Interval Licensing LLC v. AOL, Inc. et al

Filing 188

DECLARATION of Shannon M. Jost filed by Defendants Google Inc, YouTube LLC re #187 MOTION for Reconsideration re #178 Order, Set/Reset Trial Date and Related Deadlines,,,,,,,,,, and Clarification (Attachments: #1 Exhibit A, #2 Exhibit B)(Jost, Shannon)

Interval Licensing LLC v. eBay, Inc. et al

Doc. 188 Att. 2

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Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

HON. MARSHA J. PECHMAN

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE

INTERVAL LICENSING LLC, Plaintiff, v. AOL, INC.; APPLE, INC.; eBAY, INC.; FACEBOOK, INC.; GOOGLE INC.; NETFLIX, INC.; OFFICE DEPOT, INC.; OFFICEMAX INC.; STAPLES, INC.; YAHOO! INC.; AND YOUTUBE, LLC, Defendants.

Case No. 2:10-cv-01385-MJP Defendants' Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314

Pursuant to the Court's February 16, 2011 Scheduling Order, the Court's Standing Order for Patent Cases, and Local Patent Rules ("P.R.") 121 and 122, Defendants AOL, Inc., Apple Inc, Google Inc., and Yahoo! Inc. (collectively, "Defendants") hereby serve these Invalidity Contentions ("Invalidity Contentions") regarding U.S. Patent Nos. 6,034,652 (the "'652 Patent") and 6,788,314 (the "'314 Patent") (collectively, "Asserted Patents"). This document provides Part IV and Part V of the February 28, 2011 Invalidity Contentions served by all above-named defendants.

EXHIBIT B
Dockets.Justia.com

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IV.

THE '652 PATENT A. Anticipation

Pursuant to P.R. 121, Defendants identify the following prior art now known to Defendants to anticipate at least one of the asserted claims of the '652 Patent under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as understood by a person having ordinary skill in the art. In some instances, Defendants have treated certain prior art as anticipatory where certain elements are inherently present, and in particular where elements are inherently present based on Plaintiff's apparent claim construction in its Infringement Contentions. Invalidity claim charts for these references with respect to the '652 Patent are attached to these Invalidity Contentions. 1. 2. 3. 4. 5. 6. U.S. Patent No. 5,748,190 to Kjorsvik (issued May 5, 1998) U.S. Patent No. 5,913,040 to Rakavy et al. (issued June 15, 1999) U.S. Patent No. 5,796,945 to Tarabella (issued August 18, 1998) U.S. Patent No. 5,959,623 to Van Hoff et al. (issued September 28, 1999) U.S Patent No. 5,740,549 to Reilly et al., (issued April 14, 1998) PCT Publication No. WO 94/30000 to Beaumont et al. (published December 22, 1994) 7. 8. 9. The Official America Online for Windows Tour Guide (2d ed. 1994) Novell GroupWise Version 4.1 Reference for Macintosh (1994) Systems and methods invented, designed, developed and/or in public use or on

sale related to BackWeb, as exemplified by the Rakavy '040 patent and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by BackWeb before August 22, 1995, and may have been in public use or on sale by BackWeb before March 22, 1995. 10. Systems and methods invented, designed, developed and/or in public use or on

sale by AT&T Corp., as exemplified by the U.S. Patent No. U.S. Patent No. 5,819,284 and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by AT&T Corp. before March
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24, 1995, and may have been in public use or on sale by AT&T Corp. before March 22, 1995. 11. Systems and methods invented, designed, developed and/or in public use or on

sale related to PointCast, as exemplified by the Reilly '549 patent and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed, and developed by PointCast, Inc., before June 12, 1995, and may have been in public use or on sale by PointCast, Inc., before March 22, 1995. 12. Systems and methods invented, designed, developed and/or in public use or on

sale related to AOL's email or instant messaging systems, as exemplified by "The Official America Online for Windows Tour Guide" (2d ed. 1994) and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by AOL during or prior to 1994, and may have been in public use or on sale by AOL during or prior to 1994. 13. Systems and methods invented, designed, developed and/or in public use or on

sale related to the Zephyr Notification Service, as exemplified by "The Zephyr Notification Service," C. Anthony DellaFera, MIT 1988, and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by Ciarán Anthony DellaFera, Michael R. Gretzinger, Mark W. Eichin, Robert S. French, David C. Jedlinsky, John T. Kohl, and/or William E. Sommerfeld during or prior to 1986, and may have been in public use or on sale by Ciarán Anthony DellaFera, Michael R. Gretzinger, Mark W. Eichin, Robert S. French, David C. Jedlinsky, John T. Kohl, and/or William E. Sommerfeld before March 22, 1995. B. Obviousness

Pursuant to P.R. 121, Defendants identify the following additional prior art references and systems now known to Defendants that either alone or in combination with other prior art (including any of the above-identified anticipatory prior art and the additional prior art disclosed in this section) render one or more of the asserted claims of the '652 Patent invalid as obvious under 35 U.S.C. § 103. Invalidity claim charts for these references with respect to the '652 Patent are also attached to these Invalidity Contentions. Defendants further identify combinations of
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prior art (including any of the above-identified anticipatory prior art and the additional prior art disclosed in this section) that render one or more of the asserted claims of the '652 Patent invalid as obvious under 35 U.S.C. § 103. In certain instances, the suggested obviousness combinations are provided in the alternative to Defendants' anticipation contentions and are not to be construed to suggest that any reference included in the combinations is not by itself anticipatory. 1. 2. 3. 4. 5. 6. 7. 8. 9. U.S. Patent No. 5,572,643 to Judson (issued November 5, 1996) U.S. Patent No. 5,819,284 to Farber et al. (issued October 6, 1998) U.S. Patent No. 5,796,967 to Filepp et al. (issued August 18, 1998) U.S. Patent No. 5,436,637 to Gayraud et al. (issued July 25, 1995) U.S. Patent No. 5,309,234 to Kranawetter et al. (issued May 3, 1994) U.S. Patent No. 5,781,894 to Petrecca et al. (issued July 14, 1998) U.S. Patent No. 5,617,526 to Oran et al. (issued April 1, 1997) The Zephyr Notification Service, C. Anthony DellaFera, (MIT 1988) Systems and methods invented, designed, developed and/or in public use or on

sale related to DeskPicture by Peirce Software and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by Peirce Software during or prior to 1993, and may have been in public use or on sale by Peirce Software during or prior to 1993. Each prior art reference and systems (collectively for this subsection, "references") disclosed in the preceding Anticipation section and in this Obviousness section, either alone or in combination with other prior art, also renders the asserted claims of the '652 Patent invalid as obvious. In addition, each anticipatory prior art reference and/or each additional prior art reference may be combined with (1) information known to persons skilled in the art at the time of the alleged invention, (2) any of the anticipatory prior art references, and/or (3) any of the additional prior art references identified above in this section to render these claims invalid as obvious. Defendants hereby incorporate the description in the February 28, 2011 Invalidity Contentions served by all above-named defendants summarizing the law regarding obviousness.
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Because the '652 Patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than what one would expect from such an arrangement, the combination is obvious. Further, in the prior art, there were well-recognized design needs and market pressures to present information to a user in the vicinity of a display device. Such design needs and market pressures provided ample reason to combine the prior art elements. KSR, 127 S. Ct. at 1742. Moreover, since there were a finite number of predictable solutions, a person of ordinary skill in the art had good reason to pursue the known options. Id. The above identified prior art references use those familiar elements for their primary or wellknown purposes in a manner well within the ordinary level of skill in the art. Accordingly, common sense and knowledge of the prior art render the claims invalid under either § 102 or § 103. Moreover, a person of ordinary skill would have been motivated to combine the above prior art based on the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art. The identified prior art addresses the same or similar technical issues and suggests the same or similar solutions to those issues. To the extent that Plaintiff challenges a combination of prior art with respect to a particular element, Defendants reserve the right to supplement these contentions to further specify the motivation to combine the prior art. Defendants may rely on cited or uncited portions of the prior art, other documents, and expert testimony to establish that a person of ordinary skill in the art would have been motivated to modify or combine the prior art so as to render the claims invalid as obvious. Below are several examples of prior art combinations with respect to particular limitations. These prior art combinations are not exhaustive; rather, they are illustrative examples of the prior art combinations disclosed generally above. These exemplary combinations are alternatives to Defendants' anticipation and single reference obviousness contentions, and, thus, they should not be interpreted as indicating that any of the individual references included in the exemplary combinations are not alone in invalidating prior art under 35 U.S.C. §§ 102 and/or 103. To the extent that Plaintiff contends that any of the above-identified prior art fails to
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disclose one or more limitations of the asserted claims of the '652 Patent, Defendants reserve the right to identify other prior art references that would render the claims obvious despite the allegedly missing limitation. Defendants reserve all rights to supplement or modify these Joint Invalidity Contentions and to rely on other references that prove invalidity of these claims in a manner consistent with the Federal Rules of Civil Procedure and the Rules of this Court. 1. U.S. Patent No. 5,748,190 to Kjorsvik, in view of one or more of the following: o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera 2. U.S. Patent No. 5,913,040 to Rakavy et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al.
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o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S. Patent No. 5,796,945 to Tarabella, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S. Patent No. 5,959,623 to Van Hoff et al., in view of one or more of the following:
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o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S. Patent No. 5,572,643 to Judson, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al.
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o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S Patent No. 5,740,549 to Reilly et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera PCT Publication No. WO 94/30000 to Beaumont et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh
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o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera The Official America Online for Windows Tour Guide, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera Novell GroupWise Version 4.1 Reference for Macintosh, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik
Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

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o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera Enablement, Written Description, Indefiniteness Invalidity Under 35 U.S.C. § 112

The Court's Standing Order for Patent Cases requires, for each asserted claim, the identification of "any grounds for invalidity based on indefiniteness, enablement, or written description under 35 U.S.C. § 112." Defendants provide below their preliminary invalidity contentions on those three issues, for the asserted claims, preserving all other invalidity contentions under other provisions of Section 112 (or any other Sections, such as Section 101), and preserving all invalidity contentions for the non-asserted claims. Defendants hereby incorporate the description in the February 28, 2011 Invalidity Contentions served by all above-named defendants summarizing the law regarding § 112. As Defendants best understand Plaintiff's Infringement Contentions at this time, certain asserted claims of the '652 Patent fail to meet the requirements of 35 U.S.C. § 112(2) and/or 35 U.S.C. § 112(1) for at least the following reasons.

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1.

Indefiniteness Under 35 U.S.C. § 112(2) a. Additional Legal Principles

To determine the proper scope of a mean-plus-function claim in accordance with 35 U.S.C. § 112(6), a court must review the patent specification to identify what corresponding structure is disclosed as performing the claimed function. Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999). When a patent specification does not disclose an algorithm corresponding to a computer-enabled means-plus-function limitation, the claim necessarily fails to particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112(2). Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 754 (2008); Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333-35 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 754 (2008); see also Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009); Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). While a patent claim that does not include the term "means" is not presumptively subject to § 112(6) and the algorithm disclosure requirements for computer-enabled functions, such a limitation will still be subject to 112(6) if "the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Massachusetts Inst. of Tech. and Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1353 (Fed. Cir. 2006) (internal quotations and citations omitted); see also, e.g., Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (ruling claim limitation reciting "a mechanism for moving ..." was a means-plus-function limitation despite not including the word "means" because "no adjective endows the claimed `mechanism' with a physical or structural component"); Inventio AG v. ThyssenKrupp Elevator Americas Corp., 718 F. Supp. 2d 529, 558-59 (D. Del. 2010) (holding claim term "computing unit" was a means-plus-function limitation because nothing in the claim language provided sufficient structure for any of the functions performed by the "computing unit"). b. Independent Claim 4
Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

Indefinite Claims

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Claim 4 and all claims dependent thereon fail to satisfy the requirements of § 112(2) because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims. "peripheral attention" "set of content data" "selectively displaying" "in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus" "control option(s)"

Claim 4 and all claims dependent thereon also fail to satisfy the requirements of § 112(2) because the specification lacks a supporting disclosure of appropriate structure for performing the claimed functions recited in the following means-plus-function limitations: "means for acquiring a set of content data from a content providing system" "means for selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data" "means for displaying one or more control options with the display device while the means for selectively displaying is operating" "means for controlling aspects of the operation of the system in accordance with a selected control option" Interval's own contentions confirm these are not supported by an appropriate disclosure because Interval has asserted that the limitations cover processors "configured to execute instructions" that perform the recited function. Dependent Claims 5, 6, 7, 8, and 11 Claim 5 fails to satisfy the requirements of § 112(2) because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims.
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"scheduling the display"

Claim 11 fails to satisfy the requirements of § 112(2) because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims. "establish(es) a link"

Claims 6, 7, and 8 fail to satisfy the requirements of § 112(2) because they include unsupported means-plus-function limitations: "means for scheduling the display of an image or images generated from a set of content data" Independent Claim 15 Claim 15 and all claims dependent thereon fail to satisfy the requirements of § 112(2) because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims. "set of content data" "attention manager" "user interface installation instructions" "content data scheduling instructions for providing temporal constraints" "sequencing instructions" "display instructions" "temporal constraints on the display" "during operation of an attention manager"

Claim 15 and all claims dependent thereon also fail to satisfy the requirements of § 112(2) because they include indefinite means-plus-function limitations, or whether interpreted as meansplus-function claims or not, they do not have a supporting disclosure of how the functions of the claimed instructions are implemented. Although the term "means" is not present in the claim, the claim limitations with the "instructions for/that" language fail to recite sufficient structure for performing the functions as demonstrated below.
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"acquisition instructions for enabling acquisition of a set of content data from a specified information source"

"user interface installation instructions for enabling provision of a user interface that allows a person to request the set of content data from the specified information source"

"content data scheduling instructions for providing temporal constraints on the display of the image or images generated from the set of content data"

"sequencing instructions that specify an order in which the images generated from a set of content data are displayed"

"display instructions for enabling display of the image or images generated from the set of content data"

Interval's own infringement contentions demonstrate that it intends to assert that these limitations cover any instructions that perform the recited function. Independent Claim 17 To the extent claim 17 contains the same or similar limitations as identified above for claim 15, claim 17 likewise fails to satisfy the requirements of § 112(2). Claim 17 also fails to satisfy the requirements of § 112(2) because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims. "saturation instructions that constrain the number of times that the image or images generated from a set of content data can be displayed" Claim 17 also fails to satisfy the requirements of § 112(2) because it includes the additional indefinite means-plus-function limitations, or whether interpreted as means-plusfunction claims or not, they do not have a supporting disclosure of how the functions of the claimed instructions are implemented. "saturation instructions that constrain the number of times that the image or images generated from a set of content data can be displayed" Independent Claim 18
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To the extent claim 18 contains the same or similar limitations as identified above for claim 15, claim 18 likewise fails to satisfy the requirements of § 112(2). Claim 18 also fails to satisfy the requirements of § 112(2) because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims. "content data update instructions" "corresponds to a previously acquired set of content data" "audit instructions for monitoring usage of the content display system to selectively display an image or images generated from a set of content data" Claim 18 also fails to satisfy the requirements of § 112(2) because it includes the additional indefinite means-plus-function limitations, or whether interpreted as means-plusfunction claims or not, they do not have a supporting disclosure of how the functions of the claimed instructions are implemented. "content data update instructions for enabling acquisition of an updated set of content data from an information source that corresponds to a previously acquired set of content data" "operating instructions for beginning, managing and terminating the display on the display device of an image generated from a set of content data" "content display system scheduling instructions for scheduling the display of the image or images on the display device" "installation instructions for installing the operating instructions and content display system scheduling instructions on the content display system" "audit instructions for monitoring usage of the content display system to selectively display an image or images generated from a set of content data" Interval's own infringement contentions demonstrate that it intends to assert that these limitations cover any instructions that perform the recited function. 2. Lack of Written Description Under 35 U.S.C. § 112(1)

Even if the terms identified in the preceding section are not determined to be means-plusDefendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

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function limitations, such terms are lacking a supporting disclosure of an algorithm to perform the recited function and are thus invalid as lacking a written description. Dependent Claim 11 Claim 11 is invalid as lacking a supporting written description if interpreted as broadly as Interval's contentions because the limitation "establish a link with an information location" is not supported in the disclosure. To the extent Interval is asserting that this claim covers a link to an information location that it asserts is a source or otherwise provides the alleged notices or images, rather than another or additional location, this claim limitation is unsupported because the specification describes at most a link to an additional information source, not the source for the original content data. Claims 15-18 To the extent Interval asserts these claims cover systems, methods or media that do not require the operation of some means to detect an idle period or other period of inactivity by the user, they are not supported by a written description, at least because the terms "temporal constraints on the display" and "during operation of an attention manager" require the same. 3. Lack of Enablement Under 35 U.S.C. § 112(1)

The terms identified above as lacking a supporting disclosure of an algorithm to perform the recited function are invalid as not enabled given their indeterminate scope. Independent Claims 15, 17, and 18 In the alternative, the "instructions for [that]" limitations described above in section IV(C)(1)(b) for claims 15, 17, and 18 as invalid means-plus-function limitations are also invalid for lack of enablement under § 112(1). The functions the "instructions" must perform are not adequately disclosed such that a programmer of ordinary skill in the art could create the necessary "instructions" or software code without undue experimentation. Dependent Claim 16 Claim 16 is invalid for lack of enablement under § 112(1) because it depends upon invalid claim 15.

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V.

THE '314 PATENT A. Anticipation

Pursuant to P.R. 121, Defendants identify the following prior art now known to Defendants to anticipate one or more of the asserted claims of the '314 Patent under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as understood by a person having ordinary skill in the art. In some instances, Defendants have treated certain prior art as anticipatory where certain elements are inherently present, and in particular where elements are inherently present based on Plaintiff's apparent claim construction in its Infringement Contentions. Invalidity claim charts for these references with respect to the '314 Patent are attached to these Invalidity Contentions. 1. 2. 3. 4. 5. 6. U.S. Patent No. 5,748,190 to Kjorsvik (issued May 5, 1998) U.S. Patent No. 5,913,040 to Rakavy et al. (issued June 15, 1999) U.S. Patent No. 5,796,945 to Tarabella (issued August 18, 1998) U.S. Patent No. 5,959,623 to Van Hoff et al. (issued September 28, 1999) U.S Patent No. 5,740,549 to Reilly et al., (issued April 14, 1998) PCT Publication No. WO 94/30000 to Beaumont et al. (published December 22, 1994) 7. 8. 9. The Official America Online for Windows Tour Guide (2d ed. 1994) Novell GroupWise Version 4.1 Reference for Macintosh (1994) Systems and methods invented, designed, developed and/or in public use or on

sale related to BackWeb, as exemplified by the Rakavy '040 patent and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by BackWeb before August 22, 1995, and may have been in public use or on sale by BackWeb before March 22, 1995. 10. Systems and methods invented, designed, developed and/or in public use or on

sale by AT&T Corp., as exemplified by the U.S. Patent No. Farber '284 patent and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by AT&T Corp. before March 24, 1995, and may
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have been in public use or on sale by AT&T Corp. before March 22, 1995. 11. Systems and methods invented, designed, developed and/or in public use or on

sale related to PointCast, as exemplified by the Reilly '549 patent and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed, and developed by PointCast, Inc., before June 12, 1995, and may have been in public use or on sale by PointCast, Inc., before March 22, 1995. 12. Systems and methods invented, designed, developed and/or in public use or on

sale related to AOL's email or instant messaging systems, as exemplified by "The Official America Online for Windows Tour Guide" (2d ed. 1994) and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by AOL during or prior to 1994, and may have been in public use or on sale by AOL during or prior to 1994. 13. Systems and methods invented, designed, developed and/or in public use or on

sale related to the Zephyr Notification Service, as exemplified by "The Zephyr Notification Service," C. Anthony DellaFera, MIT 1988, and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by Ciarán Anthony DellaFera, Michael R. Gretzinger, Mark W. Eichin, Robert S. French, David C. Jedlinsky, John T. Kohl, and/or William E. Sommerfeld during or prior to 1986, and may have been in public use or on sale by Ciarán Anthony DellaFera, Michael R. Gretzinger, Mark W. Eichin, Robert S. French, David C. Jedlinsky, John T. Kohl, and/or William E. Sommerfeld before March 22, 1995. B. Obviousness

Pursuant to P.R. 121, Defendants identify the following additional prior art references and systems now known to Defendants that either alone or in combination with other prior art (including any of the above-identified anticipatory prior art and the additional prior art disclosed in this section) render one or more of the asserted claims of the '314 Patent invalid as obvious under 35 U.S.C. § 103. Invalidity claim charts for these references with respect to the '314 Patent are also attached to these Invalidity Contentions. Defendants further identify combinations of
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prior art (including any of the above-identified anticipatory prior art and the additional prior art disclosed in this section) that render one or more of the asserted claims of the '314 Patent invalid as obvious under 35 U.S.C. § 103. In certain instances, the suggested obviousness combinations are provided in the alternative to Defendants' anticipation contentions and are not to be construed to suggest that any reference included in the combinations is not by itself anticipatory. 1. 2. 3. 4. 5. 6. 7. 8. 9. U.S. Patent No. 5,572,643 to Judson (issued November 5, 1996) U.S. Patent No. 5,819,284 to Farber et al. (issued October 6, 1998) U.S. Patent No. 5,796,967 to Filepp et al. (issued August 18, 1998) U.S. Patent No. 5,436,637 to Gayraud et al. (issued July 25, 1995) U.S. Patent No. 5,309,234 to Kranawetter et al. (issued May 3, 1994) U.S. Patent No. 5,781,894 to Petrecca et al. (issued July 14, 1998) U.S. Patent No. 5,617,526 to Oran et al. (issued April 1, 1997) The Zephyr Notification Service, C. Anthony DellaFera, (MIT 1988) Systems and methods invented, designed, developed and/or in public use or on

sale related to DeskPicture by Peirce Software and subject to further discovery. Based upon information currently available to Defendants, Defendants believe that such a system was designed and developed by Peirce Software during or prior to 1993, and may have been in public use or on sale by Peirce Software during or prior to 1993. Each prior art reference and systems (collectively for this subsection, "references") disclosed in the preceding Anticipation section and in this Obviousness section, either alone or in combination with other prior art, also renders the asserted claims of the '314 Patent invalid as obvious. In addition, each anticipatory prior art reference and/or each additional prior art reference may be combined with (1) information known to persons skilled in the art at the time of the alleged invention, (2) any of the anticipatory prior art references, and/or (3) any of the additional prior art references identified above in this section to render these claims invalid as obvious. Defendants hereby incorporate the description in the February 28, 2011 Invalidity Contentions served by all above-named defendants summarizing the law regarding obviousness.
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Because the '314 Patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than what one would expect from such an arrangement, the combination is obvious. Further, in the prior art, there were well-recognized design needs and market pressures to present information to a user in the vicinity of a display device. Such design needs and market pressures provided ample reason to combine the prior art elements. KSR, 127 S. Ct. at 1742. Moreover, since there were a finite number of predictable solutions, a person of ordinary skill in the art had good reason to pursue the known options. Id. The above identified prior art references use those familiar elements for their primary or wellknown purposes in a manner well within the ordinary level of skill in the art. Accordingly, common sense and knowledge of the prior art render the claims invalid under either § 102 or § 103. Moreover, a person of ordinary skill would have been motivated to combine the above prior art based on the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art. The identified prior art addresses the same or similar technical issues and suggests the same or similar solutions to those issues. To the extent that Plaintiff challenges a combination of prior art with respect to a particular element, Defendants reserve the right to supplement these contentions to further specify the motivation to combine the prior art. Defendants may rely on cited or uncited portions of the prior art, other documents, and expert testimony to establish that a person of ordinary skill in the art would have been motivated to modify or combine the prior art so as to render the claims invalid as obvious. Below are several examples of prior art combinations with respect to particular limitations. These prior art combinations are not exhaustive; rather, they are illustrative examples of the prior art combinations disclosed generally above. These exemplary combinations are alternatives to Defendants' anticipation and single reference obviousness contentions, and, thus, they should not be interpreted as indicating that any of the individual references included in the exemplary combinations are not alone invalidating prior art under 35 U.S.C. §§ 102 and/or 103. To the extent that Plaintiff contends that any of the above-identified prior art fails to disclose one or more limitations of the asserted claims of the '314 Patent, Defendants reserve the
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right to identify other prior art references that would render the claims obvious despite the allegedly missing limitation. Defendants reserve all rights to supplement or modify these Joint Invalidity Contentions and to rely on other references that prove invalidity of these claims in a manner consistent with the Federal Rules of Civil Procedure and the Rules of this Court. 1. U.S. Patent No. 5,748,190 to Kjorsvik, in view of one or more of the following: o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera 2. U.S. Patent No. 5,913,040 to Rakavy et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide
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o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S. Patent No. 5,796,945 to Tarabella, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S. Patent No. 5,959,623 to Van Hoff et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik
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o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S. Patent No. 5,572,643 to Judson, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al.
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o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera U.S Patent No. 5,740,549 to Reilly et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera PCT Publication No. WO 94/30000 to Beaumont et al., in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o The Official America Online for Windows Tour Guide o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson
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o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera The Official America Online for Windows Tour Guide, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al. o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o Novell GroupWise Version 4.1 Reference for Macintosh o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera Novell GroupWise Version 4.1 Reference for Macintosh, in view of one or more of the following: o U.S. Patent No. 5,748,190 to Kjorsvik o U.S. Patent No. 5,913,040 to Rakavy et al.
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o U.S. Patent No. 5,796,945 to Tarabella o U.S. Patent No. 5,959,623 to Van Hoff et al. o U.S Patent No. 5,740,549 to Reilly et al. o PCT Publication No. WO 94/30000 to Beaumont et al. o The Official America Online for Windows Tour Guide o U.S. Patent No. 5,572,643 to Judson o U.S. Patent No. 5,819,284 to Farber et al. o U.S. Patent No. 5,796,967 to Filepp et al. o U.S. Patent No. 5,436,637 to Gayraud et al. o U.S. Patent No. 5,309,234 to Kranawetter et al. o U.S. Patent No. 5,781,894 to Petrecca et al. o U.S. Patent No. 5,617,526 to Oran et al. o The Zephyr Notification Service, C. Anthony DellaFera Enablement, Written Description, Indefiniteness Invalidity Under 35 U.S.C. § 112

The Court's Standing Order for Patent Cases requires, for each asserted claim, the identification of "any grounds for invalidity based on indefiniteness, enablement, or written description under 35 U.S.C. § 112." Defendants provide below their preliminary invalidity contentions on those three issues, for the asserted claims, preserving all other invalidity contentions under other provisions of Section 112 (or any other Sections, such as Section 101), and preserving all invalidity contentions for the non-asserted claims. Defendants hereby incorporate the description in the February 28, 2011 Invalidity Contentions served by all above-named defendants summarizing the law regarding § 112. As Defendants best understand Plaintiff's Infringement Contentions at this time, certain asserted claims of the '652 Patent fail to meet the requirements of 35 U.S.C. § 112(2) and/or 35 U.S.C. § 112(1) for at least the following reasons.

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1.

Indefiniteness Under 35 U.S.C. § 112(2) a. Additional Legal Principles

Defendants hereby incorporate section IV(C)(1)(a). b. All Asserted Claims All the asserted claims are indefinite because each of the claim terms or phrases quoted below does not have a meaning that can be clearly and definitely determined, and thus fails to put the public on notice of what is and is not covered by the claims. "peripheral attention" "set of content data" "selectively display [selectively displaying on the display device. . . /apparatus that effects selective display on the display device] "in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus" "engaging [enabling engagement of] the peripheral attention of a user" "wherein the one or more sets of content data are selected from a plurality of sets of content data" "without the content data being aggregated" "the respective content provider may provide" all the "instructions" limitations control option(s) [claims 7, 9, 10, 12, 13, and 15] Indefinite Claims

Independent Claim 3 For the reasons discussed above in section IV(C)(1)(b) for claims 15, 17, and 18 of the '652 patent relating to the "instructions for/that" language, the following limitations fail to satisfy the requirements of § 112(2), rendering claim 3 and all claims dependent thereon indefinite. "instructions for providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device"
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"instructions for providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data"

"instructions for auditing the display of sets of content data by the content display system"

Independent Claim 7 For the reasons discussed above in section IV (C)(1)(b) for claims 15, 17, and 18 of the '652 patent relating to the "instructions for/that" language, the following limitations fail to satisfy the requirements of § 112(2), rendering claim 7 and all claims dependent thereon indefinite. Although the term "means" is not present in the claim, the claim limitations with the "apparatus/device that" language fail to recite sufficient structure for performing the functions as demonstrated below. "data acquisition apparatus that enables acquisition of a set of content data" "display apparatus that effects selective display on the display device, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, of an image or images generated from the set of content data" "user input apparatus that enables selection by a user of one or more control options during the selective display of the image or images generated form the set of content data" "a system control device that controls aspects of the operation of the system in accordance with a selected control option" Independent Claim 13 For the reasons discussed above in section IV(C)(1)(b) for claims 15, 17, and 18 of the '652 patent relating to the "instructions for/that" language, the following limitations fail to satisfy
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the requirements of § 112(2), rendering claim 13 and all claims dependent thereon indefinite. "instructions for acquiring a set of content data from a content providing system" "instructions for selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from the set of content data" "instructions for enabling selection by a user of one or more control options during the selective display of the image or images generated from the set of content data" "instructions for controlling aspects of the operation of the system in accordance with a selected control option" 2. Lack of Written Description Under 35 U.S.C. § 112(1) a. Additional Legal Principles

A negative limitation added to a claim to "carve out" subject matter to overcome a prior art rejection violates the written description requirement if it introduces new concepts. See In re Xi, 2008 WL 5232784, at *1-*3 (BPAI 2008) (determining a negative limitation to remove impurities from a chemical compound that was added to overcome a prior art rejection violated the written description requirement because the specification did not disclose that these impurities could not be present") (citing Ex parte Grasselli, 231 U.S.P.Q. 393, 394 (BPAI 1983) (finding the negatively claimed language "said catalyst being free of uranium and the combination of vanadium and phosphorous" in a product claim introduced new concepts because "the express exclusion of certain elements implies the permissible inclusion of all other elements not so expressly excluded"), aff'd, 738 F.2d 453 (Fed. Cir. 1983) (unpublished)). b. All Asserted Claims During prosecution, the following negative limitation was added to overcome prior art that allegedly aggregated content data at a single service node. Amendment D (10/28/2003) at 9-10. There is nothing in the specification to indicate that the patentee possessed an invention that
Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

Invalid Claims

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prohibited remote aggregation of content data as claimed. In fact, the term "aggregation" fails to appear anywhere in the '314 specification, and there is nothing in the specification to suggest that content data can never be stored in a common remote location prior to being provided to a content display system. Therefore, the following negative limitation added to "carve out" subject matter from a prior art reference has no support in the specification and violates the written description requirement. "without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system" All asserted claims are also invalid for failing to satisfy the written description because nowhere in the '314 specification is (i) the physical location of content providers, or (ii) independent transmission/receipt of content data, discussed. "wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider" 3. Lack of Enablement Under 35 U.S.C. § 112(1)

The terms identified above as lacking a supporting disclosure of an algorithm to perform the recited function are invalid as not enabled given their indeterminate scope. Independent Claims 3, 7, and 13 The "instructions for" and "apparatus/device that" limitations described above in section V(C)(1)(b) for claims 3, 7, and 13 as invalid means-plus-function limitations are also invalid for lack of enablement under § 112(1). The functions the "instructions" and "apparatus/device" must perform are not adequately disclosed such that a programmer of ordinary skill in the art could create the necessary software and/or hardware without undue experimentation.

DATED this 28 day of February, 2011.

Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

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/s/ Cortney S. Alexander Gerald F. Ivey (pro hac vice) [e-mail] Robert L. Burns (pro hac vice) [e-mail] Elliot C. Cook (pro hac vice) [e-mail] FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, N.W. Washington, D.C. 20001-4413 Tel: [phone]

Molly A. Terwilliger, WSBA No. 28449 [e-mail] SUMMIT LAW GROUP PLLC 315 Fifth Avenue S., Suite 1000 Seattle, Washington 98104 Tel: [phone]

Cortney S. Alexander (pro hac vice) [e-mail] FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 3500 SunTrust Plaza 303 Peachtree Street, NE Atlanta, Georgia 30308-3263 Tel: [phone] Attorneys for Defendant AOL Inc. /s/ Brian M. Berliner Brian M. Berliner (pro hac vice) [e-mail] Neil L. Yang (pro hac vice) [e-mail] O'MELVENY & MYERS LLP 400 South Hope Street Los Angeles, California 90071 Tel: [phone] Scott T. Wilsdon, WSBA No. 20608 [e-mail] Jeremy E. Roller, WSBA No. 32021 [e-mail] YARMUTH WILSDON CALFO PLLC 818 Stewart Street, Suite 1400 Seattle, Washington 98101 Tel: [phone]

George A. Riley (pro hac vice) [e-mail] David S. Almeling (pro hac vice) [e-mail] O'MELVENY & MYERS LLP Two Embarcadero Center, 28th Floor San Francisco, California 94111 Tel: [phone] Attorneys for Defendant Apple Inc. /s/ Kevin X. McGann Kevin X. McGann - [phone] (pro hac vice) [e-mail] Dimitrios T. Drivas - [phone] (pro hac vice) [e-mail] John Handy - [phone] (pro hac vice) [e-mail] Aaron Chase - [phone] (pro hac vice) [e-mail] WHITE & CASE LLP
Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

Shannon M. Jost, WSBA No. 32511 [e-mail] Scott A.W. Johnson, WSBA No. 15543 [e-mail] Aneelah Afzali, WSBA No. 34552 [e-mail] STOKES LAWRENCE, P.S. 800 Fifth Avenue, Suite 4000 Seattle, Washington 98104 Tel: [phone]

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1155 Avenue of the Americas New York, New York 10036 Warren S. Heit - [phone] (pro hac vice) [e-mail] Wendi Schepler - [phone] (pro hac vice) [e-mail] WHITE & CASE LLP 3000 El Camino Real Building 5, 9th Floor Palo Alto, California 94306 Attorneys for Defendants Google Inc. and YouTube, LLC Michael A. Jacobs (pro hac vice) /s/ Mark P. Walters [e-mail] Mark P. Walters, WSBA No. 30819 Matthew I. Kreeger (pro hac vice) [e-mail] [e-mail] Dario A. Machleidt, WSBA No. 41860 Richard S.J. Hung (pro hac vice) [e-mail] [e-mail] FROMMER LAWRENCE & HAUG LLP Francis Ho (pro hac vice) 1191 Second Avenue Suite 2000 [e-mail] Seattle, Washington 98101 Eric W. Ow (pro hac vice) Tel: [phone] [e-mail] MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105 Tel: [phone] Attorneys for Defendant Yahoo! Inc.

Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

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CERTIFICATE OF SERVICE I certify that, on this 28th day of February, 2011, I caused to be served via e-mail Defendants' Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 on all counsel who have appeared in this action: Attorneys for Plaintiff Interval Licensing LLC Matthew R. Berry ([e-mail]) Justin A. Nelson ([e-mail]) Edgar G. Sargent ([e-mail]) Max L. Tribble ([e-mail]) Nathan J. Davis ([e-mail]) Eric J. Enger ([e-mail]) Michael F. Heim ([e-mail]) Attorneys for AOL Inc. Cortney S, Alexander ([e-mail]) Robert L. Burns ([e-mail]) Elliott C. Cook ([e-mail]) Gerald F. Ivey ([e-mail]) Molly A. Terwilliger ([e-mail]) Attorneys for Ebay Inc., NetFlix, Inc., Office Depot, Inc., and Staples, Inc. J. Christopher Carraway ([e-mail]) Kristin L. Cleveland ([e-mail]) Klaus H. Hamm ([e-mail]) Jeffrey S. Love ([e-mail]) Derrick W. Toddy ([e-mail]) John D. Vandenberg ([e-mail]) Arthur W. Harrigan ([e-mail]) Christopher T. Wion ([e-mail]) Attorneys for Facebook Inc. Christen M.R. Dubois ([e-mail]) Christopher B. Durbin ([e-mail]) Heidi L. Keefe ([e-mail]) Michael G. Rhodes ([e-mail]) Elizabeth L. Stameshkin ([e-mail]) Mark R. Weinstein ([e-mail]) Attorneys for Google Inc. and YouTube, LLC Scott A.W. Johnson ([e-mail]) Aaron Chase ([e-mail]) Dimitrios T. Drivas ([e-mail]) John Handy ([e-mail]) Warren S. Heit ([e-mail]) Kevin X. McGann ([e-mail]) Wendi R. Schepler ([e-mail]) Attorneys for OfficeMax, Inc. Jeffrey D. Neumeyer ([e-mail]) Kevin C. Baumgardner ([e-mail]) Steven W. Fogg ([e-mail]) John S. Letchinger ([e-mail]) Douglas S. Rupert ([e-mail])
Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

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Defendants Invalidity Contentions with Respect to U.S. Patents Nos. 6,034,652 and 6,788,314 (10-cv-01385-MJP)

Attorneys for Yahoo! Dario A. Machleidt ([e-mail]) Mark P. Walters ([e-mail]) Francis Ho ([e-mail]) Richard S. J. Hung ([e-mail]) Michael A. Jacobs ([e-mail]) Matthew I. Kreeger ([e-mail]) Eric W. Ow ([e-mail])

DATED: February 28, 2011 By: /s/ David S. Almeling David S. Almeling, CA Bar No. 235449 (pro hac vice) Two Embarcadero Center, 28th Floor San Francisco, CA 94111-3823 Telephone: [phone] Facsimile: 415.984.8701 Email: [e-mail]

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