Rockstar Consortium US LP et al v. Google Inc

Filing 20

ANSWER to 1 Complaint, by Google Inc.(Mann, James)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
LLC,
Plaintiff,
v.
GOOGLE INC.
Defendant.

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Civil Action No. 2:13-cv-00893-JRG-RSP
JURY TRIAL DEMANDED

DEFENDANT GOOGLE INC.’S ANSWER TO PLAINTIFFS’
COMPLAINT FOR PATENT INFRINGEMENT
Defendant Google Inc. (“Google”) answers the Complaint of Plaintiffs Rockstar
Consortium US LP (“Rockstar”) and NetStar Technologies LLC’s (“NetStar”) (collectively,
“Plaintiffs”) as follows:
NATURE OF THE ACTION
1.

Google admits that Plaintiffs purports to bring an action for alleged patent

infringement.
THE PARTIES
2.

Google is without knowledge or information sufficient to form a belief as to the

truth of the allegations of paragraph 2, and therefore denies them.
3.

Google is without knowledge or information sufficient to form a belief as to the

truth of the allegations of paragraph 3, and therefore denies them.
4.

Google admits that Google Inc. is a Delaware corporation with a principal place

of business at 1600 Amphitheatre Parkway, Mountain View, California 94043.

01980.00010/5702735.1

5.

Google admits that Nortel Networks conducted an auction for a patent portfolio

that included the Patents-in-Suit in July 2011.
6.

Google admits that it placed a bid at the auction in July 2011.

7.

Google admits that it was aware of the Patents-in-Suit at the time of the auction.

8.

Google admits that it first placed a bid of $900,000,000 for the Nortel patent

portfolio. Google further admits that it placed additional bids and that the winning bid at the
auction was $4.5 billion. Google denies that it bid $4.4 billion on its own. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 8 of the Complaint, and therefore denies them.
9.

Google denies the allegations in paragraph 9 of the Complaint, and specifically

denies that it has committed any acts of infringement.
JURISDICTION AND VENUE
10.

Google admits that this action invokes the United States patent laws, and that this

Court has subject matter jurisdiction over patent law claims. Google admits that venue is proper
in the Eastern District of Texas for purposes of this particular action but not convenient or in the
interests of justice under 28 U.S.C. 1404(a). Google denies the remaining allegations of
paragraph 10 of the Complaint.
PLAINTIFFS’ INFRINGEMENT ALLEGATIONS
U.S. Patent No. 6,098,065
11.

Google admits that what appears to be a copy of United States Patent No.

6,098,065 (“the ‘065 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘065 Patent is entitled “Associative Search Engine” and bears an issue date of August 1,
2000. Google denies that the ‘065 Patent was duly and legally issued. Google is without

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knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 11 of the Complaint, and therefore denies them.
12.

Google denies the allegations in paragraph 12 of the Complaint, and specifically

denies that it has committed any acts of infringement.
13.

Google denies the allegations in paragraph 13 of the Complaint, and specifically

denies that it has committed any acts of infringement.
U.S. Patent No. 7,236,969
14.

Google admits that what appears to be a copy of United States Patent No.

7,236,969 (“the ‘969 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘969 Patent is entitled “Associative Search Engine” and bears an issue date of June 26,
2007. Google denies that the ‘178 Patent was duly and legally issued. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 13 of the Complaint, and therefore denies them.
15.

Google denies the allegations in paragraph 15 of the Complaint, and specifically

denies that it has committed any acts of infringement.
16.

Google denies the allegations in paragraph 16 of the Complaint, and specifically

denies that it has committed any acts of infringement.
U.S. Patent No. 7,469,245
17.

Google admits that what appears to be a copy of United States Patent No.

7,469,245 (“the ‘245 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘245 Patent is entitled “Associative Search Engine” and bears an issue date of
December 23, 2008. Google denies that the ‘245 Patent was duly and legally issued. Google is
without knowledge or information sufficient to form a belief as to the truth of the remaining
allegations of paragraph 17 of the Complaint, and therefore denies them.

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18.

Google denies the allegations in paragraph 18 of the Complaint, and specifically

denies that it has committed any acts of infringement.
19.

Google denies the allegations in paragraph 19 of the Complaint, and specifically

denies that it has committed any acts of infringement.
U.S. Patent No. 7,672,970
20.

Google admits that what appears to be a copy of United States Patent No.

7,672,970 (“the ‘970 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘970 Patent is entitled “Associative Search Engine” and bears an issue date of March 2,
2010. Google denies that the ‘970 Patent was duly and legally issued. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 20 of the Complaint, and therefore denies them.
21.

Google denies the allegations in paragraph 21 of the Complaint, and specifically

denies that it has committed any acts of infringement.
22.

Google denies the allegations in paragraph 22 of the Complaint, and specifically

denies that it has committed any acts of infringement.
U.S. Patent No. 7,895,178
23.

Google admits that what appears to be a copy of United States Patent No.

7,895,178 (“the ‘178 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘178 Patent is entitled “Associative Search Engine” and bears an issue date of February
22, 2011. Google denies that the ‘178 Patent was duly and legally issued. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 23 of the Complaint, and therefore denies them.
24.

Google denies the allegations in paragraph 24 of the Complaint, and specifically

denies that it has committed any acts of infringement.

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25.

Google denies the allegations in paragraph 25 of the Complaint, and specifically

denies that it has committed any acts of infringement.
U.S. Patent No. 7,895,183
26.

Google admits that what appears to be a copy of United States Patent No.

7,895,183 (“the ‘183 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘183 Patent is entitled “Associative Search Engine” and bears an issue date of February
22, 2011. Google denies that the ‘183 Patent was duly and legally issued. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 26 of the Complaint, and therefore denies them.
27.

Google denies the allegations in paragraph 27 of the Complaint, and specifically

denies that it has committed any acts of infringement.
28.

Google denies the allegations in paragraph 28 of the Complaint, and specifically

denies that it has committed any acts of infringement.
U.S. Patent No. 7,933,883
29.

Google admits that what appears to be a copy of United States Patent No.

7,933,883 (“the ‘883 Patent”) is attached as an exhibit to Plaintiffs’ Complaint and that, on its
face, the ‘883 Patent is entitled “Associative Search Engine” and bears an issue date of April 26,
2011. Google denies that the ‘883 Patent was duly and legally issued. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
of paragraph 28 of the Complaint, and therefore denies them.
30.

Google denies the allegations in paragraph 30 of the Complaint, and specifically

denies that it has committed any acts of infringement.
31.

Google denies the allegations in paragraph 31 of the Complaint, and specifically

denies that it has committed any acts of infringement.

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PLAINTIFFS’ ALLEGATION OF WILLFUL INFRINGEMENT
32.

Google denies the allegations in paragraph 32 of the Complaint.

33.

Google denies the allegations in paragraph 33 of the Complaint.
PLAINTIFFS’ JURY DEMAND

34.

Plaintiffs’ demand for a trial by jury for all issues triable to a jury does not state

any allegation, and Google is not required to respond. To the extent that any allegations are
included in the demand, Google denies these allegations.
PRAYER FOR RELIEF
35.

These paragraphs set forth the statement of relief requested by Plaintiffs to which

no response is required. Google denies that Plaintiffs are entitled to any of the requested relief
and denies any allegations.
AFFIRMATIVE DEFENSES
36.

Subject to the responses above, Google alleges and asserts the following defenses

in response to the allegations, undertaking the burden of proof only as to those defenses deemed
affirmative defenses by law, regardless of how such defenses are denominated herein. In
addition to the affirmative defenses described below, subject to its responses above, Google
specifically reserves all rights to allege additional affirmative defenses that become known
through the course of discovery.
FIRST DEFENSE – NON-INFRINGEMENT
37.

Google does not infringe and has not infringed (not directly, contributorily, or by

inducement), either literally or under the doctrine of equivalents, and is not liable for
infringement of any valid and enforceable claim of the ‘065, ‘969, ‘245, ‘970, ‘178, ‘183, or ‘883
Patents (collectively, the “Patents-in-Suit”).

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SECOND DEFENSE - INVALIDITY
38.

The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C. §

101 because the claims are directed to abstract ideas or other non-statutory subject matter.
39.

The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.

§§ 102 because the claims lack novelty, and are taught and suggested by the prior art.
40.

The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.

§§ 103 because the claims are obvious in view of the prior art.
41.

The claims of the Patents-in-Suit are invalid and unenforceable for failure satisfy

the conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of
enablement, and claim indefiniteness.
THIRD DEFENSE – LIMITATIONS ON PATENT DAMAGES
42.

Plaintiffs’ claim for damages, if any, against Google for alleged infringement of

the Patents-in-Suit are limited by 35 U.S.C. §§ 286, 287, and/or 288.
FOURTH DEFENSE – PROSECUTION HISTORY ESTOPPEL
43.

By reason of statements, representations, concessions, admissions, arguments,

and/or amendments, whether explicit or implicit, made by or on behalf of the applicants during
the prosecution of the patent applications that led to the issuance of the Patents-in-Suit,
Plaintiffs’ claims of patent infringement are barred in whole or in part by the doctrine of
prosecution history estoppel.
FIFTH DEFENSE - ESTOPPEL
44.

On information and belief, Plaintiffs’ claims are barred, in whole or in part, by the

doctrines of estoppel, laches, disclaimer, patent misuse, and/or waiver.

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SIXTH DEFENSE – PATENT UNENFORCEABILITY (INEQUITABLE CONDUCT)
45.

The ‘969 Patent issued on June 26, 2007. It resulted from U.S. Patent Application

No. 09/351,747 (“‘747 Application”), filed on July 8, 1999. The ‘969 Patent claims priority to
then-pending U.S. Patent Application No. 08/798,747, which became the ‘065 Patent.
46.

The ‘245 Patent issued on December 23, 2008. It resulted from U.S. Patent

Application No. 11/767,650 (“‘650 Application”), filed on June 25, 2007. The ‘247 Patent
claims priority to both the ‘969 Patent and the ‘065 Patent.
47.

The ‘970 Patent issued on March 2, 2010. It resulted from U.S. Patent

Application No. 11/767,569 (“‘569 Application”), filed on June 25, 2007. The ‘970 Patent
claims priority to both the ‘969 Patent and ‘065 Patent.
48.

The ‘178 Patent issued on February 22, 2011. It resulted from U.S. Patent

Application No. 11/767,584 (“‘584 Application”), filed June 25, 2007. The ‘178 Patent claims
priority to both the ‘969 Patent and ‘065 Patent.
49.

The ‘183 Patent issued on February 22, 2011. It resulted from U.S. Patent

Application No. 11/767,563 (“‘563 Application”), filed June 25, 2007. The ‘183 Patent claims
priority to both the ‘969 Patent and ‘065 Patent.
50.

The ‘883 Patent issued on April 26, 2011. It resulted from U.S. Patent

Application No. 11/767,632 (“‘632 Application”), filed June 25, 2007. The ‘883 Patent claims
priority to both the ‘969 Patent and ‘065 Patent.
51.

On information and belief, the ‘969 Patent, ‘245 Patent, ‘970 Patent, ‘178 Patent,

‘183 Patent, and ‘883 Patent (collectively “Child Patents”) are unenforceable due to the
commission of inequitable conduct and violation of the provisions of 37 C.F.R. 1.56 in procuring
the Child Patents by the named inventors, the prosecuting attorney, and/or other persons owing a
duty of candor to the PTO.

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A.

Inequitable Conduct During the Prosecution of the ‘969 Patent
1.

52.

Failure to Disclose PR News Article or the Barrett Patent in an
Information Disclosure Statement During Prosecution of the ‘969
Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘969 Patent.
53.

The application that would become the ‘065 Patent originally contained 10

claims. Originally filed claims 1-6 of the application that would become the ‘065 Patent are
identical to claims 1-6 of the ‘969 Patent. For instance, originally filed independent claim 1 of
the application that would become the ‘065 Patent and independent claim 1 of the ‘969 Patent
both recite “A method of providing advertisements to a user searching for desired information
within a data network, comprising the steps of: receiving, from the user, a search request
including a search argument corresponding to the desired information; searching, based upon the
received search argument, a first database having data network related information to generate
search results; correlating the received search argument to a particular advertisement in a second
database having advertisement related information; and providing the search results together
with the particular advertisement to the user.” Like their counterparts in the ‘969 Patent,
originally filed claims 2-6 of the application that would become the ‘065 Patent depend from
claim 1.
54.

Similarly, originally filed independent claim 9 of the application that would

become the ‘065 Patent is identical to independent claim 7 of the ‘969 Patent, reciting “A system
for providing advertisements to a user searching for desired information within a data network,
comprising: means for receiving, from the user a search request including a search argument

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corresponding to the desired information; means for searching, based upon the received search
argument, a first database having data network related information to generate search results;
means for correlating the received search argument to a particular advertisement in a second
database having advertisement related information; and means for providing the search results
together with the particular advertisement to the user.”
55.

The Examiner of the ’065 Patent, Dr. Paul R. Lintz, rejected originally filed

claims 1 and 9 as anticipated by “Web Crawler, Lycos, or Infoseek as disclosed by PR NEWS
(‘Make Sure Search Engines Find Your Site; options include buying words, advertising, and
careful page design’- PR NEWS).” More specifically, the Examiner found that “Pr News taught
the ‘Buying of words’ in a search engine in which if that word correlated to a search query for
the search engine’s web page database, the user would be presented with a specific advertiser’s
banner (line 14-37) from a second database.” (December 21, 1998 Office Action at 2.)
56.

The Examiner of the ‘065 Patent also rejected claims 2-6 as obvious in light of PR

News in view of U.S. Patent No. 5,727,129 to Barrett. More specifically, the Examiner found
that Barrett “[d]isclosed the use of user profiles for use in returning relevant hits” and that “[i]t
would have been obvious for one of ordinary skill in the art of computers to have included a user
profile in the search engines disclosed by PR NEWS in order to reduce the search time to return
relevant hits,” rendering claim 2 obvious. The Examiner similarly found that “[a]s to claim 3,
Barrett et al. disclosed previously received search arguments,” “[a]s to claim 4, Barrett et al.
taught using the results from previous search sessions,” “[a]s to claim 5, Barrett et al. taught that
user specified preferences as reflected in the user choice,” and “[a]s to claim 6, PR NEWS taught
banner advertisement inserts.” (December 21, 1998 Office Action at 3.)

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57.

In response, the applicants canceled originally filed claims 1-6 and claim 9—

which would later become claims 1-7 of the ‘969 Patent—and proceeded with originally filed
claim 8, which is the only claim the Examiner allowed. (March 19, 1999 Amendment at 1.) The
‘065 Patent accordingly issued with one claim: originally filed claim 8, which was written in
independent form to become claim 1 of the ‘065 Patent. (April 8, 1999 Notice of Allowability at
1.)
58.

After canceling originally filed claims 1-6 and claim 9 of the application that

would later become the ‘065 Patent, the applicants resubmitted those same claims in the ‘747
Application. Those claims were later issued, unaltered, as claims 1-7 of the ‘969 Patent.
59.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent who had located the PR News

article and the Barrett patent, was not the Examiner of the ‘969 Patent.
60.

Under the broadest reasonable interpretation standard used by the PTO, the search

engines described in the PR News article render claim 1 of the ‘969 Patent invalid under 35
U.S.C. § 102(a). The PR News article discloses all elements of claim 1:
1. A method of providing advertisements to a
user searching for desired information within
a data network, comprising the steps of:

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”
Id. at 1: “Time Warner could thus ensure that
anyone who enters the term ‘Time Warner’
will see its home page or ad at the top of the
search results.”

receiving, from the user, a search request
including a search argument corresponding to
the desired information;

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

searching, based upon the received search
argument, a first database having data

PR News at 1: “search engines like
WebCrawler and Infoseek use ‘spiders’ or

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network related information to generate
search results;

‘robots’ to index the Web. These programs
automatically search the Web by indexing one
page and then indexing all documents that are
hyperlinked to it”
Id. at 1: “Major engines—including Alta
Vista, Excite, Infoseek, Lycos, Yahoo! and
WebCrawler—use a dataset indexed by the
spider to provide a set of related sites”

correlating the received search argument to a
PR News at 1: “The general solution to avoid
particular advertisement in a second database getting buried by others' words is to buy a
having advertisement related information; and ‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is listed
at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
providing the search results together with the
particular advertisement to the user.

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PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is listed
at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.

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Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”

(See generally PR News at 1.) As detailed above, the Examiner of the ’065 Patent similarly
found that identical claims in the application that would become the ‘065 Patent were anticipated
by the disclosures in the PR News article. The Applicants never traversed these rejections.
61.

Under the broadest reasonable interpretation standard used by the PTO, the PR

News article in light of the Barrett patent anticipate and/or render obvious claims 2-6 of the ‘969
Patent. The claims and the corresponding disclosure in PR News and/or Barrett, as found by the
Examiner, are listed below:
2. A method as claimed in claim 1, wherein
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.

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Barrett at 5:15-46: “The system comprises: a
local node having a user interface program
thereon, for allowing a user to interface with
the network and request a download of
information items from the information
resources;
a network interface coupled between the local
node and the network;
a user interface including (i) means for
receiving user commends representative of
user actions and (ii) means for displaying
received network responses of network
information for viewing by a user;
means for recording a sequence of successive
user actions and network responses;

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means for developing a profile of user
activities based on the user actions and
network responses monitored in the step of
monitoring; and
means for actively facilitating user activities
based on the developed profile.
Since different users have different interests
(utilize different browser features regularly or
frequently, make different use of printer
facilities, tend to view different sorts of Web
information resources, etc.), the invention
provides a user interface which is customized
for a particular user, to reflect the user's
interests.
The invention provides a layer of
‘intelligence,’ or active functionality, as
distinct from the purely passive functionality
provided by conventional browsers.
The invention ‘learns’ from previous Web
surfing activity, so that the user can more
efficiently perform subsequent activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.
3. A method as claimed in claim 2, wherein
the user profile data includes selections of the
user from previous search arguments.

Barrett at 5:44-46: “The invention ‘learns’
from previous Web surfing activity, so that
the user can more efficiently perform
subsequent activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

4. A method as claimed in claim 3, wherein
the user profile data includes selections of the
user from previous search results.

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Barrett at 5:44-46: “The invention ‘learns’
from previous Web surfing activity, so that

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the user can more efficiently perform
subsequent activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.
5. A method as claimed in claim 4, wherein
the user profile data includes user specified
preferences.

Barrett et al. taught user specified preferences
as reflected in the user choices.
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

6. A method as claimed in claim 1, wherein
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.

62.

PR NEWS taught banner advertisement
inserts. See, e.g., PR News at 1: “Charges for
banner ads in search engines vary, but tend to
be expensive, according to Beth Lanahan,
spokesperson for one of the Web's more
popular search engines, InfoSeek. Depending
on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.”

One or more of the named inventors of the ‘969 Patent and others involved in the

prosecution of the patent were aware of the existence of the PR News article and the Barrett
patent during the prosecution of the ‘969 Patent, and were also aware that the PR News article
and the Barrett patent were material to the patentability of the ‘969 Patent. Named inventors
Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E. Garlick,
and/or other persons involved in the prosecution of the ‘969 Patent were aware of the PR News
article and the Barrett patent because they had been cited by the Examiner as rendering claims of

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the predecessor ‘065 Patent anticipated or obvious. Furthermore, named inventors Richard
Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other
persons involved in the prosecution of the ‘969 Patent were aware of the materiality of the PR
News article and the Barrett patent because they had been cited by the Examiner as rendering
claims of the predecessor ‘065 Patent anticipated or obvious, and because the prosecution of the
‘065 Patent had never traversed those rejections. Indeed, the PR News article and the Barrett
patent had been cited in rejecting some of the same claims at issue in the ‘969 Patent.
63.

Despite its materiality to the application, the named inventors of the ‘969 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the PR News article or the Barrett patent to the PTO as prior art in an Information
Disclosure Statement during the prosecution of the ‘969 Patent. In fact, the named inventors of
the ‘969 Patent, the prosecuting attorney(s), and/or other persons having a duty of candor to the
PTO did not disclose any prior art to the PTO.
64.

On information and belief, the failure to disclose the PR News article and the

Barrett patent during the prosecution of the ‘969 Patent was made knowingly and with intent to
deceive the PTO.
65.

Neither the PR News article nor the Barrett patent were independently discovered

by the Examiner of the ‘969 Patent, and neither appear on the “References Cited” of the ‘969
Patent.
66.

But for the failure of the applicants to disclose the PR News article or the Barrett

patent during the prosecution of the ‘969 Patent, at least claims 1-7 of the ‘969 Patent would not
have issued. As detailed above, the Examiner of the ‘065 Patent found claims with identical

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language in the application that would become the ‘065 Patent invalid in light of PR News and/or
the Barrett patent. The Applicants never traversed or even attempted to traverse those rejections.
67.

Furthermore, the Examiner of the ‘969 Patent allowed all claims in light of the

applicant’s arguments in their Reply brief to the BPAI. (Notice of Allowability at 2.)
Specifically, the applicants conceded that “receiving a search argument that included a
keyword,” “searching, based upon the search argument, a database that identified a plurality of
web pages,” and “[t]he searching operation identifying a plurality of web pages” are
“conventional search engine operations in which search results are produced in response to a
search argument,” and did not dispute that those conventional search engine operations were
disclosed in the first two limitations of what would become claims 1 and 7 of the ‘969 Patent.
(June 6, 2005 Corrected Reply Brief at 7.) However, the applicants argued that the prior art
Sullivan reference disclosed “sale of a keyword” rather than “selling advertisements by the
keyword” as disclosed in the ‘969 Patent. (Id. at 7-8.) Specifically, the applicants argued that
“[w]ith the ‘selling of advertisements by the keyword,’ a search engine chooses advertisements
based upon a sold keyword. Alternatively, with the ‘selling of keywords,’ search results are
ordered based upon a sold keyword.” (Id. at 8.)
68.

Yet the PR News article shows that at the time of the alleged invention, “search

engines [chose] advertisements based upon a sold keyword,” the very element the applicants
asserted was missing from the Sullivan reference: “[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.
WebCrawler, Lycos and Infoseek offer advertisement banner links.” (PR News at 1; see
generally id.) This further shows that the ‘969 Patent would not have issued had the Examiner
been aware of the PR News article.

01980.00010/5702735.1

17

69.

As a result of the actions described above, all claims of the ‘969 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘969 Patent.
2.
70.

False Statements Regarding Open Text During Prosecution of the
‘969 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor made false statements with the intent to deceive the PTO during the prosecution
of the ‘969 Patent.
71.

The ‘969 Examiner rejected all claims of the ‘969 Patent in light of the Sullivan

reference’s disclosure of the Open Text search engine. In response, the applicants submitted
Diagram 3, purporting to describe the operation of Open Text in 1996:

(June 6, 2005 Corrected Reply Brief at 7.) The applicants then argued that in the Open Text
search engine, “the search results were ordered based upon the ‘sold’ keyword (Operation 4) and
the search results were delivered to the search requester in the determined order (Operation 5).

01980.00010/5702735.1

18

These operations certainly do not disclose, teach, or suggest Elements C and D of claim 1,” which
the applicants stated require “correlating the received search argument to a particular
advertisement in a second database having advertisement related information” and “providing the
search results together with the particular advertisement to the user (Element D).”
72.

Contrary to the Applicants’ statements to the BPAI, the Open Text search engine

did not “order[] the web pages of the search results if the keyword had been ‘sold’ to the owner
of one or more of the identified web pages.” Rather, the Open Text search engine maintained a
separate database of advertisements which were correlated against potential keywords entered
by users. When receiving a query containing a correlated keyword, the Open Text search engine
would retrieve both search results from its search index and advertisements from its
advertisements database. Both the ads and the search results would be presented to the user, with
the ads being separately designated from the search results. On information and belief, the ads
were labeled “Preferred Listings” on the search results page to distinguish them from results
from the search index.
73.

Additionally, the shared specification of the asserted patents repeatedly refers to

the Open Text search engine as a “conventional search engine.” (e.g., ‘969 Patent at 1:20-23,
2:19-21; 4:12-15.) At least as of the prosecution of the ‘969 Patent, the Applicants were made
aware that Open Text was not a “conventional search engine,” and in fact contained similar if not
identical advertising technology allegedly invented by the Applicants. Yet at no point in the
prosecution of any of the subsequent patents-at-issue did the Applicants seek to amend their
incorrect statements regarding the Open Text search engine.
74.

On information and belief, the named inventor(s), the prosecuting attorney(s),

and/or other persons owing a duty of candor to the PTO had actual knowledge regarding the

01980.00010/5702735.1

19

functionality of the Open Text search engine. On information and belief, the Applicants’ false
statements regarding Open Text functionality were made knowingly and with intent to deceive
the PTO.
75.

Alternately, on information and belief, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor to the PTO had no knowledge regarding
the functionality of the Open Text search engine that they described to the PTO. On information
and belief, the named inventor(s), the prosecuting attorney(s), and/or other persons owing a duty
of candor to the PTO knowingly made representations regarding the functionality of the Open
Text search engine without any support, with the intent to convince the PTO of the veracity of
those representations.
76.

But for the Applicants’ false statements to the PTO regarding Open Text

functionality, the claims of the ‘969 Patent would not have issued. The Examiner had previously
rejected all claims in light of the Open Text functionality described in the Sullivan reference.
Directly after the Applicants’ false description of the Open Text functionality, the Examiner
granted all claims. Moreover, the Examiner explicitly noted that he granted the claims in light of
the Applicants’ distinction between “selling advertisements by the keyword”—as described in
the alleged invention—and “selling of keywords wherein search results ordered based upon a
sold keyword”—as the applicants claimed was practiced by the Open Text search engine.
(Notice of Allowability at 2.) Had the Examiner known that the Open Text search engine in
actuality “sold advertisements by the keyword,” he would not have withdrawn his rejection and
granted the claims.
77.

As a result of the actions described above, all claims of the ‘969 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘969 Patent.

01980.00010/5702735.1

20

3.
78.

False Statements Regarding the State of the Art During Prosecution
of the ‘969 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor made false statements with the intent to deceive the PTO during the prosecution
of the ‘969 Patent.
79.

The ‘969 Examiner rejected all claims of the ‘969 Patent in light of the Sullivan

reference’s disclosure of the state of search engine art. As the Examiner argued in his
Responsive Brief to the BPAI:
Search engines (then and now) were particularly used for such handling of
advertisements. See, for instance, www.google.com's https://adwords.google.com/
select/advantages.html (attached to this Office Action). This website is not given
as prior art; rather, the website is given to illustrate a typical use of search engine
(then and now). This gives a typical use of search engines (then and now):
keywords of search arguments are used to correlate to the advertisement. Thus,
cited passages of Sullivan (as Sullivan directly mentions search engines in such
fashion) would teach such 'correlating the search argument to particular
advertisement' of the claimed invention.
(February 28, 2005 Office Action at 2.) In response, the applicants asserted that correlating
keywords to search advertisements was not the state of the art at the time of the claimed
invention:
Cited in the Office Action of February 28, 2005, is a web page dated February 20,
2005. This article describes generally the history of Google, Inc., which was
formally founded on September 7, 1998 (more than one year after the effective
filing date of the pending application, February 13, 1997). According to the
Examiner, this reference is cited not as prior art but to "illustrate a typical use of
search engine (then and now). This gives a typical use of search engines (then
and now)." Office Action of February 28, 2005 at page 2.
Applicants respectfully disagree with this characterization of the state of the
art as of the effective filing date of the present application. As stated in the
cited article, "[i]n 2000, Google had begun selling advertisements by the keyword
so that they would be more relevant to the end user." Thus, not until 2000 did
Google begin selling advertisements by the keyword, three years after the
effective filing date of the present application. A timeline for Google, located at
the URL address: http://www.google.com/intl/en/corporate/timeline.html states

01980.00010/5702735.1

21

that not until 1998 was the Google search engine even in the beta stage, one year
after the effective filing date of the present application.
(June 6, 2005 Corrected Reply Brief at 8.)
80.

Contrary to the Applicants’ statements to the BPAI, the Examiner was correct as

to the state of the art as of the effective filing date of the present application. As disclosed in the
PR News article, many search engines at the time of effective filing offered “advertisement
banner links” that retrieved specific advertisements according to the keywords entered by a user.
PR News at 1: “[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. WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta Vista's product is still in beta-test.”
81.

The PR News article was not only disclosed in the prosecution of the predecessor

‘065 Patent, but used to reject some of the same claims at issue in the ‘969 Patent. Accordingly,
the named inventor(s), the prosecuting attorney(s), and/or other persons owing a duty of candor
to the PTO had constructive knowledge as to the contents of the PR News article. On
information and belief, the named inventor(s), the prosecuting attorney(s), and/or other persons
owing a duty of candor to the PTO had actual knowledge of the PR News article as well.
82.

On information and belief, the Applicants’ false statements as to the state of the

art as of the effective filing date of the ‘969 Patent was made knowingly and with intent to
deceive the PTO.
83.

But for the Applicants’ false statements to the PTO regarding the state of the art,

the claims of the ‘969 Patent would not have issued. The Examiner of the ‘065 Patent had
already rejected all claims in light of the Sullivan reference, which disclosed search engine
functionality as of the effective filing data of the ‘969 Patent. After the Applicants’ false
statements, the Examiner granted all claims of the ‘969 Patent explicitly premised on those same

01980.00010/5702735.1

22

false statements. (Notice of Allowability at 2.) Had the applicants not mislead the Examiner as
to the status of the art, the Examiner would not have done so.
84.

As a result of the actions described above, all claims of the ‘969 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘969 Patent.
4.
85.

Failure to Disclose Kohda Article in an Information Disclosure
Statement During Prosecution of the ‘969 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘969 Patent.
86.

In May 1996, Youji Kohda and Sesumu Endo published an article entitled

“Ubiquitous Advertising on the WWW: Merging Advertisements on the Browser” in the
Computer Networks and ISDN Systems journal. (Vol. 28, issues 7-11, pp. 1493-1499.) The same
article was also presented at the Fifth International World Wide Web Conference on May 9,
1996 (http://www5.wwwconference.org/fich_html/paper-sessions.html), and is available online
at http://www5.wwwconference.org/fich_html/papers/P52/Overview.html. The Kohda article
describes a system wherein “[a]dvertisements fetched from advertisers' Web servers are merged
with Web pages from ordinary Web servers by the agent, and the merged pages are displayed on
the users' Web browser.” (Kohda 2.) Since “the agent is aware of the identity of the user and
which page the user is about to read on the browser, [] the advertising agent can tailor
advertisements for individuals and their current interests.” (Kohda 4 (emphasis in original).)
87.

During the prosecution of the parent ‘065 Patent, the applicants informed the PTO

of the Kohda article in a supplement to an earlier Information Disclosure Statement. (November
12, 1998 Fax at 7.)

01980.00010/5702735.1

23

88.

Despite being both aware of the Kohda article and considering it sufficiently

material to submit to the Examiner during the prosecution of the ‘065 Patent, the Applicants
failed to inform the Examiner of the ‘969 Patent of the existence of the Kohda article. In fact,
the Applicants failed to submit any prior art at all.
89.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent to whom the Kohda article was

submitted, was not the Examiner of the ‘969 Patent.
90.

Under the broadest reasonable interpretation standard used by the PTO, the agent

system described in the Kohda article renders at least claim 1 of the ‘969 Patent invalid under 35
U.S.C. § 103. The Kohda article discloses all elements of claim 1:
1. A method of providing advertisements to a
user searching for desired information within
a data network, comprising the steps of:

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
Id. at 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

receiving, from the user, a search request
including a search argument corresponding to
the desired information;

01980.00010/5702735.1

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the

24

advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
searching, based upon the received search
argument, a first database having data
network related information to generate
search results;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply Brief
at 7.) Since Kohda displays advertisements
“on any server around on the Internet,” Kohda
in view of the acknowledged conventional
search engines discloses this claim limitation.

correlating the received search argument to a Kohda 4: “When a user clicks an anchor on a
particular advertisement in a second database page displayed on the browser, the browser
having advertisement related information; and contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
providing the search results together with the
particular advertisement to the user.

01980.00010/5702735.1

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's

25

Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
91.

One or more of the named inventors of the ‘969 Patent and others involved in the

prosecution of the patent were aware of the existence of the Kohda article during the prosecution
of the ‘969 Patent, and were also aware that the Kohda article was material to the patentability of
the ‘969 Patent. Named inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their
patent agent Bruce E. Garlick, and/or other persons involved in the prosecution of the ‘969
Patent were aware of the Kohda article because they had disclosed that same article to the
Examiner of the ‘065 Patent in an Information Disclosure Statement. Furthermore, named
inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E.
Garlick, and/or other persons involved in the prosecution of the ‘969 Patent were aware of the
materiality of the Kohda article because they had already determined it was material to the ‘065
Patent, with which the ‘969 Patent shares a specification.
92.

Despite its materiality to the application, the named inventors of the ‘969 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the Kohda article to the PTO as prior art in an Information Disclosure Statement during
the prosecution of the ‘969 Patent. In fact, the named inventors of the ‘969 Patent, the
prosecuting attorney(s), and/or other persons having a duty of candor to the PTO did not disclose
any prior art to the PTO.
93.

On information and belief, the failure to disclose the Kohda article during the

prosecution of the ‘969 Patent was made knowingly and with intent to deceive the PTO.
94.

The Kohda article was not independently discovered by the Examiner of the ‘969

Patent, and does not appear on the “References Cited” of the ‘969 Patent.

01980.00010/5702735.1

26

95.

But for the failure of the applicants to disclose the Kohda article during the

prosecution of the ‘969 Patent, at least claim 1 of the ‘969 Patent would not have issued. Related
Patent Application No. 13/031,478 is in prosecution before the PTO. The ‘478 Application
shares a specification with the ‘969 Patent, and both claim priority to the ‘065 Patent. After the
Examiner indicated that the claims had been allowed, the Applicants—who are no longer
represented by Garlick—submitted an Information Disclosure Statement on June 26, 2013 that
disclosed the Kohda article. The Examiner subsequently withdrew the Notice of Acceptance and
found the majority of the pending claims of the ‘478 Application anticipated by Kohda.
(September 6, 2013 Office Action at 2-6.) For instance, the Examiner found that a portion of
Section 2.2 of the Kohda article, excerpted above, disclosed claim elements similar to those
found in claim 1 of the ‘969 Patent. Had the Examiner of the ‘969 Patent been aware of the
Kohda reference, he would have similarly found at least claim 1 invalid.
96.

As a result of the actions described above, all claims of the ‘969 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘969 Patent.
B.

Inequitable Conduct During the Prosecution of the ‘245 Patent
1.

97.

Failure to Disclose PR News Article and Barrett Patent in an
Information Disclosure Statement During Prosecution of the ‘245
Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘245 Patent.
98.

As detailed above, the Examiner of the ’065 Patent, Dr. Paul R. Lintz, rejected

originally filed independent claims as anticipated by “Web Crawler, Lycos, or Infoseek as
disclosed by PR NEWS (‘Make Sure Search Engines Find Your Site; options include buying

01980.00010/5702735.1

27

words, advertising, and careful page design’- PR NEWS).” More specifically, Dr. Lintz found
that “Pr News taught the ‘Buying of words’ in a search engine in which if that word correlated to
a search query for the search engine’s web page database, the user would be presented with a
specific advertiser’s banner (line 14-37) from a second database.” (December 21, 1998 Office
Action at 2).
99.

The Examiner of the ‘065 Patent also found several originally filed dependent

claims as obvious in light of PR News in view of U.S. Patent in light of U.S. Patent No.
5,727,129 to Barrett. More specifically, the Examiner found that Barrett “[d]isclosed the use of
user profiles for use in returning relevant hits” and that “[i]t would have been obvious for one of
ordinary skill in the art of computers to have included a user profile in the search engines
disclosed by PR NEWS in order to reduce the search time to return relevant hits.” The Examiner
similarly found that Barrett disclosed “previously received search arguments,” “using the results
from previous search sessions,” “user specified preferences as reflected in the user choice,” and
that Pr News “taught banner advertisement inserts.” (December 21, 1998 Office Action at 3.)
100.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent who had located the PR News

article and the Barrett patent, was not the Examiner of the ‘245 Patent.
101.

Under the broadest reasonable interpretation standard used by the PTO, the search

engines described in the PR News article in view of the Barrett reference render at least claim 1
of the ‘245 Patent invalid under 35 U.S.C. § 103. The PR News article in view of Barrett
discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

01980.00010/5702735.1

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

28

Id. at 1: “Time Warner could thus ensure that
anyone who enters the term ‘Time Warner’
will see its home page or ad at the top of the
search results.”
receiving user preference input from the data
processing device via the communications
link;

Barrett at 5:28-29: “means for recording a
sequence of successive user actions and
network responses.”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

creating user preference data based upon the
user preference input;

Barrett at 5:30-32: “means for developing a
profile of user activities based on the user
actions and network responses monitored in
the step of monitoring”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

receiving from the data processing device via
the communications link a search request that
includes a search argument;

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

searching at least one database using the
search argument to produce search results;

PR News at 1: “search engines like
WebCrawler and Infoseek use ‘spiders’ or
‘robots’ to index the Web. These programs

01980.00010/5702735.1

29

automatically search the Web by indexing one
page and then indexing all documents that are
hyperlinked to it”
Id. at 1: “Major engines—including Alta
Vista, Excite, Infoseek, Lycos, Yahoo! and
WebCrawler—use a dataset indexed by the
spider to provide a set of related sites”
selecting at least one advertisement from an
advertisement database relating to the search
argument using the user preference data; and

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
Barrett at 5:33-34: “means for actively
facilitating user activities based on the
developed profile”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in

01980.00010/5702735.1

30

Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.
transmitting the search results together with
the at least one advertisement via the
communications link to the data processing
device.

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”

Further, the ‘065 Examiner explicitly noted—and as the applicants never disputed—that “[i]t
would have been obvious for one of ordinary skill in the art of computers to have included a user
profile in the search engines disclosed by PR NEWS in order to reduce the search time to return
relevant hits.” (December 21, 1998 Office Action at 3.)
102.

One or more of the named inventors of the ‘245 Patent and others involved in the

prosecution of the patent were aware of the existence of the PR News article and the Barrett
patent during the prosecution of the ‘245 Patent; and were also aware that this article and patent
were material to the patentability of the ‘245 Patent. Named inventors Richard Prescott Skillen,
Frederick Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons

01980.00010/5702735.1

31

involved in the prosecution of the ‘245 Patent were aware of the PR News article and the Barrett
patent because they had been cited by the Examiner as rendering claims of the predecessor ‘065
Patent anticipated or obvious. Furthermore, named inventors Richard Prescott Skillen, Frederick
Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons involved in the
prosecution of the ‘245 Patent were aware of the materiality of the PR News article and the
Barrett patent because they had been cited by the Examiner as rendering claims of the
predecessor ‘065 Patent anticipated or obvious, and because the prosecutions of the prior patents
in that patent family had never traversed those rejections.
103.

Despite its materiality to the application, the named inventors of the ‘245 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the PR News article and the Barrett patent to the PTO as prior art in an Information
Disclosure Statement during the prosecution of the ‘245 Patent. In fact, the named inventors of
the ‘245 Patent, the prosecuting attorney(s), and/or other persons having a duty of candor to the
PTO did not disclose any prior art at all to the PTO.
104.

On information and belief, the failure to disclose the PR News article and the

Barrett patent during the prosecution of the ‘245 Patent was made knowingly and with intent to
deceive the PTO.
105.

Neither the PR News article nor the Barrett patent were independently discovered

by the Examiner of the ‘245 Patent, and neither appear on the “References Cited” of the ‘245
Patent.
106.

But for the failure of the applicants to disclose the PR News article and the Barrett

Patent during the prosecution of the ‘245 Patent, at least claim 1 of the ‘245 Patent would not
have issued. As detailed above, the Examiner of the ‘065 Patent found claim 2 of the application

01980.00010/5702735.1

32

that would become the ‘065 Patent—which contains very similar requirements as claim 1 of the
‘245 Patent—invalid in light of the PR News article and the Barrett patent. The Applicants
never traversed or even attempted to traverse the rejection.
107.

As a result of the actions described above, all claims of the ‘245 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘245 Patent.
2.
108.

Failure to Correct False Statements Regarding Open Text Made
During Prosecution of the Ancestor ‘969 Patent

As detailed in ¶¶ 70 through 77 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding Open
Text with the intent to deceive the PTO during the prosecution of the ancestor ‘969 Patent.
109.

At no point during the prosecution of the ‘245 Patent or its ancestor patents did

the Applicants expressly advise the PTO of the existence of the false statements, stating
specifically where they reside. Nor did the Applicants advise the PTO as to the actual facts
regarding the functionality of the Open Text search engine. Nor did the Applicants take the
necessary action openly, calling the Examiner’s attention to the untrue or misleading assertions
sought to be overcome. The Applicants’ failure to cure the false statements made during the
‘969 Patent prosecution renders all claims of the ‘245 Patent unenforceable due to inequitable
conduct.
3.
110.

False Statements Regarding the State of the Art During Prosecution
of the ‘969 Patent

As detailed in ¶¶ 78 through 84 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding the
state of the art with the intent to deceive the PTO during the prosecution of the ancestor ‘969
Patent.

01980.00010/5702735.1

33

111.

At no point during the prosecution of the ‘245 Patent or its ancestor patents did

the Applicants expressly advise the PTO of the existence of the false statements, stating
specifically where they reside. Nor did the Applicants advise the PTO as to the actual facts
regarding the state of the art. Nor did the Applicants take the necessary action openly, calling
the Examiner’s attention to the untrue or misleading assertions sought to be overcome. The
Applicants’ failure to cure the false statements made during the ‘969 Patent prosecution renders
all claims of the ‘245 Patent unenforceable due to inequitable conduct.
4.
112.

Failure to Disclose Kohda Article in an Information Disclosure
Statement During Prosecution of the ‘245 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘245 Patent.
113.

In May 1996, Youji Kohda and Sesumu Endo published an article entitled

“Ubiquitous Advertising on the WWW: Merging Advertisements on the Browser” in the
Computer Networks and ISDN Systems journal. (Vol. 28, issues 7-11, pp. 1493-1499.) The same
article was also presented at the Fifth International World Wide Web Conference on May 9,
1996 (http://www5.wwwconference.org/fich_html/paper-sessions.html), and is available online
at http://www5.wwwconference.org/fich_html/papers/P52/Overview.html. The Kohda article
describes a system wherein “[a]dvertisements fetched from advertisers' Web servers are merged
with Web pages from ordinary Web servers by the agent, and the merged pages are displayed on
the users' Web browser.” (Kohda 2.) Since “the agent is aware of the identity of the user and
which page the user is about to read on the browser, [] the advertising agent can tailor
advertisements for individuals and their current interests.” (Kohda 4 (emphasis in original).)

01980.00010/5702735.1

34

114.

During the prosecution of the parent ‘065 Patent, the applicants informed the PTO

of the Kohda article in a supplement to an earlier Information Disclosure Statement. (November
12, 1998 Fax at 7.)
115.

Despite being both aware of the Kohda article and considering it sufficiently

material to submit to the Examiner during the prosecution of the ‘065 Patent, the Applicants
failed to inform the Examiner of the ‘245 Patent of the existence of the Kohda article. In fact,
the Applicants failed to submit any prior art at all.
116.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent to whom the Kohda article was

submitted, was not the Examiner of the ‘245 Patent.
117.

Under the broadest reasonable interpretation standard used by the PTO, the agent

system described in the Kohda article renders at least claim 1 of the ‘245 Patent invalid under 35
U.S.C. § 103. The Kohda article discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
Id. at 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

01980.00010/5702735.1

35

receiving user preference input from the data
processing device via the communications
link;

Kohda 3: “Next, the advertising agent
company also negotiates with users, who
agree to see advertisements while browsing.
This is similar to subscription procedure for
technical magazines, which are full of
technical articles and advertisements which
target is the subscribers of the magazines. The
agent company is responsible for delivering
the appropriate advertisements to the users.
Thus, the contract should at least allow the
users to specify what categories of
advertisements they wish to see. For example,
a user can declare that he or she is interesting
in new books, new personal computers, and
used cars.”

creating user preference data based upon the
user preference input;

Kohda 3: “Next, the advertising agent
company also negotiates with users, who
agree to see advertisements while browsing.
This is similar to subscription procedure for
technical magazines, which are full of
technical articles and advertisements which
target is the subscribers of the magazines. The
agent company is responsible for delivering
the appropriate advertisements to the users.
Thus, the contract should at least allow the
users to specify what categories of
advertisements they wish to see. For example,
a user can declare that he or she is interesting
in new books, new personal computers, and
used cars.”

receiving from the data processing device via
the communications link a search request that
includes a search argument;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

searching at least one database using the
search argument to produce search results;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from

01980.00010/5702735.1

36

ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply
Brief at 7.) Since Kohda displays
advertisements “on any server around on the
Internet,” Kohda in view of the acknowledged
conventional search engines discloses this
claim limitation.
selecting at least one advertisement from an
advertisement database relating to the search
argument using the user preference data; and

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.
Note that the agent is aware of the identity of
the user and which page the user is about to
read on the browser, so the advertising agent
can tailor advertisements for individuals and
their current interests. Thus it prevents the
user from having to see advertisements that
are unrelated to their current interests.”

transmitting the search results together with
the at least one advertisement via the
communications link to the data processing
device.

01980.00010/5702735.1

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its

37

advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
118.

One or more of the named inventors of the ‘245 Patent and others involved in the

prosecution of the patent were aware of the existence of the Kohda article during the prosecution
of the ‘245 Patent, and were also aware that the Kohda article was material to the patentability of
the ‘245 Patent. Named inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their
patent agent Bruce E. Garlick, and/or other persons involved in the prosecution of the ‘245
Patent were aware of the Kohda article because they had disclosed that same article to the
Examiner of the ‘065 Patent in an Information Disclosure Statement. Furthermore, named
inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E.
Garlick, and/or other persons involved in the prosecution of the ‘245 Patent were aware of the
materiality of the Kohda article because they had already determined it was material to the ‘065
Patent, with which the ‘245 Patent shares a specification.
119.

Despite its materiality to the application, the named inventors of the ‘245 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the Kohda article to the PTO as prior art in an Information Disclosure Statement during
the prosecution of the ‘245 Patent. In fact, the named inventors of the ‘245 Patent, the
prosecuting attorney(s), and/or other persons having a duty of candor to the PTO did not disclose
any prior art to the PTO.
120.

On information and belief, the failure to disclose the Kohda article during the

prosecution of the ‘245 Patent was made knowingly and with intent to deceive the PTO.
121.

The Kohda article was not independently discovered by the Examiner of the ‘245

Patent, and does not appear on the “References Cited” of the ‘245 Patent.

01980.00010/5702735.1

38

122.

But for the failure of the applicants to disclose the Kohda article during the

prosecution of the ‘245 Patent, at least claim 1 of the ‘245 Patent would not have issued. Related
Patent Application No. 13/031,478 is in prosecution before the PTO. The ‘478 Application
shares a specification with the ‘245 Patent, and both claim priority to the ‘065 Patent. After the
Examiner indicated that the claims had been allowed, the Applicants—who are no longer
represented by Garlick—submitted an Information Disclosure Statement on June 26, 2013 that
disclosed the Kohda article. The Examiner subsequently withdrew the Notice of Acceptance and
found the majority of the pending claims of the ‘478 Application anticipated by Kohda.
(September 6, 2013 Office Action at 2-6.) For instance, the Examiner found that portions of
Sections 2.1 and 2.2 of the Kohda article, excerpted above, disclosed claim elements similar to
those found in claim 1 of the ‘245 Patent. Had the Examiner of the ‘245 Patent been aware of
the Kohda reference, he would have similarly found at least claim 1 invalid.
123.

As a result of the actions described above, all claims of the ‘245 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘245 Patent.
C.

Inequitable Conduct During the Prosecution of the ‘970 Patent
1.

124.

Failure to Disclose PR News Article and Barrett Patent in an
Information Disclosure Statement During Prosecution of the ‘970
Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘970 Patent.
125.

As detailed above, the Examiner of the ’065 Patent, Dr. Paul R. Lintz, rejected

originally filed independent claims as anticipated by “Web Crawler, Lycos, or Infoseek as
disclosed by PR NEWS (‘Make Sure Search Engines Find Your Site; options include buying

01980.00010/5702735.1

39

words, advertising, and careful page design’- PR NEWS).” More specifically, Dr. Lintz found
that “Pr News taught the ‘Buying of words’ in a search engine in which if that word correlated to
a search query for the search engine’s web page database, the user would be presented with a
specific advertiser’s banner (line 14-37) from a second database.” (December 21, 1998 Office
Action at 2).
126.

The Examiner of the ‘065 Patent also found several originally filed dependent

claims as obvious in light of PR News in view of U.S. Patent in light of U.S. Patent No.
5,727,129 to Barrett. More specifically, the Examiner found that Barrett “[d]isclosed the use of
user profiles for use in returning relevant hits” and that “[i]t would have been obvious for one of
ordinary skill in the art of computers to have included a user profile in the search engines
disclosed by PR NEWS in order to reduce the search time to return relevant hits.” The Examiner
similarly found that Barrett disclosed “previously received search arguments,” “using the results
from previous search sessions,” “user specified preferences as reflected in the user choice,” and
that Pr News “taught banner advertisement inserts.” (December 21, 1998 Office Action at 3.)
127.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent who had located the PR News

article and the Barrett patent, was not the Examiner of the ‘970 Patent.
128.

Under the broadest reasonable interpretation standard used by the PTO, the search

engines described in the PR News article in view of the Barrett reference render at least claim 1
of the ‘970 Patent invalid under 35 U.S.C. § 103. The PR News article in view of Barrett
discloses all elements of claim 1:
1. 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, the
advertising machine comprising:

01980.00010/5702735.1

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

40

Id. at 1: “Time Warner could thus ensure that
anyone who enters the term ‘Time Warner’
will see its home page or ad at the top of the
search results.”
a communications interface operable to
interface with the data processing device of
the user via the communications link;

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

a database search engine operable to: receive
from the data processing device via the
communications link a search request that
includes a search argument; and

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

search at least one database using the search
argument to produce search results;

PR News at 1: “search engines like
WebCrawler and Infoseek use ‘spiders’ or
‘robots’ to index the Web. These programs
automatically search the Web by indexing one
page and then indexing all documents that are
hyperlinked to it”
Id. at 1: “Major engines—including Alta
Vista, Excite, Infoseek, Lycos, Yahoo! and
WebCrawler—use a dataset indexed by the
spider to provide a set of related sites”

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; and

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week

41

period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
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;

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”

receive a response from the data processing
device via the communications link that
indicates selection of an advertisement; and

Barrett at 5:28-29: “means for recording a
sequence of successive user actions and
network responses.”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR

01980.00010/5702735.1

42

NEWS in order to reduce the search time to
return relevant hits.
based upon the advertisement selection,
generate a fee record.

It would have been obvious for one of
ordinary skill in the art of computers to
generate a fee record based upon an
advertisement selection. By the time of the
alleged invention, many advertisers tied
advertising spending to fee records so as to tie
their banner advertisements to demonstrated
user interest. For instance, in 1996 Yahoo
agreed to charge Procter & Gamble only in
the event a user clicked on a P&G link.

Further, the ‘065 Examiner explicitly noted—and as the applicants never disputed—that “[i]t
would have been obvious for one of ordinary skill in the art of computers to have included a user
profile in the search engines disclosed by PR NEWS in order to reduce the search time to return
relevant hits.” (December 21, 1998 Office Action at 3.)
129.

One or more of the named inventors of the ‘970 Patent and others involved in the

prosecution of the patent were aware of the existence of the PR News article and the Barrett
patent during the prosecution of the ‘970 Patent; and were also aware that this article and patent
ere material to the patentability of the ‘970 Patent. Named inventors Richard Prescott Skillen,
Frederick Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons
involved in the prosecution of the 970 Patent were aware of the PR News article and the Barrett
patent because they had been cited by the Examiner as rendering claims of the predecessor ‘065
Patent anticipated or obvious. Furthermore, named inventors Richard Prescott Skillen, Frederick
Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons involved in the
prosecution of the ‘970 Patent were aware of the materiality of the PR News article and the
Barrett patent because they had been cited by the Examiner as rendering claims of the

01980.00010/5702735.1

43

predecessor ‘065 Patent anticipated or obvious, and because the prosecutions of the prior patents
in that patent family had never traversed those rejections.
130.

Despite its materiality to the application, the named inventors of the ‘970 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the PR News article and the Barrett patent to the PTO as prior art in an Information
Disclosure Statement during the prosecution of the ‘970 Patent.
131.

On information and belief, the failure to disclose the PR News article and the

Barrett patent during the prosecution of the ‘970 Patent was made knowingly and with intent to
deceive the PTO. Indeed, the Examiner of the ‘970 Patent explicitly noted that while “the Office
is conducting further research into the prior art that can be used in the Office Action,” it was
“greatly inhibited by the Office Actions being limited (for the most part) to documents.” (March
3, 2009 Office Action at 2-3) Despite the Examiner’s warning the applicants that “[n]either
Applicant nor the Office would gain from issuing a patent merely for overcoming MPEP
standard (of evidence being limited to documents) while fully knowing of invalidity of such a
patent” (id. at 3), the named inventors of the ‘970 Patent, the prosecuting attorney(s), and/or
other persons having a duty of candor to the PTO withheld the PR News article and the Barrett
patent from the Examiner.
132.

Neither the PR News article nor the Barrett patent were independently discovered

by the Examiner of the ‘970 Patent, and neither appear on the “References Cited” of the ‘970
Patent.
133.

But for the failure of the applicants to disclose the PR News article and the Barrett

Patent during the prosecution of the ‘970 Patent, at least claim 1 of the ‘970 Patent would not
have issued. As detailed above, the Examiner of the ‘065 Patent found claim 1 of the application

01980.00010/5702735.1

44

that would become the ‘065 Patent—which contains very similar requirements as claim 1 of the
‘970 Patent—invalid in light of the PR News article. The Applicants never traversed or even
attempted to traverse the rejection.
134.

As a result of the actions described above, all claims of the ‘970 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘970 Patent.
2.
135.

Failure to Correct False Statements Regarding Open Text Made
During Prosecution of the Ancestor ‘969 Patent

As detailed in ¶¶ 70 through 77 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding Open
Text with the intent to deceive the PTO during the prosecution of the ancestor ‘969 Patent.
136.

At no point during the prosecution of the ‘970 Patent or its ancestor patents did

the Applicants expressly advise the PTO of the existence of the false statements, stating
specifically where they reside. Nor did the Applicants advise the PTO as to the actual facts
regarding the functionality of the Open Text search engine. Nor did the Applicants take the
necessary action openly, calling the Examiner’s attention to the untrue or misleading assertions
sought to be overcome. The Applicants’ failure to cure the false statements made during the
‘969 Patent prosecution renders all claims of the ‘970 Patent unenforceable due to inequitable
conduct.
3.
137.

False Statements Regarding the State of the Art During Prosecution
of the ‘969 Patent

As detailed in ¶¶ 78 through 84 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding the
state of the art with the intent to deceive the PTO during the prosecution of the ancestor ‘969
Patent.

01980.00010/5702735.1

45

138.

At no point during the prosecution of the ‘970 Patent did the Applicants expressly

advise the PTO of the existence of the false statements, stating specifically where they reside.
Nor did the Applicants advise the PTO as to the actual facts regarding the state of the art. Nor
did the Applicants take the necessary action openly, calling the Examiner’s attention to the
untrue or misleading assertions sought to be overcome. The Applicants’ failure to cure the false
statements made during the ‘969 Patent prosecution renders all claims of the ‘970 Patent
unenforceable due to inequitable conduct.
4.
139.

Failure to Disclose Kohda Article in an Information Disclosure
Statement During Prosecution of the ‘970 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘970 Patent.
140.

In May 1996, Youji Kohda and Sesumu Endo published an article entitled

“Ubiquitous Advertising on the WWW: Merging Advertisements on the Browser” in the
Computer Networks and ISDN Systems journal. (Vol. 28, issues 7-11, pp. 1493-1499.) The same
article was also presented at the Fifth International World Wide Web Conference on May 9,
1996 (http://www5.wwwconference.org/fich_html/paper-sessions.html), and is available online
at http://www5.wwwconference.org/fich_html/papers/P52/Overview.html. The Kohda article
describes a system wherein “[a]dvertisements fetched from advertisers' Web servers are merged
with Web pages from ordinary Web servers by the agent, and the merged pages are displayed on
the users' Web browser.” (Kohda 2.) Since “the agent is aware of the identity of the user and
which page the user is about to read on the browser, [] the advertising agent can tailor
advertisements for individuals and their current interests.” (Kohda 4 (emphasis in original).)

01980.00010/5702735.1

46

141.

During the prosecution of the parent ‘065 Patent, the applicants informed the PTO

of the Kohda article in a supplement to an earlier Information Disclosure Statement. (November
12, 1998 Fax at 7.)
142.

Despite being both aware of the Kohda article and considering it sufficiently

material to submit to the Examiner during the prosecution of the ‘065 Patent, the Applicants
failed to inform the Examiner of the ‘970 Patent of the existence of the Kohda article.
143.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent to whom the Kohda article was

submitted, was not the Examiner of the ‘970 Patent.
144.

Under the broadest reasonable interpretation standard used by the PTO, the agent

system described in the Kohda article renders at least claim 1 of the ‘970 Patent invalid under 35
U.S.C. § 103. The Kohda article discloses all elements of claim 1:
1. 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, the
advertising machine comprising:

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
Id. at 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

01980.00010/5702735.1

47

a communications interface operable to
interface with the data processing device of
the user via the communications link;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”

a database search engine operable to: receive
from the data processing device via the
communications link a search request that
includes a search argument; and

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

search at least one database using the search
argument to produce search results;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply Brief
at 7.) Since Kohda displays advertisements
“on any server around on the Internet,” Kohda
in view of the acknowledged conventional
search engines discloses this claim limitation.

01980.00010/5702735.1

48

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; and

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

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;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

receive a response from the data processing
device via the communications link that
indicates selection of an advertisement; and

Kohda 4: “Advertisements returned from the
advertising agent's Web server can have links
to other pages which might, for example, be
more detailed advertisements or online order
forms for the advertised goods or services.
When users follow these links, the advertising
agent can detect these actions: Who, when, to
what page. The agent records the actions, and
the accumulated record can be used by the
agent to show the effectiveness of their
services to the advertisers.”

based upon the advertisement selection,
generate a fee record.

Kohda 3: “Next, the advertising agent
company also negotiates with users, who
agree to see advertisements while browsing.
This is similar to subscription procedure for
technical magazines, which are full of
technical articles and advertisements which
target is the subscribers of the magazines. The
agent company is responsible for delivering
the appropriate advertisements to the users.
Thus, the contract should at least allow the
users to specify what categories of
advertisements they wish to see. For example,
a user can declare that he or she is interesting

01980.00010/5702735.1

49

in new books, new personal computers, and
used cars.”
Id. at 4: “Advertisements returned from the
advertising agent's Web server can have links
to other pages which might, for example, be
more detailed advertisements or online order
forms for the advertised goods or services.
When users follow these links, the advertising
agent can detect these actions: Who, when, to
what page. The agent records the actions, and
the accumulated record can be used by the
agent to show the effectiveness of their
services to the advertisers.”
145.

One or more of the named inventors of the ‘970 Patent and others involved in the

prosecution of the patent were aware of the existence of the Kohda article during the prosecution
of the ‘970 Patent, and were also aware that the Kohda article was material to the patentability of
the ‘970 Patent. Named inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their
patent agent Bruce E. Garlick, and/or other persons involved in the prosecution of the ‘970
Patent were aware of the Kohda article because they had disclosed that same article to the
Examiner of the ‘065 Patent in an Information Disclosure Statement. Furthermore, named
inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E.
Garlick, and/or other persons involved in the prosecution of the ‘970 Patent were aware of the
materiality of the Kohda article because they had already determined it was material to the ‘065
Patent, with which the ‘970 Patent shares a specification.
146.

Despite its materiality to the application, the named inventors of the ‘970 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the Kohda article to the PTO as prior art in an Information Disclosure Statement during
the prosecution of the ‘970 Patent.

01980.00010/5702735.1

50

147.

On information and belief, the failure to disclose the Kohda article during the

prosecution of the ‘970 Patent was made knowingly and with intent to deceive the PTO.
148.

The Kohda article was not independently discovered by the Examiner of the ‘970

Patent, and does not appear on the “References Cited” of the ‘970 Patent.
149.

But for the failure of the applicants to disclose the Kohda article during the

prosecution of the ‘970 Patent, at least claim 1 of the ‘970 Patent would not have issued. Related
Patent Application No. 13/031,478 is in prosecution before the PTO. The ‘478 Application
shares a specification with the ‘245 Patent, and both claim priority to the ‘065 Patent. After the
Examiner indicated that the claims had been allowed, the Applicants—who are no longer
represented by Garlick—submitted an Information Disclosure Statement on June 26, 2013 that
disclosed the Kohda article. The Examiner subsequently withdrew the Notice of Acceptance and
found the majority of the pending claims of the ‘478 Application anticipated by Kohda.
(September 6, 2013 Office Action at 2-6.) For instance, the Examiner found that portions of
Sections 2.1, 2.2, and 2.3 of the Kohda article, excerpted above, disclosed claim elements similar
to those found in claim 1 of the ‘970 Patent. Had the Examiner of the ‘970 Patent been aware of
the Kohda reference, he would have similarly found at least claim 1 invalid.
150.

As a result of the actions described above, all claims of the ‘970 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘970 Patent.
D.

Inequitable Conduct During the Prosecution of the ‘183 Patent
1.

151.

Failure to Disclose PR News Article and Barrett Patent in an
Information Disclosure Statement During Prosecution of the ‘183
Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to

01980.00010/5702735.1

51

deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘183 Patent.
152.

As detailed above, the Examiner of the ’065 Patent, Dr. Paul R. Lintz, rejected

originally filed independent claims as anticipated by “Web Crawler, Lycos, or Infoseek as
disclosed by PR NEWS (‘Make Sure Search Engines Find Your Site; options include buying
words, advertising, and careful page design’- PR NEWS).” More specifically, Dr. Lintz found
that “Pr News taught the ‘Buying of words’ in a search engine in which if that word correlated to
a search query for the search engine’s web page database, the user would be presented with a
specific advertiser’s banner (line 14-37) from a second database.” (December 21, 1998 Office
Action at 2).
153.

The Examiner of the ‘065 Patent also found several originally filed dependent

claims as obvious in light of PR News in view of U.S. Patent in light of U.S. Patent No.
5,727,129 to Barrett. More specifically, the Examiner found that Barrett “[d]isclosed the use of
user profiles for use in returning relevant hits” and that “[i]t would have been obvious for one of
ordinary skill in the art of computers to have included a user profile in the search engines
disclosed by PR NEWS in order to reduce the search time to return relevant hits.” The Examiner
similarly found that Barrett disclosed “previously received search arguments,” “using the results
from previous search sessions,” “user specified preferences as reflected in the user choice,” and
that Pr News “taught banner advertisement inserts.” (December 21, 1998 Office Action at 3.)
154.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent who had located the PR News

article and the Barrett patent, was not the Examiner of the ‘183 Patent.
155.

Under the broadest reasonable interpretation standard used by the PTO, the search

engines described in the PR News article in view of the Barrett reference render at least claim 1

01980.00010/5702735.1

52

of the ‘183 Patent invalid under 35 U.S.C. § 102. The PR News article discloses all elements of
claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”
Id. at 1: “Time Warner could thus ensure that
anyone who enters the term ‘Time Warner’
will see its home page or ad at the top of the
search results.”

receiving from the data processing device via
the communications link a search request that
includes a search argument;

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

searching at least one database using the
search argument to produce search results;

PR News at 1: “search engines like
WebCrawler and Infoseek use ‘spiders’ or
‘robots’ to index the Web. These programs
automatically search the Web by indexing one
page and then indexing all documents that are
hyperlinked to it”
Id. at 1: “Major engines—including Alta
Vista, Excite, Infoseek, Lycos, Yahoo! and
WebCrawler—use a dataset indexed by the
spider to provide a set of related sites”

selecting at least one advertisement from an
advertisement database based upon at least
one of the search argument and the search
results;

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the

53

Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
and 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.

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”

Further, the ‘065 Examiner explicitly noted—and as the applicants never disputed—that “[i]t
would have been obvious for one of ordinary skill in the art of computers to have included a user
profile in the search engines disclosed by PR NEWS in order to reduce the search time to return
relevant hits.” (December 21, 1998 Office Action at 3.)

01980.00010/5702735.1

54

156.

One or more of the named inventors of the ‘183 Patent and others involved in the

prosecution of the patent were aware of the existence of the PR News article and the Barrett
patent during the prosecution of the ‘183 Patent; and were also aware that this article and patent
were material to the patentability of the ‘183 Patent. Named inventors Richard Prescott Skillen,
Frederick Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons
involved in the prosecution of the ‘183 Patent were aware of the PR News article and the Barrett
patent because they had been cited by the Examiner as rendering claims of the predecessor ‘065
Patent anticipated or obvious. Furthermore, named inventors Richard Prescott Skillen, Frederick
Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons involved in the
prosecution of the ‘183 Patent were aware of the materiality of the PR News article and the
Barrett patent because they had been cited by the Examiner as rendering claims of the
predecessor ‘065 Patent anticipated or obvious, and because the prosecutions of the prior patents
in that patent family had never traversed those rejections.
157.

Despite its materiality to the application, the named inventors of the ‘183 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the PR News article and the Barrett patent to the PTO as prior art in an Information
Disclosure Statement during the prosecution of the ‘183 Patent.
158.

On information and belief, the failure to disclose the PR News article and the

Barrett patent during the prosecution of the ‘183 Patent was made knowingly and with intent to
deceive the PTO.
159.

Neither the PR News article nor the Barrett patent were independently discovered

by the Examiner of the ‘183 Patent, and neither appear on the “References Cited” of the ‘183
Patent.

01980.00010/5702735.1

55

160.

But for the failure of the applicants to disclose the PR News article and the Barrett

Patent during the prosecution of the ‘183 Patent, at least claim 1 of the ‘183 Patent would not
have issued. As detailed above, the Examiner of the ‘065 Patent found claim 1 of the application
that would become the ‘065 Patent—which contains very similar requirements as claim 1 of the
‘183 Patent—invalid in light of the PR News article. The Applicants never traversed or even
attempted to traverse the rejection.
161.

As a result of the actions described above, all claims of the ‘183 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘183 Patent.
2.
162.

Failure to Correct False Statements Regarding Open Text Made
During Prosecution of the Ancestor ‘969 Patent

As detailed in ¶¶ 70 through 77 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding Open
Text with the intent to deceive the PTO during the prosecution of the ancestor ‘969 Patent.
163.

At no point during the prosecution of the ‘183 Patent or its ancestor patents did

the Applicants expressly advise the PTO of the existence of the false statements, stating
specifically where they reside. Nor did the Applicants advise the PTO as to the actual facts
regarding the functionality of the Open Text search engine. Nor did the Applicants take the
necessary action openly, calling the Examiner’s attention to the untrue or misleading assertions
sought to be overcome. The Applicants’ failure to cure the false statements made during the
‘969 Patent prosecution renders all claims of the ‘183 Patent unenforceable due to inequitable
conduct.
3.
164.

False Statements Regarding the State of the Art During Prosecution
of the ‘969 Patent

As detailed in ¶¶ 78 through 84 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding the

01980.00010/5702735.1

56

state of the art with the intent to deceive the PTO during the prosecution of the ancestor ‘969
Patent.
165.

At no point during the prosecution of the ‘183 Patent did the Applicants expressly

advise the PTO of the existence of the false statements, stating specifically where they reside.
Nor did the Applicants advise the PTO as to the actual facts regarding the state of the art. Nor
did the Applicants take the necessary action openly, calling the Examiner’s attention to the
untrue or misleading assertions sought to be overcome. The Applicants’ failure to cure the false
statements made during the ‘969 Patent prosecution renders all claims of the ‘183 Patent
unenforceable due to inequitable conduct.
4.
166.

Failure to Disclose Kohda Article in an Information Disclosure
Statement During Prosecution of the ‘183 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘183 Patent.
167.

In May 1996, Youji Kohda and Sesumu Endo published an article entitled

“Ubiquitous Advertising on the WWW: Merging Advertisements on the Browser” in the
Computer Networks and ISDN Systems journal. (Vol. 28, issues 7-11, pp. 1493-1499.) The same
article was also presented at the Fifth International World Wide Web Conference on May 9,
1996 (http://www5.wwwconference.org/fich_html/paper-sessions.html), and is available online
at http://www5.wwwconference.org/fich_html/papers/P52/Overview.html. The Kohda article
describes a system wherein “[a]dvertisements fetched from advertisers' Web servers are merged
with Web pages from ordinary Web servers by the agent, and the merged pages are displayed on
the users' Web browser.” (Kohda 2.) Since “the agent is aware of the identity of the user and

01980.00010/5702735.1

57

which page the user is about to read on the browser, [] the advertising agent can tailor
advertisements for individuals and their current interests.” (Kohda 4 (emphasis in original).)
168.

During the prosecution of the parent ‘065 Patent, the applicants informed the PTO

of the Kohda article in a supplement to an earlier Information Disclosure Statement. (November
12, 1998 Fax at 7.)
169.

Despite being both aware of the Kohda article and considering it sufficiently

material to submit to the Examiner during the prosecution of the ‘065 Patent, the Applicants
failed to inform the Examiner of the ‘183 Patent of the existence of the Kohda article.
170.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent to whom the Kohda article was

submitted, was not the Examiner of the ‘183 Patent.
171.

Under the broadest reasonable interpretation standard used by the PTO, the agent

system described in the Kohda article renders at least claim 1 of the ‘183 Patent invalid under 35
U.S.C. § 103. The Kohda article discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements on
any server around on the Internet. Moreover
the agent has chances to deliver appropriate
advertisements which suit each user's taste.”
Id. at 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges

01980.00010/5702735.1

58

those returned Web pages, and displays a
composite page on the screen.”
receiving from the data processing device via Kohda 4: “When a user clicks an anchor on a
the communications link a search request
page displayed on the browser, the browser
that includes a search argument;
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
searching at least one database using the
search argument to produce search results;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements on
any server around on the Internet. Moreover
the agent has chances to deliver appropriate
advertisements which suit each user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply Brief
at 7.) Since Kohda displays advertisements
“on any server around on the Internet,” Kohda
in view of the acknowledged conventional
search engines discloses this claim limitation.

selecting at least one advertisement from an
advertisement database based upon at least
one of the search argument and the search
results;

01980.00010/5702735.1

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges

59

those returned Web pages, and displays a
composite page on the screen.”
and 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.

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
See also id., Figure 2:

172.

One or more of the named inventors of the ‘183 Patent and others involved in the

prosecution of the patent were aware of the existence of the Kohda article during the prosecution
of the ‘183 Patent, and were also aware that the Kohda article was material to the patentability of
the ‘183 Patent. Named inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their
patent agent Bruce E. Garlick, and/or other persons involved in the prosecution of the ‘183
Patent were aware of the Kohda article because they had disclosed that same article to the
Examiner of the ‘065 Patent in an Information Disclosure Statement. Furthermore, named
inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E.

01980.00010/5702735.1

60

Garlick, and/or other persons involved in the prosecution of the ‘183 Patent were aware of the
materiality of the Kohda article because they had already determined it was material to the ‘065
Patent, with which the ‘183 Patent shares a specification.
173.

Despite its materiality to the application, the named inventors of the ‘183 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the Kohda article to the PTO as prior art in an Information Disclosure Statement during
the prosecution of the ‘183 Patent.
174.

On information and belief, the failure to disclose the Kohda article during the

prosecution of the ‘183 Patent was made knowingly and with intent to deceive the PTO.
175.

The Kohda article was not independently discovered by the Examiner of the ‘183

Patent, and does not appear on the “References Cited” of the ‘183 Patent.
176.

But for the failure of the applicants to disclose the Kohda article during the

prosecution of the ‘183 Patent, at least claim 1 of the ‘183 Patent would not have issued. Related
Patent Application No. 13/031,478 is in prosecution before the PTO. The ‘478 Application
shares a specification with the ‘245 Patent, and both claim priority to the ‘065 Patent. After the
Examiner indicated that the claims had been allowed, the Applicants—who are no longer
represented by Garlick—submitted an Information Disclosure Statement on June 26, 2013 that
disclosed the Kohda article. The Examiner subsequently withdrew the Notice of Acceptance and
found the majority of the pending claims of the ‘478 Application anticipated by Kohda.
(September 6, 2013 Office Action at 2-6.) For instance, the Examiner found that portions of
Section 2.2 of the Kohda article, excerpted above, disclosed claim elements similar to those
found in claim 1 of the ‘183 Patent. Had the Examiner of the ‘183 Patent been aware of the
Kohda reference, he would have similarly found at least claim 1 invalid.

01980.00010/5702735.1

61

177.

As a result of the actions described above, all claims of the ‘183 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘183 Patent.
E.

Inequitable Conduct During the Prosecution of the ‘883 Patent
1.

178.

Failure to Disclose PR News Article and Barrett Patent in an
Information Disclosure Statement During Prosecution of the ‘883
Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘883 Patent.
179.

As detailed above, the Examiner of the ’065 Patent, Dr. Paul R. Lintz, rejected

originally filed independent claims as anticipated by “Web Crawler, Lycos, or Infoseek as
disclosed by PR NEWS (‘Make Sure Search Engines Find Your Site; options include buying
words, advertising, and careful page design’- PR NEWS).” More specifically, Dr. Lintz found
that “Pr News taught the ‘Buying of words’ in a search engine in which if that word correlated to
a search query for the search engine’s web page database, the user would be presented with a
specific advertiser’s banner (line 14-37) from a second database.” (December 21, 1998 Office
Action at 2).
180.

The Examiner of the ‘065 Patent also found several originally filed dependent

claims as obvious in light of PR News in view of U.S. Patent in light of U.S. Patent No.
5,727,129 to Barrett. More specifically, the Examiner found that Barrett “[d]isclosed the use of
user profiles for use in returning relevant hits” and that “[i]t would have been obvious for one of
ordinary skill in the art of computers to have included a user profile in the search engines
disclosed by PR NEWS in order to reduce the search time to return relevant hits.” The Examiner
similarly found that Barrett disclosed “previously received search arguments,” “using the results

01980.00010/5702735.1

62

from previous search sessions,” “user specified preferences as reflected in the user choice,” and
that Pr News “taught banner advertisement inserts.” (December 21, 1998 Office Action at 3.)
181.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent who had located the PR News

article and the Barrett patent, was not the Examiner of the ‘883 Patent.
182.

Under the broadest reasonable interpretation standard used by the PTO, the search

engines described in the PR News article in view of the Barrett reference render at least claim 1
of the ‘883 Patent invalid under 35 U.S.C. § 103. The PR News article in view of Barrett
discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”
Id. at 1: “Time Warner could thus ensure that
anyone who enters the term ‘Time Warner’
will see its home page or ad at the top of the
search results.”

creating user profile data for the user;

Barrett at 5:28-29: “means for recording a
sequence of successive user actions and
network responses.”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

storing the user profile data;

01980.00010/5702735.1

Barrett at 5:30-32: “means for developing a
profile of user activities based on the user
actions and network responses monitored in
the step of monitoring”

63

Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.
receiving from the data processing device via
the communications link a search request that
includes a search argument;

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

searching at least one database having data
network related information using the search
argument to generate search results;

PR News at 1: “search engines like
WebCrawler and Infoseek use ‘spiders’ or
‘robots’ to index the Web. These programs
automatically search the Web by indexing one
page and then indexing all documents that are
hyperlinked to it”
Id. at 1: “Major engines—including Alta
Vista, Excite, Infoseek, Lycos, Yahoo! and
WebCrawler—use a dataset indexed by the
spider to provide a set of related sites”

selecting at least one advertisement from an
advertisement database relating to the search
argument using the user profile data; and

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,

64

advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
Barrett at 5:33-34: “means for actively
facilitating user activities based on the
developed profile”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.
transmitting the search results together with
the at least one advertisement via the
communications link to the data processing
device.

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.

65

WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
Further, the ‘065 Examiner explicitly noted—and as the applicants never disputed—that “[i]t
would have been obvious for one of ordinary skill in the art of computers to have included a user
profile in the search engines disclosed by PR NEWS in order to reduce the search time to return
relevant hits.” (December 21, 1998 Office Action at 3.)
183.

One or more of the named inventors of the ‘883 Patent and others involved in the

prosecution of the patent were aware of the existence of the PR News article and the Barrett
patent during the prosecution of the ‘883 Patent; and were also aware that this article and patent
were material to the patentability of the ‘883 Patent. Named inventors Richard Prescott Skillen,
Frederick Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons
involved in the prosecution of the ‘883 Patent were aware of the PR News article and the Barrett
patent because they had been cited by the Examiner as rendering claims of the predecessor ‘065
Patent anticipated or obvious. Furthermore, named inventors Richard Prescott Skillen, Frederick
Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons involved in the
prosecution of the ‘883 Patent were aware of the materiality of the PR News article and the
Barrett patent because they had been cited by the Examiner as rendering claims of the
predecessor ‘065 Patent anticipated or obvious, and because the prosecutions of the prior patents
in that patent family had never traversed those rejections.
184.

Despite its materiality to the application, the named inventors of the ‘883 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the PR News article and the Barrett patent to the PTO as prior art in an Information
Disclosure Statement during the prosecution of the ‘883 Patent.

01980.00010/5702735.1

66

185.

On information and belief, the failure to disclose the PR News article and the

Barrett patent during the prosecution of the ‘883 Patent was made knowingly and with intent to
deceive the PTO.
186.

Neither the PR News article nor the Barrett patent were independently discovered

by the Examiner of the ‘183 Patent, and neither appear on the “References Cited” of the ‘883
Patent.
187.

But for the failure of the applicants to disclose the PR News article and the Barrett

Patent during the prosecution of the ‘183 Patent, at least claim 1 of the ‘883 Patent would not
have issued. As detailed above, the Examiner of the ‘065 Patent found claim 2 of the application
that would become the ‘065 Patent—which contains very similar requirements as claim 1 of the
‘883 Patent—invalid in light of the PR News article in view of Barrett. The Applicants never
traversed or even attempted to traverse the rejection.
188.

As a result of the actions described above, all claims of the ‘883 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘883 Patent.
2.
189.

Failure to Correct False Statements Regarding Open Text Made
During Prosecution of the Ancestor ‘969 Patent

As detailed in ¶¶ 70 through 77 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding Open
Text with the intent to deceive the PTO during the prosecution of the ancestor ‘969 Patent.
190.

At no point during the prosecution of the ‘883 Patent or its ancestor patents did

the Applicants expressly advise the PTO of the existence of the false statements, stating
specifically where they reside. Nor did the Applicants advise the PTO as to the actual facts
regarding the functionality of the Open Text search engine. Nor did the Applicants take the
necessary action openly, calling the Examiner’s attention to the untrue or misleading assertions

01980.00010/5702735.1

67

sought to be overcome. The Applicants’ failure to cure the false statements made during the
‘969 Patent prosecution renders all claims of the ‘883 Patent unenforceable due to inequitable
conduct.
3.
191.

False Statements Regarding the State of the Art During Prosecution
of the ‘969 Patent

As detailed in ¶¶ 78 through 84 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding the
state of the art with the intent to deceive the PTO during the prosecution of the ancestor ‘969
Patent.
192.

At no point during the prosecution of the ‘883 Patent did the Applicants expressly

advise the PTO of the existence of the false statements, stating specifically where they reside.
Nor did the Applicants advise the PTO as to the actual facts regarding the state of the art. Nor
did the Applicants take the necessary action openly, calling the Examiner’s attention to the
untrue or misleading assertions sought to be overcome. The Applicants’ failure to cure the false
statements made during the ‘969 Patent prosecution renders all claims of the ‘883 Patent
unenforceable due to inequitable conduct.
4.
193.

Failure to Disclose Kohda Article in an Information Disclosure
Statement During Prosecution of the ‘883 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘883 Patent.
194.

In May 1996, Youji Kohda and Sesumu Endo published an article entitled

“Ubiquitous Advertising on the WWW: Merging Advertisements on the Browser” in the
Computer Networks and ISDN Systems journal. (Vol. 28, issues 7-11, pp. 1493-1499.) The same

01980.00010/5702735.1

68

article was also presented at the Fifth International World Wide Web Conference on May 9,
1996 (http://www5.wwwconference.org/fich_html/paper-sessions.html), and is available online
at http://www5.wwwconference.org/fich_html/papers/P52/Overview.html. The Kohda article
describes a system wherein “[a]dvertisements fetched from advertisers' Web servers are merged
with Web pages from ordinary Web servers by the agent, and the merged pages are displayed on
the users' Web browser.” (Kohda 2.) Since “the agent is aware of the identity of the user and
which page the user is about to read on the browser, [] the advertising agent can tailor
advertisements for individuals and their current interests.” (Kohda 4 (emphasis in original).)
195.

During the prosecution of the parent ‘065 Patent, the applicants informed the PTO

of the Kohda article in a supplement to an earlier Information Disclosure Statement. (November
12, 1998 Fax at 7.)
196.

Despite being both aware of the Kohda article and considering it sufficiently

material to submit to the Examiner during the prosecution of the ‘065 Patent, the Applicants
failed to inform the Examiner of the ‘883 Patent of the existence of the Kohda article.
197.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent to whom the Kohda article was

submitted, was not the Examiner of the ‘883 Patent.
198.

Under the broadest reasonable interpretation standard used by the PTO, the agent

system described in the Kohda article renders at least claim 1 of the ‘883 Patent invalid under 35
U.S.C. § 103. The Kohda article discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

01980.00010/5702735.1

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.

69

Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
Id. at 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
creating user profile data for the user;

Kohda 3: “Next, the advertising agent
company also negotiates with users, who
agree to see advertisements while browsing.
This is similar to subscription procedure for
technical magazines, which are full of
technical articles and advertisements which
target is the subscribers of the magazines. The
agent company is responsible for delivering
the appropriate advertisements to the users.
Thus, the contract should at least allow the
users to specify what categories of
advertisements they wish to see. For example,
a user can declare that he or she is interesting
in new books, new personal computers, and
used cars.”

storing the user profile data;

Kohda 3: “Next, the advertising agent
company also negotiates with users, who
agree to see advertisements while browsing.
This is similar to subscription procedure for
technical magazines, which are full of
technical articles and advertisements which
target is the subscribers of the magazines. The
agent company is responsible for delivering
the appropriate advertisements to the users.
Thus, the contract should at least allow the
users to specify what categories of
advertisements they wish to see. For example,
a user can declare that he or she is interesting
in new books, new personal computers, and
used cars.”

01980.00010/5702735.1

70

receiving from the data processing device via
the communications link a search request that
includes a search argument;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

searching at least one database having data
network related information using the search
argument to generate search results;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply
Brief at 7.) Since Kohda displays
advertisements “on any server around on the
Internet,” Kohda in view of the acknowledged
conventional search engines discloses this
claim limitation.

selecting at least one advertisement from an
advertisement database relating to the search
argument using the user profile data; and

01980.00010/5702735.1

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.

71

Note that the agent is aware of the identity of
the user and which page the user is about to
read on the browser, so the advertising agent
can tailor advertisements for individuals and
their current interests. Thus it prevents the
user from having to see advertisements that
are unrelated to their current interests”
transmitting the search results together with
the at least one advertisement via the
communications link to the data processing
device.

199.

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

One or more of the named inventors of the ‘883 Patent and others involved in the

prosecution of the patent were aware of the existence of the Kohda article during the prosecution
of the ‘883 Patent, and were also aware that the Kohda article was material to the patentability of
the ‘883 Patent. Named inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their
patent agent Bruce E. Garlick, and/or other persons involved in the prosecution of the ‘883
Patent were aware of the Kohda article because they had disclosed that same article to the
Examiner of the ‘065 Patent in an Information Disclosure Statement. Furthermore, named
inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E.
Garlick, and/or other persons involved in the prosecution of the ‘883 Patent were aware of the
materiality of the Kohda article because they had already determined it was material to the ‘065
Patent, with which the ‘883 Patent shares a specification.
200.

Despite its materiality to the application, the named inventors of the ‘883 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to

01980.00010/5702735.1

72

disclose the Kohda article to the PTO as prior art in an Information Disclosure Statement during
the prosecution of the ‘883 Patent.
201.

On information and belief, the failure to disclose the Kohda article during the

prosecution of the ‘883 Patent was made knowingly and with intent to deceive the PTO.
202.

The Kohda article was not independently discovered by the Examiner of the ‘883

Patent, and does not appear on the “References Cited” of the ‘883 Patent.
203.

But for the failure of the applicants to disclose the Kohda article during the

prosecution of the ‘883 Patent, at least claim 1 of the ‘883 Patent would not have issued. Related
Patent Application No. 13/031,478 is in prosecution before the PTO. The ‘478 Application
shares a specification with the ‘245 Patent, and both claim priority to the ‘065 Patent. After the
Examiner indicated that the claims had been allowed, the Applicants—who are no longer
represented by Garlick—submitted an Information Disclosure Statement on June 26, 2013 that
disclosed the Kohda article. The Examiner subsequently withdrew the Notice of Acceptance and
found the majority of the pending claims of the ‘478 Application anticipated by Kohda.
(September 6, 2013 Office Action at 2-6.) For instance, the Examiner found that portions of
Sections 2.1 and 2.2 of the Kohda article, excerpted above, disclosed claim elements similar to
those found in claim 1 of the ‘883 Patent. Had the Examiner of the ‘883 Patent been aware of
the Kohda reference, he would have similarly found at least claim 1 invalid.
204.

As a result of the actions described above, all claims of the ‘883 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘883 Patent.

01980.00010/5702735.1

73

F.

Inequitable Conduct During the Prosecution of the ‘178 Patent
1.

205.

Failure to Disclose PR News Article and Barrett Patent in an
Information Disclosure Statement During Prosecution of the ‘178
Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘178 Patent.
206.

As detailed above, the Examiner of the ’065 Patent, Dr. Paul R. Lintz, rejected

originally filed independent claims as anticipated by “Web Crawler, Lycos, or Infoseek as
disclosed by PR NEWS (‘Make Sure Search Engines Find Your Site; options include buying
words, advertising, and careful page design’- PR NEWS).” More specifically, Dr. Lintz found
that “Pr News taught the ‘Buying of words’ in a search engine in which if that word correlated to
a search query for the search engine’s web page database, the user would be presented with a
specific advertiser’s banner (line 14-37) from a second database.” (December 21, 1998 Office
Action at 2).
207.

The Examiner of the ‘065 Patent also found several originally filed dependent

claims as obvious in light of PR News in view of U.S. Patent in light of U.S. Patent No.
5,727,129 to Barrett. More specifically, the Examiner found that Barrett “[d]isclosed the use of
user profiles for use in returning relevant hits” and that “[i]t would have been obvious for one of
ordinary skill in the art of computers to have included a user profile in the search engines
disclosed by PR NEWS in order to reduce the search time to return relevant hits.” The Examiner
similarly found that Barrett disclosed “previously received search arguments,” “using the results
from previous search sessions,” “user specified preferences as reflected in the user choice,” and
that Pr News “taught banner advertisement inserts.” (December 21, 1998 Office Action at 3.)

01980.00010/5702735.1

74

208.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent who had located the PR News

article and the Barrett patent, was not the Examiner of the ‘178 Patent.
209.

Under the broadest reasonable interpretation standard used by the PTO, the search

engines described in the PR News article in view of the Barrett reference render at least claim 1
of the ‘178 Patent invalid under 35 U.S.C. § 103. The PR News article in view of Barrett
discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”
Id. at 1: “Time Warner could thus ensure that
anyone who enters the term ‘Time Warner’
will see its home page or ad at the top of the
search results.”

receiving from the data processing device via
the communications link a search request that
includes a search argument;

PR News at 1: “a Web user looking for Time
Warner Inc.'s home page by entering the
query term 'Time Warner' in a search engine
may find the right site buried beneath many
other sites”

searching at least one database using the
search argument to produce search results;

PR News at 1: “search engines like
WebCrawler and Infoseek use ‘spiders’ or
‘robots’ to index the Web. These programs
automatically search the Web by indexing one
page and then indexing all documents that are
hyperlinked to it”
Id. at 1: “Major engines—including Alta
Vista, Excite, Infoseek, Lycos, Yahoo! and
WebCrawler—use a dataset indexed by the
spider to provide a set of related sites”

selecting at least one advertisement from an
advertisement database relating to at least one
of the search argument and the search results;

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.

75

For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
transmitting the search results together with
the at least one advertisement via the
communications link to the data processing
device;

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”

76

receiving search refinement input from the
data processing device via the
communications link;

Barrett at 5:44-46: “The invention ‘learns’
from previous Web surfing activity, so that
the user can more efficiently perform
subsequent activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

producing modified search results based upon
at least the search refinement input;

Barrett at 5:44-46: “The invention ‘learns’
from previous Web surfing activity, so that
the user can more efficiently perform
subsequent activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.

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; and

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.

77

WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”
Barrett at 5:33-34: “means for actively
facilitating user activities based on the
developed profile”
Id. at 5:44-46: “The invention ‘learns’ from
previous Web surfing activity, so that the user
can more efficiently perform subsequent
activities.”
It would have been obvious for one of
ordinary skill in the art of computers to have
included a user profile (as disclosed in
Barrett) in the search engines disclosed by PR
NEWS in order to reduce the search time to
return relevant hits.
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.

01980.00010/5702735.1

PR News at 1: “The general solution to avoid
getting buried by others' words is to buy a
‘search word,’ an option introduced last year
by several search engines.
For example, it is possible for a company to
buy its own name or an ad to ensure it is
listed at the top of the search results.
Time Warner could thus ensure that anyone
who enters the term ‘Time Warner’ will see
its home page or ad at the top of the search
results.
Charges for banner ads in search engines
vary, but tend to be expensive, according to
Beth Lanahan, spokesperson for one of the
Web's more popular search engines, InfoSeek.
Depending on Impression and specific topic,
advertisements that rotate through directories
range from $7,500 to $73,000 for a four-week
period. Advertisements that appear only with
the results of a specific key word search are a
minimum of $1,000 for a four-week period.
WebCrawler, Lycos and Infoseek offer
advertisement banner links, however Alta
Vista's product is still in beta-test.”

78

Further, the ‘065 Examiner explicitly noted—and as the applicants never disputed—that “[i]t
would have been obvious for one of ordinary skill in the art of computers to have included a user
profile in the search engines disclosed by PR NEWS in order to reduce the search time to return
relevant hits.” (December 21, 1998 Office Action at 3.)
210.

One or more of the named inventors of the ‘178 Patent and others involved in the

prosecution of the patent were aware of the existence of the PR News article and the Barrett
patent during the prosecution of the ‘178 Patent; and were also aware that this article and patent
were material to the patentability of the ‘178 Patent. Named inventors Richard Prescott Skillen,
Frederick Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons
involved in the prosecution of the ‘178 Patent were aware of the PR News article and the Barrett
patent because they had been cited by the Examiner as rendering claims of the predecessor ‘065
Patent anticipated or obvious. Furthermore, named inventors Richard Prescott Skillen, Frederick
Caldwell Livermore, their patent agent Bruce E. Garlick, and/or other persons involved in the
prosecution of the ‘178 Patent were aware of the materiality of the PR News article and the
Barrett patent because they had been cited by the Examiner as rendering claims of the
predecessor ‘065 Patent anticipated or obvious, and because the prosecutions of the prior patents
in that patent family had never traversed those rejections.
211.

Despite its materiality to the application, the named inventors of the ‘178 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the PR News article and the Barrett patent to the PTO as prior art in an Information
Disclosure Statement during the prosecution of the ‘178 Patent.

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79

212.

On information and belief, the failure to disclose the PR News article and the

Barrett patent during the prosecution of the ‘178 Patent was made knowingly and with intent to
deceive the PTO.
213.

Neither the PR News article nor the Barrett patent were independently discovered

by the Examiner of the ‘178 Patent, and neither appear on the “References Cited” of the ‘178
Patent.
214.

But for the failure of the applicants to disclose the PR News article and the Barrett

Patent during the prosecution of the ‘178 Patent, at least claim 1 of the ‘178 Patent would not
have issued. As detailed above, the Examiner of the ‘065 Patent found claim 3 of the application
that would become the ‘065 Patent—which contains very similar requirements as claim 1 of the
‘178 Patent—invalid in light of the PR News article in view of Barrett. The Applicants never
traversed or even attempted to traverse the rejection.
215.

As a result of the actions described above, all claims of the ‘178 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘178 Patent.
2.
216.

Failure to Correct False Statements Regarding Open Text Made
During Prosecution of the Ancestor ‘969 Patent

As detailed in ¶¶ 70 through 77 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding Open
Text with the intent to deceive the PTO during the prosecution of the ancestor ‘969 Patent.
217.

At no point during the prosecution of the ‘178 Patent or its ancestor patents did

the Applicants expressly advise the PTO of the existence of the false statements, stating
specifically where they reside. Nor did the Applicants advise the PTO as to the actual facts
regarding the functionality of the Open Text search engine. Nor did the Applicants take the
necessary action openly, calling the Examiner’s attention to the untrue or misleading assertions

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80

sought to be overcome. The Applicants’ failure to cure the false statements made during the
‘969 Patent prosecution renders all claims of the ‘178 Patent unenforceable due to inequitable
conduct.
3.
218.

False Statements Regarding the State of the Art During Prosecution
of the ‘969 Patent

As detailed in ¶¶ 78 through 84 above, the named inventor(s), the prosecuting

attorney(s), and/or other persons owing a duty of candor made false statements regarding the
state of the art with the intent to deceive the PTO during the prosecution of the ancestor ‘969
Patent.
219.

At no point during the prosecution of the ‘178 Patent did the Applicants expressly

advise the PTO of the existence of the false statements, stating specifically where they reside.
Nor did the Applicants advise the PTO as to the actual facts regarding the state of the art. Nor
did the Applicants take the necessary action openly, calling the Examiner’s attention to the
untrue or misleading assertions sought to be overcome. The Applicants’ failure to cure the false
statements made during the ‘969 Patent prosecution renders all claims of the ‘178 Patent
unenforceable due to inequitable conduct.
4.
220.

Failure to Disclose Kohda Article in an Information Disclosure
Statement During Prosecution of the ‘178 Patent

The named inventor(s), the prosecuting attorney(s), and/or other persons owing a

duty of candor failed to disclose in an Information Disclosure Statement with the intent to
deceive to the PTO material prior art in their possession, which they knew or should have known
the PTO would consider material to the PTO’s decision to grant the ‘178 Patent.
221.

In May 1996, Youji Kohda and Sesumu Endo published an article entitled

“Ubiquitous Advertising on the WWW: Merging Advertisements on the Browser” in the
Computer Networks and ISDN Systems journal. (Vol. 28, issues 7-11, pp. 1493-1499.) The same

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81

article was also presented at the Fifth International World Wide Web Conference on May 9,
1996 (http://www5.wwwconference.org/fich_html/paper-sessions.html), and is available online
at http://www5.wwwconference.org/fich_html/papers/P52/Overview.html. The Kohda article
describes a system wherein “[a]dvertisements fetched from advertisers' Web servers are merged
with Web pages from ordinary Web servers by the agent, and the merged pages are displayed on
the users' Web browser.” (Kohda 2.) Since “the agent is aware of the identity of the user and
which page the user is about to read on the browser, [] the advertising agent can tailor
advertisements for individuals and their current interests.” (Kohda 4 (emphasis in original).)
222.

During the prosecution of the parent ‘065 Patent, the applicants informed the PTO

of the Kohda article in a supplement to an earlier Information Disclosure Statement. (November
12, 1998 Fax at 7.)
223.

Despite being both aware of the Kohda article and considering it sufficiently

material to submit to the Examiner during the prosecution of the ‘065 Patent, the Applicants
failed to inform the Examiner of the ‘178 Patent of the existence of the Kohda article.
224.

Dr. Paul R. Lintz, the Examiner of the ‘065 Patent to whom the Kohda article was

submitted, was not the Examiner of the ‘178 Patent.
225.

Under the broadest reasonable interpretation standard used by the PTO, the agent

system described in the Kohda article renders at least claim 1 of the ‘178 Patent invalid under 35
U.S.C. § 103. The Kohda article discloses all elements of claim 1:
1. A method for operating an advertising
machine implemented on at least one
computer to provide advertisements via a
communications link to a data processing
device of a user, the method comprising:

01980.00010/5702735.1

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.

82

Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
Id. at 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”
receiving from the data processing device via
the communications link a search request that
includes a search argument;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

searching at least one database using the
search argument to produce search results;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver
appropriate advertisements which suit each
user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply
Brief at 7.) Since Kohda displays
advertisements “on any server around on the

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83

Internet,” Kohda in view of the acknowledged
conventional search engines discloses this
claim limitation.
selecting at least one advertisement from an
advertisement database relating to at least one
of the search argument and the search results;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

transmitting the search results together with
the at least one advertisement via the
communications link to the data processing
device;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

receiving search refinement input from the
data processing device via the
communications link;

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

producing modified search results based upon
at least the search refinement input;

Kohda 2: “An advertising agent is placed
between the advertisers and the users.
Advertisements fetched from advertisers' Web
servers are merged with Web pages from
ordinary Web servers by the agent, and the
merged pages are displayed on the users' Web
browser. Thus, the users see advertisements
on any server around on the Internet.
Moreover the agent has chances to deliver

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84

appropriate advertisements which suit each
user's taste.”
As the applicants conceded in the ‘969 Patent
examination, “[s]earching, based upon the
search argument, a database that identified a
plurality of web pages” is a “conventional
search engine operation[] in which search
results are produced in response to a search
argument.” (June 6, 2005 Correct Reply
Brief at 7.) Since Kohda displays
advertisements “on any server around on the
Internet,” Kohda in view of the acknowledged
conventional search engines discloses this
claim limitation.
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; and

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

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.

Kohda 4: “When a user clicks an anchor on a
page displayed on the browser, the browser
contacts the Web server and returns a Web
page designated by the anchor.
Simultaneously, the browser contacts the
advertising agent's Web server. The agent's
Web server returns a Web page of one of its
advertisements. Then the browser merges
those returned Web pages, and displays a
composite page on the screen.”

226.

One or more of the named inventors of the ‘178 Patent and others involved in the

prosecution of the patent were aware of the existence of the Kohda article during the prosecution
of the ‘178 Patent, and were also aware that the Kohda article was material to the patentability of
the ‘178 Patent. Named inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their

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85

patent agent Bruce E. Garlick, and/or other persons involved in the prosecution of the ‘178
Patent were aware of the Kohda article because they had disclosed that same article to the
Examiner of the ‘065 Patent in an Information Disclosure Statement. Furthermore, named
inventors Richard Prescott Skillen, Frederick Caldwell Livermore, their patent agent Bruce E.
Garlick, and/or other persons involved in the prosecution of the ‘178 Patent were aware of the
materiality of the Kohda article because they had already determined it was material to the ‘065
Patent, with which the ‘178 Patent shares a specification.
227.

Despite its materiality to the application, the named inventors of the ‘178 Patent,

the prosecuting attorney(s), and/or other persons having a duty of candor to the PTO failed to
disclose the Kohda article to the PTO as prior art in an Information Disclosure Statement during
the prosecution of the ‘178 Patent.
228.

On information and belief, the failure to disclose the Kohda article during the

prosecution of the ‘178 Patent was made knowingly and with intent to deceive the PTO.
229.

The Kohda article was not independently discovered by the Examiner of the ‘178

Patent, and does not appear on the “References Cited” of the ‘178 Patent.
230.

But for the failure of the applicants to disclose the Kohda article during the

prosecution of the ‘178 Patent, at least claim 1 of the ‘178 Patent would not have issued. Related
Patent Application No. 13/031,478 is in prosecution before the PTO. The ‘478 Application
shares a specification with the ‘245 Patent, and both claim priority to the ‘065 Patent. After the
Examiner indicated that the claims had been allowed, the Applicants—who are no longer
represented by Garlick—submitted an Information Disclosure Statement on June 26, 2013 that
disclosed the Kohda article. The Examiner subsequently withdrew the Notice of Acceptance and
found the majority of the pending claims of the ‘478 Application anticipated by Kohda.

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(September 6, 2013 Office Action at 2-6.) For instance, the Examiner found that portions of
Section 2.2 of the Kohda article, excerpted above, disclosed claim elements similar to those
found in claim 1 of the ‘178 Patent. Had the Examiner of the ‘178 Patent been aware of the
Kohda reference, he would have similarly found at least claim 1 invalid.
231.

As a result of the actions described above, all claims of the ‘178 Patent are

unenforceable due to inequitable conduct committed during the prosecution of the ‘178 Patent.
SEVENTH DEFENSE – PATENT UNENFORCEABILITY (UNCLEAN HANDS)
232.

Plaintiffs’ claims against Google are barred under the doctrine of unclean hands.
REQUEST FOR RELIEF

WHEREFORE, Google respectfully requests that the Court enter judgment in its favor
and against Plaintiffs as follows:
1)

Dismissing, with prejudice, Plaintiffs’ claims against Google;

2)

Denying all relief that Plaintiffs seeks in its Complaint;

3)

Finding this case to be exceptional under 35 U.S.C. § 285 and awarding Google

its costs and attorneys’ fees; and
4)

Awarding any other relief the Court deems just and equitable.

Dated: January 10, 2014

Respectfully submitted,
MANN | TINDEL | THOMPSON
300 West Main Street
Henderson, Texas 75652
[phone]
[phone] (fax)
By:

/s/ J. Mark Mann
J. Mark Mann
State Bar No. 12926150
G. Blake Thompson
State Bar No. 24042033
ATTORNEYS FOR GOOGLE INC.

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CERTIFICATE OF SERVICE
A true and correct copy of the foregoing instrument was served or delivered electronically
via U.S. District Court [LIVE]- Document Filing System, to all counsel of record, on this 10th day
of January, 2014.

/s/ J. Mark Mann
J. Mark Mann

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