I/P Engine, Inc. v. AOL, Inc. et al
Filing
127
Memorandum in Opposition re 104 MOTION to Compel Plaintiff to Supplement its Infringement Contentions (REDACTED PUBLIC VERSION) filed by I/P Engine, Inc.. (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, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25)(Sherwood, Jeffrey)
Exhibit 3
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
I/P ENGINE, INC.,
)
)
Plaintiff,
)
v.
)
Civ. Action No. 2:11-cv-512
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)
PLAINTIFF I/P ENGINE, INC.’S PRELIMINARY DISCLOSURE OF
ASSERTED CLAIMS AND PRE-DISCOVERY INFRINGEMENT CONTENTIONS
AS TO IAC SEARCH & MEDIA, INC.’S ASK.COM SPONSORED LISTINGS
Plaintiff I/P Engine, Inc. (“I/P Engine”) hereby makes the following Disclosure of
Asserted Claims and Pre-Discovery Infringement Contentions for U.S. Patent Nos. 6,314,420
(“the ‘420 patent”) and 6,775,664 (“the ‘664 patent”).
A.
Identification of Asserted Claims and Infringing Products
Defendant IAC Search & Media, Inc.’s (“IAC”) products, methods and systems
promoted under the name of Ask.com Sponsored Listings ( “Ask Sponsored Listings”) are
accused of infringing at least the following claims:
claims 10, 14, 15, 25, 27 and 28 of the ‘420 patent; and
claims 1, 5, 6, 21, 22, 26, 28 and 38 of the ‘664 patent.
Each asserted claim of the ‘420 and ‘664 patents is reproduced in the attached claim
charts. The left column of the claim charts includes the language of each claim; each limitation
of each claim is listed separately. The right column of the claim charts includes the features of
Ask Sponsored Listings that I/P Engine contends infringe each corresponding limitation in the
claim based on evidence currently available to I/P Engine. Based on the attached claim charts,
IAC is liable for direct infringement of the ‘420 and ‘664 patents.
These claim charts can be, and will be, supplemented and/or amended based upon
discovery, additional evidence, further investigation, and/or the claim construction by the Court.
B.
Identification of Infringing Structure, Acts, and/or Materials
As demonstrated by the attached claim charts and as described in IAC’s marketing
materials and other publicly available sources, each limitation of each claim of the ‘420 and ‘664
patents asserted against IAC is literally present in Ask Sponsored Listings. If IAC contends that
any limitation of any of the asserted claims is not literally present in Ask Sponsored Listings, any
such limitation of the asserted claims is present under the doctrine of equivalents because the
difference(s), if any, between Ask Sponsored Listings, and what is literally claimed in the
asserted claims is(are) insubstantial. I/P Engine will provide contentions under the doctrine of
equivalents if, after, and when IAC identifies which elements it contends are not present in Ask
Sponsored Listings.
C.
Identification of Priority Date
Each of the asserted claims of the ‘420 and ‘664 patents is entitled to a priority date at
least as early as the effective date of the ‘420 patent, i.e., December 3, 1998 (based on the filing
date of the patent application, U.S. Patent Application No. 09/204,149, that issued as the ‘420
patent). Additionally, each of the asserted claims of the ‘420 and ‘664 patents may be entitled to
an earlier effective date based on, without limitation, the filing of earlier related patent
applications.
D.
Indirect Infringement Disclosures
As demonstrated by the attached claim charts, the use of Ask Sponsored Listings
directly infringes the asserted claims of the ‘420 and ‘664 patents and establishes the prerequisite
act of direct infringement. IAC has also had knowledge of the ‘420 and ‘664 patents at least as
early as the filing date of this lawsuit, September 15, 2011 (D.I. 001).
2
IAC, via its marketing materials and other publicly available sources, provides, sells,
offers for sale, and/or promotes the infringing products, methods and systems of Ask Sponsored
Listings to its Publishers, advertisers and/or end users that use the infringing Ask Sponsored
Listings. Based on these marketing materials and uses, IAC intends for its Publishers,
advertisers and/or end users to use Ask Sponsored Listings in an infringing manner. Thus, IAC
intends to cause infringement of the ‘420 and ‘664 patents.
By making, using, providing, selling, and/or promoting its infringing Ask Sponsored
Listings, and by continuing to provide, sell, offer for sale, and/or promote its infringing Ask
Sponsored Listings, with the intention of causing at least some Publishers, advertisers and/or end
users to use Ask Sponsored Listings in an infringing manner, IAC actively and knowingly aids
and abets infringement of the ‘420 and ‘664 patents and is liable under induced infringement.
In addition, Ask Sponsored Listings is a material part of the claimed invention of the
‘420 and ‘664 patents. Ask Sponsored Listings is especially made or especially adapted for use
with only infringing search engine systems and/or search systems. Furthermore, Ask Sponsored
Listings is not a staple article. Ask Sponsored Listings is not a commodity of commerce and can
only be used with infringing search engine systems and/or search systems. Ask Sponsored
Listings is also not suitable for substantial non-infringing uses. Therefore, IAC is liable as a
contributory infringer.
3
These contentions are preliminary, are based on known publicly available
information, and are subject to change based on the Court’s claim construction. I/P Engine
reserves the right to amend and/or supplement these infringement contentions if and when
further information regarding Ask Sponsored Listings becomes available and/or for other good
cause.
Dated: November 11, 2011
By:
/s/ Charles J. Monterio, Jr.
Jeffrey K. Sherwood
Frank C. Cimino, Jr.
Kenneth W. Brothers
DeAnna Allen
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
Richard H. Ottinger
VANDEVENTER BLACK LLP
500 World Trade Center
Norfolk, VA 23510
Telephone: (757) 446-8600
Facsimile: (757) 446-8670
Counsel for Plaintiff I/P Engine, Inc.
4
CLAIM CHART FOR INFRINGEMENT OF U.S. PATENT NO. 6,314,420
Ask Sponsored Listings
CLAIM 10
a. A search engine system comprising:
ASK SPONSORED LISTINGS
The preamble is typically not a limitation and thus no comparison needs to be
made between the accused system, Ask Sponsored Listings, and the preamble.
See, e.g., Symantec Corp. v. Computer Associate Intern., Inc., 522 F.3d 1279,
1288 (Fed. Cir. 2008)(“Absent clear reliance on the preamble in the prosecution
history, or in situations where it is necessary to provide antecedent basis for the
body of the claim, the preamble generally is not limiting.”)(quotation omitted).
However, Ask Sponsored Listings includes a search engine system.
Ask Sponsored Listings includes a search engine system that searches for
information (e.g., advertisements) relevant to a search query. For example, when
a user enters a search query into the search bar on IAC’s website and selects the
“search” button, the user is presented with a list of relevant information, e.g.,
advertisements. See IPE0000661-IPE0000663 (showing an example search for
the term “grill”). Ask Sponsored Listings is the “search engine marketing
extension of Ask.com” and “Ask.com” is referred to by IAC as “a Top Tier
search engine.” IPE0000664.
b. a system for scanning a network to make a
demand search for informons relevant to a query
from an individual user;
Ask Sponsored Listings also uses its search engine system to display
advertisements on the websites of its Publishers, i.e., IAC’s network of websites
and the websites of its partners, including “over 100 premium search sites, meta
search sites, and portals & lifestyle, technology, travel and business sites.”
IPE0000664.
Ask Sponsored Listings includes a system for scanning a network to make a
demand search for information relevant to a query from a user. For example,
search bars on sites affiliated with Ask Sponsored Listings, such as the Ask.com
website (www.ask.com) and websites in the “Ask Sponsored Listings network.”
5
CLAIM 10
c. 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
d. a feedback system for receiving collaborative
feedback data from system users relative to
informons considered by such users;
e. 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.
CLAIM 14
The system of claim 10 wherein the
collaborative feedback data comprises passive
feedback data.
ASK SPONSORED LISTINGS
allow a user to enter a search term to run a demand search. See section a. In
response to the query, the system conducts a demand search for information. See
IPE0000661-IPE0000663. Upon information and belief, the information is
stored on a distributed database across several locations on a network(s).
Ask Sponsored Listings includes a system for receiving the information from the
scanning system and for filtering the information on the basis of applicable
content profile data for relevance to the query. See IPE0000668 (“[p]lacement of
ads on the Ask Sponsored Listings (ASL) network may vary across the ASL
network according to [factors including] ASL network content matched with
your keywords and ads [and] the relevancy of your ads”).
Ask Sponsored Listings includes a system that receives feedback data from
system users, the feedback data being related to the website information returned
as results and considered by users. See IPE0000668 (“[p]lacement of ads on the
Ask Sponsored Listings (ASL) network may vary across the ASL network
according to [factors including] the click volume your ads received in
comparison to the ads of other advertisers (CTR)”).
Ask Sponsored Listings includes a system that combines pertaining feedback
data with content data in filtering information for relevance to the query. Per
sections c and d, Ask Sponsored Listings filters advertisements to determine if
they will be included on a web page by combining content data (“the relevancy
of the ads”) and feedback data from the feedback system (“click volume [the] ads
received in comparison to the ads of other advertisers”). IPE0000668.
ASK SPONSORED LISTINGS
Ask Sponsored Listings collects and uses feedback data in the form of CTR. See
claim 10 section d. The CTR recorded by Ask Sponsored Listings is passive
feedback data.
6
CLAIM 15
The system of claim 14 wherein the passive
feedback data is obtained by passively
monitoring the actual response to a proposed
informon.
ASK SPONSORED LISTINGS
Ask Sponsored Listings passively monitors a user’s behavior related to proposed
advertisements. Ask Sponsored Listings records the clickthrough rates of each
respective advertisement. See claim 10 section d.
CLAIM 25
a. A method for operating a search engine
system comprising:
ASK SPONSORED LISTINGS
The preamble is typically not a limitation and thus no comparison needs to be
made between the accused system, Ask Sponsored Listings, and the preamble.
See, e.g., Symantec Corp. v. Computer Associate Intern., Inc., 522 F.3d 1279,
1288 (Fed. Cir. 2008)(“Absent clear reliance on the preamble in the prosecution
history, or in situations where it is necessary to provide antecedent basis for the
body of the claim, the preamble generally is not limiting.”)(quotation omitted).
However, Ask Sponsored Listings includes a method for operating a search
engine system.
Ask Sponsored Listings includes a search engine system that searches for
information (e.g., advertisements) relevant to a search query. For example, when
a user enters a search query into the search bar on IAC’s website and selects the
“search” button, the user is presented with a list of relevant information, e.g.,
advertisements. See IPE0000661-IPE0000663 (showing an example search for
the term “grill”). Ask Sponsored Listings is the “search engine marketing
extension of Ask.com” and “Ask.com” is referred to by IAC as “a Top Tier
search engine.” IPE0000664.
b. scanning a network to make a demand search
Ask Sponsored Listings also uses its search engine system to display
advertisements on the websites of its Publishers, i.e., IAC’s network of websites
and the websites of its partners, including “over 100 premium search sites, meta
search sites, and portals & lifestyle, technology, travel and business sites.”
IPE0000664.
For example, search bars on sites affiliated with Ask Sponsored Listings, such as
7
CLAIM 25
for informons relevant to a query from an
individual user;
c. receiving the informons in a content-based
filter system from the scanning system and
filtering the informons on the basis of applicable
content profile data for relevance to the query;
d. receiving collaborative feedback data from
system users relative to informons considered by
such users; and
e. combining pertaining feedback data with the
content profile data in filtering each informon
for relevance to the query.
CLAIM 27
The method of claim 25 wherein the
collaborative feedback data provides passive
feedback data.
ASK SPONSORED LISTINGS
the Ask.com website (www.ask.com) and websites in the “Ask Sponsored
Listings network.” allow a user to enter a search term to run a demand search.
See section a. In response to the query, the system conducts a demand search for
information. See IPE0000661-IPE0000663. Upon information and belief, the
information is stored on a distributed database across several locations on a
network(s).
Ask Sponsored Listings receives information from the scanning system and
filters the information on the basis of applicable content profile data for relevance
to the query. See IPE0000668 (“[p]lacement of ads on the Ask Sponsored
Listings (ASL) network may vary across the ASL network according to [factors
including] ASL network content matched with your keywords and ads [and] the
relevancy of your ads”).
Ask Sponsored Listings also receives feedback data from system users, the
feedback data being related to the website information returned as results and
considered by users. See IPE0000668 (“[p]lacement of ads on the Ask
Sponsored Listings (ASL) network may vary across the ASL network according
to [factors including] the click volume your ads received in comparison to the ads
of other advertisers (CTR)”).
Ask Sponsored Listings combines pertaining feedback data with content data in
filtering information for relevance to the query. Per sections c and d, Ask
Sponsored Listings filters advertisements to determine if they will be included on
a web page by combining content data (“the relevancy of the ads”) and feedback
data from the feedback system (“click volume [the] ads received in comparison
to the ads of other advertisers”). IPE0000668.
ASK SPONSORED LISTINGS
Ask Sponsored Listings collects and uses feedback data in the form of CTR. See
claim 25 section d. The CTR recorded by Ask Sponsored Listings is passive
feedback data.
8
CLAIM 28
The method of claim 27 wherein the passive
feedback data is obtained by passively
monitoring the actual response to a proposed
informon.
ASK SPONSORED LISTINGS
Ask Sponsored Listings passively monitors a user’s behavior related to proposed
advertisements. Ask Sponsored Listings records the clickthrough rates of each
respective advertisement. See claim 25 section d.
9
CLAIM CHART FOR INFRINGEMENT OF U.S. PATENT NO. 6,775,664
Ask Sponsored Listings
CLAIM 1
a. A search system comprising:
ASK SPONSORED LISTINGS
The preamble is typically not a limitation and thus no comparison needs to be
made between the accused system, Ask Sponsored Listings, and the preamble.
See, e.g., Symantec Corp. v. Computer Associate Intern., Inc., 522 F.3d 1279,
1288 (Fed. Cir. 2008)(“Absent clear reliance on the preamble in the prosecution
history, or in situations where it is necessary to provide antecedent basis for the
body of the claim, the preamble generally is not limiting.”)(quotation omitted).
However, Ask Sponsored Listings includes a search system.
Ask Sponsored Listings includes a system that searches for information (e.g.,
advertisements) relevant to a search query. For example, when a user enters a
search query into the search bar on IAC’s website and selects the “search”
button, the user is presented with a list of relevant information, e.g.,
advertisements. See IPE0000661-IPE0000663 (showing an example search for
the term “grill”). Ask Sponsored Listings is the “search engine marketing
extension of Ask.com” and “Ask.com” is referred to by IAC as “a Top Tier
search engine.” IPE0000664.
b. a scanning system for searching for
information relevant to a query associated with a
first user in a plurality of users;
Ask Sponsored Listings also uses its system to display advertisements on the
websites of its Publishers, i.e., IAC’s network of websites and the websites of its
partners, including “over 100 premium search sites, meta search sites, and portals
& lifestyle, technology, travel and business sites.” IPE0000664.
Ask Sponsored Listings includes a system for searching for information relevant
to a query from a user. For example, search bars on sites affiliated with Ask
Sponsored Listings, such as the Ask.com website (www.ask.com) and websites
in IAC’s network of websites and the websites of its partners allow a user to enter
a search term to run a demand search. See section a. In response to the query,
the system conducts a search for information. See C006-C007. The
10
CLAIM 1
c. a feedback system for receiving information
found to be relevant to the query by other users;
and
d. 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.
CLAIM 5
The search system of claim 1 wherein the
filtered information is an advertisement.
ASK SPONSORED LISTINGS
advertisements are searched for, in part, based on the relevance of content data.
See IPE0000668 (“[p]lacement of ads on the Ask Sponsored Listings (ASL)
network may vary across the ASL network according to [factors including] ASL
network content matched with your keywords and ads [and] the relevancy of
your ads”).
Ask Sponsored Listings includes a system for receiving information found to be
relevant to the query by users of the system. See IPE0000668 (“[p]lacement of
ads on the Ask Sponsored Listings (ASL) network may vary across the ASL
network according to [factors including] the click volume your ads received in
comparison to the ads of other advertisers (CTR)”).
Ask Sponsored Listings includes a system for combining information from the
feedback system with information from the scanning system to filter information
for relevance to the query. Per sections c and d, Ask Sponsored Listings filters
advertisements to determine if they will be included on a web page by combining
content data (“the relevancy of the ads”) and feedback data from the feedback
system (“click volume [the] ads received in comparison to the ads of other
advertisers”). IPE0000668.
ASK SPONSORED LISTINGS
Ask Sponsored Listings filters advertisements. See claim 1 sections a-d.
CLAIM 6
ASK SPONSORED LISTINGS
The search system of claim 1 further comprising Ask Sponsored Listings delivers information to a user in the form of links to
an information delivery system for delivering the websites with short descriptions. See IPE0000661-IPE0000663 (displaying an
filtered information to the first user.
example search for “grill”).
11
CLAIM 21
The search system of claim 1 wherein the
content-based filter system filters by extracting
features from the information.
ASK SPONSORED LISTINGS
Ask Sponsored Listings extracts features (e.g., text) from an advertisement to
perform content-based filtering. IPE0000668
CLAIM 22
The search system of claim 21 wherein the
extracted features comprise content data
indicative of the relevance to the at least one of
the query and the user.
ASK SPONSORED LISTINGS
In Ask Sponsored Listings, the extracted features described in claim 21 are
content data that is used to indicate the relevance of an item to the user’s query.
See claim 1 section b.
CLAIM 26
a. A method for obtaining information relevant
to a first user comprising:
ASK SPONSORED LISTINGS
The preamble is typically not a limitation and thus no comparison needs to be
made between the accused system, Ask Sponsored Listings, and the preamble.
See, e.g., Symantec Corp. v. Computer Associate Intern., Inc., 522 F.3d 1279,
1288 (Fed. Cir. 2008)(“Absent clear reliance on the preamble in the prosecution
history, or in situations where it is necessary to provide antecedent basis for the
body of the claim, the preamble generally is not limiting.”)(quotation omitted).
However, Ask Sponsored Listings includes a method for obtaining information
relevant to a first user.
Ask Sponsored Listings includes a method for obtaining information relevant to a
user. For example, when a user enters a search query into the search bar on
IAC’s website and selects the “search” button, the user is presented with a list of
relevant information, e.g., advertisements. See IPE0000661-IPE0000663
(showing an example search for the term “grill”). Ask Sponsored Listings is the
“search engine marketing extension of Ask.com” and “Ask.com” is referred to by
IAC as “a Top Tier search engine.” IPE0000664.
12
CLAIM 26
b. searching for information relevant to a query
associated with a first user in a plurality of users;
c. receiving information found to be relevant to
the query by other users;
d. combining the information found to be
relevant to the query by other users with the
searched information; and
e. content-based filtering the combined
information for relevance to at least one of the
query and the first user.
ASK SPONSORED LISTINGS
Ask Sponsored Listings also displays advertisements on the websites of its
Publishers, i.e., IAC’s network of websites and the websites of its partners,
including “over 100 premium search sites, meta search sites, and portals &
lifestyle, technology, travel and business sites.” IPE0000664.
Ask Sponsored Listings searches for information relevant to a query associated
with a user. For example, search bars on sites affiliated with Ask Sponsored
Listings, such as the Ask.com website (www.ask.com) and websites in IAC’s
network of websites and the websites of its partners allow a user to enter a search
term to run a demand search. See section a. In response to the query, the system
conducts a search for information. See C006-C007. The advertisements are
searched for, in part, based on the relevance of content data. See IPE0000668
(“[p]lacement of ads on the Ask Sponsored Listings (ASL) network may vary
across the ASL network according to [factors including] ASL network content
matched with your keywords and ads [and] the relevancy of your ads”).
Ask Sponsored Listings receives information found to be relevant to the query by
users of the system. See IPE0000668 (“[p]lacement of ads on the Ask Sponsored
Listings (ASL) network may vary across the ASL network according to [factors
including] the click volume your ads received in comparison to the ads of other
advertisers (CTR)”).
Ask Sponsored Listings combines information found to be relevant to the query
with the searched information. Per sections c and d, Ask Sponsored Listings
filters advertisements to determine if they will be included on a web page by
combining content data (“the relevancy of the ads”) and feedback data from the
feedback system (“click volume [the] ads received in comparison to the ads of
other advertisers”). IPE0000668.
Upon information and belief, the information combined in section d is filtered for
relevance to the user’s query, and is displayed along with other query results.
See IPE0000668 (“[p]lacement of ads . . . may vary across the ASL network
according to . . . ASL network user actions and ASL network content matched
with your keywords and ads.”); see also IPE0000661-IPE0000663 (showing an
example search for the term “grill”).
13
CLAIM 28
28. The method of claim 26 further comprising
the step of delivering the filtered information to
the first user.
ASK SPONSORED LISTINGS
Ask Sponsored Listings delivers filtered information to a user in the form of links
to websites with short descriptions. See IPE0000661-IPE0000663 (displaying an
example search for the term “grill”).
CLAIM 38
38. The method of claim 26 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.
ASK SPONSORED LISTINGS
Ask Sponsored Listings scans a network in response to a demand search for
information relevant to a query from a user. For example, search bars on sites
affiliated with Ask Sponsored Listings, such as the Ask.com website
(www.ask.com) and websites in the “Ask Sponsored Listings network.” allow a
user to enter a search term to run a demand search. See section a. In response to
the query, the system conducts a demand search for information. See
IPE0000661-IPE0000663. Upon information and belief, the information is
stored on a distributed database across several locations on a network(s).
14
CERTIFICATE OF SERVICE
I hereby certify that on this 11th day of November, 2011, the foregoing Plaintiff I/P
Engine, Inc’s Preliminary Disclosure of Asserted Claims and Pre-Discovery Infringement
Contentions as to IAC Search & Media, Inc.’s Ask.com Sponsored Listings, was served via
email, on the following:
Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St
Suite 2100
Norfolk, VA 23510
senoona@kaufcan.com
David Bilsker
David Perlson
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
davidbilsker@quinnemanuel.com
davidperlson@quinnemanuel.com
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
robert.burns@finnegan.com
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
cortney.alexander@finnegan.com
/s/ Armands Chagnon
Senior Paralegal
DSMDB-2997346v1
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