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

Filing 310

Declaration re 307 MOTION in Limine #5 to Preclude Plaintiff From Introducing Evidence of Damages Against AOL Inc., Gannett Co., Inc., IAC Search & Media, Inc. and Target Corporation, 301 MOTION in Limine #2 to Exclude Evidence of Entire Market Value of Accused Products and of Defendants' Size, Wealth and Overall Revenues, 303 MOTION in Limine #3 to Exclude Marketing and High-Level Non-Technical Materials Related to Historical Click-Through Rate, 305 MOTION in Limine #4 to Preclude Plaintiff from Offering Evidence or Argument Relating to Defendants' Conduct During Discovery or to Google's Unproduced Licenses, 299 MOTION in Limine #1 to Preclude Plaintiff From Introducing Evidence of Willful Infringement, Pre-Suit Knowledge, or Copying of Joshua L. Sohn in Support of Defendants' Motions in Limine by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J)(Noona, Stephen)

EXHIBIT E

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.
)
__________________________________________)
REBUTTAL EXPERT REPORT OF DR. JAIME
CARBONELL REGARDING VALIDITY OF
U.S. PATENT NOS. 6,314,420 and 6,775,664

query and/or a user” and that “one skilled in the art would be familiar with the underlying
techniques and would immediately see the possibility of applying them to the problem of the
patents, as evidenced by the numerous prior art systems using the same techniques towards the
same end.”
190.

As I have already noted, viewing the interrelated teachings of the prior art

references relied upon by Dr. Ungar, there was simply no consideration or attempt by those
skilled in the art to tightly integrate ad-hoc search systems and profile systems in the manner
recited in the asserted claims of the ‘420 and ‘664 patents. It is my opinion that one of ordinary
skill in the art in 1998 would not have immediately seen the possibility of achieving such tight
integration as reflected in the asserted claims of the ‘420 and ‘664 patents, and that the asserted
claims of those patents would not have been obvious to one of ordinary skill in the art.
B. Secondary Considerations
191.

With respect to secondary considerations, there are considerations that would

overcome any determination of obviousness. First, the commercial success of tightly integrating
query, content data and collaborative feedback data in the manner taught by the ‘420 and ‘664
patents is evidenced by the activities of modern search engines including Google. I understand
from Dr. Frieder that Google’s system uses a combination of content data and collaborative
feedback data to filter advertisements for relevance to the query. I understand from Dr. Becker
that Google’s system is commercially successful.
192.

Furthermore, there clearly was a long felt recognized need to improve search.

The prior art references relied upon by Defendants and Dr. Ungar makes this case evident.
Moreover, the same prior art references attempted to address this need with half measures by
combining some of the elements while not using others and failed to arrive at a tight integration.

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Both the disclosure of the need and the attempts to meet it provide strong evidence for a long
felt, but unresolved need.
193.

As discussed throughout this report, the prior art references relied upon by

Defendants and Dr. Ungar attempted to meet the need in different, incomplete and partial ways.
They all failed to disclose a tight integration between ad-hoc search systems and profile systems
as required to produce globally optimum filtering results. As such, this satisfies one of the
secondary considerations – the failures of others – of the Graham factors.
Executed on this 29th day of August, 2012, in Pittsburgh, PA.

By
Jaime Carbonell

August 29, 2012

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