Rockstar Consortium US LP et al v. Google Inc

Filing 123

RESPONSE in Opposition re 117 MOTION to Strike Defendant Google Inc.'s Deficient Obviousness Disclosure Under Patent Rule 3-3(B) filed by Google Inc. (Attachments: # 1 Declaration of Lance Yang, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Text of Proposed Order)(Perlson, David)

EXHIBIT J

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES LLC,
Plaintiffs,
v.
GOOGLE INC.
Defendant.

)
)
)
)
)
)
)
)
)
)
)
)

Civil Action No. 13-cv-00893-RG

DEFENDANT GOOGLE INC.’S INVALIDITY CONTENTIONS
I.

INTRODUCTION
Pursuant to Rule 3-3 of the Local Patent Rules (“P.R.”) of the Eastern District of Texas

and the Scheduling Order governing this action (D.I. 68), defendant Google Inc. (“Google”)
hereby provides its Invalidity Contentions with respect to the asserted claims identified by
plaintiffs Rockstar Consortium US LP and Netstar Technologies LLC (collectively “Rockstar”)
in its Disclosure of Asserted Claims and Infringement Contentions dated March 24, 2014. The
asserted claims are claim 1 of U.S. Patent No. 6,098,065 (“‘065 patent”); claims 1, 2, 3, 4, 5, 6,
8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, and 23 of U.S. Patent No. 7,236,969 B1
(“‘969 patent”); claims 1, 3, 4, 5, 6, 7, 8, 9, 12, 13, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, and 25
of U.S. Patent No. 7,469,245 B2 (“‘245 patent”); claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14,
15, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 28, 29, 30, 31, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44,
45, 46, and 47 of U.S. Patent No. 7,672,970 B2 (“‘970 patent”); claims 1, 5, 6, 7, 8, 9, 10, 12, 14,
15, 16, 17, and 18 of U.S. Patent No. 7,895,178 B2 (“‘178 patent”); claims 1, 2, 4, 5, 6, 7, 8, 9,
10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 of U.S. Patent No. 7,895,183 B2 (“‘183 patent”);

1

and claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26,
and 28 of U.S. Patent No. 7,933,883 B2 (“‘883 patent”) (collectively the “asserted claims”).
With respect to each asserted claim and based on its investigation to date, Google hereby:
(a) identifies each currently known item of prior art that either anticipates or renders obvious
each asserted claim; (b) specifies whether each such item of prior art (or a combination of several
of the same) anticipates each asserted claim or renders it obvious; (c) submits a chart identifying
where each element in each asserted claim is disclosed, described, or taught in the prior art,
including for each element that is governed by 35 U.S.C. § 112 ¶ 6, the identity of the
structure(s), act(s), or material(s) in each item of prior art that performs the claimed function; and
(d) identifies the grounds for invalidating asserted claims based on indefiniteness under 35
U.S.C. § 112(2) or enablement or written description under 35 U.S.C. § 112(1).
In addition, pursuant to P.R. 3-4(a) and (b) and based on its investigation to date, Google has
produced documents in its possession, custody, or control.
II.

RESERVATIONS
Consistent with P.R. 3-6 and the Discovery Order in this case (D.I. 69), Google reserves

the right to amend these Invalidity Contentions. The information and documents that Google
produces is provisional and subject to further revision as follows. Google expressly reserves the
right to amend the disclosures and document production herein should Rockstar provide any
information that it failed to provide in its P.R. 3-1 and 3-2 disclosures or should Rockstar amend
its P.R. 3-1 or 3-2 disclosures in any way, whether explicitly or implicitly. Further, because
limited discovery has only recently begun and because Google has not yet completed its search
for and analysis of relevant prior art, Google reserves the right to revise, amend, and/or
supplement the information provided herein, including identifying and relying on additional

2

references, should Google’s further search and analysis yield additional information or
references, consistent with the Patent Rules and the Federal Rules of Civil Procedure. Moreover,
Google reserves the right to revise its ultimate contentions concerning the invalidity of the claims
of the asserted patents, which may change depending upon the Court’s construction of the claims
of the asserted patents, any findings as to the priority dates of the asserted patents, and/or
positions that Rockstar or its expert witness(es) may take concerning claim interpretation,
infringement, and/or invalidity issues.
Prior art not included in this disclosure, whether known or not known to Google may
become relevant. In particular, Google is currently unaware of the extent, if any, to which
Rockstar will contend that limitations of the asserted claims are not disclosed in the prior art
identified by Google, particularly given that Rockstar has asserted 144 claims against Google. To
the extent that such an issue arises, Google reserves the right to identify other references that
would have made the addition of the allegedly missing limitation to the disclosed device or
method obvious.
Moreover, the mere fact that Rockstar has raised so many claims and has refused to
narrow the claims has prejudiced Google and hindered its ability to do a full and complete
analysis. It is notable that Rockstar refused to reduce the number of asserted claims and
provided no commitment to do so. If and when Rockstar ultimately does so, Google reserves its
right to conduct a more targeted search and to provide further contentions as appropriate and
needed.
Google’s claim charts in Exhibits A-1 to A-39 cite to particular teachings and disclosures
of the prior art as applied to features of the asserted claims. However, persons having ordinary
skill in the art generally may view an item of prior art in the context of other publications,

3

literature, products, and understanding. As such, the cited portions are only examples, and
Google reserves the right to rely on un-cited portions of the prior art references and on other
publications and expert testimony as aids in understanding and interpreting the cited portions, as
providing context thereto, and as additional evidence that the prior art discloses a claim
limitation. Google further reserves the right to rely on un-cited portions of the prior art
references, other publications, and testimony to establish bases for combinations of certain cited
references that render the asserted claims obvious.
The references discussed in the claim charts in Exhibits A-1 to A-39 may disclose the
elements of the asserted claims explicitly and/or inherently, and/or they may be relied upon to
show the state of the art in the relevant time frame. The suggested obviousness combinations are
provided in the alternative to Google’s anticipation contentions and are not to be construed to
suggest that any reference included in the combinations is not by itself anticipatory.
For purposes of these Invalidity Contentions, Google identifies prior art references and
provides element-by-element claim charts based in part on the apparent constructions of the
asserted claims advanced by Rockstar in its Infringement Contentions, which Google has already
detailed are inadequate. Nothing stated herein shall be treated as an admission or suggestion that
Google agrees with Rockstar regarding either the scope of any of the asserted claims or the claim
constructions advanced by it in its Infringement Contentions. Moreover, nothing in these
Invalidity Contentions shall be treated as an admission that Google’s accused technology meets
any limitations of the claims. Further, nothing in these Invalidity Contentions shall be treated as
an admission of the date of conception or reduction to practice for the asserted claims.
Depending on the Court’s construction of the claims of the asserted patents, and/or
positions that Rockstar or its expert witness(es) may take concerning claim interpretation, the

4

date of conception or reduction to practice of the asserted claims, infringement, and/or invalidity
issues, different ones of the charted prior art references in Exhibits A-1 to A-39 may be of
greater or lesser relevance and different combinations of these references may be implicated.
Given this uncertainty, the charts may reflect alternative applications of the prior art against the
asserted claims.
Pursuant to P.R. 3-3 and 3-4, Google has provided disclosures and related documents
pertaining only to the asserted claims as identified by Rockstar in its Infringement Contentions.
Google reserves the right to modify, amend, or supplement these Invalidity Contentions to show
the invalidity of any additional claims that the Court may allow Rockstar to later assert. Google
further reserves the right to supplement its P.R. 3-4 document production should it later find
additional, responsive documents.
III.

INVALIDITY CONTENTIONS
A.

Identification of Prior Art Pursuant to P.R. 3-3(a)

In addition to the prior art identified in the prosecution history of the asserted patents,
Google intends to rely upon the prior art identified pursuant to P.R. 3-3(a) in Exhibit C to these
Invalidity Contentions. Exhibit C provides the full identity of each item of prior art, including:
(1) each patent by its patent number, country of origin, and date of issue; (2) each non-patent
publication by its title, date of publication, and, where feasible, author and publisher; (3) 35
U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the
offer or use took place or the information became known, and the identity of the person or entity
which made the use or which made and received the offer, or the person or entity which made
the information known or to whom it was made known; and (4) 35 U.S.C. § 102(g) prior art by

5

the identities of the person(s) or entities involved in and the circumstances surrounding the
making of the invention before the patent applicant.
Google’s identification of patents and publications as prior art herein and in the attached
charts under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103 includes the publications
themselves as well as the use of the products and systems, and use thereof, described therein.
Although Google’s investigation continues, information available to date indicates that such
products and systems were (1) known or used in the country before the alleged invention of the
claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this
country more than one year before the filing date of the patent, and/or (3) were invented by
another who did not abandon, suppress, or conceal, before the alleged invention of the claimed
subject matter of the asserted claim. Upon information and belief, these prior art products and
systems and their associated references anticipate and/or render obvious each of the asserted
claims.
Google reserves the right to assert that the asserted patents are invalid under 35 U.S.C.
§102(f) in the event Google obtains evidence that Richard Prescott Skillen and Frederick
Caldwell Livermore, the named inventors of the asserted patents, did not invent (either together
or in conjunction with other parties) the subject matter claimed in the asserted patents. Should
Google obtain such evidence, it will provide the name of the person(s) from whom and the
circumstances under which the invention or any part of it was derived.
Google further intends to rely on inventor admissions concerning the scope of the prior
art relevant to the asserted patents found in, inter alia: the patent prosecution histories for the
asserted patents and related patents, patent applications, and/or re-examinations; any deposition

6

testimony of the named inventors on the asserted patents; and the papers filed and any evidence
submitted by Rockstar in conjunction with this litigation.
Discovery is ongoing, and Google’s prior art investigation and third party discovery is
therefore not yet complete. Google reserves the right to present additional items of prior art
under 35 U.S.C. § 102(a), (b), (e), and/or (g), and/or § 103 located during the course of discovery
or further investigation. For example, Google expects to issue subpoenas to third parties
believed to have knowledge, documentation and/or corroborating evidence concerning some of
the prior art listed in Exhibit C and/or additional prior art. These third parties include the
authors, inventors, or assignees of the references listed in Exhibit C. In addition, Google
reserves the right to assert invalidity under 35 U.S.C. § 102(c), (d), or (f) to the extent that
discovery or further investigation yield information forming the basis for such claims.
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 of the asserted patents are listed in Table 1 below. A full citation to each
reference is found in Exhibit C, along with the “Short Name” used to identify each reference
throughout these disclosures, including the claim charts of Exhibits A-1 to A-39. Table 1
identifies the claims anticipated by each reference and the chart in Exhibits A-1 to A-39 that
identifies specific examples of where each limitation of the anticipated claims is found in that
reference.
Table 1: Prior Art References Anticipating Asserted Claims of the Patents in Suit.
Exhibit A Chart Prior Art
A-1

Adapt/X Advertiser (“ADAPT/X”) and references cited therein.

7

A-2

Alta Vista Search Engine (“ALTA VISTA”) and references cited therein.

A-3

Chris Buckley, “Implementation of the SMART Information Retrieval
System,” Department of Computer Science, Cornell University (May
1985) (“BUCKLEY”)

A-4

U.S. Patent No. 5,901,287 (“BULL”)

A-5

U.S. Patent No. 5,761,662 (“DASAN”)

A-6

Rick Dedrick, Interactive Electronic Advertising, IEEE 1994 (“DEDRICK
1994”)

A-7

Rick Dedrick, A Consumption Model for Targeted Electronic
Advertising, IEEE 1995 (“DEDRICK 1995”)

A-8

U.S. Patent No. 5,710,884 (“DEDRICK PATENT”)

A-9

DoubleClick system (“DoubleClick”) and references cited therein.

A-9

U.S. Patent No. 5,948,061 (“MERRIMAN I”)

A-9

U.S. Patent No. 7,844,488 (“MERRIMAN II”)

A-10

Excite Search Engine (“EXCITE”) and references cited therein.

A-11

U.S. Patent No. 7,072,849 (“FILEPP”)

A-12

Fuzzy Query Modelling Assistant System (“FMQA”)

A-13

Edward Fox, Development of the Coder System: A Testbed for Artificial
Intelligence Methods in Information Retrieval (Fox)

A-14

Katherine Gallagher and Jeffrey Parsons, A Framework for Targeting
Banner Advertising on the Internet, Proceedings of the Thirtieth Annual
Hawwaii International Conference on System Sciences, 1997 IEEE
(“GALLAGHER”)

8

A-15

HEALTHGATE and references cited therein.

A-16

Hotbot Search Engine (“HOTBOT”) and references cited therein.

A-17

Infoseek Search Engine (“INFOSEEK”) and references cited therein.

A-18

Kohda, Ubiquitous Advertising on the WWW: Merging Advertisement on
the Browser,” Computer Networks and ISDN Systems, Vol. 28, Nos. 711, pp. 1493-1499 (May 1996) (“KOHDA ‘96”)

A-19

U.S. Patent No., 7,136,853 (“KOHDA”)

A-20

Henrik Larsen and Ronald Yager, “Query Fuzzification for Internet
Information Retrieval,” (1996) (“LARSEN”)

A-21

Gary Mooney, “Intelligent information retrieval from the World Wide
Web using fuzzy user modelling,” Information Research News, Vol. 21,
No. 67 (Winter 1996) (“MOONEY”)

A-22

Sung Myaeng and Robert Korfhage, “Integration of User Profiles:
Models and Experiments in Information Retrieval,” Information
Processing & Management,
Vol. 26, No. 6 (1990) (“MYAENG”)

A-23

WO9721183A1 (NAQVI WO)

A-24

NetGravity Ad Server (“NetGravity”) and references cited therein.

A-25

Open Text Search Engine (“OPEN TEXT”) and references cited therein.

A-26

Profile-Based System (“PBS”) and references cited therein.

A-27

U.S. Patent No. 6,119,101 (“PECKOVER”)

A-28

“Study: Search Engine Vendors Adopt New Strategies,” Phillips
Business Information’s Internet Week, Aug. 5, 1996 (“PHILLIPS
BUSINESS”)

9

A-29

Make Sure Search Engines Find Your Site, PR News, May 6, 1996 (“PR
NEWS”)

A-30

Tadeusz Radecki, “Fuzzy Set Theoretical Approach to Document
Retrieval” Information Processing & Management, Vol. 15, pp. 247-259
(1979) (“RADECKI”)

A-31

U.S. Patent No. 6,374,237 (“REESE”)

A-32

System for the Mechanical Analysis and Retrieval of Text (“SMART”)

A-33

SUBMIT-IT and references cited therein.

A-34

U.S. Patent No. 5,886,683 (“TOGNAZZINI”)

A-35

Turpeinen, Architecture for Agent-Mediated Personal News Service
(“TURPEINEN”).

A-36

Lycos Search Engine (“LYCOS”) and references cited therein.

A-37

WebCrawler Search Engine (“WEBCRAWLER”) and references cited
therein.

A-38

Wilms, A Natural Language Interface For An Intelligent Document
Information And Retrieval System (1988) (“WILMS”)

A-39

Yahoo! Search Engine (“YAHOO!”) and references cited therein.

The art cited in Exhibits A-1 to A-39 are illustrative and not exhaustive. Further, these
claim charts provide illustrative citations to where each element may be found in the prior art
references. The cited references may contain other disclosures of each claim element as well.
Furthermore, as noted above, the cited references under 35 U.S.C. §§102(a), (b), (e), and/or (g)
include the publications themselves as well as the use of the products and systems described
therein. Although Google’s investigation continues, information available to date indicates that
such products and systems were (1) known or used in the country before the alleged invention of
10

the claimed subject matter of the asserted claims, (2) were in public use and/or on sale in this
country more than one year before the filing date of the patent, and/or (3) were invented by
another who did not abandon, suppress, or conceal, before the alleged invention of the claimed
subject matter of the asserted claim. Upon information and belief, these prior art products and
systems and their associated references anticipate each of the asserted claims.
C.

Disclosure of Invalidity Due to Obviousness Pursuant to P.R. 3-3(b) and (c)

In accordance with P.R. 3-3(b), prior art references rendering the asserted patents
obvious, alone or in combination with other references, and teachings, suggestions, and/or
motivations to combine them are outlined below and included in Exhibits A-1 to A-39. In
addition, discussed below are specific groups of prior art where members from different groups
would be obvious to combine in ways similar to the other obviousness combinations provided.
In addition to the specific combinations of prior art and the specific combinations of groups of
prior art disclosed herein, Google reserves the right to rely on any combination of any prior art
references disclosed herein. These obviousness combinations reflect Google’s present
understanding of the potential scope of the claims that Rockstar appears to be advocating and
should not be seen as Google’s acquiescence to Rockstar’s interpretation of the patent claims.
Based on Google’s present understanding of the asserted claims of the asserted patentsin-suit and the apparent constructions that Google believes Rockstar to be asserting based on
Rockstar’s Infringement Contentions, Google believes that the anticipation references discussed
in section III.B. and charted in Exhibits A-1 to A-39 each anticipate the claims of the asserted
patents found in the references’ respective charts in Exhibits A-1 to A-39. However, if the finder
of fact determines that some element of a given claim was not part of an anticipation reference,
then Google contends that the anticipation reference in combination with the knowledge and skill

11

of a person of ordinary skill in the art at the time of the alleged invention and/or other prior art
disclosing the allegedly missing limitations would have rendered each of the charted claims
obvious. Exhibit B contains tables which identify specific examples of where each limitation of
the asserted claims is found in a prior art reference. References herein to tables beginning with
the letter “B” refer to the tables that appear in Exhibit B.
In several locations in this section and in Exhibit B, different categories of prior art
references are presented and a title is provided for each such category. These category titles are
provided for convenience only and do not constitute an admission of what the included
references are alleged to disclose, nor are the titles a binding characterization of what any
reference not in a given category does not disclose.
The Supreme Court has held that the combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable results. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1739 (2007). 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. Id. at 1740. For the same reason, if a technique has
been used to improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. Id. In order to determine whether there is an apparent
reason to combine the known elements in the fashion claimed by the patent at issue, a court can
look to interrelated teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge possessed by a person
having ordinary skill in the art. Id at 1740-1741. For example, obviousness can be demonstrated
by showing there existed at the time of invention a known problem for which there was an

12

obvious solution encompassed by the patent’s claims. Id. at 1743. Any need or problem known
in the field of endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed. Id. Common sense also teaches that familiar
items may have obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.
Id.
The motivation, reasons, and market trends that that would provide a basis to combine the
teachings of the prior art references disclosed herein is found in the references themselves and:
(1) the nature of the problem being solved, (2) the express, implied and inherent teachings of the
prior art, (3) the knowledge of persons of ordinary skill in the art, and (4) the predictable results
obtained in combining the different elements of the prior art. By way of example, HOFFEROR (at
p. 1) states:
Users of e-mail and other on-line communication systems are faced with the
problem of selecting relevant information in a space of different informationsources. . . . To overcome this information overload problem information filtering
techniques have been developed to deliver information t those users who really
need it.
MORITA (at p. 1) states: “Recent developments in computers and computer networks
interconnecting large numbers of systems have brought us convenience in many aspects, but
have introduced a situation of ‘information overloading’ also.” EDWARDS (at p. 31) states:
The recent, rapid growth of the Internet has led to enormous amounts of on-line
information. However, as the volume of this information has increased, so have
the problems encountered by users in dealing with it. Software agents have been
proposed as a solution to this problem.
And, LIEBERMAN (at p. 2) states:
The recent explosive growth of the World Wide Web and other on-line
information sources has made critical the need for some sort of intelligent
assistance to a user who is browsing for interesting information.

13

(See also, e.g., O’RIORDAN, p. 205 (“It is generally acknowledged that the volume of information
which is accessible over various networks has exceeded the capability of users to sift through it
in order to access that which is relevant to them.”).)
These publications, as well as the others cited herein, recognize the problem to be solved:
assisting Internet users in locating relevant information. They also evidence a trend in finding
ways to solve this problem and personalize a computer users’ experience through, for example
user profiles and other known methods. This problem and trend would motivate one skilled in
the art to integrate the elements in the Asserted Patents into a new application.
Furthermore, Google notes that the shared specification of the Asserted Patents admits
that:
The Internet provides an excellent vehicle for access to information about goods
and services on a global basis. In theory, anyone can access information about
any product. In practice, the problem is one of finding the correct information. . .
. These techniques and tools for searching and retrieving information, in their
present form, can inundate the user with large amounts of unwanted material. . . .
As search engines and techniques become ever more powerful in the number and
diversity of databases they can access, the amount of information which it is
possible to present to a user can quickly become excessively large.
(‘065 patent, 1:4-31) (emphasis added). Thus, the patents sought to solve the same problem
discussed in the prior art, and indeed acknowledge that “many techniques for solving this
problem [were] known, including: indexing systems such as Yahoo, graphical electronic malls,
hall of malls, directories, and text search engines, such as OpenText.” (‘065 patent, 1:12-13.)
Also in this time frame, there was a focus on how to advertise and/or make money on the
Internet. By way of example, in What Makes People Click: Advertising on the Web, the author
analyzed the different ways in which a company could advertise on the Web, including getting
placed in search engines, banner advertising, and keyword referral advertising. (See also e.g.,
PR NEWS, FROOK.) Similarly, GALLAGHER sought to “address the challenge of attracting a
defined target audience to a Web site via banner advertising.” (GALLAGHER, p. 1.)
14

Based on Google’s present understanding of the asserted claims of the patents-in-suit and
the apparent constructions that Google believes Rockstar to be asserting based on Rockstar’s
Infringement Contentions, the asserted claims of the patents-in-suit are obvious in light of the
combinations outlined below. Each of these combinations yields predictable results.
1.

References that Receive a Search Request and Search a Database for
Search Results

Search engines were well known in the prior art. Several search engines, including those
listed below in Table 2, were on the market and in use by consumers. The patents acknowledge
this, citing to both Yahoo and Open Text. (‘065 patent, 1:12-14.) And, the patents provide that
these “conventional search engines” provide “a basis on which the methodology according to
this invention may be implemented.” (Id., 2:10-13; see also id., 4:2-5 (“The database search
engine is conventional technology, an example of which is the OpenText engine that provides
searches based on subject, strings, boolean, text, etc.”)
Indeed, in the mid-1990s, and prior to 1996, there was an “explosion” of search engines
on the market. The number of websites on the Internet was proliferating quickly, and several
companies developed search engines to assist users in locating information on the World Wide
Web. That there was a market need for Worldwide Searching for Dummies (1996) to explain to
users how to search the Web and operate a search engine is itself evidence of the prevalence of
search engines available prior to the inventions of the patents-in-suit. These search engines
allowed a user to input a search query into a search box or form, and the search engine would
return results to the user based upon that query. One of ordinary skill in the art would have been
familiar with search engines in use prior to June 1996.
Table 2: Non-Exclusive List of Search References

15

Search References
YAHOO!
WEBCRAWLER
LYCOS
INFOSEEK
ALTA VISTA
EXCITE
OPEN TEXT
HEALTHGATE
APTEX
INKTOMI
HOTBOT
SUBMIT-IT
PR NEWS
KOHDA ‘96
KOHDA ‘853

16

BULL
PECKOVER
NAQVI WO
Knoblock, Craig; “Searching the World Wide Web,” in
IEEE Expert. (“KNOBLOCK”)
World Wide Searching for Dummies, by Brad Hill, IDG
Books Worldwide, 1996. (“DUMMIES”)
Fox, et al., “Users, User Interfaces, and Objects:
Envision, a Digital Library,” Journal of the American
Society for Information Science, 44(8):480-491, 1993
(“FOX 1993”)
Fox, Chen, and France, “Integrating Search and
Retrieval with Hypertext”, 1991. (“FOX 1991”)
“Short History of Early Search Engines,” available at
www.thehistoryofseo.com/TheIndustry/Short_History_of_Early_Search_Engines.aspx.
(SHORT HISTORY)
Pinkerton, “Finding What People Want: Experiences
with the WebCrawler”, Second International WWW
Conference, 1994. (PINKERTON)
“Search-Engine Advertising; Web Marketing Push” by
John Evan Frook in Communications Week, October 9,
1995. (FROOK)
“What Hath Yahoo Wrought,” by John W. Verity,
Bloomberg Businessweek, February 11, 1996 (VERITY)
Sullivan, “Where Are They Now? Search Engines
We’ve Known and Loved,” available at
http://searchenginewatch.com/article/2064954/WhereAre-They-Now-Search_Engines-Wev.. (SULLIVAN)
The Internet Advertising Report, Mary Meeker, Morgan
Stanley, December 1996 (“MEEKER”)

17

Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one
or more of the Search References listed above in Table 2 would have rendered the claim obvious
to one of ordinary skill in the art. Specific citations to these references are found in each claim
chart listed in Table 1 above and in Table B1, and the results of these combinations are
predictable. For example, to the extent any reference listed in Table 1 is found to not expressly
or inherently disclose a search engine, the combination of that Table 1 reference with the
disclosure of such a system found in one or more of the Search References in Table 2 above or
Table B1 renders the claim obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Search Reference with any other reference related to information retrieval or related
fields based on at least common sense, routine innovation, and the fact that search engines were
well-known.
2.

References that Search Another Database for Advertisements.

It was also well known in the prior art for search engines to search another database for
an advertisement. Several prior art systems and references, including those listed in Table 3
below, disclosed this element. In particular, banner advertising existed in the prior art, as
discussed in GALLAGHER and PR NEWS. GALLAGHER described banner advertising as
“advertising that appears in the course of users’ browsing and searching activities on information
services, such as Yahoo! (http://www.yahoo.com) and Excite (http://www.yahoo.com), that

18

provide an entry point to Internet resources appeared in the course.” (Gallagher, p. 2.) PR NEWS
further reported that it was “possible for a company to buy its own name or an ad to ensure it is
listed at the top of a search results page.” (PR News, at 1.) PR NEWS reported that
WEBCRAWLER, LYCOS, and INFOSEEK offered advertisement banner links, and ALTA VISTA’s
was in beta testing. (Id.) FROOK reported that
[s]earch engine advertising [was] emerging as one of the first widespread forms of
targeted marketing on the World Wide Web. These advertisements work by
delivering a sales pitch along with the results of a key-word search on a search
engine. For example, a user searching under the subject ‘cars’ might receive a
Web ad for General Motors Corp. or Chrysler Corp., while a search for modems
might deliver an ad for online computer superstore NECX Direct.
(FROOK at IA11.) Similarly, What Makes People Click described “matching what the user is
looking for with the ad banner at the top of the results page.” (STERNE, p. 215-222.) Further,
BULL disclosed “[a]long with displays, including those for data entry, searches, search results,
information retrieval, the user will be presented with advertisements and/or coupons based on
criteria entered by advertisers.” (BULL, Col. 4.)
Additionally, there were products developed to provide advertising services to search
engines. For example, YAHOO! used NETGRAVITY’S ADSERVER to provide targeted advertising:
“when a visitor to the Yahoo! site conducts a search by inputting a keyword, advertising related
to that keyword appear on the screen. A visitor might, for example, conduct a search for Web
pages related to cars. The server would then display an ad related to cars when it displays the
results of the query.” (FLYNN, p. 2.) WebCrawler did as well. (NETGRAVITY ADSERVER
CHOSEN BY GNN.) The ADAPT/X ADVERTISER, developed at Bellcore and disclosed in NAQVI
WO, was a competitor of NETGRAVITY. As described in NAQVI WO, “[t]he advertisements on
the server are not tied to any particular page containing information on the network, but rather,
are retrieved in response to a query entered by the user (17) and dynamically mixed with the

19

content of the pages returned in response to the query (16).” (NAQVI WO, Abstract.) These
products were developed for the purpose, at least in part, of combining them with the search
engines that existed in the art.
Table 3: Non-Exclusive List of References that Search for Advertisements
Ads References
YAHOO!
WEBCRAWLER
LYCOS
INFOSEEK
ALTA VISTA
EXCITE
OPEN TEXT INDEX
HEALTHGATE
APTEX
INKTOMI
HOTBOT
SUBMIT-IT
NETGRAVITY ADSERVER
ADAPT/X
PR NEWS
KOHDA ‘96
KOHDA ‘853
BULL

20

PECKOVER
NAQVI WO
Sterne, What makes people click,
Advertising on the Web, Que
Corporation, 1997 (“STERNE”)
KNOBLOCK
“Search-Engine Advertising; Web
Marketing Push” by John Evan
Frook in Communications Week,
October 9, 1995. (FROOK)
Search Engines Take a Risky
Step: Porn Banners Yahoo!,
Excite and Lycos Test Keyword
Sales to Adult Sites, by Kim
Cleland, adage.com, December
16, 1996. (“CLELAND”)
“Lycos signs key advertisers for
popular Internet catalog;
Microsoft, AT&T and NECX
charter sponsors on leading Web
Index,” Business Wire,
September 18, 1995.
(“BUSINESSWIRE”)
A Framework for Targeting
Banner Advertising on the
Internet, by Katherine Gallagher
and Jeffrey Parsons, Proceedings
of the Thirtieth Annual Hawaii
International Conference on
System Sciences, 1997 IEEE.
(“GALLAGHER”)
For advertisers, Web offers wide
audience, pinpoint accuracy, The
Boston Globe (May 5, 1996)
(“BRAY”)
Poppe Tyson Partners With
Atlanta Software Leader To Form
Doubleclick -- The First
21

Advertising Network For The
Internet, PR Newswire (Feb. 6,
1996). (“POPPE TYSON”)
“Start-Ups Plot to Make the Web
Comfortable for Advertisers,”
The New York Times CyberTimes,
February 13, 1996. (FLYNN)
“NetGravity Launches AdServer, the
Premier Advertising Management
System Software for World Wide
Web Publishers,” dated January 31,
1996. (NETGRAVITY LAUNCHES
ADSERVER)
ABOUT NETGRAVITY ADSERVER
NETGRAVITY ADSERVER HELP
MEEKER
NETGRAVITY ADSERVER HELP

PHILLIPS BUSINESS
Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one
or more of the Ads References listed above in Table 3 would have rendered the claim obvious to
one of ordinary skill in the art. Specific citations to these references are found in each claim
chart listed in Table 1 above and in Table B2, and the results of these combinations are
predictable. For example, to the extent any reference listed in Table 1 is found to not expressly
or inherently disclose providing ads, the combination of that Table 1 reference with the

22

disclosure of such a system found in one or more of the Ads References in Table 3 above or
Table B2 renders the claim obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Ads Reference with any other reference related to information retrieval or related
fields based on at least common sense, routine innovation, and the fact that search engines were
well-known. Indeed, several search engines had already combined search with advertising,
indicating that it was obvious to do so.
3.

References that Provide Search Results and Ads Together

The prior art, including the systems and references listed in Table 4 below, further
disclosed providing search results and ads together, as disclosed in the asserted claims. For
example, PR NEWS explained that “[a]dvertisements that appear only with the results of a
specific key word search are a minimum of $1,000 for a four-week period . . .” (PR NEWS at 1)
(emphasis added). FROOK further described providing keyword targeted ads along with search
results: “These advertisements work by delivering a sales pitch along with the results of a keyword search on a search engine. For example, a user searching under the subject ‘cars’ might
receive a Web ad for General Motors Corp. or Chrysler Corp., while a search for models might
deliver an ad for online computer superstore NECX Direct. . . . Yahoo executives have
confirmed to Interactive Age that advertising sales will be made against the new search function
as early as next month.” (FROOK, p. IA11) (emphasis added). Similarly, NAQVI WO disclosed:
“The advertisements on the server are not tied to any particular page containing information on
the network, but rather, are retrieved in response to a query entered by the user (17) and
dynamically mixed with the content of the pages returned in response to the query (16). The
present invention displays the content pages with focused, targeted advertisements as a part of

23

the page, in accordance with a particular layout.” (NAQVI WO, Abstract) (emphasis added). And
Healthgate allowed advertisers to have their ads shown whenever a user entered a pre-defined
keyword. (See
https://web.archive.org/web/19961105192255/http:/www.healthgate.com/HealthGate/product/sp
onsorship.html.)
Table 4: Non-Exclusive List of References that Provide Search Results and Ads Together
Search Results and Ads
References
YAHOO!
WEBCRAWLER
LYCOS
INFOSEEK
ALTA VISTA
EXCITE
OPEN TEXT INDEX
HEALTHGATE
APTEX
INKTOMI
HOTBOT

24

SUBMIT-IT
NETGRAVITY ADSERVER
ADAPT/X
PR NEWS
KOHDA ‘96
KOHDA ‘853
BULL
PECKOVER
NAQVI WO
STERNE
BUSINESSWIRE
Business Briefcase refers to
Business Briefcase, The Boston
Herald (Dec. 19, 1996).
(BUSINESS BRIEFCASE)
DoubleClick Named Advertising
Sales and Distribution Partner
for AltaVista Search Site;
Leading Internet Ad Network
Teams with Net's Largest Search
Engine, PR Newswire (Dec. 18,
1996). (ALTAVISTA)
FLYNN

25

MEEKER
PHILLIPS BUSINESS
Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one
or more of the Search Results and Ads References listed above in Table 4 would have rendered
the claim obvious to one of ordinary skill in the art. Specific citations to these references are
found in each claim chart listed in Table 1 above and in Table B3, and the results of these
combinations are predictable. For example, to the extent any reference listed in Table 1 is found
to not expressly or inherently disclose a providing search results and ads together, the
combination of that Table 1 reference with the disclosure of such a system found in one or more
of the Search Results and Ads References in Table 4 above or Table B3 renders the claim
obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Search Results and Ads Reference with any other reference related to information
retrieval and related fields based on at least common sense, routine innovation, and the fact that
search engines were well-known. Again, several search engines were already doing so.
4.

References that Receive User Preference Input. or User Profile Data

The prior art also disclosed using user preferences and/or creating user profiles to identify
information, whether it be search results, ads, etc., that might be interesting to the user, including
the references and systems listed in Table 5. For example, GALLAGHER disclosed a model that

26

had three elements: individual user profiles, individual advertisement target audience profiles,
and a mechanism for selecting and presenting advertisements to specific users who match the
target audience profile. (GALLAGHER, p. 4.) GALLAGHER further disclosed an “enhanced”
model, whereby the system used the search and browsing behavior of users to determine which
advertisements to be shown to that user. (Id., p. 5.) DEDRICK 1994 and DEDRICK 1995 similarly
disclose consumers having personal profiles which contain demographic and psychographic
information, and utilizing those profiles to identify content and advertisements that match the
user’s profile. (See e.g., DEDRICK 1994, p. 60; see also DEDRICK 1995.) DEDRICK 1994 further
explicitly discloses monitoring a user’s behavior on an ongoing basis to build and maintain the
user’s profile. (See DEDRICK 1994, p. 60.) And, Firefly developed a software, which on
information and belief was used by Yahoo!, which allowed users to provide demographic
information, and then as they used a site, rated their interests and that information was added to a
user profile. (WILLIAMSON, p. 1.) Firefly’s software tools allowed its customers “to deliver
targeted content and advertising, as well as, accurate measurements and reports regarding site
activity.” ( FIREFLY NETWORK AND YAHOO! OFFER CONSUMERS ABILITY TO INTELLIGENTLY
NAVIGATE THE WEB, p. 2.)
Even outside of search and advertising, user preferences and user profiles were used to
identify content that might be of interest to a particular user, specifically to try to solve the
problem of “information overload.” For example, FOLTZ described research conducted for
predicting Technical Memos (“TMs”) that best matched employees’ technical interests. The
Abstract describes: “Within Bellcore, approximately 150 new TMs are published each month,
yet very few are relevant to any single person’s interests.” (FOLTZ, Abstract.) The paper
analyzes different methods of identifying an employee’s technical interests. Employees provided

27

a list of words and phrases that described their technical interests, and that information was used
to select TMs to provide to them. (FOLTZ, p. 4-6.) HOFFEROR similarly discloses a system which
used a user profile to rank e-mail information. (HOFFEROR, Abstract and Introduction.) This
system disclosed monitoring a user’s reactions to material, including negative reactions. (Id.,
Section 4.2.) And KAMBA discloses providing a personalized newspaper on the Web—The
Krakatoa Chronicle—based on user profiles. (KAMBA, p. 1.) There, the system obtained user
preference data based on explicit feedback from the user, and also implicit feedback based upon
observations of the user’s interactions with news articles. (Id. p. 2.) The user’s profile would
change based upon the interactions with news articles. (Id., p. 8.) And, the layout of the
personalized newspaper, i.e. the ordering of articles, was in part a function of the relevance of an
article to the user’s profile. (Id., p. 7.) (See also MORITA; EDWARDS; LIEBERMAN.) The prior art
further considered a user’s past actions to determine whether content would be interesting to a
user. (LIEBERMAN, p. 6.)
Table 5: Non-Exclusive List of References that Receive User Preference Input or
User Profile Data
User Preference References
FIREFLY
GALLAGHER
DEDRICK 1994
DEDRICK 1995

28

BULL
PECKOVER
Foltz and Dumais, Personalized
Information Delivery: An
Analysis of Information Filtering
Methods, Communications of the
ACM, 35(12), 51-60, 1992
(“FOLTZ”)
Hofferer, Knaus, and Winiwarter,
An Evolutionary Approach to
Intelligent Information Filtering
(1994) (“HOFFERER”)
Morita and Shinoda, Information
Filtering Based on User Behavior
Analysis and Best Match Text
Retrieval (“MORITA”)
Kamba, Bharat, and Albers, The
Krakatoa Chronicle – An
Interactive, Personalized
Newspaper on the Web
(“KAMBA”)
Edwards, Bayer, Green & Payne,
Experience with Learning Agents
which Manage Internet-Based
Information, AAAI Technical
Report SS-96-05, 1996
(“EDWARDS”)
Lieberman, Letizia: An Agent
That Assists Web Browsing
(“LIEBERMAN”)
Lam, Mukhopadhyay, Mostafa,
and Palakal, Detection of Shifts in
User Interests for Personalized
Information Filtering, SIGIR’96,
ACM 1996 (“LAM”)
O’Riordan and Sorensen, An
Intelligent Agent for HighPrecision Text Filtering, CIFM
’95, ACM 1995 (“O’RIORDAN”)
Bloedorn, Mani, MacMillan,
29

Machine Learning of User
Profiles: Representational Issues,
Proceedings of AAAI-96,
Portland, OR, Aug. 4-8, 1996
(“BLOEDORN”)
Pazzani, Muramatsu, & Billsus,
Syskill & Webert: Identifying
interesting web sites, AAAI 1996
(“PAZZANI”)
Balabanovic, An Adaptive Web
Page Recommendation Service,
1997 ACM (BALABANOVIC)
Maes, Agents that Reduce Work
and Information Overload,
Communications of the ACM,
July 1994 (“MAES”)
Sheth and Maes, Evolving Agents
for Personalized Information
Filtering, 1993 IEEE (“SHETH”)
Fox, Hix, Nowell, Brueni, Wake,
and Heath, Users, User
Interfaces, and Objects: Envision,
a Digital Library, Journal of the
American Society for Information
Science, 44(8):480-491, 1993
(“FOX 1993”)
Little, Commerce on the Internet,
1994 IEEE (“LITTLE”)
Adam and Yesha, Strategic
Directions in Electronic
Commerce and Digital Libraries:
Towards a Digital Agora, ACM
Computing Surveys, Vol. 28, No.
4, Dec. 1996 (“ADAM”)
U.S. Patent No. 5,933,811 to
Angles et al. (“‘811 PATENT”)
BROADVISION
C/NET
APTEX
HYPER-TARGETED MARKETING

30

CYBERGOLD
FREELOADER
HYPER SYSTEM
I/PRO
F.J. Burkowski, “Delivery of
Electronic News: A Broadband
Application” (“BURKOWSKI”)
Tim O’Reilly, “Publishing
Models for Internet Commerce,”
Vol. 39, No. 6 (1996)
(“O’REILLY”)
NAQVI WO
KOHDA ’96
KOHDA ’853
“Firefly Licenses Targeting
Technology,” by Debra Ahe
Williamson, December 9, 1996,
available at
adage.com/article/news/fireflylicenses-targetingtechnology/75969.
(“WILLIAMSON”)
“Firefly Network and Yahoo!
Offer Consumers Ability to
Intelligently Navigate the Web;
My Yahoo! Features Firefly
Tools to Offer Personalized
Recommendations for Web Sites
and Build Dynamic
Communities,” Dec. 11, 1996
(“FIREFLY NETWORK AND
YAHOO! OFFER CONSUMERS
ABILITY TO INTELLIGENTLY
NAVIGATE THE WEB”)
“Boston.Comment Today’s topic
Shadow advertising,” The Boston

31

Globe, November 14, 1996.
(“BOSTON GLOBE”)
ABOUT NETGRAVITY ADSERVER
Lang, “NewsWeeder: Learning to
Filter Netnews,” 1995 (“LANG”)
Green, Bayer & Edwards,
“Towards Practical Interface
Agents which Manage InternetBased Information, 1995
(“GREEN”)
MEEKER
U.S. Patents No. 6,183,366 to
Goldberg et al. (“’366 PATENT”)
U.S. Patents No. 7,496,943 to
Goldberg et al. (“’943 PATENT”)
U.S. Patents No. 6,712,702 to
Goldberg et al. (“’702 PATENT”)
PHILLIPS BUSINESS
Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one
or more of the User Preference References listed above in Table 5 would have rendered the claim
obvious to one of ordinary skill in the art. Specific citations to these references are found in each
claim chart listed in Table 1 above and in Table B4, and the results of these combinations are
predictable. For example, to the extent any reference listed in Table 1 is found to not expressly
or inherently disclose using user preferences or user profiles to identify search results or ads to

32

provide to a user, the combination of that Table 1 reference with the disclosure of such a system
found in one or more of the User Preference References in Table 5 or Table B4 renders the claim
obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a User Preference Reference with any other reference related to information retrieval or
related fields based on at least common sense, routine innovation, and the fact that user profiling
and user modeling were well-known.
5.

References in Combination with “Fuzzy Logic”

“Fuzzy logic” existed in the prior art as something that could be used in a variety of
applications to resolve many different types of problems across numerous disciplines and subject
matters. For example, as explained in KOSKO:
Computers do not reason as brains do. Computers ‘reason’ when they manipulate
precise facts that have been reduced to strings of zeros and ones and statements
that are either true or false. The human brain can reason with vague assertions or
claims that involve uncertainties or value judgments: ‘The air is cool,’ or ‘That
speed is fast’ or ‘She is young.’ Unlike computers, humans have common sense
that enables them to reason in a world where things are only partially true. Fuzzy
logic is a branch of machine intelligence that helps computers paint gray,
commonsense pictures of an uncertain world.
(KOSKO, p. 76.) KOSKO reported that in 1980, a firm in Copenhagen used a fuzzy logic system to
oversee the operation of a cement kiln. (Id.) In 1988, fuzzy logic was used to control a subway
in Sendai, Japan. (Id.) Thus, it has many applications.
Thus, predictably so, fuzzy logic had already been used in the same manner to solve the
same problems at it issue in the asserted patents. The prior art disclosed correlating, as a
function of a fuzzy logic algorithm, a received search argument and user profile data to particular
information in an information database, and then providing this particular information as the
search results. This prior art includes the references and systems listed in Table 6. For example,

33

LARSEN discloses an “intelligent inquiry system” that “fuzzifies” a search argument using user
profile data. (LARSEN, p. 1-3.) LARSEN discloses that a user might enter a search argument, for
example, that “express[es] desired properties about the kind of house desired (price, size,
location, etc.).” (Id., p. 1.) The “intelligent inquiry system” then uses the user’s specific
preferences as to these criteria, including criteria ranking and willingness to deviate from criteria,
in order to construct a “fuzzy query.” (Id., p. 4, 9.) The system uses this “fuzzy query” to
generate improved search results. (Id., p. 4-9.) LARSEN specifically discloses that “[o]ur an
approach [sic] is in particular interest for retrieval through the Internet WWW. In this situation,
the semantic elasticity support by our approach allows the user to retrieve the most interesting
objects, even when the description applied in the information base does not directly match the
query formulation chosen by the user.” (Id., p. 20; see also LARSEN II, LARSEN III.)
Table 6: Non-Exclusive List of “Fuzzy Logic” References
“Fuzzy Logic” References
U.S. Patent No. 6,119,101
(“PECKOVER”)
Sadaaki Miyamoto, “On Fuzzy
Information Retrieval,” Japanese
Journal of Fuzzy Theory and
Systems, Vol. 3, No. 1 (1991)
(“MIYAMOTO”)
Sadaaki Miyamoto, “Concerning
fuzzy information retrieval,”
Journal of the Society of Fuzzy
Theory and Systems 3(1) (Feb.
1991) (“MIYAMOTO II”)
Sadaaki Miyamoto, “Fuzzy Sets
in Information Retrieval and
Cluster Analysis” (1990)
(“MIYAMOTO III”)

34

P. Bosc, “Fuzzy querying in
conventional databases,” Fuzzy
Logic Management of
Uncertainty (1992) (“BOSC”)
Mark Lager, “Spinning a Web
Search,” (1996) (“LAGER”)
Henrik Larsen and Ronald Yager,
“The Use of Fuzzy Relational
Thesauri for Classificatory
Problem Solving in Information
Retrieval and Expert Systems,”
IEEE Transactions on Systems,
Man, and Cybernetics, Vol. 23,
No. 1 (Jan./Feb. 1993) (“LARSEN
II”)
Peretz Shoval, “ERSE : An
Expert Retrieval System for
Electronics Databases,” in Expert
Systems for Information
Management, Vol. 3, No. 2
(1990) (“SHOVAL”)
Sameer Singh, “Fuzzy Pattern
Recognition for KnowledgeBased Systems,” Proc. 6th
International Conference on Data
and Knowledge Systems for
Manufacturing and Engineering
(DKSME'96), Tempe, Arizona,
USA, pp. 1-10, (24-25 October,
1996) (“SINGH”)
Lotfi Zadeh, “The Role of Fuzzy
Logic and Soft Computing in the
Conception and Design of
Intelligent Systems” (“ZADEH”)
Donald Kraft, “Research into
Fuzzy Extensions Retrieval”
(“KRAFT”)
G. Bordogna et al., “Fuzzy
Inclusion in Database and
Information Retrieval Query
35

Interpretation” (1996)
(“BORDOGNA”)
G. Bordogna et al, “Fuzzy
Approaches to extend Boolean
information retrieval,” Fuzziness
in database management systems,
pp. 231-274 (1995)
L. Zadeh, “Information and
Control,” (1965)
“Automatic Thesaurus
Construction Supporting Fuzzy
Retrieval of Reusable
Components,” (1995)
(“DAMIANI”)
Wilms, A Natural Language
Interface For An Intelligent
Document Information And
Retrieval System (1988)
(“WILMS”)
Duncan Buell, “Performance
Measurement in a Fuzzy
Retrieval Environment,” 1981
(“BUELL”)
Gerard Salton, “Extended
Boolean Information System,”
Advances in Information
Retrieval, ACM 82 Panel Session
(“SALTON”)
Bill Buckles, “An Information
Retrieval Perspective on Fuzzy
Database Systems,” Advances in
Information Retrieval, ACM 82
Panel Session (“BUCKLES”)
Donald Kraft, “Generalizations of
Boolean Query Processing,”
Advances in Information
Retrieval, ACM 82 Panel Session
(“KRAFT II”)

36

George Baklarz, “Using Neural
Nets to Optimize Retrieval in a
Fuzzy Relational Database”
(“BAKLARZ”)
P. Subtil et al., “A Fuzzy
Information Retrieval and
Management System and Its
Applications,” (1996) (“SUBTIL”)
C.T. Yu, “An Approach to
Probabalistic Retrieval,” (1981)
(“YU”)
MOONEY
LARSEN
RADECKI
BUCKLEY
SMART
NAQVI WO
BULL
KOHDA ’96
KOHDA ’853
MYAENG
PBS
Sung Myaeng and Robert
Korfhage, “Towards an
Intelligent and Personalized
Retrieval System” (“MYAENG II”)
K. Asai, ed. 1995. Fuzzy Systems
for Information Processing (1st
ed.) (“ASAI”)
Umano, M.: Databases, Iwai, S.:
Information retrieval, in: T.

37

Terano, K. Asai and M. Sugeno
(eds), Fuzzy Systems Theory and
Its Applications, Academic Press,
New York, 1992
Hua Li & Madan Gupta (Eds.),
Fuzzy Logic and Intelligent
Systems (1995) (“LI”)
Ronald Yager & Lotfi Zadeh
(Eds.), An Introduction to Fuzzy
Logic Applications in Intelligent
Systems (1992) (“YAGER &
ZADEH“)
Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one
or more of the Fuzzy Logic References listed above in Table 6 would have rendered the claim
obvious to one of ordinary skill in the art. Specific citations to these references are found in each
claim chart listed in Table 1 above and Table B5, and the results of these combinations are
predictable. For example, to the extent any reference listed in Table 1 is found to not expressly
or inherently disclose correlating, as a function of a fuzzy logic algorithm, a received search
argument and user profile data to particular information in an information database, and then
providing this particular information as the search results, the combination of that Table 1
reference with the disclosure of such a system found in one or more of the Fuzzy Logic
References in Table 6 or Table B5 renders the claim obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Fuzzy Logic Reference with any other reference related to information retrieval or

38

related fields based on at least common sense, routine innovation, and the fact that fuzzy logic
was well known and had many applications.
6.

References in Combination with “Fee Records.”

The elements of generating a fee record based on selection of an advertisement, and
extracting a toll based upon that fee record also existed in the art, including the art cited in Table
7 below. On June 2, 1996, Businessweek reported that Yahoo! entered into a deal with Proctor
& Gamble under which Proctor & Gamble would only pay when an online customer “clicks”
from a Proctor & Gamble ad to one of Proctor & Gamble’s websites. (Schiller, For More About
Tide, Click Here, Businessweek, June 2, 1996.) The article further suggests that other
advertisers may follow Proctor & Gamble’s lead. On information and belief, other advertisers
and other search engines entered into similar arrangements under which a fee record was
generated based upon selection of the advertisement, and extracting a toll based upon the fee
record. It is common sense that a search engine would want to be paid for displaying
advertisements, and that advertisers would expect to have to pay for that service.
Other references similarly disclose these elements. For example, NETGRAVITY
ADSERVER provided tools for advertisers to track the success of advertisements, and such
tracking would be necessary to generate fee records based upon the selection of an ad.
GALLAGHER discloses advertisers bidding for the opportunity to display an ad to a user, and the
advertisement corresponding to the winning bid is displayed. (GALLAGHER, p. 7.) PECKOVER
disclosed a mechanism for receiving consideration for display an advertisement. (PECKOVER,
11:16-19, 11:61-62, 18:40-53, 21:5-11.)

39

It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Fee Record Reference with any other reference related to advertising based on at least
common sense, routine innovation, and the fact that charging for advertising was well known.
Table 7: Non-Exclusive List of “Fee Record” References
“Fee Record” References
YAHOO!
NETGRAVITY ADSERVER
ADAPT/X ADVERTISER
GALLAGHER
PECKOVER
NAQVI WO
FLYNN
ADSERVER 2.0
ADSERVER 2.0; AD REPORTING
NETGRAVITY ADSERVER HELP
ABOUT NETGRAVITY ADSERVER
Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one
or more of the Fee Record References listed above in Table 7 would have rendered the claim
obvious to one of ordinary skill in the art. Specific citations to these references are found in each

40

claim chart listed in Table 1 above and Table B6, and the results of these combinations are
predictable. For example, to the extent any reference listed in Table 1 is found to not expressly
or inherently disclose generating a fee record based upon selection of an advertisement, and/or
extracting a toll based upon the fee record, the combination of that Table 1 reference with the
disclosure of such a system found in one or more of the Fee Record References in Table 7 or
Table B6 renders the claim obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Fee Record Reference with any other reference related to advertising based on at
least common sense, routine innovation, and the fact that charging for advertising was wellknown.
7.

References in Combination with Databases, Clients, Servers.

The elements in many of the asserted claims of searching multiple databases, or storing
data in multiple databases, and communicating between server and client computers were well
known in the art.. For example, as explained in DUMMIES several prior art search engines had the
capability of running searches in multiple databases. PECKOVER disclosed use of Product
Database. (See e.g., PECKOVER, 23:17-20.) Similarly, DEDRICK PATENT disclosed data collected
for a personal profile database. (See e.g.,DEDRICK PATENT, 7:28-39) Several prior art references
also explicitly disclose connections and communications between client and server computers.
(See Table B7). As the ’065 Patent states, “Functionality provided by the advertising machine
10 may be implemented using an appropriately programmed conventional data processing server
platform.” ’065 Patent at 3:63-65. Similarly, the ’065 patent states that “As search engines and
techniques become ever more powerful in the number and diversity of databases they can access,
the amount of information which it is possible to present to a user can quickly become

41

excessively large.” Id. at 1:26-32. “The database search engine 16 is conventional technology.”
Id. at 4:2-3. Furthermore, the search engines disclosed in Table 1 implemented these elements as
well. It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Databases, Clients, and Servers Reference with any other reference related to
information retrieval or related fields based on at least common sense, routine innovation, and
the fact that databases and client and server computers were well known in the art.
Table 8: Non-Exclusive List of Databases, Clients, Servers References
Databases, Clients, Servers
References
PECKOVER
DUMMIES
PINKERTON
NETGRAVITY ADSERVER HELP
ABOUT NETGRAVITY ADSERVER
FLYNN
DUMMIES
PINKERTON
NETGRAVITY ADSERVER HELP

Based upon Rockstar’s apparent reading of the claims, Google contends that the
references listed in Table 1 above each anticipate asserted claims of the patents-in-suit as
indicated in Table 1 and Exhibits A-1 to A-39. However, if the finder of fact determines that
some element of a given claim is not found in one of these references, Google contends that that
reference in combination with the knowledge of one of ordinary skill in the art and/or with one

42

or more of the Databases, Clients, Servers References listed below in Table 8 would have
rendered the claim obvious to one of ordinary skill in the art. Specific citations to these
references are found in each claim chart listed in Table 1 above and Table B7, and the results of
these combinations are predictable. For example, to the extent any reference listed in Table 1 is
found to not expressly or inherently disclose storing data in databases, and communications
between clients and servers, the combination of that Table 1 reference with the disclosure of such
a system found in one or more of the Databases, Clients, Servers Reference in Table 8 above or
Table B7 s renders the claim obvious.
It would have been obvious to one of skill in the art at the time of the alleged invention to
combine a Databases, Clients, Servers Reference with any other reference related to information
retrieval and related fields based on at least common sense, routine innovation, and the fact that
charging for advertising was well-known.
8.

Obviousness Summary

Numerous prior art references, including those identified above and in the Exhibits,
reflect common knowledge and the state of the art prior to June 6, 1996, the alleged priority date
of the asserted patents, or the filing date of the ‘065 patent. As it would be unduly burdensome
to create detailed claim charts for the thousands of invalidating combinations, Google has
provided illustrative examples of such invalidating combinations in the preceding section with
specific exemplary citations to each reference in the charts in Exhibits A-1 to A-39 and in the
Tables in Exhibit B. For at least the reasons discussed above, it would have been obvious to one
having ordinary skill in the art to combine any of a number of prior art references, including any
combination of those identified in Exhibit B, to meet the limitations of the asserted claims. As

43

such, Google’s inclusion of exemplary combinations should not preclude this Court’s
examination of the myriad other invalidating combinations.
D.

Contentions Under 35 U.S.C. § 112 Pursuant to P.R. 3-3(d)

The following contentions, made pursuant to P.R. 3-3(d), are subject to revision and
amendment pursuant to Federal Rule of Civil Procedure 26(e) and the Orders of record in this
matter to the extent appropriate in light of further investigation and discovery regarding the
defenses, the Court’s construction of the claims at issue, and the review and analysis of expert
witnesses.
To the extent that the following contentions reflect constructions of claim limitations
consistent with or implicit in Rockstar’s Infringement Contentions, no inference is intended nor
should any be drawn that Google agrees with Rockstar’s claim constructions, and Google
expressly reserves its right to contest such claim constructions. Google offers such contentions
in response to Rockstar’s Infringement Contentions and without prejudice to any position they
may ultimately take as to any claim construction issues.
Based on Rockstar’s apparent construction of the claims of the asserted patents (as
expressed in its Infringement Contentions), based at least upon use of the following terms, all of
the claims of the asserted patents are invalid for indefiniteness, non-enablement, and inadequate
written description pursuant to 35 U.S.C. § 112.
’065 Patent
•

“desired information” (claim 1)

•

“user profile data” (claim 1)

•

“searching, based upon the received search argument and user profile data, a database
of information to generate a search result” (claim 1)

•

“fuzzy logic algorithm” (claim 1)

44

•

“wherein searching the database includes correlating, as a function of a fuzzy logic
algorithm, the received search argument and user profile data to particular
information in the database” (claim 1)

•

“wherein searching the database includes correlating, as a function of a fuzzy logic
algorithm, the received search argument and user profile data to particular
information in the database, and providing the particular information as the search
results” (claim 1)

’969 Patent
•

“providing advertisements to a user” (claims 1, 8, 17, 22)

•

“desired information” (claims 1, 8, 17, 22)

•

“user profile data” (claims 2-5, 9-12, 18-21, 23)

•

“receiving, from the user, a search request including a search argument corresponding
to the desired information” (claim 1)

•

“data network related information” (claims 1, 8, 17, 22)

•

“correlating the received search argument to a particular advertisement in a second
database having advertisement related information” (claims 1, 8)

•

“providing the search results together with the particular advertisement to the user”
(claims 1, 8, 17, 22)

•

“the step of correlating the received search argument to the particular advertisement
including selecting the particular advertisement based on the received search
argument and user profile data” (claim 2)

•

“the user profile data includes selections of the user from previous search arguments”
(claim 3)

•

“the user profile data includes selections of the user from previous search results”
(claim 4)

•

“the user profile data includes user specified preferences” (claims 5, 12, 21)

•

“displaying the search results as a page on a data processing device and the particular
advertisement as an insert on the page” (claims 6, 13)

•

“server” (claim 8)

•

“server computer “ (claims 8, 15-17, 22)

45

•

“the search request including a search argument corresponding to the desired
information” (claims 8, 17, 22)

•

“searching, by the server computer based upon the received search argument, a first
database to generate search results, the first database having data network related
information and being contained on the server computer” (claim 8)

•

“client computer” (claims 8, 14-17, 22)

•

“the step of correlating the received search argument to the particular advertisement
includes selecting the particular advertisement based on the received search argument
and user profile data” (claim 9)

•

“the user profile data is based partially upon previous search arguments of the user”
(claims 10, 19)

•

“the user profile data is based partially upon previous search results for the user”
(claims 11, 20)

•

“the step of providing the search results and the particular advertisement to the user
includes displaying the search results as a page on a data processing device and the
particular advertisement as an insert on the page” (claim 13)

•

“the step of correlating the received search argument to a particular advertisement in
the second database is performed by the client computer” (claim 14)

•

“database search engine computer” (claims 15, 16)

•

“access provider computer” (claim 15)

•

“associate search engine computer” (claim 16)

•

“advertising machine” (claims 17-23)

•

“database search engine” (claims 17, 22)

•

“a database search engine coupled to the server computer that receives the search
argument from the server computer and searches a first database to generate search
results, the first database having data network related information and being
contained on the server computer” (claims 17, 22)

•

“associative search engine” (claims 17, 18, 22, 23)

•

“an associative search engine coupled to the server computer that correlates the
received search argument to a particular advertisement in a second database having
advertisement related information” (claims 17, 22)

46

•

“the associative search engine selects the particular advertisement based on the
received search argument and user profile data” (claim 18)

•

“the server computer determining whether the advertisement was successful” (claim
22)

•

“the server computer altering criteria for subsequent correlations of received search
arguments to the second database” (claim 22)

•

“the associative search engine correlates the received search argument to the
particular advertisement based on the received search argument and user profile data”
(claim 23)

’245 Patent
•

“advertising machine” (claims 1, 9, 12-18, 22, 23, 25)

•

“user preference input” (claims 1, 4, 9, 13, 18, 22, 23)

•

“user preference data” (claims 1, 3-7, 9, 12-16, 18, 20, 21, 24)

•

“search argument” (claims 1, 9, 18, 22, 23)

•

“searching at least one database using the search argument to produce search results”
(claim 1)

•

“selecting at least one advertisement from an advertisement database relating to the
search argument using the user preference data” (claim 1)

•

“transmitting the search results together with the at least one advertisement” (claim 1)

•

“product information” (claims 2)

•

“the search results correspond to a plurality of identified products” (claims 2, 19)

•

“ordering the search results based upon the user preference data” (claim 3)

•

“setting the user preference data to default values” (claims 4, 13)

•

“user preference edit input” (claims 5, 14, 22)

•

“user preference re-prioritization input” (claims 6, 15, 23)

•

“re-prioritizing the user preference data based upon the user preference reprioritization input” (claim 6)

•

“the user preference data is derived from prior searching history” (claims 7, 16, 24)

47

•

“search refinement input” (claims 8, 17, 25)

•

“refining the search results based upon the search refinement input” (claim 8)

•

“refined search results” (claims 8, 17, 25)

•

“An advertising machine implemented on at least one computer and operable to
provide advertisements” (claim 9)

•

“a communications interface operable to interface with the data processing device”
(claim 9)

•

“a database search engine operable to: receive from the data processing device via the
communications link a search request that includes a search argument” (claim 9)

•

“a database search engine operable to . . . search at least one database using the search
argument to produce search results” (claim 9)

•

“associative search engine” (claim 9)

•

“an associative search engine operable to: receive user preference input from the data
processing device via the communications link” (claim 9)

•

“an associative search engine operable to . . . create user preference data based upon
the user preference input” (claim 9)

•

“an associative search engine operable to . . . select at least one advertisement from an
advertisement database relating to the search argument using the user preference
data” (claim 9)

•

“the advertising machine operable to transmit the search results together with the at
least one advertisement via the communications link to the data processing device”
(claim 9)

•

“the user preference data comprises a list of keywords” (claims 12, 21)

•

“the associate search engine is further operable to: receive user preference edit input
via the communications link from the data processing device”

•

“the associate search engine is further operable to . . . modify the user preference data
based upon the user preference edit input” (claim 14)

•

“the associate search engine is further operable to: receive user preference reprioritization input” (claim 15)

•

“the associate search engine is further operable to . . . re-prioritize the user preference
data based upon the user preference re-prioritization input” (claim 15)

48

•

“the database search engine is further operable to: receive search refinement input
via the communications link from the data processing device of the user” (claim 17)

•

“the database search engine is further operable to . . . refine the search results based
upon the search refinement input” (claim 17)

•

“the database search engine is further operable to . . . transmit the refined search
results via the communications link to the data processing device” (claim 17)

•

“operating a data processing device of a user to receive advertisements” (claim 18)

•

“interacting with the advertising machine via the communications link to provide user
preference input used to create user preference data by the advertising machine”
(claim 18)

•

“transmitting to the advertising machine via the communications link a search request
that includes a search argument” (claim 18)

•

“the search results obtained from at least one database based upon the search
argument” (claim 18)

•

“the at least one advertisement obtained from at least one database having
advertisement information based upon the search argument and the user preference
data” (claim 18)

•

“the search results are ordered based upon the user preference data” (claim 20)

•

“receiving at least one of modified search results and at least one differing
advertisement that are based upon the search argument, the user preference input, and
the user preference edit input” (claim 22)

•

“receiving at least one of modified search results and at least one differing
advertisement that are based upon the search argument, the user preference input, and
the user preference re-prioritization input” (claim 23)

•

“receiving refined search results via the communications link from the advertising
machine that is based upon the search refinement input” (claim 25)

’970 Patent
•

“advertising machine” (claims 1-6, 8, 10-22, 24, 26, 27, 28, 29, 31)

•

“An advertising machine implemented on at least one computer and operable to
provide advertisements via a communications link to a data processing device of a
user” (claims 1, 10)

49

•

“a communications interface operable to interface with the data processing device of
the user via the communications link” (claims 1, 10)

•

“database search engine” (claims 1, 10, 33, 41)

•

“search argument” (claims 1, 8, 10, 15, 17, 24, 26, 31, 33, 39, 41, 47)

•

“a database search engine operable to: receive from the data processing device via
the communications link a search request that includes a search argument” (claim 1)

•

“a database search engine operable to . . . search at least one database using the search
argument to produce search results” (claim 1)

•

“associative search engine” (claims 1, 8, 10, 11, 15, 33, 41, 47)

•

“an associative search engine operable to select at least one advertisement from an
advertisement database based upon at least one of the search argument and the search
results” (claims 1, 10)

•

“fee record” (claims 1, 2, 17, 18, 34, 35, 42, 43)

•

“the advertising machine operable to: transmit the search results together with the at
least one advertisement via the communications link to the data processing device”
(claims 1, 10)

•

“the advertising machine operable to . . . receive a response from the data processing
device via the communications link that indicates selection of an advertisement”
(claim 1)

•

“the advertising machine operable to . . . based upon the advertisement selection,
generate a fee record” (claim 1)

•

“toll” (claim 2, 18, 35, 43)

•

“the advertising machine is further operable to extract a toll based upon the fee
record” (claim 2)

•

“the advertising machine is further operable to direct the data processing device to a
website corresponding to the selection of the advertisement” (claim 3)

•

“preference data” (claims 4, 12, 20, 28, 37)

•

“the advertising machine is further operable to update preference data for the user
based upon the selection of the advertisement” (claim 4)

•

“the advertising machine is further operable to update the advertisement database
based upon the selection of the advertisement” (claim 5)

50

•

“the advertising machine is further operable to again provide the at least one
advertisement that solicited the selection of the advertisement” (claim 6)

•

“the associative search engine is operable to select at least one advertisement from an
advertisement database based upon at least the search argument” (claims 7, 15)

•

“the associative search engine is operable to select at least one advertisement from an
advertisement database based upon at least the search results” (claims 8, 16)

•

“a database search engine operable to: receive from the data processing device via the
communications link a search request that includes a search argument” (claim 10)

•

“a database search engine operable to . . . search at least one database using the search
argument to produce search results” (claim 10)

•

“the advertising machine operable to . . . receive a response from the data processing
device via the communications link that indicates non-selection of the at least one
advertisement” (claim 10)

•

“the associative search engine is further operable to select at least one differing
advertisement based upon the non-selection of the at least one advertisement” (claim
11)

•

“the advertising machine is further operable to transmit the at least one differing
advertisement via the communications link to the data processing device” (claim 11)

•

“the advertising machine is further operable to update preference data for the user
based upon the non-selection of the at least one advertisement” (claim 12)

•

“the advertising machine is further operable to update the advertisement database
based upon the non-selection of the advertisement” (claim 13)

•

“the search results and the at least one advertisement are included in a web page
transmitted to the data processing device via the communications link” (claim 14, 23,
30)

•

“the advertising machine receiving from the data processing device via the
communications link a search request that includes a search argument” (claims 17,
26)

•

“the advertising machine searching at least one database using the search argument to
produce search results” (claims 17, 26)

•

“the advertising machine selecting at least one advertisement from an advertisement
database based upon at least one of the search argument and the search results”
(claims 17, 26)

51

•

“the advertising machine transmitting the search results together with the at least one
advertisement via the communications link to the data processing device” (claims 17,
26)

•

“the advertising machine receiving a response from the data processing device via the
communications link that indicates selection of an advertisement” (claim 17)

•

“the advertising machine generating a fee record based upon the selection of the
advertisement” (claim 17)

•

“the advertising machine extracting a toll based upon the fee record” (claim 18)

•

“the advertising machine directing the data processing device to a website
corresponding to the selection of the advertisement” (claim 19)

•

“the advertising machine updating preference data for the user based upon the
selection of the advertisement” (claim 20)

•

“the advertising machine updating the advertisement database based upon the
selection of the advertisement” (claim 21)

•

“the advertising machine again providing the at least one advertisement that solicited
the selection of the advertisement” (claim 22)

•

“the advertising machine selecting at least one advertisement from an advertisement
database based upon at least the search argument” (claim 24)

•

“advertising machine receiving a response from the data processing device via the
communications link that indicates non-selection of the at least one advertisement”
(claim 26)

•

“the advertising machine selecting at least one differing advertisement based upon the
non-selection of the at least one advertisement” (claim 27)

•

“the advertising machine transmitting the at least one differing advertisement via the
communications link to the data processing device” (claim 27)

•

“the advertising machine updating preference data for the user based upon the nonselection of the at least one advertisement” (claim 28)

•

“the advertising machine updating the advertisement database based upon the nonselection of the advertisement” (claim 29)

•

“server computer” (claim 33-39, 41-45)

•

“a server computer that is operable to provide advertisements via a communications
link to a data processing device of a user” (claim 33)

52

•

“at least one communications interface operable to interface with the data processing
device of the user, a database search engine, and an associative search engine” (claim
33)

•

“the server computer, using the at least one communications interface, is operable to:
receive from the data processing device via the communications link a search request
that includes a search argument” (claim 33)

•

“the server computer, using the at least one communications interface, is operable to .
. . interact with the database search engine to receive search results from the database
search engine that are selected based upon the search argument” (claim 33)

•

“the server computer, using the at least one communications interface, is operable to .
. . interact with the associative search engine to receive an advertisement that is
selected based upon at least one of the search argument and the search results” (claim
33)

•

“the server computer, using the at least one communications interface, is operable to .
. . transmit the search results together with the at least one advertisement via the
communications link to the data processing device” (claim 33)

•

“the server computer, in conjunction with the at least one communications interface,
is further operable to: receive a response from the data processing device via the
communications link that indicates selection of an advertisement” (claim 34)

•

“the server computer, in conjunction with the at least one communications interface,
is further operable to . . . based upon the advertisement selection, generate a fee
record” (claim 34)

•

“the server computer is further operable to extract a toll based upon the fee record”
(claim 35)

•

“the server computer is further operable to direct the data processing device to a
website corresponding to the selection of the advertisement” (claim 36)

•

“the server computer is further operable to update preference data for the user based
upon the selection of the advertisement” (claim 37)

•

“the server computer, using the at least one communication interface, is operable to
interact with the database search engine to receive an advertisement that is selected
based upon at least the search argument” (claim 39)

•

“the server computer receiving from a data processing device via at least one
communications interface a search request that includes a search argument” (claim
41)

53

•

“the server computer interacting with a database search engine via the at least one
communications interface to receive search results from the database search engine
that are selected based upon the search argument” (claim 41)

•

“the server computer interacting with an associative search engine via the at least one
communications interface to receive an advertisement that is selected based upon at
least one of the search argument and the search results” (claim 41)

•

“the server computer transmitting the search results together with the at least one
advertisement via the at least one communications interface to the data processing
device” (claim 41)

•

“the server computer receiving a response from the data processing device via the at
least one communications interface that indicates selection of an advertisement”
(claim 42)

•

“based upon the advertisement selection, generating a fee record” (claim 42)

•

“the server computer extracting a toll based upon the fee record” (claim 43)

•

“the server computer directing the data processing device to a website corresponding
to the selection of the advertisement” (claim 44)

•

“the server computer updating preference data for the user based upon the selection of
the advertisement” (claim 45)

•

“the server computer interacting with an associative search engine via the at least one
communication interface to receive an advertisement that is selected based upon at
least the search argument” (claim 47)

’178 Patent
•

“advertising machine” (claims 1, 12, 17, 18)

•

“search argument” (claims 1, 5, 12, 14)

•

“receiving from the data processing device via the communications link a search
request that includes a search argument” (claim 1)

•

“searching at least one database using the search argument to produce search results”
(claim 1)

•

“advertisement database” (claim 1)

•

“selecting at least one advertisement from an advertisement database relating to at
least one of the search argument and the search results” (claim 1)

54

•

“transmitting the search results together with the at least one advertisement via the
communications link to the data processing device” (claim 1)

•

“search refinement input” (claims 1, 5, 6, 12, 14, 15)

•

“receiving search refinement input from the data processing device via the
communications link” (claim 1)

•

“producing modified search results based upon at least the search refinement input”
(claim 1)

•

“selecting at least one other advertisement from the advertisement database based
upon at least one of the search refinement input and the modified search results”
(claim 1)

•

“transmitting at least one of the modified search results and the at least one other
advertisement via the communications link to the data processing device” (claim 1)

•

“the search refinement input comprises at least one additional search argument”
(claims 5, 14)

•

“the search refinement input comprises additional search criteria” (claims 6, 15)

•

“the at least one advertisement includes a link to a website sponsoring the
advertisement” (claims 7, 16)

•

“determining, via communication with the data processing device that the user does
not select the at least one advertisement” (claim 8)

•

“updating advertisements provided to the data processing device based upon a
determination that the user does not select the at least one advertisement” (claim 8)

•

“user preference data” (claims 9, 10)

•

“selecting the at least one advertisement based upon a least one of user profile data
and user preference data” (claim 9)

•

“selecting the search results based upon at least one of user profile data and user
preference data” (claim 10)

•

“operating a data processing device of a user to receive advertisements” (claim 12)

•

“based upon interaction with the user, creating a search request that includes a search
argument” (claim 12)

•

“transmitting to the advertising machine via the communications link the search
request that includes the search argument” (claim 12)

55

•

“receiving search results and at least one advertisement via the communications link
from the advertising machine, the at least one advertisement relating to the search
argument” (claim 12)

•

“displaying the search results and the at least one advertisement on a display of the
data processing device” (claim 12)

•

“based upon interaction with the user, receiving search refinement input” (claim 12)

•

“transmitting the search refinement input to the advertising machine via the
communications link” (claim 12)

•

“receiving modified search results and at least one other advertisement from the
advertising machine that are based upon at least the search refinement input” (claim
12)

•

“displaying the modified search results and the at least one other advertisement on the
display of the data processing device” (claim 12)

•

“determining that the user does not select the at least one advertisement” (claim 17)

•

“transmitting the indication that the user does not select the at least one advertisement
to the advertising machine via the communications link” (claim 17)

•

“receiving user input to indicate selection of the at least one advertisement” (claim
18)

•

“transmitting the indication that the user selects the at least one advertisement to the
advertising machine via the communications link” (claim 18)

’183 Patent
•

“advertising machine” (claim 1, 9, 11, 12, 14-20)

•

“operating an advertising machine implemented on at least one computer to provide
advertisements” (claim 1)

•

“search argument” (claims 1, 9, 14)

•

“receiving from the data processing device via the communications link a search
request that includes a search argument” (claim 1)

•

“searching at least one database using the search argument to produce search results”
(claim 1)

•

“advertisement database” (claim 1, 14)

56

•

“selecting at least one advertisement from an advertisement database based upon at
least one of the search argument and the search results” (claim 1)

•

“web page data format” (claim 1, 14)

•

“transmitting the search results together with the at least one advertisement via the
communications link to the data processing device in a web page data format that
causes the data processing device to display the search results in a first display
portion of a display of the data processing device and to display the at least one
advertisement in a second display portion of the display of the data processing
device” (claim 1)

•

“the at least one advertisement includes a link to a website sponsoring the
advertisement” (claims 2, 10, 15)

•

“updating a home web page to include the at least one advertisement” (claim 4)

•

“the search results and the at least one advertisement are included in a web page
transmitted to the data processing device via the communications link” (claims 5, 18)

•

“search engine provider” (claim 6)

•

“the at least one computer is operated by a search engine provider” (claim 6)

•

“user profile data” (claims 7, 20)

•

“compiling user profile data for the user based upon at least the search term” (claim
7)

•

“determining, via communication with the data processing device that the user does
not select the at least one advertisement” (claims 8, 13)

•

“using the determination that the user does not select the at least one advertisement in
subsequent advertisement selection operations” (claims 8, 13)

•

“based upon interaction with the user, creating a search request that includes a search
argument” (claim 9)

•

“transmitting to the advertising machine via the communications link the search
request that includes the search argument” (claim 9)

•

“receiving search results and at least one advertisement via the communications link
from the advertising machine, the at least one advertisement relating to the search
argument” (claim 9)

•

“displaying the search results in a first display portion of a display of the data
processing device” (claim 9)

57

•

“displaying the at least one advertisement in a second display portion of the display of
the data processing device” (claim 9)

•

“the search results and the at least one advertisement are included in a web page
received from the advertising machine via the communications link” (claim 11)

•

“user preference data” (claim 12)

•

“transmitting user preference data to the advertising machine via the communications
interface” (claim 12)

•

“advertising machine implemented on at least one computer and operable to provide
advertisements” (claim 14)

•

“a communications interface operable to interface with the data processing device of
the user via the communications link” (claim 14)

•

“database search engine” (claim 14)

•

“a database search engine operable to: receive from the data processing device via
the communications link a search request that includes a search argument” (claim 14)

•

“a database search engine operable to . . . search at least one database using the search
argument to produce search results” (claim 14)

•

“associative search engine” (claim 14)

•

“an associative search engine operable to select at least one advertisement from an
advertisement database based upon at least one of the search argument and the search
results” (claim 14)

•

“the advertising machine operable to transmit the search results together with the at
least one advertisement via the communications link to the data processing device in
a web page data format that causes the data processing device to display the search
results in a first display portion of a display of the data processing device and to
display the at least one advertisement in a second display portion of the display of the
data processing device” (claim 14)

•

“the advertising machine is further operable to update an access provider web page to
include the at least one advertisement” (claim 16)

•

“the advertising machine is further operable to update a home web page to include the
at least one advertisement” (claim 17)

•

“the advertising machine forms at least a portion of a search engine” (claim 19)

58

•

“the advertising machine is further operable to compile user profile data for the user
based upon at least the search term” (claim 20)

’883 Patent
•

“operating an advertising machine implemented on at least one computer to provide
advertisements” (claim 1)

•

“user profile data” (claims 1-26, 28)

•

“creating user profile data for the user” (claim 1)

•

“storing the user profile data” (claims 1, 3, 4, 13)

•

“search argument” (claims 1, 7, 10, 11, 16, 20, 22, 26)

•

“receiving from the data processing device via the communications link a search
request that includes a search argument” (claim 1)

•

“network related information” (claims 1, 10, 11, 19,20, 28)

•

“searching at least one database having data network related information using the
search argument to generate search results” (claims 1, 10)

•

“advertisement database” (claim 1, 10, 20, 28)

•

“selecting at least one advertisement from an advertisement database relating to the
search argument using the user profile data” (claims 1, 10)

•

“transmitting the search results together with the at least one advertisement via the
communications link to the data processing device” (claim 1)

•

“prior purchasing information” (claims 2, 12, 21)

•

“the user profile data includes prior purchasing information regarding the user”
(claims 2, 21)

•

“user profile database” (claims 2, 22)

•

“storing the user profile data comprises storing the user profile data in a user profile
database of the advertising machine” (claim 3)

•

“storing the user profile data comprises storing the user profile data on the data
processing device” (claim 4)

•

“prior search history” (claims 5, 14, 22)

•

“the user profile data is based upon prior search history of the user” (claims 5, 14, 24)
59

•

“the user profile data is based upon user interests selected from the group consisting
of social interests, family interests, political interests, technological interests,
geographical interests, environmental interests, and educational interests” (claims 6,
15, 25)

•

“updating the user profile data based upon the search argument” (claims 7, 16)

•

“updating the user profile data using data obtained via interaction with the data
processing device” (claim 8)

•

“sorting the search results based upon the user profile data” (claim 9)

•

“distinct differing databases” (claims 10, 28)

•

“searching at least one database having data network related information using the
search argument to generate search results and selecting at least one advertisement
from an advertisement database relating to the search argument using the user profile
data comprise accessing distinct differing databases” (claim 10)

•

“operating a data processing device of a user to receive advertisements” (claim 11)

•

“interacting with the advertising machine via the communications link to provide
information used to create user profile data for the user” (claim 11)

•

“transmitting to the advertising machine via the communications link a search request
that includes a search argument” (claim 11)

•

“receiving search results and at least one advertisement via the communications link
from the advertising machine” (claim 11)

•

“the search results obtained from at least one database having data network related
information based upon the search argument” (claim 11)

•

“advertisement information” (claims 11, 19)

•

“the at least one advertisement obtained from at least one database having
advertisement information based upon the search argument and the user profile data”
(claim 11)

•

“the user profile data is based upon prior purchasing information regarding the user”
(claim 12)

•

“updating the user profile data using data created via interaction with the advertising
machine” (claim 17)

•

“the search results have been sorted based upon the user profile data” (claim 18)

60

•

“search results obtained from at least one database that stores network related
information” (claim 19)

•

“the at least one advertisement was obtained from at least one differing database that
stores advertisement information” (claim 19)

•

“an advertising machine implemented on at least one computer and operable to
provide advertisements” (claim 20)

•

“a communications interface operable to interface with the data processing device of
the user via the communications link” (claim 20)

•

“database search engine” (claim 20)

•

“database search engine operable to: receive from the data processing device via the
communications interface a search request that includes a search argument” (claim
20)

•

“database search engine operable to . . . search at least one database having data
network related information using the search argument to generate search results”

•

“associative search engine” (claim 20, 22, 23)

•

“an associative search engine operable to: create user profile data for the user” (claim
20)

•

“an associative search engine operable to . . . store the user profile data”

•

“an associative search engine operable to . . . select at least one advertisement from an
advertisement database relating to the search argument using the user profile data”

•

“the advertising machine operable to transmit the search results together with the at
least one advertisement via the communications link to the data processing device”
(claim 20)

•

“the associative search engine is operable to store the user profile data in a user
profile database of the advertising machine” (claim 22)

•

“the associative search engine is operable to transmit the user profile data via the
communications interface to the data processing device for storage” (claim 23)

•

“the associate search engine is operable to update the user profile data based upon the
search argument” (claim 26)

•

“the at least one database having data network related information and the
advertisement database comprise distinct differing databases” (claim 28)

61

Google further contends that asserted independent claims 17 and 22 of the ’969 Patent; 9
of the ’245 Patent; 1, 10, 17, and 33 of the ’970 Patent; 14 of the ’183 Patent; and 20 of the ’883
Patent and all corresponding dependent asserted claims are invalid for indefiniteness pursuant to
35 U.S.C. § 112 for containing a method limitation within an apparatus claim. Because
discovery is ongoing and additional claim construction may be necessary for several of
Rockstar’s asserted claims, Google hereby reserves the right to assert additional grounds for the
invalidity of any of the asserted claims based on non-enablement or inadequate written
description under 35 U.S.C. § 112(1) or indefiniteness under 35 U.S.C. § 112(2).
E.

Other Grounds for Invalidity

In addition to the preceding invalidity contentions, Google further contends that each of
the asserted claims of the asserted patents is drawn to subject matter that is not patentable under
35 U.S.C. § 101. Google reserves the right to assert any additional grounds of invalidity.
IV.

P.R. 3-4 DOCUMENT PRODUCTION
A.

Documents Related to Accused Instrumentalities Under P.R. 3-4(a)

Based on its investigation to date and its understanding of Rockstar’s Infringement
Contentions, Google also produced documents pursuant to P.R. 3-4(a), which directs the
production of “[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other
documentation sufficient to show the operation of any aspects or elements of an Accused
Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart.”
B.

Documents Related to Prior Art Under 3-4(b)

Based on its investigation to date, pursuant to P.R. 3-4(b), Google has produced
documents currently within its possession, custody, or control that are the prior art references

62

identified above and/or in the attached charts in connection with Google’s P.R. 3-3(a)
disclosures.

/s/ David A. Perlson
James Mark Mann
[e-mail]
Andy Tindel
[e-mail]
Gregory Blake Thompson
[e-mail]
Mann Tindel & Thompson
300 W. Main
Henderson, TX 75652
903-657-8540
Charles K. Verhoeven
[e-mail]
David A. Perlson
[e-mail]
Sean Pak
[e-mail]
Quinn Emanuel Urquhart & Sullivan
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6600
Robert Wilson
[e-mail]
Quinn Emanuel Urquhart & Sullivan
51 Madison Ave., 22nd Floor
New York, NY 10010
212-849-7145
ATTORNEYS FOR DEFENDANT
GOOGLE INC.

63

CERTIFICATE OF SERVICE
I hereby certify that all counsel of record are being served via electronic mail with a copy
of this document on May 23, 2014.

/s/ Andrea Pallios Roberts
Andrea Pallios Roberts
[e-mail]
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

64