the Theory of
Directed Graph," John Wiley & Sons, Inc., (1965), (see, e.g.,
Preface, Ch. 1 (Digraphs and Structures), Ch. 5 (Digraphs and Matrices), and Ch.
14 (Networks)).
· Bell Laboratories, "S - A Language for Data Analysis" (1981).
· Hubbell, C., "An Input-Output Approach to Clique Identifcation," (1965).
Hierarchical Clustering in
· Jardine, N., van Rijsbergen, C.J., "The Use of
Information Retrieval," (1971).
· Salton, G., Bergmark, D., "A Citation Study of
the Computer Science Literature,"
IEEE Trans on Professional Communication 22(3):146-158 (also published as TR
79-364) (1979).
· van Rijsbergen, C,J., "Information Retrieval," (1979).
· Jain, A., Dubes, R, "Algorithms
for Clustering Data," (1988).
· Salton, G., Buckley, C., "On the Use of
Spreading Activation Methods in
Automatic Information Retrieval," (Proc. 11th SIGIR, pp. 147-160, also published
as TR 88-907) (April
1988).
Page
38
· Pao, M., Worthen, D., "Retrieval Effectiveness by Semantic and Citation
Searching," J. Am. Society Info. Sci. 40(4):226-235 (1989).
· Golub, G., Van Loan, C.F., "Matrix Computation," (Johns Hopkins University
Press) (1989).
· Consens, M.P. and Mendelzon, A.O., "Expressing Structural Hypertext Queries
in GraphLog," Hypertext '89 Proceedings, pp. 269-292 (1989).
· Kaufìan, L., Rousseeuw, P. "Finding Groups in Data - An Introduction to
Cluster Analysis," (1990).
· Korfhage, "To See, or Not to See - is That the Query," Proceedings of
the 14th
Annual International ACM SIGIR Conference on Research and Development in
Information Retrieval, pp. 134 - 141, (1991).
· Agosti, M., Gradenigo, G., Marchetti, P., "A Hypertext Environmentfor
Interacting With Large Databases," (IP&M 28:371-387) (1992).
. Agosti, M., Marchetti, P., "User Navigation in the IRS Conceptual Structure
Through a Semantic Association Function," (The Computer Journal
35:194-199)
(1992).
· Li, T., Chiu, V., Gey, F. "X-Window Interface to SMART, an Advanced Text
Retrieval System," SIGIR Foru, pp. 5-16 (1992).
. Salton, G., Allan, J., Buckley, C., "Approaches to Passage Retrieval in Full Text
Information Systems," (Proc. 16th SIGIR Conf.) (1993).
· Hearst, M., Plaunt, C., "Subtopic Structuringfor Full-Length Document Access,"
(Proc. 16th SIGIR)(1993).
Page 39
· Salton, G., Allan, J., Buckley, C., Singhal, A., "Automatic, Theme Generation,
and Summarization of
Machine-Readable Texts," (Science, 264:1421-1426)
(1994).
· Wood, A., Drew, N., Beale, R., Hendley, B., "HyperSpace: Web Browsing with
Visualisation," (Proceedings from The Third International World-Wide Web
Conference) (April
10-14, 1995).
· Harary, F., Norman, RZ., Cartright, D, "Structural Models: An Introduction to
the Theory of
Directed Graph," John Wiley & Sons, Inc., (1965) (see, e.g.,
Preface, Ch. 1 (Digraphs and Strctures), Ch. 5 (Digraphs and Matrces), and Ch.
14 (Networks)).
· Korfhage, "To See, or Not to See - is That the Query," Proceedings of
the 14th
Annual International ACM SIGIR Conference on Research and Development in
Information Retrieval, pp. 134 - 141, (1991).
· Consens, M.P. and Mendelzon, AO., "Expressing Structural Hypertext Queries
in GraphLog," Hypertext '89 Proceedings, pp. 269-292 (1989).
· "Documents relationships at a Glance," Electronic Documents," VoL. 3, p. 3
(1994)
· PCT WO 95/00896 (published January 5, 1995).
· References and prior art cited above as anticipating and/or rendering obvious the
'352 Patent.
In addition, Defendants incorporate by reference each and every prior art reference of
record in the prosecution of the patents-in-suit and related applications, including the statements
Page
40
made therein by the applicant and the examiner, the prior art discussed in the specification, and
any other statements found in the intrinsic record.
In particular, each prior art reference may be combined with (1) information known to
persons skilled in the art at the time of the alleged invention, (2) any of the other anticipatory
prior art references, (3) any statements in the intrinsic record of patents-in-suit and related
applications, and/or (4) any of the additional prior art identified above. To the extent that SRA
contends that any of the anticipatory prior art fails to disclose one or more limitations of the
asserted claims, Defendants reserve the right to identify other prior art references that, when
combined with the anticipatory prior art, would render the claims obvious despite the allegedly
missing limitation. Defendants contentions are made subject to its reservations above and based
on Defendants' present understanding of the asserted claims of the' 494 Patent and the apparent
constrctions in SRA's Infringement Contentions.
Exhibit F includes claim charts for the asserted claims of the' 494 Patent using specific
and exemplary combinations of references:
Table 8: References Rendering Obvious Asserted Claims of
the '494 Patent
ExhibitF Chart
Chart F-l
PriorArt
103 Chart
Nielsen, 1990b, Frisse, 1988 and prior
Chart F-2
Chart F-3
public use of the Internet and references regarding same Salton, 1963, Pinski, 1976 and prior public use of the Internet and references regarding same
Salton & McGil, 1983, Tapper, 1982
Chart F-4
the Internet and references regarding same
and prior public use of
Chart F-5
Fox Thesis, 1983, Berk, 1991 and prior
public use of the Internet and references
regarding same
Page 41
B. Disclosure ofInvalidity Due to Anticipation Pursuant to P. R. 3-3(b) and (c)
In accordance with P. R. 3-3(b) and (c), prior art references anticipating some or all of
the
asserted claims are listed in the tables below. The charts in Exhibits G-H identify specific
examples of where each limitation of
the anticipated claims is found in that reference, either
expressly, implicitly in the larger context of
the passage, or inherently as understood by a person
having ordinary skill in the art.
The following patents and publications are prior art under at least 35 U.S.C. §§ 102(a),
(b), (e), and/or (g).
Table 9: Patents and Printed Publications Anticipating
the Asserted Claims of the '571 Patent
ExG-l
ExG-2 ExG-3 ExG-4 ExG-5 ExG-6 ExG-7 ExG-8 ExG-9 Ex G-I0
Ex G-ll
Garner,
1967
Salton, 1968
Goffman, 1969
Salton, 1970
Salton, 1971
Schiminovich, 1971
Shio, 1974
Bichteler, 1974 Pinski, 1976
Tapper, 1982
Kochtanek, 1982
Fox/Smart, 1983
Fox Thesis, 1983
Fox Collections, 1983
Ex G-12
Ex G-13
Ex G-14 Ex G-15 Ex G-16 Ex G-17 Ex G-18 Ex G-19 Ex G-20
Ex G-21
Salton and McGil, 1983
Fox Agriculture, 1984
Fox, Belew, 1985 1986
Conkin, 1987
Conklin, 1988
Croft, Lucia & Cohen, 1988
Frisse, 1988
Ex G-22 Ex G-23
Salton, 1988
Page 59
Ex G-24 Ex G-25 Ex G-26 Ex G-27 Ex G-28 Ex G-29 Ex G-30
Ex G-31
Fox,
1988
Bemers-Lee, 1989
Croft & Turtle, 1989
Frisse/Cousins, 1989
Thompson, 1989
Rose, 1989
Kommers, 1990
Ex G-32
Ex G-33
Lucarella, 1990 Nielsen, 1990 Nielsen, 1990b
Shepherd, 1990
Ex G-34
Ex G-35
Turtle, 1991
Turtle & Croft, 1991
Ex G-36 Ex G-37
Ex G-38
Bruei, 1993
Gelbart, 1991
Ex G-39 Ex G-40
Ex G-41
Berk,1991
Dunlop, 1991
Rada,1991
Rose, 1991
Ex G-42
Ex G-43
Frei & Stieger, 1992
Botafogo, 1992
Alain, 1992
Ex G-44 Ex G-45
Ex G-46
Guinan, 1992
Chen/Thesis, 1992
Chen, 1992
Ex G-47 Ex G-48 Ex G-49
Ex G-50
Ex G-51
UCINET,1992
Fox Envision, 1993
Croft, 1993
Betrabet, 1993
Pinerton, 1994
Ex G-52
Ex G-53
Ex G-54
Ex G-55
Betrabet Thesis, 1993
Herzner, 1994
McKee, 1994
Ex G-56 Ex G-57 Ex G-58 Ex G-59 Ex G-60
Ex G-61
Krol,1994
Frei & Stieger, 1995
NetCarta, 1996
Ex 1-7
LA Times March 21 Press Release April 24 Press Release
Page 60
Ex G-62
Ex G-63
Piroll, 1996
Shoham US 5855015
Ex G-64 Ex G-65 Ex G-66 Ex G-67 Ex G-68 Ex G-76 N/A
Kaplan US 5446891 Bichteler & Eaton, 1977 Conrad & Utt, 1994 Mauldin US 5748954
Chen Thesis, 1992
Weiss, 1996
Lin, 1991
The following systems are prior art under at least 35 U.S.C. §§ 102(a), (b) and/or (g).
Although Defendants' investigation continues, information available to date indicates that each
system was (1) known or used in this countr before the alleged invention of the claimed subject
matter of the asserted claims, (2) was in public use and/or on sale in this country more than one
year before the fiing date of
the patent, and/or (3) was invented by another who did not abandon,
suppress, or conceal, before the alleged invention of the claimed subject matter of the asserted
claims. The following description and events are provided on information and belief, and are
supported by the information and documents that wil be produced by February 13,2009.
Table 10: Public Use/Prior Sale References Anticipating
the Asserted Claims of the '571 Patent
..
Exhibit HChart Prior Art
(see Ex G-59)
ExH-l
ExH-2 ExH-3
Cyberpilot V-Search ENVISION Intermedia
V-Search. "V-Search" was disclosed to the public on or about March 29, 1995 and was
in public use for more than one year prior to May 17, 1996, the priority date for the' 571 Patent.
See, e.g., Kaplan, LA Times, 1995; Libertech March 21, 1995 Press Release; Libertech April
24,
1995 Press Release; EGG_0009554-93; EGG_0004956-99 at EGG_ 0004960; STI_0011254-56.
Plaintiff alleges that V -Search meets one or more limitations of claims 5-7, 9-11 and 21-22 of the
Page 61
'571 Patent. See Plaintiffs Disclosure of Asserted Claims and Infringement Contentions at 12.
Defendants reserve the right to contest Plaintiff s allegation that V -Search meets one or more
limitations of the asserted claims of the '571 Patent. Plaintiff
has refused to identify how V-
Search meets the specific limitations of
the claims of
the '571 Patent. See Softare Rights
Common Interrogatories
Archive, LLC's Objections and Responses to Defendants' First Set of
(Nos. 1-9) at 5.
Defendants' discovery into V-Search is only just beginning, and Defendants thus reserve
the right to supplement the attached charts identifying how V -Search meets limitations of the
claims of
the '571 Patent after discovery is complete. To the extent that V-Search embodies one
or more elements of any of the claims of the' 571 Patent, the disclosure, public use, and possible
offer for sale of
V-Search more than one year prior to the '571 Patent's filing renders each such
claims of
the '571 Patent anticipated and/or obvious or otherwise invalid, alone or in
combination with the other prior art disclosed herein.
C. Disclosure of Invalidity Due to Obviousness Pursuant to P. R. 3-3(b) and (c)
The asserted claims of
the '571 Patent are invalid as obvious under 35 U.S.C. § 103.
1. Obviousness Combinations
Each prior art reference disclosed in the preceding sections (see § V.B), either alone or in
combination with other prior art, also renders the asserted claims invalid as obvious.
Furtermore, Defendants identify the following additional prior art references that either alone or
in combination with other prior art (including any of the above anticipatory prior art) renders the
asserted claims invalid as obvious under 35 U.S.C. § 103:
· TIP (see, e.g., Ex G-69).
· SMART (see, e.g., Ex G-70).
· Garfield, 1979 (see, e.g., Ex G-71).
Page 62
· Armstrong, 1988 (see, e.g., Ex G-72).
· Shaw Part I, 1991 (see, e.g., Ex G-73).
· Shaw Part II, 1991 (see, e.g., Ex G-74).
· France, 1995 (see, e.g., Ex G-75).
· DeBra, 1994 (see, e.g., Ex. G-81).
Bur, 1991 (see, e.g., Ex. G-77).
· Salton, 1975 (see, e.g., Ex. G-78).
Pitkow, 1994 (see, e.g., Ex. G-79).
· U.S. Patent No. 5,838,906 (see e.g., Ex G-80).
· Seeley, J., "The New of
Reciprocal Influence," Can. Jour. Psych. 234-241 (1949).
Katz, L., "A New Status Index Derived From Sociometric Analysis,"
Psychometria, VoL. 18, NO.1 pp. 39-43 (1953).
Bar-Hilel, Y., "A Logician's Reaction to Recent Theorizing on Information
Search Systems," American Documentation 8(2): 103-113 (1957).
· Harary, F., Norman, R.Z., Cartright, D, "Structural Models: An Introduction to
the Theory of
Directed Graph," John Wiley & Sons, Inc., (1965), (see, e.g.,
Preface, Ch. 1 (Digraphs and Structures), Ch. 5 (Digraphs and Matrces), and Ch.
14 (Networks)).
· Bell Laboratories, "s - A Language for Data Analysis" (1981).
Hubbell, C., "An Input-Output Approach to Clique Identifcation," (1965).
· Jardine, N., van Rijsbergen, C.J., "The Use of
Hierarchical Clustering in
Information Retrieval," (1971).
Page 63
· Salton, G., Bergmark, D., "A Citation Study of
the Computer Science Literature,"
IEEE Trans on Professional Communication 22(3): 146-158 (also published as TR
79-364) (1979).
· van Rijsbergen, C,J., "Information Retrieval," (1979).
· Jain, A., Dubes, R., "Algorithms for Clustering Data," (1988).
· Salton, G., Buckley, C., "On the Use of
Spreading Activation Methods in
Automatic Information Retrieval," (Proc. 11th SIGIR, pp. 147-160, also published
as TR 88-907) (April
1988).
· Pao, M., Worthen, D., "Retrieval Effectiveness by Semantic and Citation
Searching," J. Am. Society Info. Sci. 40(4):226-235 (1989).
· Golub, G., Van Loan, C.F., "Matrix Computation," (Johns Hopkins University
Press) (1989).
· Consens, M.P. and Mendelzon, A.O., "Expressing Structural Hypertext Queries
in GraphLog," Hypertext '89 Proceedings, pp. 269-292 (1989).
· Kaufìan, L., Rousseeuw, P. "Finding Groups in Data - An Introduction to
Cluster Analysis," (1990).
· Korfhage, "To See, or Not to See - is That the Query," Proceedings of
the 14th
Annual International ACM SIGIR Conference on Research and Development in
Information Retrieval, pp. 134 - 141, (1991).
· Agosti, M., Gradenigo, G., Marchetti, P., "A Hypertext Environmentfor
Interacting With Large Databases," (IP&M 28:371-387) (1992).
Page 64
Agosti, M., Marchetti, P., "User Navigation in the IRS Conceptual Structure
Through a Semantic Association Function," (The Computer Journal
35:194-199)
(1992).
· Li, T., Chiu, V., Gey, F. "X-Window Interface to SMART, an Advanced Text
Retrieval System, " SIGIR Forum, pp. 5-16 (1992).
· Salton, G., Allan, J., Buckley, C., "Approaches to Passage Retrieval in Full Text
Information Systems," (Proc. 16th SIGIR Conf.) (1993).
· Hearst, M., Plaunt, C., "Subtopic Structuring
for Full-Length Document Access,"
(Proc. 16th SIGIR) (1993).
· Salton, G., Allan, J., Buckley, C., Singhal, A., "Automatic, Theme Generation,
and Summarization of Machine-Readable Texts," (Science, 264: 1421-1426)
(1994).
· Wood, A., Drew, N., Beale, R., Hendley, B., "HyperSpace: Web Browsing with
Visualisation," (Proceedings from The Third International World-Wide Web
Conference) (April
10-14, 1995).
Harary, F., Norman, R.Z., Cartright, D, "Structural Models: An Introduction to
the Theory of
Directed Graph," John Wiley & Sons, Inc., (1965), (see, e.g.,
Preface, Ch. 1 (Digraphs and Structures), Ch. 5 (Digraphs and Matrices), and Ch.
14 (Networks)).
· Korfhage, "To See, or Not to See - is That the Query," Proceedings of
the 14th
Anual International ACM SIGIR Conference on Research and Development in
Information Retrieval, pp. 134 - 141, (1991).
Page
65
· Consens, M.P. and Mendelzon, A.O., "Expressing Structural Hypertext Queries
in GraphLog," Hypertext '89 Proceedings, pp. 269-292 (1989).
· "Documents relationships at a Glance," Electronic Documents, VoL. 3, p. 3
(1994).
· PCT WO 95/00896 (published January 5, 1995).
· References and prior art cited above as anticipating and/or rendering obvious the
'352 and '494 Patents and references cited on the face of
the patents-in-suit.
In addition, Defendants incorporate by reference each and every prior art reference of
record in the prosecution of the patents-in-suit and related applications, including the statements
made therein by the applicant and the examiner, the prior art discussed in the specification, and
any other statements found in the intrinsic record.
For example, during prosecution of
the '571 Patent, the applicants contested that "it
would have been obvious to one of ordinary skill in the art at the time of the invention to extend
the hyperjump links ofVertelney to Internet connections because this would greatly enhance the
utility of
the system." See Amendment and Response at 10, Paper No. 12, June 6, 2000.
However, the Examier maintained the rejection, (see Office Action at 2-3, Paper No. 14, July
19,2000), and the applicants failed to refute the Examiner's finding. See Amendment after Final
Rejection, Paper No. 17 (amending claims to secure allowance). Accordingly, it was conceded
that it would have been obvious at least to extend hyperjump links to Internet connections.
In particular, each prior art reference may be combined with (1) information known to
persons skilled in the art at the time of the alleged invention, (2) any of the other anticipatory
prior art references, (3) any statements in the intrisic record of patents-in-suit and related
applications, and/or (4) any of the additional prior art identified above. To the extent that SRA
Page
66
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