I/P Engine, Inc. v. AOL, Inc. et al

Filing 111

Declaration re 109 Memorandum in Opposition, by Joshua Sohn by Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15)(Noona, Stephen)

EXHIBIT 5

Jen Ghaussy
From:
Sent:
To:
Cc:
Subject:

Joshua Sohn
Tuesday, March 27, 2012 11:03 AM
Monterio, Charles; QE-IP Engine; Alexander, Cortney; 'Burns, Robert'
zz-IPEngine; 'W. Ryan Snow'; Donald C. Schultz
RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for
Construction

Charles,
We believe our grouping is appropriate for reasons we have already stated and consistent with what parties
commonly do in cases where a court has imposed limits on construction. There is no intent to avoid the
scheduling order as you say, but to get issues involved in an orderly fashion. Plaintiff’s refusal to engage
meaningfully as to most of these terms appears to suggest Plaintiff’s desire to avoid resolution of issues for
strategic reasons, and we continue to reserve our rights where Plaintiff has refused to provide a construction.
In any event, while we wait for your further investigation you refer to as to some terms, below we seek to
address some of the issues for which we continue to believe there is hope we can reach agreement.
As we indicated, our construction of “collaborative feedback data” is similar to Plaintiff’s. Is there a way we
can alter our construction to address your concerns regarding the way we have phrased it? Your email is silent
on this point so we are unclear as to what the issue is.
With respect to Defendants’ proposed construction of the term “informon,” the qualifier “particular” comes
from the specification and properly so as the information is tied to a particular user, not just a user. On a related
note, Plaintiff has proposed construing “informon” as “information entities . . .” Please explain why Plaintiff
beliefs that a plural construction is appropriate for this singular term.
With respect to the term “user,” the definite article in Defendants’ construction (“an individual in
communication with the network”) also comes from the specification, and furthermore is compelled by the
structure of the claims. For instance, all the asserted ‘420 claims recite “scanning a network to make a demand
search for informons relevant to a query from an individual user”. The claimed “user” must be in
communication with “the” network – the network recited earlier in the claims – so that this network can receive
the query from the user.  

Joshua Sohn
Associate,

Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6415 Direct
415.875.6600 Main Office Number
415.875.6700 FAX
[e-mail]
www.quinnemanuel.com
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From: Monterio, Charles [mailto:[e-mail]]
Sent: Friday, March 23, 2012 2:35 PM
1

To: QE-IP Engine; Alexander, Cortney; 'Burns, Robert'
Cc: zz-IPEngine; 'W. Ryan Snow'; Donald C. Schultz
Subject: FW: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction

David,
I write to respond to your March 22 email regarding the parties’ proposed claim constructions. As mentioned in
my March 22 email, I/P Engine’s comments are subject to I/P Engine’s receipt of Defendants’ detailed noninfringement contentions.
Defendants have asserted that six limitations (three in Defendants’ Group 2, and three in Defendants’ Group 6)
are indefinite. I/P Engine does not agree that any of those limitations are indefinite. Defendants have provided
no further explanation for their positions, even though many of those limitations contain specific terms for
which Defendants have proposed constructions. In view of Defendants’ assertions and absence of any further
explanation, whether each of those limitations are indefinite are separate issues.
Defendants have combined multiple terms from four different limitations as part of what you call Group 3. I/P
Engine does not agree that Defendants can evade the Court’s Scheduling Order by classifying this as a single
issue. I/P Engine is not prepared to accept Defendants’ proposed constructions regarding the “feedback
system,” “collaborative feedback data,” and “receiving information” terms.
The parties disagree on whether the claimed systems must be different systems, or whether they can be part of
the same system. Defendants have referenced two possible different system combinations. This is two separate
issues.
The parties disagree on whether the order of steps for claim 25 of the ‘420 patent, and for claim 26 of the ‘664
patent, must be performed in the recited order. This is two separate issues.
With respect to the term “query,” I/P Engine acknowledges Defendants’ agreement that the term be construed
as “request for search results.” We are continuing to evaluate Defendants’ proposals regarding “relevant” and
“relevance,” but are awaiting receipt of Defendants’ detailed non-infringement contentions before we will be
prepared to make a final decision.
Regarding the term “user,” I/P Engine does not agree to Defendants’ currently proposed definition. I/P Engine
believes that the indefinite article “a” is more appropriate for the construction of this term than Defendants’
proposed use of the article “the.” Defendants’ definition would establish an unintended antecedent basis though
use of the article “the” in the ‘420 patent. There is no apparent reason to limit the definition of user to tie it to
any “network” referenced elsewhere in the claims. In regards to the ‘664 patent, there is no network recited in
the asserted claims, and therefore “the network” should clearly be “a network.” Moreover, there is no evidence
of an intent to tie the term “user” to the term “network” based on the claim language or the cited sentence from
the specification.
With respect to Defendants’ proposed construction of the term “informon,” I/P Engine believes the qualifier
“particular” in the phrase “particular user” does not add any clarity or meaning to the claim, and merely adds
confusion in view of the fact that the word “user” already appears in claims 10 and 25 of the ‘420 patent in the
phrase “individual user.” Specifically, we think it is confusing to use both “particular” and “individual” to
modify “user” within the same claim. Accordingly, we propose the definition “information entities of potential
or actual interest to a user” is both consistent with the specification and clear in its meaning. Otherwise, we
would request to know what additional meaning Google thinks the word “particular” imparts on the phrase.
With respect to the term “demand search,” I/P Engine believes its proposed construction of “a one-time search
performed upon a user request” is simple, unambiguous, understandable, and consistent with the intrinsic
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evidence. Defendants’ proposed phrase “search engine query” is ambiguous, and is not acceptable to I/P
Engine.
Defendants request that I/P Engine indicate whether antecedent law applies to seven specific terms
(informons/the informons, users/such users, a query/the query, a feedback system/the feedback system, a
scanning system/the scanning system, a first user/the first user, a content-based filter system/the content-based
filter system). I/P Engine is reviewing the claims to verify whether antecedent basis applies to each instance
throughout all of the asserted claims, and will advise you next week whether the parties can reach agreement on
any of these issues.
Regarding the remaining terms, I/P Engine will respond at a later date.
I/P Engine will consider withdrawing its motion once its concerns expressed in the motion have been addressed,
which may come to pass if the parties are able to reach agreement on terms and as a result defendants’ proposed
list of constructions is narrowed.
Charles J. Monterio, Jr.
Associate
Dickstein Shapiro LLP
1825 Eye Street NW | Washington, DC 20006
Tel [phone]| Fax [phone]
[e-mail]

From: David Perlson [mailto:[e-mail]]
Sent: Thursday, March 22, 2012 4:10 PM
To: Brothers, Kenneth; 'Noona, Stephen E.'
Cc: zz-IPEngine; [e-mail]; W. Ryan Snow; QE-IP Engine; [e-mail];
[e-mail]
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction

Ken, Plaintiff’s Preliminary Proposed Claim Terms and Proposed Constructions reflects several areas of
apparent agreement (or near-agreement) between Plaintiff and Defendants, raising the possibility that the parties
could significantly narrow their list of claim terms in dispute. However, Plaintiff’s list also raises certain
questions for which we would like clarification.
“relevance” terms
Plaintiff’s construction of “relevance” as “how well an informon satisfies the user’s information need” and
“query” as a “request for search results” seem to track closely our proposed constructions for the relevance
terms. Also, we agree to Plaintiff's construction of query as “request for search results.” Thus, please let us
know whether Plaintiff will agree to the proposed constructions in Defendants’ Term Group #1.
“informon”
Plaintiff has construed “informon” as “information entities of potential or actual interest to a user.” This is very
close to Defendants’ construction of “informon” as “information entity of potential or actual interest to a
particular user.” Thus, this term appears to be one for which the parties could reach agreement. Please let us
know if you agree with this assessment.
However, we note that both Plaintiff and Defendants cited the same portion of the specification to support their
constructions, and this specification language tracks Defendants’ proposed construction verbatim. See ‘420
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Patent 3:31-33 (“As used herein, the term ‘informon’ comprehends an information entity of potential or actual
interest to a particular user.”) Thus, we request that Plaintiff make small adjustments to its proposed
construction of “informon” to bring this construction into harmony with Defendants’ construction and the
specification language.
“collaborative feedback data” and associated terms
Plaintiff has construed “collaborative feedback data” as “information concerning what informons other users
with similar interests or needs found to be relevant.” Again, this is quite similar to Defendants’ proposed
construction of “collaborative feedback data” as “data from users with similar interests or needs regarding what
informons such users found to be relevant.” Thus, this term appears to be one for which the parties could reach
agreement. Please let us know if you agree with this assessment. Likewise, please let us know if you will agree
to Defendants’ proposed constructions for the other associated terms in Defendants’ Term Group #3, all of
which relate to collaborative feedback data.
“user”
Plaintiff has construed “user” as “an individual in communication with a network.” This is virtually identical to
Defendants’ proposed construction of “user” as “an individual in communication with the network.” Thus, this
term appears to be one for which the parties could reach agreement. Please let us know if you agree with this
assessment.
Additionally, we note that both Plaintiff and Defendants cited the same portion of the specification to support
their constructions, and this specification language uses the definite article found in Defendants’ construction (“
. . . in communication with the network”) rather than the indefinite article found in Plaintiff’s construction (“ . .
. in communication with a network.”) Thus, we request that Plaintiff replace the indefinite article with the
definite article to bring its construction into harmony with Defendants’ construction and the specification
language, or else explain why Plaintiff believes that the indefinite article is more appropriate for the
construction of this term.
“demand search”
Plaintiff has construed “demand search” as “a one-time search performed upon a user request.” Defendants
construed this term as “search engine query.” In the spirit of compromise, Defendants agree to modify their
proposed construction to “a one-time search engine query” in order to bring their construction more in harmony
with Plaintiff’s construction. Please let us know whether you agree with this compromise construction.
Order of Steps
On the order of steps issue, Plaintiff stated that “[n]o ‘construction’ is necessary; the order is dictated by the
claim language or no order is required.” (emphasis added). This equivocal statement does not apprise us of
Plaintiff’s position. Namely, it does not show whether Plaintiff believes that the independent method claims
dictate a particular order of steps or whether no particular order is required. Thus, we request that Plaintiff
revise its position to indicate whether or not it believes that the method claims dictate a particular order of steps
– and, if so, what the required order is. Hopefully, we can reach agreement.
Antecedent Basis
On the antecedent basis issue, Plaintiff stated that “[w]here it is required under the law to apply the same claim
meaning to a claim term based on antecedent basis, I/P Engine agrees that the law requires the parties to do so.”
But this statement does not indicate which terms Plaintiff believe are governed by antecedent basis law.
Defendants listed 7 term dyads and stated their position that antecedent basis law applies to each dyad, meaning
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that the second term in each dyad has the same meaning as the first. Plaintiff’s statement does not indicate
whether it agrees with Defendants’ position on these 7 term dyads. Please advise. Here too, we think we
should be able to reach agreement.
* * *
As noted above, Plaintiff’s list of proposed constructions reflects several areas of apparent
agreement (or near-agreement) between Plaintiff and Defendants, raising the possibility that the
parties could significantly narrow their list of claim terms in dispute. We look forward to
Plaintiff’s response to the questions in this letter.
In the meantime, we believe that Plaintiff’s recently-filed Motion to Compel (Dkt. 99) is
premature at best. Plaintiff’s Motion complains that the number of terms that Defendants
proposed for construction far exceeds the 10 issues that the Court will ultimately construe. While
this and many other statements in your Motion are false, it appears that the parties may be able to
reach agremeent on several constructions. Accordingly, we request that Plaintiff withdraw its
Motion pending the parties’ negotiations over a final list of disputed constructions.
David

From: Brothers, Kenneth [mailto:[e-mail]]
Sent: Tuesday, March 20, 2012 2:55 PM
To: David Perlson; 'Noona, Stephen E.'
Cc: zz-IPEngine; [e-mail]; W. Ryan Snow; QE-IP Engine; [e-mail];
[e-mail]
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction
David:
You write that defendants "remain committed to working with Plaintiff to reduce the issues on claim 
construction." You have acknowledged in your letter of Friday and during our meet and confer yesterday that the Court
will construe only 10 claim terms. During our meet and confer yesterday, we were able to identify only a single term
(informon) on which the parties likely would agree on a construction, leaving us with the challenge of identifying 11 terms - one on which there may be agreement, and the 10 disputed terms. Defendants, however, have refused to advise
plaintiff of their top 10 or any other subset of claim terms that are of greatest concern or interest to defendants, even
though you know that the court never will construe even half and probably less than a quarter of defendants' latest list of
proposed terms. If defendants remain committed to working with Plaintiff to reduce the issues on claim 
construction, then why are defendants refusing to identify their top 10 claim terms?
As to your other assertions regarding the schedule, recall that I proposed an earlier exchange if defendants did not
expand their identification of prior art. You refused, even though defendants not only did not expand their list of prior art,
but wholly failed to supplement their invalidity contentions as they had promised. And in any event, we are discussing the
Court's Scheduling Order that requires collective agreement by the parties on the identification of the claim terms. In
plaintiff's view, defendants have failed to comply with both the letter and spirit of the Scheduling Order.
While I remain willing to engage in further negotiations, I interpret your email as a refusal to further engage, leaving the
parties at an impasse. If this is not correct, please provide a substantive proposal that meaningfully reduces the issues on
claim construction.
Regards, Ken
From: David Perlson [mailto:[e-mail]]
Sent: Tuesday, March 20, 2012 5:01 PM
5

To: Brothers, Kenneth; 'Noona, Stephen E.'
Cc: zz-IPEngine; [e-mail]; W. Ryan Snow; QE-IP Engine; [e-mail];
[e-mail]
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction

Ken,
 Your argument that Defendants’ list of terms is “unworkable” under the agreed Scheduling Order fails to consider 
several important facts.  First, you will recall that Defendants had previously proposed an earlier exchange of terms for 
construction, which would have given Plaintiff more time to craft its proposed constructions and marshal its supporting 
evidence.  It was Plaintiff’s decision to delay the term exchange, due to Plaintiff’s belief that it needed to digest invalidity 
contentions.  Thus, the compressed nature of the Markman schedule – which you now claim renders Defendants’ list of 
terms “unworkable” (as to which contrary to your email we never agreed) – is a result of Plaintiff’s own doing.  
 Moreover, to the extent Plaintiff still has concerns about the schedule, we recently proposed that the parties delay their 
exchange of proposed constructions until this Friday and delay their exchange of supporting evidence until next 
Wednesday.  You rejected this proposal.  And in my email last night I withdrew 8 terms from Defendants’ list.  Of course, 
eliminating asserted claims would be another way to reduce terms if Plaintiff is so concerned about it.
 Further, the 9 terms that you listed in your email do not “fairly capture defendants’ concerns” as you state.  These 
terms are mostly isolated words taken from longer terms or phrases that Defendants have proposed for construction.  
For instance, Defendants have proposed the terms  “combining the information from the feedback system with 

the information from the scanning system”  and  “combining the information found to be relevant to the query 
by other users with the searched information” for construction.  You appear to have distilled these phrases down to 
the term “combining” and listed “combining” as one of your 9 terms.  But merely offering constructions for the isolated 
word “combining” does not resolve the question of what these longer phrases mean, to the extent they even have 
meaning at all, in the context of the patents.  Defendants selected their list of terms and phrases for a reason, and 
Plaintiff cannot simply pluck a single word from these terms or phrases and argue that construing this single word is 
tantamount to construing the broader term or phrase.  
 In sum, we have made reasonable and good‐faith efforts to address your concerns and create a “workable” scenario for 
the exchange of proposed constructions and supporting evidence, and remain committed to working with Plaintiff to 
reduce the issues on claim construction.  However, at this time, we plan to proceed with our submission of constructions 
and supporting evidence tomorrow.  Should Plaintiff choose not to offer constructions for some or all of the terms on 
Defendants’ list, Plaintiff does so at its own peril and we reserve the right to seek Court intervention ourselves. 
David

From: Brothers, Kenneth [mailto:[e-mail]]
Sent: Tuesday, March 20, 2012 12:30 PM
To: 'Noona, Stephen E.'; David Perlson
Cc: zz-IPEngine; [e-mail]; W. Ryan Snow; QE-IP Engine; [e-mail];
[e-mail]
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction
Thanks, Steve, I did not intend to imply otherwise. My efforts likewise continue to be focused on reaching a good faith
compromise. I called you this morning because it was before work hours in California, and I wanted to keep the ball
rolling. I appreciate the parties' ongoing willingness to continue their dialog, and look forward to a substantive response.
Ken

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From: Noona, Stephen E. [mailto:[e-mail]]
Sent: Tuesday, March 20, 2012 3:17 PM
To: Brothers, Kenneth; 'David Perlson'
Cc: zz-IPEngine; [e-mail]; W. Ryan Snow; QE-IP Engine; [e-mail];
[e-mail]
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction

Ken: To be clear, you called and proposed limited alternatives to proceeding on the claim construction
exchange because you claimed that plaintiff could not gather the necessary material within the time allotted
under the pretrial schedule. I did not agree or disagree but rather sought to find an alternative that would help
move the parties avoid motion practice by allowing you to provide claim constructions this week and the
backup material next week after the parties had a chance to review the constructions. This was in response to
your claim that you could not provide the backup material in a timely fashion. You indicated that you had not
worked through many of the terms and their constructions and therefore were not prepared to provide the
constructions as I proposed. Your new proposal will be reviewed but I am not sure that it accomplishes what
needs to be done.
Again, as discussed, you called me as an intermediary and my efforts were to reach a good faith
compromise. Thanks,…SEN.
Stephen E. Noona
Kaufman & Canoles, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510-1665
T [phone]
F [phone]
[e-mail]
www.kaufCAN.com

From: Brothers, Kenneth [mailto:[e-mail]]
Sent: Tuesday, March 20, 2012 3:06 PM
To: 'David Perlson'; Noona, Stephen E.
Cc: zz-IPEngine; [e-mail]; W. Ryan Snow; QE-IP Engine; [e-mail];
[e-mail]
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction
David and Steve:
Following up on my two telephone conversations with Steve this morning, I believe that we are making progress in
focusing the parties' efforts to get to the 10 claim terms in dispute. I am hopeful that my proposal below will help advance
the process.
David's list of last night still contains more than 40 distinct claim terms. Plaintiff continues to believe that such a large
number of claim terms is inconsistent with the Court's scheduling order, which requires collective agreement on the claim
terms to be construed tomorrow, and limits the total number of construed terms to no more than 10. I understood from my
second conversation with Steve that Defendants acknowledge that the process of collecting and preparing all of the
information required by paragraph 13(c) of the scheduling order for those 40-plus claim terms by tomorrow is unworkable.
Plaintiff is not prepared to accept Steve's proposal that the parties exchange claim constructions for all 40-plus claim
terms, because to do so without carefully examine all of the intrinsic and evidence evidence is not appropriate.
To focus the parties on what are really the key terms that will be in dispute, I proposed to Steve that Defendants identify
the 10 claim terms that they believe to be most important to them, plus plaintiff's 4 terms, and the parties focus their initial
construction on those, while reserving rights to all others. At Steve's request, I am putting in an email to all the proposal
that Defendants identify their top 10 claim terms for construction by COB today.
7

To assist in the process, we have reviewed David's list from last night, and we believe that the following claim
terms/concepts fairly capture defendants' concerns:
1.
2.
3.
4.
5.
6.
7.
8.
9.

informon
relevance
query
scanning
network
demand search
user
collaborative feedback data
combining

In addition, defendants have raised three other issues that, strictly speaking are not construction of terms:
10. order of steps
11. antecedent basis
12. different systems
Please confirm that Defendants agree that tomorrow's construction focuses on these limitations, with all parties reserving
rights to later assert other claims for construction as they may be identified during the meet and confer. To be clear,
plaintiff does not agree to exchange claim constructions on all 40-plus of defendants' limitations tomorrow, and if we are
unable to reach agreement, we will proceed with the forgoing list, while seeking judicial intervention. I would hope that
such steps will not be necessary as we focus on identifying the 10 disputed claim terms.
Please provide a response as soon as possible, and by no later than 6 pm EDT today.
Regards, Ken

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From: David Perlson [mailto:[e-mail]]
Sent: Monday, March 19, 2012 9:04 PM
To: Chagnon, Armands; QE-IP Engine; '[e-mail]'; '[e-mail]';
8

'[e-mail]'
Cc: zz-IPEngine
Subject: RE: I/P Engine v. AOL et. al. Plaintiff I/P Engine, Inc.'s Proposed Claim Terms for Construction

Following the parties’ call this afternoon regarding the list of claim terms for construction, we write to explain
our position on which terms the parties should offer constructions for on Wednesday and which terms may be
omitted from Wednesday’s exchange.

1) “informons relevant to a query” / “information relevant to a query” / “relevance to a query”/
“relevance to at least one of the query and the first user”
Defendants believe that the parties should propose constructions for these four terms on Wednesday. However,
given the common theme for these terms, Defendants believe that these terms can be grouped together for claim
construction.
2) “scanning a network to make a demand search for informons relevant to a query from an individual
user” / “a scanning system for searching for information relevant to a query associated with a first user
in a plurality of users” / “wherein the searching step comprises scanning a network in response to a
demand search for the information relevant to the query associated with the first user”
These three terms relate to the question of what the various “scanning” elements mean under the Asserted
Patents. Defendants believe that the parties should offer proposed constructions for these three terms on
Wednesday. However, given the common theme for these three terms, Defendants believe that these terms can
be grouped together for purposes of claim construction.
3) “user”
Defendants believe that the parties should offer proposed constructions for this term.
4) “individual user” / “first user”
Defendants believe that these terms can be grouped together for claim construction.
5) “a feedback system for receiving collaborative feedback data from system users relative to informons
considered by such users” / “feedback system for receiving information found to be relevant to the query
by other users” / “receiving information found to be relevant to the query by other users” / “collaborative
feedback data”
Defendants believe that the parties should offer proposed constructions for these terms on Wednesday.
However, given the common theme for these terms, Defendants believe that they can be dealt with together for
claim construction.
Please note that as we were looking at our list of terms based on our call we realized that our list inadvertently
did not include “receiving information found to be relevant to the query by other users” (as used in ‘664 Claim
26) along with the longer phrase “a feedback system for receiving information found to be relevant to the query
by other users” (as used in ‘664 Claim 1).
6) “combining the information from the feedback system with the information from the scanning system” /
“combining the information found to be relevant to the query by other users with the searched
9

information” / “filtering the combined information for relevance to at least one of the query and the first
user”
These three terms relate to the meaning of the “combining” limitations from the Asserted Patents. Defendants
believe that the parties should offer proposed constructions for these terms on Wednesday. However, given the
common theme for these terms, Defendants believe that these terms can be grouped together for purposes of
claim construction. We indicated we had no objection to Plaintiff providing a construction for its proposed term
“combining” as to these three terms on Wednesday and that we can discuss how to address any issues raised by
the term phrasing after that.
7) The system for scanning, content-based filter system, and feedback system must all be different
systems / The scanning system, feedback system, and content-based filter system must all be different
systems
The issue of whether the claimed systems in the Asserted Patents must be different systems is an appropriate
issue for claim construction. See, e.g., Bristol Co. Ltd. P’ship v. Bosch Rexroth Inc., 684 F.Supp. 2d 1245, 1294
(D. Colo. 2010) (deciding at claim construction that the two claimed “signals” must be separate from each
other). Therefore, Defendants believe that Wednesday’s exchange should include the parties’ contentions on
whether ‘420 Claim 10 requires the claimed system for scanning, content-based filter system, and feedback
system to be different systems. Similarly, Wednesday’s exchange should include the parties’ contentions on
whether ‘664 Claim 1 requires the claimed scanning system, feedback system, and content-based filter system
to be different systems.
8) Order of Steps for ‘420 Claim 25 and ‘664 Claim 26
Likewise, the issue of whether ‘420 Claim 25 and ‘664 Claim 26 require a specific order of steps is an
appropriate issue to resolve at claim construction. See Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313,
1322 (Fed. Cir. 1999) (“Although not every process claim is limited to the performance of its steps in the order
written, the language of the claim, the specification and the prosecution history support a limiting construction
in this case. Accordingly the claim was properly construed as only covering a fabrication process where
insulation is formed prior to ion implantation.”) (emphasis added). Therefore, Defendants believe that
Wednesday’s exchange should include the parties’ positions on whether ‘420 Claim 25 and ‘664 Claim 26
recite a order of steps – and, if so, what the required order is.
9 ) “informons” “the informons” / “users” “such users / “a query” “the query” / “a feedback system”
“the feedback system” / “a scanning system” “the scanning system” / “a first user” “the first user” / “a
content-based filter system” “the content-based filter system”
These terms all relate to the antecedent basis question: namely, the question of whether the second term in each
must refer back to the first and that this is appropriate for claim construction. Given the common theme for
these terms, Defendants believe that these terms can be grouped together for claim construction.
In addition to the various term groupings discussed above, Defendants believe that Wednesday’s exchange
should contain proposed constructions for the terms 10) “demand search, and 11) “searching [for information
relevant to a query associated with the first user].
We feel this a very reasonable list.
Given the Court’s directive regarding the breadth of claim construction at the hearing, Defendants believe that
the following 14 terms may be omitted from Wednesday’s exchange. We understand based on our call that this
is without prejudice to raising these terms at some later time—please confirm:
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content-based filter
content-based filter system
“content-based filter for receiving informons from the scanning system”
“receiving the informons in a content-based filter system from the scanning system”
“content profile”
“content profile data”
“passive feedback data”
“the scanning system”
We trust this should resolve Plaintiff’s purported concerns regarding the breadth of constructions at issue.

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