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 8

DICKSTEINSHAPIROLLP
1825 Eye Street NW I Washington, DC 20006-5403
[phone] I FM [phone] I dicksteinshapiro.com

TEL

March 29, 2012
Via E-mail

Joshua Sohn
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Re:

Claim Construction

Dear Joshua:
I write in response to your email dated March 27, 2012 regarding claim construction. As all
parties recognize, the court will construe no more than ten terms. Defendants also acknowledge
that the parties must agree to those ten terms. The court has not ordered construction of ten
different concepts or ideas, it has ordered construction of ten terms. Defendants, however,
continue to insist that various groupings of different phrases each amount to a single "term."
There is no legitimate basis for this assertion for the majority of Defendants' proposed groups.
VP Engine is confident that the court will refuse to agree with Defendants' proposal to classify as
a single term phrases as different as "combining the information from the feedback system with
the information from the scanning system" and "filtering the combined information for relevance
to at least one of the query and the first user."

I/P Engine remains committed to cooperatively narrowing the terms to ten to be construed by the
court. To that end, we propose that there can be a reduction in total number of terms to construe
by reducing some of Defendants phrases to focus on the contested terms. I/P Engine believes
that the issues can be reduced by simplifying Defendants' phrases so that the court is presented
with actual disputes. In many instances, Defendants' list presents large phrases that incorporate
other constructions.
For example, the parties have identified three different phrases that share the claim term
"combining." The parties' dispute is over the meaning (or definiteness) of the term
"combining." Defendants believe the common term "combining" is indefmite. The parties have
proposed constructions for many of the other words in those phrases, such as "found to be
relevant," "the query," and "other users." Please let us know if Defendants agree to construing
the term "combining."

Los Angeles I New York I Orange County I Silicon Valley I Stamford I Washington, DC
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DICKSTEINSHAPIROu_p
Joshua Sohn, Esq.
March 29, 2012
Page 2
The third phrase in Defendants' "group 6," "filtering the combined information," is different
from "combining," and does not need to be construed, because filtering is addressed elsewhere,
and "combined information" follows from the construction of "combining."
With respect to the terms in Defendants' "group 2," it appears that the relevant portion of the
first two terms is "scanning a network." UP Engine has proposed constructions for "scanning"
and "network." UP Engine is agreeable to presenting for construction the phrase "scanning a
network." Please advise if Defendants agree. The third limitation of "group 2" recites "a
scanning system for searching for information," and can be separately construed. Please let us
know if Defendants agree.
Regarding the term "informon," UP Engine proposed "information entities of potential or actual
interest to a user." Defendants proposed "information entity of potential or actual interest to a
particular user." You have asked why I/P Engine is using the plural of the phrase "entities." UP
Engine's usage of a plural phrase is intended to be consistent with the "informons" (plural)
recited in the claim. It appears that the parties agree that an "informon" is singular, and
"informons" are plural.
The parties currently dispute whether Defendants' use of the phrase "particular user" in their
proposed construction of informon is proper. The claim recites "individual user," not "particular
user." I/P Engine does not agree with the inclusion of "particular user" as proposed by
Defendants. Please explain Defendants' basis for the use of the word "particular" in the
definition of "informon." Defendants state that this is proper "so as the information is tied to a
particular user, not just a user." Defendants' statement, however, is incomprehensible. What do
the Defendants contend to be the difference between tying information to "a particular user" as
opposed to "a user"? Do Defendants contend that a "particular user" is meaningfully different
from "an individual user" (as recited in the claim) in this context?
Regarding "demand search," UP Engine believes that Defendants' construction "search engine
query" is unclear. UP Engine's definition is taken from the specification, which describes a
demand search as a one-shot search performed upon a user request. Defendants' phrase "search
engine query," on the other hand, does not appear to be used in the specification with reference
to the "demand search."
Regarding the term "searching [for information relevant to a query associated with a first user],"
Defendants have proposed the phrase "issuing a search engine query" as a construction of the
term "searching." This proposal imports additional and unnecessary limitations based solely on
the word "searching." UP Engine does not believe that the ordinary phrase "searching" needs to
be construed. If Defendants continue to insist on construing "searching" as one of the ten terms
for construction, then UP Engine proposes that it be construed according to its plain and ordinary
meaning.

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DICKSTEINSHAPIROLip
Joshua Sohn, Esq.
March 29, 2012
Page 3
Regarding the term "collaborative feedback data," while our proposed definitions are similar, 1/P
Engine believes its definition more closely tracks the language cited by both parties from the
'420 patent (col. 4, 11. 26-29), and is therefore the more appropriate construction. Please let us
know if Defendants agree to I/P Engine's construction.
Regarding the various "group 1" terms, FP Engine continues to believe it is proper to construe
the core terms ("relevant" and "relevance") and not the entire phrases. Indeed, there are
inconsistencies in Defendants' constructions of ancillary terms in these phrases that cause
unnecessary confusion. Please let us know if Defendants are amenable to providing
constructions of these two terms.
Regarding the remaining terms/issues, I/P Engine will respond at a later date.
If Defendants cannot agree to simplifying the issues by focusing on the common terms, then I/P
Engine does not see how all of the currently disputed claim terms can remain under ten.
Accordingly, I/P Engine requests that the parties meet and confer to prioritize their respective
term lists to establish a list of ten terms to be construed pursuant to the court's order. We also
request a meet and confer to discuss the parties' differences regarding their various proposals.
Best r9gard,s;

2

,—&-dCharles J. lyrOnte 'o Jr.
[phone]
[e-mail]
CJM/JLF
cc:

Stephen E. Noona
David Bilsker
Kenneth W. Brothers
Jeffrey K. Sherwood
DeAnna Allen

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