Interval Licensing LLC v. AOL, Inc. et al

Filing 240

STATEMENT re Joint Claim Construction and Prehearing Statement by Plaintiff Interval Licensing LLC. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Exhibit A-1, #6 Exhibit B-1, #7 Exhibit C-1, #8 Exhibit D-1, #9 Exhibit 1, #10 Exhibit 2, #11 Exhibit 3, #12 Exhibit 4, #13 Exhibit 5, #14 Exhibit 6)(Berry, Matthew)

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Hon. Marsha J. Pechman

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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INTERVAL LICENSING LLC,

Lead Case No. 2:10-cv-01385-MJP

Plaintiff,

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JOINT CLAIM CONSTRUCTION
AND PREHEARING STATEMENT

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v.

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AOL, INC., et al.,
Defendants.

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JURY DEMAND

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The parties in the above-styled case hereby submit this Joint Claim Construction and

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Prehearing Statement, pursuant to Local Patent Rule 132 and this Court’s Scheduling Order (Dkt.
# 178). The patents-in-suit are attached hereto as Exhibits A (‘507 Patent), B (‘682 Patent), C
(‘652 Patent) and D (‘314 Patent). Relevant excerpts from the prosecution history are attached
hereto as Exhibits A1 – D1, corresponding to the like exhibit number by patent (e.g., relevant
excerpts from the prosecution of the ‘507 patent are attached as Exhibit A1, for the ’682 patent as
B1, for the ‘652 patent as C1 and for the ‘314 patent as D1). For the Court’s convenience, the
prosecution history pages have been assigned production numbers that appear in the lower right
corner of the page.
A. Undisputed Claim Terms

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The parties have reached agreement on the construction of the following terms:

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PATENT

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‘507

TERM
Instruction

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AGREED CONSTRUCTION
A statement that specifies a function to be
performed by a system and that identifies data
involved in performing the function

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

3

TERM

AGREED CONSTRUCTION

‘507

determining the degree of
similarity between the subject
matter content of the
uncategorized segment and
the subject matter content of
each of the previously
categorized segments

determining how similar the subject matter content
of the uncategorized segment is to the subject
matter content of each of the previously
categorized segments

‘507

subject matter categories

topics (e.g., international, national, regional,
business, sports, or human interest) describing the
subject matter content of a segment

‘507

body of information

collection of acquired information

‘682

intensity rank

A value associated with an item that represents the
level of current interest in that particular item
relative to other items

‘682

from a source other than

From a user other than

‘682

[receive / receiving] in real
time

[receive/receiving] immediately or almost
immediately after the indication.

‘652

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PATENT

“means for controlling aspects FUNCTION: controlling aspects of the operation
of the operation of the system of the system in accordance with a selected control
in accordance with a selected option
control option”

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STRUCTURE: One or more digital computers
programmed to perform one or more of the
following actions in response to a request from the
user: (1) terminate the operation of the attention
manager, (2) begin display of the next scheduled
set of content data, (3) begin display of the
previous scheduled set of content data, (4) remove
a set of content data from the display schedule, (5)
prevent a set of content data from being displayed
until it has been updated, (6) modify the display
schedule in response to a user’s identified
satisfaction with a set of content data, (7) establish
a link with an information source, (8) provide an
overview of all of the content data available for

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

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2

PATENT

TERM

AGREED CONSTRUCTION
display by the attention manager, (9) maintain
display of the current set of content data, or (10)
remove the control option interface and structural
equivalents.

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4
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‘652

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FUNCTION: scheduling the display of an image or
images generated from a set of content data

“means for scheduling the
display of an image or images
generated from a set of
content data”

STRUCTURE: One or more digital computers
programmed to (1) determine whether sets of
content data are available for display, and (2)
determine if, when, and for how long an image or
images generated from the set of content data will
be displayed and structural equivalents.

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‘652

FUNCTION: selecting a displayed control option

“means for selecting a
displayed control option”

STRUCTURE: A keyboard, mouse, touch screen,
or voice recognition system and structural
equivalents.

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13

‘652 and
‘314

“engaging the peripheral
attention of a person in the
vicinity of a display device”

‘652

“means for displaying one or
more control options with the
display device while the
means for selectively
displaying is operating”

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engaging a part of the user’s attention that is not
occupied by the user’s primary interaction with the
apparatus

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FUNCTION: displaying one or more control
options with the display device while the means
for selectively displaying is operating
STRUCTURE: One or more digital computers
programmed to provide a dialog box that includes
a list of one or more of the following control
options: perform at least one of steps 501 (Want to
display the next set of content data in the
schedule?), 502 (Want to display the previous set
of content data in the schedule?), 503 (Want to
remove the current set of content data from the
schedule?), 504 (Want to prevent display of the
current set of content data until that set of content
data has been updated?), and 505 (Want to specify
a satisfaction level for the current set of content
data?) and structural equivalents.

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‘652

“control options”

user-selectable options to control the operation of
the attention manager

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3
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
2
3

PATENT

AGREED CONSTRUCTION

‘314

“the content provider may
provide scheduling
instructions tailored to the set
of content data to control at
least one of the duration,
sequencing and timing of the
display of said image or
images generated from the set
of content data

The [method/system/computer readable medium]
must allow the content provider to provide
“scheduling instructions” tailored to the set of
content data

‘652

“data acquisition apparatus
that enables acquisition of a
set of content data”

The parties agree that this term should be
construed as a means-plus-function term pursuant
to 35 U.S.C. § 112, ¶ 6 and that such construction
should be consistent with the construction of the
disputed term “means for acquiring a set of content
data from a content providing system” in claim 4
of the ‘652 patent.

‘652

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

The parties agree that this term should be
construed as a means-plus-function term pursuant
to 35 U.S.C. § 112, ¶ 6 and that such construction
should be consistent with the construction of the
disputed term “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” in
claim 4 of the ‘652 patent.

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TERM

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B. Disputed Claim Terms
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Below is a table identifying the terms to be construed in connection with the initial
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Markman hearing currently scheduled for July 22, 2011 for each of the four asserted patents. 1

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Attached as Exhibit 1 is a Joint Claim Chart setting forth the parties’ proposed constructions for
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the disputed terms in the ‘507 patent, along with citations to intrinsic and extrinsic evidence.
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Attached as Exhibit 2 is a Joint Claim Chart setting forth the parties’ proposed constructions for
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1

Consistent with the Court’s February 16, 2011 Scheduling Order (Dkt. #178) and the Court’s
Order on Motions for Reconsideration (Dkt #195), Defendants reserve the right to seek
construction of additional terms.

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

the disputed terms in the ‘682 patent, along with citation to intrinsic and extrinsic evidence.

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Attached as Exhibit 3 is a Joint Claim Chart setting forth the parties’ proposed constructions for

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the disputed terms in the ‘652 and ‘314 patents, along with citation to intrinsic and extrinsic

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evidence. The chart for the ‘652 and ‘314 patents has been combined since these patents have the

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same specification and the disputed terms in some cases overlap both patents.

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The parties may have additional terms for which they will seek construction depending on

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the resolution of the terms currently presented to the Court, but since some terms that are not

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presented here include overlapping claim language or otherwise common disputes, the parties

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may be able to resolve the construction of such additional terms based on the Court’s construction

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of the terms presented herein. 2

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DISPUTED TERM

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(disputed term underlined if less than entire term)

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1

the display of the portion or representation of the second segment is
generated in response to the display of a first segment to which the
second segment is related

‘507

2

generating a display of … [a first segment/a portion of, or a
representation of, a second segment]

‘507

3

acquiring data representing the body of information

‘507

4

A method for acquiring and reviewing a body of information,
wherein the body of information includes a plurality of segments,
each segment representing a defined set of information in the body
of information, the method comprising the steps of:

‘507

5

comparing data representing a segment of the body of information to ‘507
data representing a different segment of the body of information

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determine whether, according to one or more predetermined criteria,
the compared segments are related

‘507

7

wherein the step of determining the similarity of the subject matter
of segments further comprises the step of performing a relevance

‘507

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PATENT(S)

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2

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Consistent with the Court’s Order on Motions for Reconsideration (Dkt. #195 at 2:6-9) and
Federal Circuit precedent, Defendants have included disputes directed to ambiguous terms for
which there can be no reasonable construction and to the construction of a claim as a whole as
necessary to resolution of defenses such as defenses concerning non-patentable subject matter
under 35 U.S.C. § 101 and/or whether the claims’ full scope is enabled by the patent specification
under 35 U.S.C. § 112.

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
DISPUTED TERM

2

PATENT(S)

(disputed term underlined if less than entire term)
feedback method

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4

wherein the step of determining the degree of similarity is
accomplished using a relevance feedback method

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6

8

identifying one or more of the previously categorized segments as
relevant to the uncategorized segment

‘507

7

9

acquiring audiovisual data representing at least a portion of the body
of information, wherein the first and second segments are
represented by audiovisual data

‘507

9

10

Claim as a whole (patentable subject matter) 3

‘507

10

11

Claims as a whole (whether claim encompasses use of pure
unaugmented video with no segment markers)

‘507

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12

“an indication that [an/the] item … is of current interest”

‘682

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[determine / determining] . . . an intensity weight value

‘682

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[determine / determining] an intensity value to be associated with
the indication

‘682

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adjusting the intensity value based on a characteristic for the item
provided by the source

‘682

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[inform / informing] the participant

‘682

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a computer configured to receive in real time . . . process the
indication; determine an intensity value . .. and adjusting the
intensity value . . . and inform the participant that the item is of
current interest

‘682

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computer instructions for receiving in real time . . . processing the
indication; determining an intensity value . .. and adjusting the
intensity value . . . and informing the participant that the item is of
current interest

‘682

8

11

15
16

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20
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27

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For terms 10, 11 and 19, the Defendants have identified this dispute as the construction of the
claim terms as a whole. These concern construction of claims as a whole to determine, for
example, whether the claims recite non-patentable subject matter or include within their scope
subject matter that Defendants will contend is not enabled. Additional details concerning these
disputes may be found in the parties’ joint claim charts. The parties understand based on the
Court’s Order on Motions for Reconsideration (Dkt. #195) that these do not count towards a limit
on “disputed terms.”

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
DISPUTED TERM

2
3

PATENT(S)

(disputed term underlined if less than entire term)
19

Claims as a whole (patentable subject matter)

‘682

20

“selectively displaying on the display device . . . an image or images
generated from the set of content data”

‘652 and ‘314

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6

“selectively display. . . an image or images generated from a set of
content data”

4

7
“selective display on the display device. . . of an image or images
generated from the set of content data”

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9

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“images generated from a set of content data”

‘652 and ‘314

10

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“in an unobtrusive manner that does not distract a user of the
apparatus from a primary interaction with the apparatus”

‘652 and ‘314

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“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”

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13
23

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;

‘652

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“each content provider provides its content data to [a/the] content
display system independently of each other content provider and . . .
”

‘314

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“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”

‘652

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26

“during operation of an attention manager”

‘652

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“means for acquiring a set of content data from a content providing
system”

‘652

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“content provider”

‘314

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“display instructions for enabling display of the image or images”

‘652

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

‘652

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

‘652

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19

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
DISPUTED TERM

2
3

PATENT(S)

(disputed term underlined if less than entire term)
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“saturation instructions that constrain the number of times that the
image or images generated from a set of content data can be
displayed”

‘652

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“instructions for providing one or more sets of content data to a
content display system associated with the display device”

‘314

34

“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”

‘652

35

“content display system scheduling instructions for scheduling the
display of the image or images on the display device”

‘652

36

“audit instructions for monitoring usage of the content display
system to selectively display an image or images generated from a
set of content data”

‘652

37

“instructions for acquiring a set of content data from a content
providing system”

‘314

14

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“instructions”

‘652 and ’314

15

39

a set of instructions for enabling the content display system to
‘314
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;

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5
6
7
8
9
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11
12
13

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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

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C. Length of Claim Construction Hearing

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The parties would like the Court to budget a full day for the claim construction hearing as

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provided in the Court’s Standing Order for Patent Cases (Dkt. # 26).

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

D. Proposed Order of Presentation at Hearing

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The parties believe that it will be most effective to start the Markman hearing with the

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tutorial. The parties will provide a more detailed plan to the Court as to how they wish to proceed

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at the hearing at least three days before the hearing, as required by the Scheduling Order.

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E. Live Testimony

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Other than as described below in subsection F, the parties do not plan to present live

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testimony at the hearing, but may reference declarations or deposition testimony of certain

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experts in their briefs and/or at the hearing.

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F. Tutorial

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The parties believe that a tutorial on the subject matter may be beneficial to the Court.

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The parties propose that the claim construction hearing commence with the tutorial, and the

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parties will provide a plan to the Court as to how they wish to proceed at the hearing at least three

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days before the hearing, as required by the Scheduling Order.

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G. Pre-Hearing Conference

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The parties do not believe a pre-hearing conference is necessary.

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H. Independent Expert

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The parties do not believe the Court should appoint its own independent expert.

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I. Plaintiff’s Infringement Contentions

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Interval’s infringement contentions are filed herewith as Exhibit 4 (without the charts

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comparing the claim elements to the accused devices because such charts are voluminous). 4

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Interval objects to defendants’ below Invalidity Contentions. First, defendants purport to

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incorporate by reference the bases for invalidity that they included in their Requests for

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Reexamination filed with the PTO. The Local Patent Rules set forth the sole method by which a

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4

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In addition to the allegations of infringement included in Interval’s infringement contentions, it
also alleges that features of Google’s Android Market website infringe the same claims of the
‘507 and ‘682 patents that Interval already is asserting against other Google functionalities.
Interval provided Google with claim charts on May 17, 2011 setting forth the accused
infringement, and the parties are currently meeting and conferring as to whether Google will
agree to a stipulated motion to supplement Interval’s infringement contentions or whether Interval
will file an opposed motion to supplement.

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

party may supplement its invalidity contentions: “Amendment of the Infringement Contentions

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or the Invalidity Contentions may be made only by order of the Court upon a timely showing of

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good cause.” LPR 124 (emphasis added). Defendants have not moved this Court for leave and

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have not shown good cause.

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attempting to amend their invalidity contentions to add over 700 pages of arguments presented in

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their petitions for reexam.

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contentions failed to include the material that they submitted to the PTO.

It is improper for defendants to circumvent that process by

Defendants also fail to explain why their original invalidity

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Second, Interval objects to defendants’ lengthy legal arguments concerning issues under

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35 U.S.C. § 101. Section 101 allegations are not relevant to the Markman hearing, and the

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Prehearing Statement is not the proper place to include extensive legal arguments relevant only to

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§ 101 issues.

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Statement is to circumvent the Court’s page limitations for legal briefs. Defendants’ § 101

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arguments are meritless, but Interval will not respond to those legal arguments in the Prehearing

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Statement. Instead, Interval will respond to these arguments should defendants properly raise

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them in a dispositive motion after the Markman hearing.

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J. Defendants’ Invalidity Contentions

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The Defendants Invalidity Contentions, including “any grounds for invalidity based on

The only apparent purpose in including legal arguments in the Prehearing

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indefiniteness, enablement, or written description under 35 U.S.C. § 112” pursuant to this Court’s

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Standing Order for patent cases (Dkt # 26) are filed herewith as Exhibits 5 and 6 (without the

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charts comparing the prior art to the asserted claims since such charts are voluminous).

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Defendants’ contentions have generally been amended to reflect information included in the

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Requests for Reexamination that were provided to Interval on March 16 and 17, 2011.

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Defendants informally served these contentions on Interval on May 26, 2011 and requested

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Interval’s consent to the amendment as the changes are not extensive and Interval has been on

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notice of these same allegations for more than two months based on the Requests for

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Reexamination. Defendants await Interval’s response. Defendants’ also incorporate by reference

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the bases for invalidity included in the Requests for Reexamination filed with the PTO for each of

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10
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

the patents-in-suit, but do not include those requests here due to their volume.

2

Defendants understand that this Court’s Standing Order in Patent Cases (Dkt. # 26 at 3:18-

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19) requires the Defendants to include their invalidity contentions with this Prehearing Statement.

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Defendants’ additional contentions regarding invalidity under 35 U.S.C. § 101 are summarized

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below. Contrary to Plaintiff’s allegations, Defendants are not attempting to make such arguments

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herein, but only to avoid a later claim by Plaintiff that such defenses were not disclosed.

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Defendants may also allege that one or more asserted claims of the patents-in-suit are invalid for

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failure to disclose the best mode or for improper inventorship, but have yet to obtain substantial

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discovery from Interval upon which such allegations might be based.

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1. Defendants’ Allegations under 35 U.S.C. § 101 for the Asserted Claims of the
‘507 Patent

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Each of claims 20-24, 27-28, 31, 34, 37, 39, 40, and 43 of asserted U.S. Patent No.

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6,263,507 (“the ’682 Patent”) is directed to an abstract, mathematical idea and for that reason are

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invalid as a matter of law under Section 101 of the Patent Act.

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For example, each of claims 39, 40 and 43 encompasses abstract mental steps that do not

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mandate that any particular machine or device, or machine or device at all, be used. To the extent

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these claimed methods can be performed at all, they can be performed by a human using no

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machine or device, just by listening, talking, and doing calculations in one’s head. In other

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words, these claims are directed to use of an abstract algorithm for receiving, processing and

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conveying information in a particular field of use, without restricting that algorithm to any

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particular machine or restricting it to any particular transformation of a particular article.

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The same is true of the remaining claims identified above. While independent claim 20

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and its above-identified dependent claims recite steps involving “acquiring,” “storing” and

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displaying information, such insignificant post-solution activity and pre-solution activity do not

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make the claimed abstract idea less abstract, under Bilski v. Kappos, 130 S. Ct. 3218 (2010), and

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the en banc Federal Circuit ruling affirmed thereby (In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir.

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2008) (en banc).

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11
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

These claims were granted by the Patent Office at a time when the Patent Office applied a

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permissive and now-discredited test for patent eligibility. The leading, albeit non-exclusive, test

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for policing this abstractness exclusion to patentability is the “machine-or-transformation” test.

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Specifically, if a patent claim reciting an abstract idea fails to restrict that abstract idea to a

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particular machine or particular transformation of a particular article, that is “a useful and

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important clue” that the claim in effect patents that abstract idea and thus is invalid under 35

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U.S.C. § 101. Bilski v. Kappos, 130 S. Ct. at 3227.

8
9

None of the above-identified claims requires any particular machine to perform any of its
steps. Further, these claims do not require any transformation of a physical article or substance or

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any visual representation thereof, and thus they fail the “particular transformation” prong of the

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analysis. The claims do not require that any “segment” represent any physical article.

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One or more Defendants may assert that the “computer readable medium” claims in the

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‘507 patent are invalid under 35 U.S.C. § 101 as being directed to unpatentable subject matter.

14

Asserted claims 63-67, 70, 71, 74, 77, 80-83 and 86 are generally directed to “computer readable

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media,” but do not restrict the computer readable media to non-transitory storage. As such, these

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claims are invalid under 35 U.S.C. § 101. See e.g., In re Nuitjen, 500 F.3d 1346, 1356-57 (Fed.

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Cir. 2007) (transitory embodiments are not directed to statutory subject matter); see also Subject

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Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)

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(available at http://www.uspto.gov/patents/law/notices/101_crm_2010012 7.pdf); In re Kelkar,

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Appeal No. 2009-004635 (Board of Patent Appeals and Interferences, Sept. 24, 2010) at p. 5

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(rejecting claims directed to “program products stored on a recordable medium” as directed to

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unpatentable subject matter).

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2. Defendants’ Allegations under 35 U.S.C. § 101 for the Asserted Claims of the
‘682 Patent
The nominal “method” claims 3-20 of asserted U.S. Patent No. 6,757,682 (“the ’682

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Patent”) are directed to an abstract, mathematical idea and for that reason are invalid as a matter

27

of law under Section 101 of the Patent Act. To the extent these claimed methods can be

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

performed at all, they can be performed by a human using no machine or device, just by listening,

2

talking, and doing calculations in one’s head. In other words, these claims are directed to use of

3

an abstract process for receiving, processing and conveying information, without restricting that

4

process to any particular machine or to any particular transformation of a particular article.

5

Claims 3-20 cover a mathematical algorithm for collecting data, performing some

6

calculations using that input data, and then reporting information. The claims do not require any

7

particular machine to perform any of these steps. The patent identifies its field as relating to

8

“dynamic content accessible via a communications or computer network” (’682 at 1:24-28), but

9

none of claims 3-20 requires any particular communication and computer network. Significantly,

10

none of these claims requires the participant or anyone else to use the recited network for

11

anything. No step requires use of a network. The patent describes using an application server

12

computer and a Web server computer (e.g., Fig. 1), but none of these claims requires such server

13

computers.

14

Claim 3 does not specify who or what performs any of its steps. It does not, for example,

15

recite that a programmed general-purpose application server computer or any other type of

16

computer performs any of these steps. Claims 4-20 depend from Claim 3 and add additional

17

nominal method steps but, like Claim 3, do not specify who or what performs any of these steps.

18

For example, claim 5 recites “calculating an intensity rank,” but does not specify who or what

19

performs this calculation. These claims do not, for example, recite that a programmed general-

20

purpose application server computer or any other type of computer performs any of these steps.

21

Claim 3 refers to a “network” in its preamble, but does not recite that network being used

22

in any positively recited step of the claim. Rather, the preamble merely recites that the participant

23

could access the item via an unspecified network, without requiring that the participant actually

24

access the item via the network. Thus, the claims do not require any particular network.

25

Claim 17 recites storing information “in a database,” without specifying any particular

26

machine for establishing or holding that database. Reciting the storage of data in conventional

27

ways does not rescue from invalidity under Section 101 a claim directed to an abstract idea. Cf.

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

Bilski v. Kappos, 130 S. Ct. at 3230 (“Flook rejected ‘[t]he notion that post-solution activity, no

2

matter how conventional or obvious in itself, can transform an unpatentable principle into a

3

patentable process.’”)

4

Further, these claims do not require any transformation of a physical article or substance

5

or any visual representation thereof, and thus they fail the “particular transformation” prong of the

6

analysis.

7

One or more Defendants may assert that asserted claim 2 in the ‘682 patent is invalid

8

under 35 U.S.C. § 101 as being directed to unpatentable subject matter. Claim 2 is generally

9

directed to “computer program product” embodied in a “computer readable medium,” but does

10

not restrict the “computer program product” or “computer readable media” to non-transitory

11

storage. As such, these claims are invalid under 35 U.S.C. § 101.

12
3. Defendants’ Allegations under 35 U.S.C. § 101 for the Asserted Claims of the
‘652 Patent

13
14

One or more Defendants may likewise contend that asserted claims 15-18 of the ‘652

15

patent are invalid under 35 U.S.C. § 101 as being directed to unpatentable subject matter. Claims

16

15-18 are generally directed to “computer readable media,” but do not restrict the computer

17

readable media to non-transitory storage. As such, these claims are invalid under 35 U.S.C. §

18

101.

19
4. Defendants’ Allegations under 35 U.S.C. § 101 for the Asserted Claims of the
‘314 Patent

20
21

One or more Defendants may likewise contend that asserted claims 3-4 and 13-15 of the

22

‘314 patent are invalid under 35 U.S.C. § 101 as being directed to unpatentable subject matter.

23

Claims 3-4 and 13-15 are generally directed to “computer readable media,” but do not restrict the

24

computer readable media to non-transitory storage. As such, these claims are invalid under 35

25

U.S.C. § 101.

26

Dated: May 27, 2011

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

/s/ Matthew R. Berry
Justin A. Nelson
WA Bar No. 31864
14
Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1

E-Mail: [e-mail]
Edgar G. Sargent
WA Bar No. 28283
E-Mail: [e-mail]
Matthew R. Berry
WA Bar No. 37364
E-Mail: [e-mail]
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, WA 98101
Telephone: [phone]
Facsimile: [phone]

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5
6
7
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Max L. Tribble, Jr.
E-Mail: [e-mail]
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]

9
10
11
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Oleg Elkhunovich
E-Mail: [e-mail]
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, California 90067
Telephone: [phone]
Facsimile: [phone]

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Michael F. Heim
E-mail: [e-mail]
Eric J. Enger
E-mail: [e-mail]
Nate Davis
E-mail: [e-mail]
HEIM, PAYNE & CHORUSH, L.L.P.
600 Travis, Suite 6710
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Interval Licensing LLC

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/s/ Molly A. Terwilliger (with permission)
Gerald F. Ivey (pro hac vice)
[e-mail]

28

Molly A. Terwilliger, WSBA No. 28449
[e-mail]
SUMMIT LAW GROUP PLLC
15

JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

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2
3
4
5
6
7
8
9
10

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]

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.

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13
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15
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/s/ Jeremy E. Roller (with permission)__
Brian M. Berliner (pro hac vice)
[e-mail]
Neil L. Yang (pro hac vice)
[e-mail]
Xin-Yi Zhou
[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]

18
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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]

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Attorneys for Defendant Apple Inc.

/s/ J. Christopher Carraway (with permission)
J. Christopher Carraway, WSBA No. 37944
[e-mail]
Kristin L. Cleveland (pro hac vice)
[e-mail]
16
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Christopher T. Wion, WSBA No. 33207
[e-mail]
Arthur W. Harrigan, Jr., WSBA No. 1751
[e-mail]
Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
2
3
4
5
6
7

DANIELSON HARRIGAN LEYH &
TOLLEFSON LLP
999 Third Avenue, Suite 4400
Seattle, Washington 98104
Tel: [phone]

Klaus H. Hamm (pro hac vice)
[e-mail]
Derrick W. Toddy (pro hac vice)
[e-mail]
John D. Vandenberg, WSBA No. 38445
[e-mail]
Jeffrey S. Love
[e-mail]
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Tel: [phone]

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Attorneys for Defendants eBay Inc., Netflix, Inc., Office Depot, Inc., and Staples, Inc.
Michael G. Rhodes (pro hac vice)
[e-mail]
COOLEY LLP
101 California St., 5th Floor
San Francisco, California 94111
Tel: [phone]

/s/ Christopher B. Durbin (with permission)
Christopher B. Durbin, WSBA No. 41159
[e-mail]
COOLEY LLP
719 Second Avenue, Suite 900
Seattle, Washington 98104
Tel: [phone]

Heidi L. Keefe (pro hac vice)
[e-mail]
Mark R. Weinstein (pro hac vice)
[e-mail]
Sudhir A. Pala (pro hac vice)
[e-mail]
Elizabeth L. Stameshkin (pro hac vice)
[e-mail]
COOLEY LLP
3175 Hanover St.
Palo Alto, California 94304
Tel: [phone]

Attorneys for Defendant Facebook, Inc.

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17
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
2
3
4
5
6
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8
9
10
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13
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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
1155 Avenue of the Americas
New York, New York 10036

/s/ Shannon M. Jost (with permission)__
Shannon M. Jost, WSBA No. 32511
[e-mail]
Scott A.W. Johnson, WSBA No. 15543
[e-mail]
Theresa H. Wang, WSBA No. 39784
[e-mail]
STOKES LAWRENCE, P.S.
800 Fifth Avenue, Suite 4000
Seattle, Washington 98104
Tel: [phone]

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

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21
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John S. Letchinger (pro hac vice)
[e-mail]
Douglas S. Rupert (pro hac vice)
[e-mail]
WILDMAN, HARROLD, ALLEN & DIXON
LLP
225 West Wacker Drive, Suite 2800
Chicago, Illinois 60606
Tel: [phone]
Jeffrey D. Neumeyer, WSBA No. 35183
[e-mail]
OfficeMax Incorporated
1111 West Jefferson Street, Suite 510
Boise, Idaho 83702
Tel: [phone]

/s/ Steven W. Fogg (with permission)______
Kevin C. Baumgardner, WSBA No. 14263
[e-mail]
Steven W. Fogg, WSBA No. 23528
[e-mail]
CORR CRONIN MICHELSON
BAUMGARDNER & PREECE LLP
1001 4th Avenue, Suite 3900
Seattle, Washington 98154
Tel: [phone]

Attorneys for Defendant OfficeMax Incorporated

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18
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
2
3
4
5
6
7
8
9

Michael A. Jacobs (pro hac vice)
/s/ Mark P. Walters (with permission)___
[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.

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JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
2

CERTIFICATE OF SERVICE

3

I hereby certify that on May 27, 2011, I electronically filed the foregoing with the Clerk of
the Court using the CM/ECF system which will send notification of such filing to the following
counsel of record:

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5
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7
8
9

Attorneys for AOL, Inc.
Aneelah Afzali
Cortney Alexander
Robert Burns
Elliot Cook
Gerald Ivey
Scott Johnson
Shannon Jost

[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Apple, Inc.
David Almeling
Brian Berliner
George Riley
Jeremy Roller
Scott Wilsdon
Neil Yang

[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
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Attorneys for eBay, Inc., Netflix, Inc., and Staples, Inc.
Chris Carraway
[e-mail]
Kristin Cleveland
[e-mail]
Klaus Hamm
[e-mail]
Arthur Harrigan, Jr.
[e-mail]
John Vandenberg
[e-mail]
Christopher Wion
[e-mail]
Attorneys for Facebook, Inc.
Heidi Keefe
Sudhir Pala
Michael Rhodes
Elizabeth Stameshkin
Mark Weinstein

[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Google, Inc. and YouTube, LLC
Aneelah Afzali
[e-mail]
Aaron Chase
[e-mail]
Dimitrios Drivas
[e-mail]
John Handy
[e-mail]
Warren Heit
[e-mail]
Scott Johnson
[e-mail]
Shannon Jost
[e-mail]
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000

1
2
3
4
5
6
7
8
9
10
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13
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Kevin McGann
Wendi Schepler

[e-mail]
[e-mail]

Attorneys for Office Depot, Inc.
Chris Carraway
Kristin Cleveland
Klaus Hamm
Arthur Harrigan, Jr.
John Vandenberg
Christopher Wion

[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Attorneys for OfficeMax, Inc.
Kevin Baumgardner
Steven Fogg
John Letchinger
Douglas Rupert

[e-mail]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Yahoo! Inc.
Francis Ho
Richard S.J. Hung
Michael Jacobs
Matthew Kreeger
Dario Machleidt
Eric Ow
Mark Walters

[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

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By: /s/ Matthew R. Berry

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ii
JOINT CLAIM CONSTRUCTION AND
PREHEARING STATEMENT
Case No. 2:10-cv-01385-MJP

Susman Godfrey LLP
1201 Third Avenue, Suite 3800
Seattle WA 98101-3000