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)

Download PDF
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

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?