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

Filing 122

Claim Construction Brief (Opening) filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Appendix A)(Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,

Civil Action No. 2:11-cv-512

v.
AOL, INC., et al.,
Defendants.

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
Introduction
Plaintiff I/P Engine, Inc. (“Plaintiff”) seeks to use claim construction as an opportunity to
redefine – and inappropriately broaden – the scope of its patents. For example, even though the
Patents concern Internet search using a combination of content filtering with collaborative
filtering – which the parties agree requires feedback from other users with similar interests or
needs – Plaintiff seeks to eliminate this collaborative requirement from many of the claims.
Further, even though the patents recite a particular “scanning” process that requires crawling link
to link for information, Plaintiff conflates scanning with a generic search process that is
appropriately referred to as “searching” elsewhere in the Patents. And even though each asserted
system claim recites three separate systems that perform disparate tasks, Plaintiff argues that
these three systems may somehow be one and the same. Plaintiff’s attempt to redefine and
broaden its patents should be rejected, and Defendants’ proposed constructions should be
adopted.

Factual Background
I.

OVERVIEW OF THE ASSERTED PATENTS
Plaintiff alleges infringement of U.S. Patent No. 6,314,420 (“the ‘420 Patent”) and U.S.

Patent No. 6,775,664 (“the ‘664 Patent”). Both patents are directed to the concept of filtering
search results based partly on collaborative feedback, as expressly stated in their titles. The ‘420
Patent is entitled “Collaborative/Adaptive Search Engine.” The ‘664 Patent is entitled
“Information Filter System and Method for Integrated Content-Based and
Collaborative/Adaptive Feedback Queries.” (emphases added.) Plaintiff asserts infringement of
claims 10, 14, 15, 25, 27, and 28 from the ‘420 Patent and claims 1, 5, 6, 21, 22, 26, 28, and 38
from the ‘664 Patent.
The two Patents claim priority to the same parent application and share a common
specification. The asserted claims involve “scanning” (i.e., crawling) a network to retrieve
information responsive to a user query, and then filtering the retrieved information through both
content-based filters and collaborative filters. For example, ‘420 claim 10 recites:
A search engine system comprising:
[a] a system for scanning a network to make a demand search for informons
relevant to a query from an individual user;
[b] a content-based filter system for receiving the informons from the scanning
system and for filtering the informons on the basis of applicable content profile
data for relevance to the query; and
[c] a feedback system for receiving collaborative feedback data from system users
relative to informons considered by such users;
[d] the filter system combining pertaining feedback data from the feedback
system with the content profile data in filtering each informon for relevance to the
query.1

1

Throughout this brief, Defendants have added bracketed letters denoting the various
claim steps or elements, for the Court's convenience.

2

‘420 Claim 25 is substantially similar, but is a method claim.
Similar to the ‘420 claims, claim 1 of the ‘664 Patent recites:
A search system comprising:
[a] a scanning system for searching for information relevant to a query associated with a
first user in a plurality of users;
[b] a feedback system for receiving information found to be relevant to the query
by other users;
[c] a content-based filter system for combining the information from the feedback
system with the information from the scanning system and for filtering the
combined information for relevance to at least one of the query and the first user.
‘664 Claim 26 is substantially similar, but is a method claim.
II.

THE SPECIFICATION RECITES USING CONTENT-BASED AND
COLLABORATIVE FILTERING FOR INTERNET SEARCHING
As the Asserted Patents’ specification acknowledges, search engines were well-known in

the art. (See 1:20-26.)2 The patents disclose a purported improvement to known search engines
by using two types of filtering also known in the art – content-based filtering and collaborative
filtering – to filter search results. (See 2:20-27.) For example, the Background of Invention
states, “The present invention is directed to an information processing system . . . with
collaborative feedback data and content-based data and adaptive filter structuring, being used in
filtering operations to produce significantly improved results.” (2:20-27.) Elsewhere, the
specification states that “[t]he present invention combines collaborative filtering with contentbased filtering in measuring informons [information entities] for relevancy.” (23:39-41.) The

2

While the Asserted Patents’ specifications are substantively identical, their line
numbers are slightly different – e.g., a passage that appears at column 2, line 1 of the '420 Patent
may appear at column 2, line 9 of the '664 Patent. Unless otherwise noted, all specification
citations are taken from the '420 Patent.

3

patentees call their invention “CASE,” for “collaborative, adaptive search engine,” emphasizing
that the addition of collaborative filtering was the heart of the disclosed invention. (23:30-32.)
The specification also explains that the preliminary step of “scanning” a network, which
is used to gather candidate search results for filtering, entails the use of a spider system that
crawls the network. (See 25:39-40 (“a spider system scans a network to find informons for a
current demand search.”))3 The specification notes that “scanning” is a process generally used
by search engines in the prior art. (See 1:23-24.)
III.

THE ACCUSED TECHNOLOGY
Plaintiff accuses several Google services of infringing the Asserted Patents, including

Google AdWords and AdSense for Search. Plaintiff accuses the other Defendants to the extent
they use AdWords or AdSense for Search. Plaintiff also separately accuses Defendant AOL’s
Sponsored Listings service and Defendant IAC Search & Media’s Ask Sponsored Listings
service.
In an attempt to ensnare these services, Plaintiff improperly tries to twist and broaden the
claim language. For instance, even though the specification repeatedly emphasizes that the
claims require collaborative feedback data – i.e., data from other users with similar interests and
needs – Plaintiff tries to read this requirement out of at least the ‘664 Patent. Plaintiff
presumably adopts this strategy because none of the accused services utilize feedback data from
users with similar interests and needs. For instance, each accused advertising service employs
“click-through rate” data as part of the process of ranking candidate ads that may be shown to
3

Much of the specification (and many of the patent claims) discusses the use of a
“wire,” which the patents describe as a query submitted continuously that is stored and updated
over time. (1:57-58.) During prosecution, the Examiner relied on the wire as the point of
novelty that rendered all ‘420 claims patentable, even though some of the ‘420 claims, including
those asserted here, omit the wire element altogether. (Sohn Decl., Ex. H at 2.) None of the
‘664 claims contain the wire element.

4

users. Plaintiff alleges that this click-through rate meets the collaborative feedback limitations
from the claims. However, the accused clickthrough rate data gives no regard to whether these
past users are similar to each other or whether they are similar to any current user of the
advertising service.
Further, even though the claims require a particular “scanning” process that requires an
item-by-item web crawl, Plaintiff construes scanning merely as “searching” to get around the
fact that the accused Internet advertising systems do not perform web crawling. Finally, even
though each asserted system claim recites three different systems, each of which performs a
different task in the information retrieval and filtering process, Plaintiff argues that these three
systems may all be one and the same system – because Plaintiff cannot point to three different
systems in Defendants’ accused services.
Argument
I.

COLLABORATIVE FEEDBACK AND RELATED TERMS
Term/Phrase

Defendants’ Construction

Plaintiff’s Construction

“collaborative feedback
data” (‘420 Claim 10, 25)

data from users with similar
interests or needs regarding what
informons such users found to be
relevant

information concerning what
informons other users with
similar interests or needs found
to be relevant

“[feedback system for]
receiving information
found to be relevant to the
query by other users”
(‘664 Claim 1, 26)

[System using a process of
filtering information by]
determining what information
other users with similar interests
or needs found to be relevant

[feedback system for]
receiving information
concerning what other users
found to be relevant to the
query

A.

Defendants’ construction of “collaborative feedback data” properly
recognizes that “data” must come from similar users

The parties’ dispute as to “collaborative feedback data” is fairly narrow. The parties
agree that this term refers to what other users with similar interests or needs found to be relevant.

5

They disagree, however, over the precise formulation of the construction. Defendants’
construction recites that collaborative feedback data is “data” that comes from “users with
similar interests or needs regarding what informons such users found to be relevant.” Plaintiff’s
construction, however, needlessly replaces “data” with “information” and eliminates the
requirement that this data comes from other users with similar interests or needs – instead
requiring only that it “concern” (whatever that means) such users.
1.

Defendants’ construction is supported by the intrinsic evidence.

Defendants’ construction appropriately makes clear that the collaborative feedback data
must come from the other users with similar interests or needs. For example, Claim 25[c] recites
“receiving collaborative feedback data from system users relative to informons considered by
such users.” Thus, according to the plain language of the claims, the collaborative feedback data
must come from these users. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (holding that claim construction begins with the words of the claims themselves).
The specification also explains that “[c]ollaborative filtering employs additional data
from other users” (24:37-38) and that “making effective use of collaborative input (CI) from
other users U is a difficult problem” that the Patents had to allegedly solve. (16:32-33)
(emphases added). Thus, like the claims, the specification supports Defendants’ position that
“collaborative feedback data” must come from users with similar interests or needs. See Phillips,
415 F.3d at 1315 (“the specification ‘is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”)
Plaintiff’s construction, however, merely provides that the collaborative feedback data
“concern” what informons other users with similar interests or needs found to be relevant. This
makes it unclear whether the collaborative feedback data must come from the other users as
required by the claims and specification.
6

2.

Plaintiff’s construction improperly swaps “data” for “information.”

Plaintiff’s construction also redefines “data” as “information.” But this merely swaps
one commonplace word for another, which adds no clarity to the claim and is thus improper. See
Static Control Components, Inc. v. Lexmark Int’l, Inc., 502 F. Supp. 2d 568, 576 (E.D. Ky. 2007)
(“simply swapping words with synonyms is not construction.”) By contrast, Defendants’
construction sensibly recognizes that the word “data” needs no further interpretation.
B.

Defendants’ construction of “[feedback system for] receiving information
found to be relevant to the query by other users” includes the collaborative
element that is necessary to the claimed invention

‘664 claim 1 requires a “feedback system for receiving information found to be relevant
to the query by other users,” while ‘664 claim 26 requires “receiving information found to be
relevant to the query by other users.” The parties dispute as to these terms is whether the other
users have “similar interests or needs” as the intrinsic evidence requires.
1.

Defendants’ construction is supported by the intrinsic evidence.

There is no dispute that “collaborative filtering” and “collaborative feedback data” are
defined by reference to other users with similar interests or needs. As noted above, the parties
agree that “collaborative feedback data” requires data or information about what informons other
users with similar interests or needs found to be relevant. This point is critical, because the
patentees repeatedly explain that the claimed invention requires “collaborative feedback data”
and “collaborative filtering.” Thus, the “feedback system for receiving information found to be
relevant to the query by other users” in claim 1 must be construed as a feedback system for
receiving collaborative information – i.e., information that other users with similar interests or
needs found to be relevant, and the step of “receiving information found to be relevant to the
query by other users” in claim 26 (a recast method claim of claim 1) must be interpreted as

7

requiring collaborative information. Only with these constructions would claims 1 and 26
contain the collaborative element of the claimed invention required by the intrinsic evidence.
For example, the final sentence of the specification’s “Background of the Invention”
section, which distinguishes the claimed invention from the prior art, explains that “the present
invention is directed to an information processing system . . . with collaborative feedback data
and content-based data . . .” (Id. at 2:28-33) (emphasis added). Elsewhere, the specification
states: “The present invention combines collaborative filtering with content-based filtering in
measuring informons for relevancy, and further preferably applies adaptive updating of the
content-based filtering operation.” (Id. at 23:41-44 (emphasis added)). These general statements
of “the present invention” are appropriately used to define and limit the claims. See Am.
Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1334 (Fed. Cir. 2011) (“a statement in a
specification that describes the invention as a whole can support a limiting construction of a
claim term”); Honeywell Int’l Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006)
(finding that use of “this invention” and “the present invention” established that the patentee
intended to limit the meaning of a term to that disclosed in the specification); C.R. Bard, Inc. v.
U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (construing a claimed plug as requiring
pleats because “[i]n two places, the patent describes in general terms what it deems to be the
invention. In both places, the patent unequivocally defines the claimed plug as having pleats.”)
Likewise, the Abstract states that “[a] user feedback system provides collaborative
feedback data for integration with content profile data in the operation of the
collaborative/content-based filter.” “The abstract is not an explanation of the preferred
embodiment, which cannot limit the claims, but a summary of the invention itself on which the
claims are based.” Al-Site Corp. v. Cable Car Sunglasses, 911 F. Supp. 410, 415 (N.D. Cal.

8

1994) (emphasis added). Thus, defining the claims to conform with the Abstract’s description of
the invention is appropriate as well. See Hill-Rom Co., Inc. v. Kinetic Concepts, Inc., 209 F.3d
1337, 1341 fn * (Fed. Cir. 2000) (“We have frequently looked to the abstract to determine the
scope of the invention”); see also Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d
1094, 1099 (Fed. Cir. 2003) (finding that statements in a patent’s Abstract and Summary of
Invention limited the scope of a phrase in the claims to a specific technique).
It is also telling that the specification states “the present invention combines collaborative
filtering with content-based filtering in measuring informons for relevancy, and further
preferably applies adaptive updating of the content-based filtering operation.” (id. at 23:41-44
(emphasis added)). While adaptive updating is merely a “preferable” feature of the claimed
invention, collaborative filtering has no such qualifying language. Rather, collaborative filtering
is a required feature of the claimed invention.
Because the intrinsic evidence shows that the claimed “present invention” requires
collaborative feedback data, the step of “receiving information found to be relevant to the query
by other users” in ‘664 claim 26 is properly limited to receiving collaborative information – i.e.,
information that other users with similar interests or needs found to be relevant. Likewise, the
“feedback system for receiving information found to be relevant to the query by other users” in
‘664 claim 1 must be construed as a feedback system for receiving collaborative information –
information that other users with similar interests or needs found to be relevant.
2.

Plaintiff’s construction ignores the relevant intrinsic evidence.

Plaintiff’s construction, “receiving information concerning what other users found to be
relevant to the query,” merely shuffles the words in the claim. See Wi-Lan, Inc. v. Acer, Inc.,
712 F. Supp. 2d 549, 574 (E.D. Tex. 2010) (rejecting proposed construction that “merely
rearrange[s] the words of the term to be construed.”) And it makes no reference to other users
9

with similar interests or needs as necessary to capture the collaborative filtering required by the
‘664 Patent. Notably, Plaintiff has never provided any intrinsic evidence support for its
construction.4 Given the specification’s repeated statements that collaborative feedback and
filtering is an essential element of the claimed invention, Plaintiff’s attempt to read this element
out of the claims is improper and Plaintiff’s construction should be rejected.
Further, Plaintiff does not even propose a construction for the “feedback system” portion
of the term “feedback system for receiving information found to be relevant to the query by other
users;” it just repeats the phrase. This too shows that Plaintiff's construction should be rejected.
II.

“SCANNING” TERMS
Term/Phrase

Defendants’ Construction

Plaintiff’s Construction

“scan[ning] a network” (‘420
Claims 10, 25)

Spider[ing] or crawl[ing] a
network

looking for items in a network

“a scanning system” (‘664
Claim 1)

a system used to scan a
network

a system used to search for
information

Defendants construe “scanning a network” as “spidering or crawling a network,” in
accordance with the specification’s definition of this term, and construe “a scanning system” in
the ‘664 Patent as “a system used to scan a network,” in accordance with the meaning of that
same term in the ‘420 Patent.5 By contrast, Plaintiff improperly equates “scanning” with the
more generic term “searching.”
4

As explained at length in Defendants’ Opposition to Plaintiff’s Motion to Compel
Compliance with the Court’s Scheduling Order, Plaintiff’s failure to provide intrinsic evidence –
and, in many cases, constructions themselves – has been consistent throughout the claim
construction process. (See Dkt. 109 at 5-6.)
5

At Plaintiff's request, Defendants agreed to construe “scanning a network” and a
“scanning system” rather than the larger phrases in which they appear, such as “scanning a
network to make a demand search.” Defendants continue to maintain that the broader phrases
are invalid as indefinite and/or for lack of enablement under 35 U.S.C. § 112. However, to
narrow the issues at the claim construction hearing, Defendants have agreed raise such
10

A.

Defendants’ construction of “scanning a network” is compelled by the
intrinsic evidence.

Claims 10 and 25 of the ‘420 Patent recite “scanning a network to make a demand
search.” The specification discloses that “scanning a network” to make a demand search
involves spidering:6 “a spider system scans a network to find informons for a current demand
search.” (25:39-40.) And in their discussion of the prior art, the patentees repeatedly link
“scanning” to the operation of a spider. (See 1:23-24 (“Thereafter, the search site typically
employs a ‘spider’ scanning system . . .”)) The parent application to the ‘420 Patent also defines
“scanning a network” to require the operation of a spider. (See 1:45-61 (“In the patent
application which is parent to this continuation-in-part application . . . A continuously operating
‘spider’ scans the network.”)). Because every instance of “scanning” in the specification is tied
to the operation of a spider, the term “scanning” is properly construed as requiring such a spider.
Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1018-19 (Fed. Cir. 2009)
(construing the term “wound” as limited to skin wounds because “[a]ll the examples in the
specification involve skin wounds”). Thus, “scanning a network” should be construed as
“spidering or crawling a network” – with “crawling” being used a synonym for “spidering” given
that spiders operate by crawling.
This meaning is consistent with the relevant extrinsic evidence as well, which makes
clear that “spiders” do indeed operate through crawling and can be considered “crawlers.” See,
e.g., Ira S. Nathanson, “Internet Infoglut and Invisible Ink: Spamdexing Search Engines with
indefiniteness and enablement issues apart from claim construction of portions of these phrases,
which will not resolve the 112 issues. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1251 (Fed. Cir. 2008) (“Even if a claim term’s definition can be reduced to words, the
claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into
meaningfully precise claim scope.”).
6

As explained below, “spidering” connotes a process of crawling from link to link in a
network like the Internet.

11

Metatags,” 12 HARV. J. L & TECH. 43, 61 (1998) (“A spider (also known as a robot, crawler or
indexer) is a program that scans the Web, crawling from link to link”); MICROSOFT COMPUTER
DICTIONARY (5th Ed. 2002) at 493 (using “crawler” as a synonym for “spider”). Even the
extrinsic evidence that Plaintiff cited along with its Preliminary Constructions supports this
conclusion, since Plaintiff’s evidence defines “scanning” to require a sequential, item-by-item
crawl. (See Preliminary Constructions (Sohn Decl., Ex. C) at 6 (“Scan -- . . . Computer
Technology. 1. to examine sequentially each item in a list, each record in a file . . .”))
B.

“A scanning system” is used to scan a network.

“A scanning system” in ‘664 claim 1 should be construed simply as “a system used to
scan a network,” with “scan a network” defined as “spider or crawl a network” as explained
above. By way of illustration, claim 25 of the ‘420 Patent recites a first step of “scanning a
network to make a demand search for informons” and a second step of “receiving the informons .
. . from the scanning system.” Thus, in the ‘420 Patent, the “scanning system” is used to scan a
network (for informons). The same conclusion applies to the “scanning system” of ‘664 claim 1,
since there is no suggestion that the “scanning systems” of the ‘420 and ‘664 Patents differ in
any way. See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)
(“Because NTP’s patents all derive from the same parent application and share many common
terms, we must interpret the claims consistently across all asserted patents.”)
C.

Plaintiff improperly equates “scanning” with “searching”

Plaintiff seeks to construe scanning a network as “looking for items in a network.”
Plaintiff’s overbroad construction is unsupported by the specification, which repeatedly ties
“scanning” to the operation of a web crawler or spider system. Ironically, the improper nature of
Plaintiff's construction is shown by the only intrinsic evidence Plaintiff points to in purported

12

support of its construction. (Preliminary Constructions at 6 (quoting 25:39-40 (“spider system
46C scans a network 44C to find informons for a demand search.”) (emphasis added))).
Instead, Plaintiff’s construction of “scanning” as “looking for items” equates “scanning”
a network with “searching” a network. The everyday meaning of “searching” is “looking for
items.” See RANDOM HOUSE UNABRIDGED DICTIONARY (2nd Ed. 1993) at 1727 (search: 4. “to
look at, read, or examine (a record, writing, collection, repository, etc.) for information”).
Similarly, Plaintiff has construed “a scanning system” as “a system used to search for
information.”
The claims, however, make clear that “scanning” is not the same as “searching.” For
example, ‘664 claim 26 requires “searching for information relevant to a query associated with a
first user in a plurality of users.” Dependant claim 38 recites “[t]he method of claim 26 wherein
the searching step comprises scanning a network . . .” The fact that the patentees used
“searching” in claim 26 and “scanning” in claim 38 implies that these terms are different from
each other, not synonyms as Plaintiff’s construction would provide.
Moreover, claim 38 depends from claim 26 and recites that claim 26’s searching step
comprises scanning, which implies that “scanning” is a narrower subset of “searching” rather
than a synonym. See Enzo Biochem., Inc. v. Applera Corp., 599 F.3d 1325, 1334 (Fed. Cir.
2010) (“dependant claims are presumed to be of narrower scope than the independent claims
from which they depend”); see also Sta-Rite Industries, LLC v. ITT Corp., 682 F. Supp. 2d 738,
743 (E.D. Tex. 2010) (“Courts presume a difference in meaning and scope when a patentee uses
different phrases in separate claims.”).

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III.

“COMBINING” (‘420 CLAIMS 10, 25; ‘664 CLAIMS 1, 26)
Defendants’ Construction

Plaintiff’s Construction

Plain meaning; alternatively, bringing together

uniting into a single number or expression

The parties dispute whether “combining” should have its plain and ordinary meaning, as
Defendants assert, or whether it should be inappropriately limited to Plaintiff’s incorrect
interpretation of one of the embodiments in the specification.
A.

Defendants’ construction accords with the intrinsic and extrinsic evidence.

When the asserted claims invoke the language of “combining,” they simply refer to
various pieces of information being somehow brought together. For example, claim 26 of the
‘664 Patent requites “combining the information found to be relevant to the query by other users
with the searched information.” Nothing in the claim language specifies how that combination
occurs; it merely requires that “information found to be relevant to the query by other users” –
i.e., the collaborative feedback data – be combined, in some way, with “the searched
information.”7 Because there is no limitation on how this “combining” must occur, the term
“combining” should be given its broad plain meaning of “bringing together.” See, e.g., RANDOM
HOUSE WEBSTER’S COLLEGE DICTIONARY (1999) (combine: “to bring into or join in a close
union or whole.”).

7

Defendants had originally proposed that terms such as “combining the information
from the feedback system with the information from the scanning system” are indefinite. At
Plaintiff's request, Defendants agreed to construe just the word “combining.” As with the longer
phrases containing “scanning a network” or “a scanning system,” Defendants continue to
maintain that the broader phrases containing “combining” or “combined” are invalid as indefinite
and/or for lack of enablement under 35 U.S.C. § 112. Here, too, Defendants have agreed to raise
such indefiniteness and enablement issues apart from claim construction, to narrow the issues for
the Claim Construction Hearing.

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The specification supports this plain meaning. The preferred embodiment indicates that
the claimed combination occurs through a sequential application of filters. After a “query
processor” receives a query from an individual user (25:9-10), it determines whether it should
execute a “wire search” or a “demand search.” (25:10-18; see also Fig. 8.) A content-based
filter structure performs either the wire search or demand search (25:27-30), then passes the
resultant “demand search informons or wire search informons”—i.e., the “searched
information”—to a “search return processor.” (25:53-56.) The search return processor has its
own informon rating system that combines the already content-based filtered data with
“collaborative feedback rating data.” (25:57-61.) The search results are then returned to the
user. (26:1-7.) Thus, the specification teaches that “combining” content-based and collaborative
filters involves bringing these two types of filters together in some manner and using them to
sequentially filter information.
B.

Plaintiff’s construction of “combining” is contrary to the plain meaning and
the intrinsic evidence.
1.

Plaintiff’s “uniting into a single number or expression” construction is
contrary to the claims

Plaintiff instead proposes a construction of combining in a mathematical context, such
that it must involve uniting “into a single number or expression.” Yet, the claim language does
not support such a crabbed and narrow construction.
For example, ‘664 claim 1 requires: [a] “a scanning system for searching for information
relevant to a query”; [b] “a feedback system for receiving information found to be relevant to the
query by other users”; and [c] “a content-based filter system for combining the information
found to be relevant to the query by other users with the searched information and for filtering
the combined information.” It is difficult to see how the disparate pieces of information from
Steps [a] and [b] could be “united into a single expression,” much less “united into a single
15

number.” Rather, “combining” these pieces of information more naturally means bringing them
together in some way (albeit unspecified), such as in a list of search results.
Moreover, Step [c] requires the “combined information” be filtered. Plaintiff’s
construction would thus require that a “single number of expression” (the output of the
“combining” step under Plaintiff’s construction) be “filtered.” Yet there is no disclosure in the
Patents of “numbers” or “expressions” being filtered, nor would it make sense to do so.
Finally, dependent claim 5 recites “[t]he search system of claim 1 wherein the filtered
information is an advertisement.” Since the “filtered information” is also the “combined
information” under claim 1[c], claim 5 essentially requires that an advertisement be the
“combined information.” Under Plaintiff’s construction, an advertisement would be what is
“united into a single number or expression.” But this makes no sense, as an advertisement is not
“a single number or expression.” Thus, Plaintiff’s position that “combining” is limited to
“uniting into a single number or expression” is demonstrably incorrect.
2.

Plaintiff’s construction reads out a preferred embodiment.

As detailed above, a preferred embodiment first uses “content-based filtering” and then
passes the filtered informons to a “search return processor” that performs the requisite
collaborative filtering. The specification — none of which actually uses the words in Plaintiff's
construction — describes that the “search return processor receives [] informons passed by the
content-based filter structure” (25:53-55), i.e. the web pages themselves. There is no disclosure
of the “search return processor” receiving the content-based filtering data employed by the
content-based filter structure. Plaintiff’s requirement that the “combining” be performed by
“uniting into a single number or expression” rather than by using two filters sequentially would
thus exclude the preferred embodiment – a result the Federal Circuit has cautioned is “rarely, if

16

ever, correct.” Globetrotter Software, Inc. v. Elan Computer Group, Inc.. 362 F.3d 1367, 1381
(Fed. Cir. 2004) (citation omitted).
Plaintiff’s remaining intrinsic evidence is similarly unavailing. Plaintiff cites Fig. 6 of
the Patents to support its “combining” construction (Preliminary Constructions at 7). But the
embodiment in Fig. 6 is simply a general rating system with an option of incorporating contentbased data and collaborative feedback data, depending on the system in which it is used. It is not
required to do so. For example, the content-based filtering used to perform the wire search or
demand search similarly uses the system described by Fig. 6. (25:27-30.) Yet at this point in its
execution, the search engine embodiment of the specification has no collaborative feedback data
to incorporate. (Cf. 25:53-61.) Accordingly, that the Fig. 6 embodiment has the ability to use a
certain type of data does not mean that it must use that type of data—particularly when there is
no evidence that Fig. 6 has access to that type of data.
IV.

THE SEPARATENESS OF THE CLAIMED SYSTEMS
Defendants’ Construction

Plaintiff’s Construction

The claimed “system for scanning a
network,” “content-based filter system,” and
“feedback system” of ‘420 Claim 10 must
be different systems

The claim language does not require the claimed
system for scanning, content-based filter system,
and feedback system of claim 10 of the ‘420
patent to be the same or different “systems”

The claimed “scanning system,” “feedback
system,” and “content-based filter system”
of ‘664 Claim 1 must be different systems

The claim language does not require the
scanning system, content-based filter system,
and feedback system of claim 1 of the ‘664
patent to be the same or different “systems”

The parties dispute whether the claimed scanning systems, content-based filter systems,
and feedback systems must be separate and distinct from the other systems recited in the claims
(Defendants), or whether each of these disparately claimed systems can be the same system

17

(Plaintiff). This issue is important because Plaintiff’s infringement allegations focus on a single
system, not the disparate systems recited in the claims.
A.

Defendants’ construction is compelled by the claims

The claims recite the separate nature of the claimed systems; each system is given a
unique task. In ‘664 claim 1, the scanning system is tasked with “searching for information
relevant to a query,” the feedback system is tasked with “receiving information found to be
relevant to the query by other users,” and the content-based filter system is tasked with
“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.” ‘420 claim 10 recites a similar division of labor for the claimed systems.
If the patentees intended that a single system could handle all these tasks, then there
would be no need to recite three separate systems, all of which bear different names and are
given different tasks. Rather, the patentees could have recited a single, unitary system that
performed all these tasks. They did not. Thus, these systems are separate and different from
each other, not one system. See Bristol Co. Ltd. P’ship v. Bosch Rexroth Inc., 684 F. Supp. 2d
1245, 1294 (D. Colo. 2010) (ruling that two claimed “signals” must be separate from each other
given that they serve different functions in the claims).
B.

Plaintiff provides no support for its constructions

Plaintiff has no support for its position that “the claim language does not require the
scanning system, content-based filter system, and feedback system . . . to be the same or different
‘systems.’” Plaintiff has never provided any basis for why each of these systems are claimed
separately if they could be the same system.
Plaintiff’s position is also inconsistent with its own validity contentions. While Plaintiff
now says the claims are agnostic as to whether the scanning system, content-based filter system,
18

and feedback system must be the same or different systems, Plaintiff stated in its validity
contentions that these systems cannot be different systems. (See, e.g., Sohn Decl., Ex. D
(Plaintiff’s Responses and Objections to Google’s Third Set of Interrogatories) at 11 (“Lashkari
does not ‘combine’ the features that Defendants allege meet each of the two components
[scanning system and feedback system] because the cited features are parts of different
systems.”) (emphasis added)). In a meet-and-confer of April 4, 2012, Defendants pointed out
this inconsistency in Plaintiff’s position and asked for an explanation. Plaintiff did not provide
one.
Plaintiff’s inconsistent interpretations should be rejected and Defendants’ construction
adopted.
V.

“DEMAND SEARCH” (‘420 Claims 10, 25)
Defendants’ Construction

search engine query

Plaintiff’s Construction
a one-time search performed upon a user request

The dispute here is whether Defendants’ simple construction of “search engine query”
should be adopted over Plaintiff’s cumbersome and ambiguous construction of “a one-time
search performed upon a user request.”
A.

Defendants’ construction is supported by the specification and would be
readily understandable by a jury

The Patents make clear that a “demand search” is just a regular search engine query – i.e.,
the type of query that is performed by regular search engines such as those in the prior art.
Specifically, the Patents explain that the claimed invention can operate in one of two modes:
“demand search” or “wire search” mode. (See 25:19-20; 25:27-28.) Unlike “wire” searches,
which are continuous searches that rely on a stored query, “demand” searches are performed
through the normal operation of regular search engines: “an integrated collaborative/content19

based filter is operated to provide ongoing or continuous searching for selected user queries, with
a ‘wire’ being established for each query. On the other hand, a regular search engine is operated
to make immediate or short-term ‘demand’ searches for other user queries.” (23:45-51)
(emphasis added.) The specification elsewhere explains that “[w]hen a user makes a query for
which a wire already exists, wire search results are preferably returned instead of regular search
engine results . . . Otherwise, block 28C commands a demand search by a regular query engine.”
(23:65-24:8 (emphasis added).)
As shown by these passages, the Patents repeatedly state that a “demand search” is a
normal search engine query made with a regular search engine (as opposed to the specialized,
continuous queries that require a “wire”). Because every example of a “demand search” in the
specification is a normal search query made by a normal search engine, Defendants’ simple
construction of “demand search” as “search engine query” accurately captures what the patentees
meant by this term. See Kinetic Concepts, 554 F.3d at 1018-19 (construing “wound” as limited
to skin wounds because “[a]ll the examples in the specification involve skin wounds.”)
Moreover, “search engine query” is a simple construction that would be readily
understood by a jury – and the goal of claim construction is to reduce claim language to simple
language that a jury could understand. See, e.g., Curtiss-Wright Flow Control Corp. v. Z & J
Tech. GmbH, 563 F. Supp. 2d 1109, 1115 (C.D. Cal. 2007) (“Claim construction is intended to
clarify the legal meaning of claim language in the context of a particular case so that a jury can
make a simple factual determination as to infringement or invalidity.”)
B.

Plaintiff’s construction would be confusing and ambiguous for a jury to
apply

Plaintiff’s construction of “demand search” – “a one-time search performed upon a user
request” – is confusing and ambiguous. For example, if a demand search for “cars” was issued

20

by two different users at two different times, do these searches cease being “demand searches”
because they are no longer “one-time”? If a single user performs two demand searches, do these
searches cease being “demand searches” under the same logic? Plaintiff’s construction provides
no answers to these questions and no clarity to a jury. It should be rejected.
Plaintiff seeks to support its construction with the following sentence of the Abstract:
“[t]he search engine system employs a regular search engine to make one-shot or demand
searches for information entities which provide at least threshold matches to user queries.”
(Preliminary Constructions at 6-7.) Yet Plaintiff’s construction of “demand search” has virtually
no words in common with this Abstract sentence. The Abstract sentence does not include
“performed upon a user request,” as does Plaintiff’s construction, and it includes the concept of
threshold matching, which Plaintiff’s construction does not. If anything, this sentence supports
Defendants’ construction by emphasizing, as does the remainder of the specification, that a
demand search is made by a “regular search engine” and thus should be construed simply as a
“search engine query.”
Moreover, while Plaintiff may argue that the Abstract’s description of a demand search as
“one-shot” requires Plaintiff’s use of the term “one-time,” this argument would be misplaced.
The Abstract uses the term “one-shot” simply to distinguish “demand searches” from the
continuous “wire searches.” (See id. (“The search engine system employs a regular search
engine to make one-shot or demand searches . . . The search engine system also employs a
collaborative/content-based filter to make continuing searches for information entities which
match existing wire queries.”)) Because none of the wire claims are at issue in this litigation,
there is no need to distinguish demand searches from continuing wire searches by using the

21

adjective “one-shot” or “one-time” to describe the demand searches, or anything else. Rather,
for the reasons explained above, such language would only serve to confuse the jury.
VI.

“INDIVIDUAL USER” / “FIRST USER”
Defendants’ Construction

particular user

Plaintiff’s Construction
No further construction necessary beyond other terms

The parties agree that “individual user” and “first user” mean the same thing.
Defendants’ construction of these terms comes from the intrinsic evidence. Plaintiff contends
that no construction of these terms is necessary because the parties agreed to construe “user” as
“an individual in communication with [a/the] network.” (Appendix A; Sohn Decl., Ex. E.)
A.

Defendants’ constructions are faithful to the specification and claim language

As for the construction of “first user,” the ‘664 claim step of “filtering the combined
information for relevance to at least one of the query and the first user” demonstrates that the
relevance determination is made as to the first user – i.e. the particular user. Because different
users would find different items to be relevant, the relevance-filtering step makes sense only if
the filtering is done for relevance to the particular user.
As for the construction of “individual user,” the specification states that “[a] query
processor receives queries from an individual user and other users.” (25:11-12; accord 26:1112.) By distinguishing the “individual user” from all the other users, the specification suggests
that this particular user is different from the other users for purposes of the claimed invention.
Defendants’ construction properly acknowledges this “particularity” requirement.
B.

Plaintiff has declined to provide a construction for these terms

As with most terms, Plaintiff initially provided no construction for these terms. Then, on
April 5, Plaintiff proposed that “individual user” and “first user” both should be construed as

22

“a/the individual user.” (Sohn Decl., Ex. G.) On April 11, the day before Opening Briefs were due,
Plaintiff said that no further construction was necessary for these terms because the parties had
already agreed on a construction for “user.” (Sohn Decl., Ex. E.)
But the parties have not agreed on a construction for “individual user” and “first user.”
Specifically, Plaintiff has not confirmed an agreement that these terms refer to the “particular
user” as to whom the claimed method is performed, or whether, as Plaintiff’s lack of agreement
would seem to imply, the “individual user” and “first user” could be any user at all. As the
proper construction of “individual user” and “first user” remains in dispute, the Court should
resolve this dispute. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d
1351, 1362-3 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding the
scope of a claim term, it is the court’s duty to resolve it.”)
VII.

RELEVANT/RELEVANCE TERMS
Term/Phrase

Defendants’ Construction

Plaintiff’s Construction

“relevance to at least one of
the query and the first user”
(‘664 Claims 1, 26)

how well information satisfies
the information need of at least
one of the query and the first
user

No further construction
necessary beyond other
terms

“[informons/information]
relevant to a query” (‘420
Claims 10, 25; ‘664 Claims 1,
26)

[informons/information] that
satisfy the individual user’s
information need expressed in
the query

[informons/information]
having relevance to the
[individual/first] user’s
information need in the
query

A.

Defendants’ constructions flow from the specification and the claims

The specification states that “the ‘relevance’ of a particular informon broadly describes
how well it satisfies the user’s information need.” (4:5-6). In keeping with this definition, the
parties agree that “relevance to a query” means “how well an informon satisfies the individual

23

user’s information need in the query.” (See Appendix A.) Defendants’ constructions flow from
this agreed definition in the specification.
For example, Defendants’ construction of “relevance to at least one of the query and the
first user” takes this specification definition and applies it to the “query and first user” context.
If “relevance” is defined as how well an informon satisfies the user’s information need, then
“relevance to at least one of the query and the first user” must be “how well information satisfies
the information need of at least one of the query and the first user.”
Defendants’ constructions for “informons relevant to a query” and “information relevant
to a query” take the specification definition and apply it to the “query” context. If “relevance” is
defined as how well an informon satisfies the user’s information need, then “informons relevant
to a query” are informons that do in fact satisfy the individual user’s information need expressed
in the query and “information relevant to a query” is information that does in fact satisfy the first
user’s information need expressed in the query. Because Defendants’ constructions take the
specification’s definition of “relevance” and faithfully apply it to the various claim terms,
Defendants’ constructions should be adopted.
B.

See Phillips, 415 F.3d at 1315.

Plaintiff’s constructions are grammatically nonsensical

Plaintiff’s constructions of “informons relevant to a query” and “information relevant to a
query” are grammatically nonsensical. Plaintiff construes these terms as
“[informons/information] having relevance to the [individual/first] user’s information need in the
query.” Again, however, the parties agree that “relevance to a query” should be construed as
“how well an informon satisfies the individual user’s information need in the query.” Applying
this agreed “relevance” construction to Plaintiff’s proposed constructions, the phrase “having
relevance” in Plaintiff’s constructions would mean “having how well an informon satisfies . . .”,

24

which is grammatically nonsensical. Defendants pointed this out to Plaintiff, and Plaintiff had
no response, merely stating that the parties would need to “agree to disagree.”
Plaintiff has not offered any construction for “relevance to at least one of the query and
the first user.” In an email of April 11, Plaintiff justified its refusal to provide a construction by
stating that “the parties have already agreed to constructions for each of the components of this
limitation.” (Sohn Decl., Ex. E). While it is true that the parties have agreed to a construction
for “relevance to a query,” which has some overlap with the longer phrase “relevance to at least
one of the query and the first user,” construing the shorter phrase does not eliminate the need to
construe the latter. To the contrary: because the agreed construction of “relevance to a query”
includes the words “query” and “user,” the jury might be confused about what additional
meaning the additional phrase “relevance to at least one of the query and the first user” has,
absent a construction for this phrase. Specifically, Defendants’ construction clarifies that this
phrase refers to how well the information satisfies the information need of either the query issued
by the first user or the first user himself.
VIII. ORDER OF STEPS (‘420 CLAIM 25; ‘664 CLAIM 26)
Defendants’ Construction

Plaintiff’s Construction

‘420 Claim 25: Step [a] must be performed before Step [b];
Steps [b] and [c] must be performed before Step [d]

No construction necessary

‘664 Claim 26: Steps [a] and [b] must be performed before
Step [c]; Step [c1] must be performed before Step [c2]
1.

Defendants’ constructions acknowledge the logical order of steps in
the claims

It is well-settled that method steps must be performed in the recited order “when the
method steps implicitly require that they be performed in the order written,” such as when “each

25

subsequent step reference[s] something logically indicating the prior step has been performed.”
Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001).
(a)

‘420 claim 25

Under these principles, and as shown in the annotations below, Step [a] of ‘420 Claim 25
must be performed before Step [b] because Step [b] “references something logically indicating
the prior step has been performed.” Specifically, Step [a] recites “scanning a network . . . for
informons,” and Step [b] involves “receiving the informons in a content-based filter system from
the scanning system.” Assuming that “the scanning system” is what “scans the network for
informons,”8 it is impossible for the content-based filter system to receive informons from the
scanning system (as required in Step [b]) until after the scanning system has scanned the network
for these informons (as required in Step [a]). Accordingly, Step [a] must be performed before
Step [b].
For similar reasons,
Steps [b] and [c] must be
performed before Step [d].
Step [b] requires filtering
on the basis of content
profile data, Step [c]
requires receiving
collaborative feedback data, and Step [d] requires “combining” the feedback data from Step [c]
with the content profile data from Step [b]. Because Step [d] thus combines the output of Steps
[b] and [c], Step [d] cannot be performed until after Steps [b] and [c] are completed.
8

See Section II(B), supra (explaining why “a scanning system” should be construed as
"a system used to scan a network.")

26

(b)

‘664 claim 26

For ‘664 claim 26, as shown in the annotations below, Steps [a] and [b] must be
performed before Step [c] because Step [c] references something logically indicating that Steps
[a] and [b] have been performed. Specifically, Step [c] requires “combining the information
found to be relevant to the query by other users with the searched information.” The
“information found to be relevant to the query by other users” in Step [c] refers to the output of
Step [b], since Step [b] involves “receiving information found to be relevant to the query by
other users.” The “searched information” in Step [c] refers to the output of Step [a], since Step
[a] requires “searching for information.” Thus, Step [c] requites “combining” the output of Step
[a] and Step [a], meaning that Step [c] must be performed after Steps [a] and [b] are completed.
For similar reasons,
Step [c1] must be
performed before Step [c2].
Step [c1] recites
“combining the information
. . .”, while Step [c2] recites
“filtering the combined
information.” Because the information must be combined before this combined information may
be filtered, Step [c1] must be performed before Step [c2].
2.

Plaintiff improperly seeks to avoid an order of steps construction

Plaintiff tacitly acknowledges that some steps from ‘420 claim 25 and ‘664 claim 26 must
be performed in order. However, Plaintiff refuses to take a position on what these claim steps
are, recently stating: “To the extent that some limitations presuppose that one of the earlier
limitations be performed, that (limited) required ordering is clear from the claim language itself
27

and no construction is necessary.” (Sohn Decl., Ex. F.) Plaintiff argues that no order of steps
construction is necessary – not because the claim steps may be performed in any order, but
because order of steps “is an issue that will be addressed by the experts.” (Id.).
Plaintiff’s apparent position that order of steps is a matter for expert discovery instead of
claim construction is incorrect, as the Federal Circuit has held. Loral Fairchild Corp. v. Sony
Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999) (deciding the requisite order of steps as a matter of
claim construction); Interactive Gift, 256 F.3d at 1342 (same).
Moreover, because Plaintiff has refused to agree to Defendants’ proposed order of steps,
or even say which steps must happen in order, the Court has a duty to resolve this dispute. See
O2 Micro, 521 F.3d at 1362-3. Thus, the Court should reject Plaintiff’s attempt to avoid an order
of steps construction and adopt Defendants’ order of steps for ‘420 claim 25 and ‘664 claim 26.
IX.

ANTECEDENT BASIS TERMS
Term/Phrase

Defendants’ Construction

Plaintiff’s Construction

“informons” / “the
informons” (‘420 Claims 10,
25)

“informons” and “the
informons” are the same
informons

“informons” provides
antecedent basis for “the
informons”

“users” / “such users” (‘420
Claims 10, 25)

“users” and “such users” are the
same users

“users” provides antecedent
basis for “such users”

“a query” /”the query” (‘420
Claims 10, 25; ‘664 Claims
1, 26)

“a query” and “the query” are
the same query

“a query” provides
antecedent basis for “the
query”

“a feedback system” / “the
feedback system” (‘420
Claim 10; ‘664 Claim 1)

“a feedback system” and “the
feedback system” are the same
feedback system

“a feedback system” provides
antecedent basis for “the
feedback system”

“a scanning system” / “the
scanning system” (‘664
Claim 1)

“a scanning system” and “the
scanning system” are the same
scanning system”

“a scanning system” provides
antecedent basis for “the
scanning system”

28

“a first user” / “the first user” “a first user” and “the first user” “a first user” provides
(‘664 Claims 1, 26)
are the same first user
antecedent basis for “the first
user”
“a content-based filter
system” / “the content-based
filter system” (‘664 Claims
1, 21)

“a content-based filter system’
and “the content-based filter
system” are the same contentbased filter system

“a content-based filter
system” provides antecedent
basis for “the content-based
filter system”

The seven term dyads recited above are instances in which a term is first introduced in a
claim and then referred to with a definite article (“the” or “such”) later in the claim. For
instance, ‘664 claim 1 introduces “a scanning system” and later refers to “the scanning system”;
‘420 claim 10 introduces “users” and later refers to “such users”; etc.9 Under the basic canon of
“antecedent basis,” the second term in each dyad must be the same as the first term in the dyad.
In other words, “a scanning system” in ‘664 claim 1 is the same scanning system as “the
scanning system” recited later in the claim, “users” in ‘420 claim 10 are the same users as “the
users” recited later in the claim, etc. SSL Servs., LLC v. Citrix Sys., Inc., 816 F. Supp. 2d 364,
388 (E.D. Tex. 2011) (“The use of the definite article ‘the’ requires that ‘session key’ have an
antecedent basis, which is necessarily a session key referenced earlier in the claim steps”)
(emphasis added); Zenith Elecs. Corp. v. Exzec, Inc., No. 93-5041, 1995 WL 275591, *5 (N.D.
Ill. May 8, 1995) (“An indefinite article (‘a’ or ‘an’) is used to introduce an element. A definite
article (‘the’ or ‘said’) is used when a term has already been introduced, thereby making mention
of the earlier recitation of the element”) (emphasis added).
Plaintiff does not dispute that terms such as “the scanning system” would be indefinite
without a corresponding antecedent basis. See Halliburton Energy Servs., Inc. v. M-I LLC, 514
9

In the final dyad from this list (“a content-based filter system” / “the content-based
filter system”), “a content-based filter system” is introduced in '664 claim 1 and “the contentbased filter system” appears in '664 claim 21 (which depends from claim 1). For all the other
dyads, both terms in the dyad appear in the same claim.

29

F.3d 1244, 1249 (Fed. Cir. 2008) (explaining a claim could be indefinite “if a term does not have
proper antecedent basis.”) Plaintiff thus asserts that, for example, “a scanning system” provides
antecedent basis for “the scanning system” so as to preserve the validity of the claims.
Yet Plaintiff steadfastly refuses to acknowledge the consequence of the antecedent basis
canon – namely, that the second term in each dyad must be the same as the first. Plaintiff
initially refused to provide any construction for these dyads at all. (Preliminary Constructions at
8). Plaintiff now states that the first item in each dyad “provides antecedent basis for” the
second. Plaintiff thus would leave open the possibility that “the scanning system” in ‘664 claim
1 is a different scanning system than “a scanning system” recited earlier in the claim, etc. But
the antecedent basis canon forecloses this possibility. See Tuna Processors, Inc. v. Hawaii
Intern. Seafood, Inc., Nos. 2008-1410, 2008-1435, 2009 WL 1084197, at *6 (Fed. Cir. Apr. 23,
2009) (“[T]he introduction of a new element is accomplished through the use of an indefinite
article, not through the use of a definite article.”); SSL Servs., 816 F. Supp. 2d at 388.
Furthermore, Plaintiff’s construction would only serve to confuse a lay jury. It would
provide no benefit to say, for example, “a first user provides the antecedent basis to the first
user.” The jury will not know what to do with that. Only Defendants’ constructions for these
term dyads, which specify that the second term in each dyad must be the same as the first term in
the dyad, would provide any useful meaning for the jury.
Conclusion
For the foregoing reasons, Defendants’ constructions should be adopted.
Dated: April 12, 2012

By: /s/ Stephen E. Noona
Stephen E. Noona
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514

30

Telephone: [phone]
Facsimile: [phone]
By: /s/ David A. Perlson
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendants GOOGLE INC., IAC
SEARCH & MEDIA, INC., TARGET CORP., and
GANNETT COMPANY, INC.

By: /s/ Stephen E. Noona
Stephen E. Noona
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514
Telephone: [phone]
Facsimile: [phone]
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL, INC.

31

CERTIFICATE OF SERVICE
I hereby certify that on April 12, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510-1665
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for AOL Inc., Google, Inc.,
Gannett Co., Inc., Target Corporation and
IAC Search & Media, Inc.

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
11649500_1.DOC

32