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)

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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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