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)

Exhibit 6

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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,

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

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’ Amended Invalidity
Contentions with Respect to U.S. Patents
Nos. 6,034,652 and 6,788,314

Defendants.

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20

Pursuant to the Court’s February 16, 2011 Scheduling Order, the Court’s Standing Order

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for Patent Cases, and Local Patent Rules (“P.R.”) 121 and 122, Defendants AOL, Inc., Apple Inc,

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Google Inc., and Yahoo! Inc. (collectively, “Defendants”) hereby serve these Amended Invalidity

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Contentions (“Invalidity Contentions”) regarding U.S. Patent Nos. 6,034,652 (the “’652 Patent”)

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and 6,788,314 (the “’314 Patent”) (collectively, “Asserted Patents”). This document provides

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Part IV and Part V of the May 26, 2011 Amended Invalidity Contentions served by all above-

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named defendants.

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28
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

1

IV.

THE ’652 PATENT

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A.

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Pursuant to P.R. 121, Defendants identify the following prior art now known to

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Defendants to anticipate at least one of the asserted claims of the ’652 Patent under at least 35

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U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as understood by a person

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having ordinary skill in the art. In some instances, Defendants have treated certain prior art as

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anticipatory where certain elements are inherently present, and in particular where elements are

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inherently present based on Plaintiff’s apparent claim construction in its Infringement

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Contentions. Invalidity claim charts for these references with respect to the ’652 Patent are

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Anticipation

attached to these Invalidity Contentions.

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1.

U.S. Patent No. 5,748,190 to Kjorsvik (issued May 5, 1998)

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2.

U.S. Patent No. 5,913,040 to Rakavy et al. (issued June 15, 1999)

13

3.

U.S. Patent No. 5,796,945 to Tarabella (issued August 18, 1998)

14

4.

U.S. Patent No. 5,959,623 to Van Hoff et al. (issued September 28, 1999)

15

5.

U.S. Patent No. 5,740,549 to Reilly et al., (issued April 14, 1998)

16

6.

PCT Publication No. WO 94/30000 to Beaumont et al. (published December 22,
1994)

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18

7.

The Official America Online for Windows Tour Guide (2d ed. 1994)

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8.

Novell GroupWise Version 4.1 Reference for Macintosh (1994)

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9.

Systems and methods invented, designed, developed and/or in public use or on

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sale related to BackWeb, as exemplified by the Rakavy ’040 patent and subject to further

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discovery. Based upon information currently available to Defendants, Defendants believe that

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such a system was designed and developed by BackWeb before August 22, 1995, and may have

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been in public use or on sale by BackWeb before March 22, 1995.

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10.

Systems and methods invented, designed, developed and/or in public use or on

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sale by AT&T Corp., as exemplified by the U.S. Patent No. U.S. Patent No. 5,819,284 and

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subject to further discovery. Based upon information currently available to Defendants,

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Defendants believe that such a system was designed and developed by AT&T Corp. before March
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

-2-

1
2

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

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sale related to PointCast, as exemplified by the Reilly ’549 patent and subject to further

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discovery. Based upon information currently available to Defendants, Defendants believe that

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such a system was designed, and developed by PointCast, Inc., before June 12, 1995, and may

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have been in public use or on sale by PointCast, Inc., before March 22, 1995.

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12.

Systems and methods invented, designed, developed and/or in public use or on

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sale related to AOL’s email or instant messaging systems, as exemplified by “The Official

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America Online for Windows Tour Guide” (2d ed. 1994) and subject to further discovery. Based

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upon information currently available to Defendants, Defendants believe that such a system was

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designed and developed by AOL during or prior to 1994, and may have been in public use or on

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sale by AOL during or prior to 1994.

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13.

Systems and methods invented, designed, developed and/or in public use or on

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sale related to the Zephyr Notification Service, as exemplified by “The Zephyr Notification

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Service,” C. Anthony DellaFera, MIT 1988, and subject to further discovery. Based upon

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information currently available to Defendants, Defendants believe that such a system was

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designed and developed by Ciarán Anthony DellaFera, Michael R. Gretzinger, Mark W. Eichin,

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Robert S. French, David C. Jedlinsky, John T. Kohl, and/or William E. Sommerfeld during or

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prior to 1986, and may have been in public use or on sale by Ciarán Anthony DellaFera, Michael

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R. Gretzinger, Mark W. Eichin, Robert S. French, David C. Jedlinsky, John T. Kohl, and/or

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William E. Sommerfeld before March 22, 1995.

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B.

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Pursuant to P.R. 121, Defendants identify the following additional prior art references and

Obviousness

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systems now known to Defendants that either alone or in combination with other prior art

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(including any of the above-identified anticipatory prior art and the additional prior art disclosed

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in this section) render one or more of the asserted claims of the ’652 Patent invalid as obvious

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under 35 U.S.C. § 103. Invalidity claim charts for these references with respect to the ’652 Patent

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are also attached to these Invalidity Contentions. Defendants further identify combinations of
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

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prior art (including any of the above-identified anticipatory prior art and the additional prior art

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disclosed in this section) that render one or more of the asserted claims of the ’652 Patent invalid

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as obvious under 35 U.S.C. § 103. In certain instances, the suggested obviousness combinations

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are provided in the alternative to Defendants’ anticipation contentions and are not to be construed

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to suggest that any reference included in the combinations is not by itself anticipatory.

6

1.

U.S. Patent No. 5,572,643 to Judson (issued November 5, 1996)

7

2.

U.S. Patent No. 5,819,284 to Farber et al. (issued October 6, 1998)

8

3.

U.S. Patent No. 5,796,967 to Filepp et al. (issued August 18, 1998)

9

4.

U.S. Patent No. 5,436,637 to Gayraud et al. (issued July 25, 1995)

10

5.

U.S. Patent No. 5,309,234 to Kranawetter et al. (issued May 3, 1994)

11

6.

U.S. Patent No. 5,781,894 to Petrecca et al. (issued July 14, 1998)

12

7.

U.S. Patent No. 5,617,526 to Oran et al. (issued April 1, 1997)

13

8.

The Zephyr Notification Service, C. Anthony DellaFera, (MIT 1988)

14

9.

Systems and methods invented, designed, developed and/or in public use or on

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sale related to DeskPicture by Peirce Software and subject to further discovery. Based upon

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information currently available to Defendants, Defendants believe that such a system was

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designed and developed by Peirce Software during or prior to 1993, and may have been in public

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use or on sale by Peirce Software during or prior to 1993.

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20

10.

Director Demystified, Creating Interactive Multimedia with Macromedia Director

Jason Roberts, (Peachpit Press 1995).

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Each prior art reference and systems (collectively for this subsection, “references”)

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disclosed in the preceding Anticipation section and in this Obviousness section, either alone or in

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combination with other prior art, also renders the asserted claims of the ’652 Patent invalid as

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obvious.

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In addition, each anticipatory prior art reference and/or each additional prior art reference

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may be combined with (1) information known to persons skilled in the art at the time of the

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alleged invention, (2) any of the anticipatory prior art references, and/or (3) any of the additional

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prior art references identified above in this section to render these claims invalid as obvious.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

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1

Defendants hereby incorporate the description in the February 28, 2011 Invalidity

2

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

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function it had been known to perform and yields no more than what one would expect from such

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an arrangement, the combination is obvious. Further, in the prior art, there were well-recognized

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design needs and market pressures to present information to a user in the vicinity of a display

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device. Such design needs and market pressures provided ample reason to combine the prior art

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elements. KSR, 127 S. Ct. at 1742. Moreover, since there were a finite number of predictable

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solutions, a person of ordinary skill in the art had good reason to pursue the known options. Id.

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The above identified prior art references use those familiar elements for their primary or well-

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known purposes in a manner well within the ordinary level of skill in the art. Accordingly,

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common sense and knowledge of the prior art render the claims invalid under either § 102 or

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§ 103.

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Moreover, a person of ordinary skill would have been motivated to combine the above

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prior art based on the nature of the problem to be solved, the teachings of the prior art, and the

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knowledge of persons of ordinary skill in the art. The identified prior art addresses the same or

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similar technical issues and suggests the same or similar solutions to those issues. To the extent

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that Plaintiff challenges a combination of prior art with respect to a particular element,

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Defendants reserve the right to supplement these contentions to further specify the motivation to

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combine the prior art. Defendants may rely on cited or uncited portions of the prior art, other

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documents, and expert testimony to establish that a person of ordinary skill in the art would have

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been motivated to modify or combine the prior art so as to render the claims invalid as obvious.

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Below are several examples of prior art combinations with respect to particular

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limitations. These prior art combinations are not exhaustive; rather, they are illustrative examples

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of the prior art combinations disclosed generally above. These exemplary combinations are

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alternatives to Defendants’ anticipation and single reference obviousness contentions, and, thus,

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they should not be interpreted as indicating that any of the individual references included in the

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exemplary combinations are not alone in invalidating prior art under 35 U.S.C. §§ 102 and/or
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

-5-

1
2

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

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right to identify other prior art references that would render the claims obvious despite the

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allegedly missing limitation. Defendants reserve all rights to supplement or modify these Joint

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Invalidity Contentions and to rely on other references that prove invalidity of these claims in a

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manner consistent with the Federal Rules of Civil Procedure and the Rules of this Court.

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1.

9

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.

10

o U.S. Patent No. 5,796,945 to Tarabella

11

o U.S. Patent No. 5,959,623 to Van Hoff et al.

12

o U.S. Patent No. 5,740,549 to Reilly et al.

13

o PCT Publication No. WO 94/30000 to Beaumont et al.

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o The Official America Online for Windows Tour Guide

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o Novell GroupWise Version 4.1 Reference for Macintosh

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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.

18

o U.S. Patent No. 5,796,967 to Filepp et al.

19

o U.S. Patent No. 5,436,637 to Gayraud et al.

20

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.

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o U.S. Patent No. 5,617,526 to Oran et al.

23

o The Zephyr Notification Service, C. Anthony DellaFera

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o Director Demystified, Jason Roberts

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26

2.

U.S. Patent No. 5,913,040 to Rakavy et al., in view of one or more of the
following:

27

o U.S. Patent No. 5,748,190 to Kjorsvik

28

o U.S. Patent No. 5,796,945 to Tarabella
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

-6-

1

o U.S. Patent No. 5,959,623 to Van Hoff et al.

2

o U.S. Patent No. 5,740,549 to Reilly et al.

3

o PCT Publication No. WO 94/30000 to Beaumont et al.

4

o The Official America Online for Windows Tour Guide

5

o Novell GroupWise Version 4.1 Reference for Macintosh

6

o U.S. Patent No. 5,572,643 to Judson

7

o U.S. Patent No. 5,819,284 to Farber et al.

8

o U.S. Patent No. 5,796,967 to Filepp et al.

9

o U.S. Patent No. 5,436,637 to Gayraud et al.

10

o U.S. Patent No. 5,309,234 to Kranawetter et al.

11

o U.S. Patent No. 5,781,894 to Petrecca et al.

12

o U.S. Patent No. 5,617,526 to Oran et al.

13

o The Zephyr Notification Service, C. Anthony DellaFera

14

o Director Demystified, Jason Roberts

15

3.

U.S. Patent No. 5,796,945 to Tarabella, in view of one or more of the following:

16

o U.S. Patent No. 5,748,190 to Kjorsvik

17

o U.S. Patent No. 5,913,040 to Rakavy et al.

18

o U.S. Patent No. 5,959,623 to Van Hoff et al.

19

o U.S. Patent No. 5,740,549 to Reilly et al.

20

o PCT Publication No. WO 94/30000 to Beaumont et al.

21

o The Official America Online for Windows Tour Guide

22

o Novell GroupWise Version 4.1 Reference for Macintosh

23

o U.S. Patent No. 5,572,643 to Judson

24

o U.S. Patent No. 5,819,284 to Farber et al.

25

o U.S. Patent No. 5,796,967 to Filepp et al.

26

o U.S. Patent No. 5,436,637 to Gayraud et al.

27

o U.S. Patent No. 5,309,234 to Kranawetter et al.

28

o U.S. Patent No. 5,781,894 to Petrecca et al.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

-7-

1

o U.S. Patent No. 5,617,526 to Oran et al.

2

o The Zephyr Notification Service, C. Anthony DellaFera

3

o Director Demystified, Jason Roberts,

4

4.

5

U.S. Patent No. 5,959,623 to Van Hoff et al., in view of one or more of the
following:

6

o U.S. Patent No. 5,748,190 to Kjorsvik

7

o U.S. Patent No. 5,913,040 to Rakavy et al.

8

o U.S. Patent No. 5,796,945 to Tarabella

9

o U.S. Patent No. 5,740,549 to Reilly et al.

10

o PCT Publication No. WO 94/30000 to Beaumont et al.

11

o The Official America Online for Windows Tour Guide

12

o Novell GroupWise Version 4.1 Reference for Macintosh

13

o U.S. Patent No. 5,572,643 to Judson

14

o U.S. Patent No. 5,819,284 to Farber et al.

15

o U.S. Patent No. 5,796,967 to Filepp et al.

16

o U.S. Patent No. 5,436,637 to Gayraud et al.

17

o U.S. Patent No. 5,309,234 to Kranawetter et al.

18

o U.S. Patent No. 5,781,894 to Petrecca et al.

19

o U.S. Patent No. 5,617,526 to Oran et al.

20

o The Zephyr Notification Service, C. Anthony DellaFera

21

o Director Demystified, Jason Roberts

22

5.

U.S. Patent No. 5,572,643 to Judson, in view of one or more of the following:

23

o U.S. Patent No. 5,748,190 to Kjorsvik

24

o U.S. Patent No. 5,913,040 to Rakavy et al.

25

o U.S. Patent No. 5,796,945 to Tarabella

26

o U.S. Patent No. 5,959,623 to Van Hoff et al.

27

o U.S. Patent No. 5,740,549 to Reilly et al.

28

o PCT Publication No. WO 94/30000 to Beaumont et al.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

-8-

1

o The Official America Online for Windows Tour Guide

2

o Novell GroupWise Version 4.1 Reference for Macintosh

3

o U.S. Patent No. 5,819,284 to Farber et al.

4

o U.S. Patent No. 5,796,967 to Filepp et al.

5

o U.S. Patent No. 5,436,637 to Gayraud et al.

6

o U.S. Patent No. 5,309,234 to Kranawetter et al.

7

o U.S. Patent No. 5,781,894 to Petrecca et al.

8

o U.S. Patent No. 5,617,526 to Oran et al.

9

o The Zephyr Notification Service, C. Anthony DellaFera

10
11

o Director Demystified, Jason Roberts
6.

U.S. Patent No. 5,740,549 to Reilly et al., in view of one or more of the following:

12

o U.S. Patent No. 5,748,190 to Kjorsvik

13

o U.S. Patent No. 5,913,040 to Rakavy et al.

14

o U.S. Patent No. 5,796,945 to Tarabella

15

o U.S. Patent No. 5,959,623 to Van Hoff et al.

16

o PCT Publication No. WO 94/30000 to Beaumont et al.

17

o The Official America Online for Windows Tour Guide

18

o Novell GroupWise Version 4.1 Reference for Macintosh

19

o U.S. Patent No. 5,572,643 to Judson

20

o U.S. Patent No. 5,819,284 to Farber et al.

21

o U.S. Patent No. 5,796,967 to Filepp et al.

22

o U.S. Patent No. 5,436,637 to Gayraud et al.

23

o U.S. Patent No. 5,309,234 to Kranawetter et al.

24

o U.S. Patent No. 5,781,894 to Petrecca et al.

25

o U.S. Patent No. 5,617,526 to Oran et al.

26

o The Zephyr Notification Service, C. Anthony DellaFera

27

o Director Demystified, Jason Roberts

28

7.

PCT Publication No. WO 94/30000 to Beaumont et al., in view of one or more of

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

-9-

1

the following:

2

o U.S. Patent No. 5,748,190 to Kjorsvik

3

o U.S. Patent No. 5,913,040 to Rakavy et al.

4

o U.S. Patent No. 5,796,945 to Tarabella

5

o U.S. Patent No. 5,959,623 to Van Hoff et al.

6

o U.S. Patent No. 5,740,549 to Reilly et al.

7

o The Official America Online for Windows Tour Guide

8

o Novell GroupWise Version 4.1 Reference for Macintosh

9

o U.S. Patent No. 5,572,643 to Judson

10

o U.S. Patent No. 5,819,284 to Farber et al.

11

o U.S. Patent No. 5,796,967 to Filepp et al.

12

o U.S. Patent No. 5,436,637 to Gayraud et al.

13

o U.S. Patent No. 5,309,234 to Kranawetter et al.

14

o U.S. Patent No. 5,781,894 to Petrecca et al.

15

o U.S. Patent No. 5,617,526 to Oran et al.

16

o The Zephyr Notification Service, C. Anthony DellaFera

17

o Director Demystified, Jason Roberts

18
19

8.

The Official America Online for Windows Tour Guide, in view of one or more of
the following:

20

o U.S. Patent No. 5,748,190 to Kjorsvik

21

o U.S. Patent No. 5,913,040 to Rakavy et al.

22

o U.S. Patent No. 5,796,945 to Tarabella

23

o U.S. Patent No. 5,959,623 to Van Hoff et al.

24

o U.S. Patent No. 5,740,549 to Reilly et al.

25

o PCT Publication No. WO 94/30000 to Beaumont et al.

26

o Novell GroupWise Version 4.1 Reference for Macintosh

27

o U.S. Patent No. 5,572,643 to Judson

28

o U.S. Patent No. 5,819,284 to Farber et al.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 10 -

1

o U.S. Patent No. 5,796,967 to Filepp et al.

2

o U.S. Patent No. 5,436,637 to Gayraud et al.

3

o U.S. Patent No. 5,309,234 to Kranawetter et al.

4

o U.S. Patent No. 5,781,894 to Petrecca et al.

5

o U.S. Patent No. 5,617,526 to Oran et al.

6

o The Zephyr Notification Service, C. Anthony DellaFera

7

o Director Demystified, Jason Roberts

8

9.

9

Novell GroupWise Version 4.1 Reference for Macintosh, in view of one or more
of the following:

10

o U.S. Patent No. 5,748,190 to Kjorsvik

11

o U.S. Patent No. 5,913,040 to Rakavy et al.

12

o U.S. Patent No. 5,796,945 to Tarabella

13

o U.S. Patent No. 5,959,623 to Van Hoff et al.

14

o U.S. Patent No. 5,740,549 to Reilly et al.

15

o PCT Publication No. WO 94/30000 to Beaumont et al.

16

o The Official America Online for Windows Tour Guide

17

o U.S. Patent No. 5,572,643 to Judson

18

o U.S. Patent No. 5,819,284 to Farber et al.

19

o U.S. Patent No. 5,796,967 to Filepp et al.

20

o U.S. Patent No. 5,436,637 to Gayraud et al.

21

o U.S. Patent No. 5,309,234 to Kranawetter et al.

22

o U.S. Patent No. 5,781,894 to Petrecca et al.

23

o U.S. Patent No. 5,617,526 to Oran et al.

24

o The Zephyr Notification Service, C. Anthony DellaFera

25

o Director Demystified, Jason Roberts

26
27

10.

U.S. Patent No. 5,748,190 to Kjorsvik in view of U.S. Patent No. 5,781,894 to

Petrecca et al.

28
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 11 -

1
2

11.

U.S. Patent No. 5,913,040 to Rakavy et al. in view of Director Demystified, Jason

Roberts

3

12.

4

to Kjorsvik

5

13.

6
7
8
9
10
11
12

U.S. Patent No. 5,913,040 to Rakavy et al. in view of U.S. Patent No. 5,748,190

U.S. Patent No. 5,740,549 to Reilly et al. in view of U.S. Patent No. 5,748,190 to

Kjorsvik
14.

U.S. Patent No. 5,740,549 to Reilly et al. in view of U.S. Patent No. 5,781,894 to

Petrecca et al.
15.

U.S. Patent No. 5,796,945 to Tarabella in view of U.S. Patent No. 5,748,190 to

Kjorsvik
16.

U.S. Patent No. 5,796,945 to Tarabella in view of U.S. Patent No. 5,781,894 to

Petrecca et al.

13
14
15
16

C.

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

17

identification of “any grounds for invalidity based on indefiniteness, enablement, or written

18

description under 35 U.S.C. § 112.” Defendants provide below their preliminary invalidity

19

contentions on those three issues, for the asserted claims, preserving all other invalidity

20

contentions under other provisions of Section 112 (or any other Sections, such as Section 101),

21

and preserving all invalidity contentions for the non-asserted claims.

22

Defendants hereby incorporate the description in the February 28, 2011 Invalidity

23

Contentions served by all above-named defendants summarizing the law regarding § 112.

24

As Defendants best understand Plaintiff’s Infringement Contentions at this time, certain

25

asserted claims of the ’652 Patent fail to meet the requirements of 35 U.S.C. § 112(2) and/or 35

26

U.S.C. § 112(1) for at least the following reasons.

27
28
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 12 -

1
2

1.

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

Additional Legal Principles

3

To determine the proper scope of a mean-plus-function claim in accordance with 35

4

U.S.C. § 112(6), a court must review the patent specification to identify what corresponding

5

structure is disclosed as performing the claimed function. Micro Chem., Inc. v. Great Plains

6

Chem. Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999). When a patent specification does not disclose

7

an algorithm corresponding to a computer-enabled means-plus-function limitation, the claim

8

necessarily fails to particularly point out and distinctly claim the invention as required by 35

9

U.S.C. § 112(2). Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008),

10

cert. denied, 129 S. Ct. 754 (2008); Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521

11

F.3d 1328, 1333-35 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 754 (2008); see also Blackboard,

12

Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009); Net MoneyIN, Inc. v. Verisign,

13

Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).

14

While a patent claim that does not include the term “means” is not presumptively subject

15

to § 112(6) and the algorithm disclosure requirements for computer-enabled functions, such a

16

limitation will still be subject to 112(6) if “the claim term fails to recite sufficiently definite

17

structure or else recites function without reciting sufficient structure for performing that

18

function.” Massachusetts Inst. of Tech. and Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d

19

1344, 1353 (Fed. Cir. 2006) (internal quotations and citations omitted); see also, e.g., Welker

20

Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (ruling claim limitation reciting

21

“a mechanism for moving …” was a means-plus-function limitation despite not including the

22

word “means” because “no adjective endows the claimed ‘mechanism’ with a physical or

23

structural component”); Inventio AG v. ThyssenKrupp Elevator Americas Corp., 718 F. Supp. 2d

24

529, 558-59 (D. Del. 2010) (holding claim term “computing unit” was a means-plus-function

25

limitation because nothing in the claim language provided sufficient structure for any of the

26

functions performed by the “computing unit”).

27

b.

28

Indefinite Claims

Independent Claim 4
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 13 -

1

Claim 4 and all claims dependent thereon fail to satisfy the requirements of § 112(2)

2

because each of the claim terms or phrases quoted below does not have a meaning that can be

3

clearly and definitely determined, and thus fails to put the public on notice of what is and is not

4

covered by the claims.

5

•

“peripheral attention”

6

•

“set of content data”

7

•

“selectively displaying”

8

•

“in an unobtrusive manner that does not distract a user of the apparatus from a

9

primary interaction with the apparatus”

10

•

11

Claim 4 and all claims dependent thereon also fail to satisfy the requirements of § 112(2)

“control option(s)”

12

because the specification lacks a supporting disclosure of appropriate structure for performing the

13

claimed functions recited in the following means-plus-function limitations:

14

•

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

15

•

“means for selectively displaying on the display device, in an unobtrusive manner

16

that does not distract a user of the apparatus from a primary interaction with the

17

apparatus, an image or images generated from the set of content data”

18

•

19
20
21
22

“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

23

because Interval has asserted that the limitations cover processors “configured to execute

24

instructions” that perform the recited function.

25

Dependent Claims 5, 6, 7, 8, and 11

26

Claim 5 fails to satisfy the requirements of § 112(2) because each of the claim terms or

27

phrases quoted below does not have a meaning that can be clearly and definitely determined, and

28

thus fails to put the public on notice of what is and is not covered by the claims.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 14 -

1

•

2

Claim 11 fails to satisfy the requirements of § 112(2) because each of the claim terms or

3

phrases quoted below does not have a meaning that can be clearly and definitely determined, and

4

thus fails to put the public on notice of what is and is not covered by the claims.

“scheduling the display”

5

•

6

Claims 6, 7, and 8 fail to satisfy the requirements of § 112(2) because they include

7
8

“establish(es) a link”

unsupported means-plus-function limitations:
•

9

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

10

Independent Claim 15

11

Claim 15 and all claims dependent thereon fail to satisfy the requirements of § 112(2)

12

because each of the claim terms or phrases quoted below does not have a meaning that can be

13

clearly and definitely determined, and thus fails to put the public on notice of what is and is not

14

covered by the claims.

15

•

“set of content data”

16

•

“attention manager”

17

•

“user interface installation instructions”

18

•

“content data scheduling instructions for providing temporal constraints”

19

•

“sequencing instructions”

20

•

“display instructions”

21

•

“temporal constraints on the display”

22

•

“during operation of an attention manager”

23

Claim 15 and all claims dependent thereon also fail to satisfy the requirements of § 112(2)

24

because they include indefinite means-plus-function limitations, or whether interpreted as means-

25

plus-function claims or not, they do not have a supporting disclosure of how the functions of the

26

claimed instructions are implemented. Although the term “means” is not present in the claim, the

27

claim limitations with the “instructions for/that” language fail to recite sufficient structure for

28

performing the functions as demonstrated below.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 15 -

1

•

2
3

“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

4

that allows a person to request the set of content data from the specified

5

information source”

6

•

7
8

display of the image or images generated from the set of content data”
•

9
10

13

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

•

11
12

“content data scheduling instructions for providing temporal constraints on the

“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.

14

Independent Claim 17

15

To the extent claim 17 contains the same or similar limitations as identified above for

16
17

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

18

terms or phrases quoted below does not have a meaning that can be clearly and definitely

19

determined, and thus fails to put the public on notice of what is and is not covered by the claims.

20

•

21
22

“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

23

additional indefinite means-plus-function limitations, or whether interpreted as means-plus-

24

function claims or not, they do not have a supporting disclosure of how the functions of the

25

claimed instructions are implemented.

26
27
28

•

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

- 16 -

1
2
3

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

4

or phrases quoted below does not have a meaning that can be clearly and definitely determined,

5

and thus fails to put the public on notice of what is and is not covered by the claims.

6

•

“content data update instructions”

7

•

“corresponds to a previously acquired set of content data”

8

•

“audit instructions for monitoring usage of the content display system to

9
10

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

11

additional indefinite means-plus-function limitations, or whether interpreted as means-plus-

12

function claims or not, they do not have a supporting disclosure of how the functions of the

13

claimed instructions are implemented.

14

•

“content data update instructions for enabling acquisition of an updated set of

15

content data from an information source that corresponds to a previously acquired

16

set of content data”

17

•

18
19

display device of an image generated from a set of content data”
•

20
21

24
25
26
27
28

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

•

22
23

“operating instructions for beginning, managing and terminating the display on the

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

- 17 -

1

function limitations, such terms are lacking a supporting disclosure of an algorithm to perform the

2

recited function and are thus invalid as lacking a written description.

3

Dependent Claim 11

4

Claim 11 is invalid as lacking a supporting written description if interpreted as broadly as

5

Interval’s contentions because the limitation “establish a link with an information location” is not

6

supported in the disclosure. To the extent Interval is asserting that this claim covers a link to an

7

information location that it asserts is a source or otherwise provides the alleged notices or images,

8

rather than another or additional location, this claim limitation is unsupported because the

9

specification describes at most a link to an additional information source, not the source for the

10

original content data.

11

Claims 15-18

12

To the extent Interval asserts these claims cover systems, methods or media that do not

13

require the operation of some means to detect an idle period or other period of inactivity by the

14

user, they are not supported by a written description, at least because the terms “temporal

15

constraints on the display” and “during operation of an attention manager” require the same.

16
17
18

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.

19

Independent Claims 15, 17, and 18

20

In the alternative, the “instructions for [that]” limitations described above in section

21

IV(C)(1)(b) for claims 15, 17, and 18 as invalid means-plus-function limitations are also invalid

22

for lack of enablement under § 112(1). The functions the “instructions” must perform are not

23

adequately disclosed such that a programmer of ordinary skill in the art could create the necessary

24

“instructions” or software code without undue experimentation.

25

Dependent Claim 16

26

Claim 16 is invalid for lack of enablement under § 112(1) because it depends upon invalid

27

claim 15.

28
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 18 -

1

V.

THE ’314 PATENT

2

A.

3

Pursuant to P.R. 121, Defendants identify the following prior art now known to

4

Defendants to anticipate one or more of the asserted claims of the ’314 Patent under at least 35

5

U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as understood by a person

6

having ordinary skill in the art. In some instances, Defendants have treated certain prior art as

7

anticipatory where certain elements are inherently present, and in particular where elements are

8

inherently present based on Plaintiff’s apparent claim construction in its Infringement

9

Contentions. Invalidity claim charts for these references with respect to the ’314 Patent are

10

Anticipation

attached to these Invalidity Contentions.

11

1.

U.S. Patent No. 5,748,190 to Kjorsvik (issued May 5, 1998)

12

2.

U.S. Patent No. 5,913,040 to Rakavy et al. (issued June 15, 1999)

13

3.

U.S. Patent No. 5,796,945 to Tarabella (issued August 18, 1998)

14

4.

U.S. Patent No. 5,959,623 to Van Hoff et al. (issued September 28, 1999)

15

5.

U.S. Patent No. 5,740,549 to Reilly et al., (issued April 14, 1998)

16

6.

PCT Publication No. WO 94/30000 to Beaumont et al. (published December 22,
1994)

17
18

7.

The Official America Online for Windows Tour Guide (2d ed. 1994)

19

8.

Novell GroupWise Version 4.1 Reference for Macintosh (1994)

20

9.

Systems and methods invented, designed, developed and/or in public use or on

21

sale related to BackWeb, as exemplified by the Rakavy ’040 patent and subject to further

22

discovery. Based upon information currently available to Defendants, Defendants believe that

23

such a system was designed and developed by BackWeb before August 22, 1995, and may have

24

been in public use or on sale by BackWeb before March 22, 1995.

25

10.

Systems and methods invented, designed, developed and/or in public use or on

26

sale by AT&T Corp., as exemplified by the U.S. Patent No. Farber ’284 patent and subject to

27

further discovery. Based upon information currently available to Defendants, Defendants believe

28

that such a system was designed and developed by AT&T Corp. before March 24, 1995, and may
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 19 -

1
2

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

3

sale related to PointCast, as exemplified by the Reilly ’549 patent and subject to further

4

discovery. Based upon information currently available to Defendants, Defendants believe that

5

such a system was designed, and developed by PointCast, Inc., before June 12, 1995, and may

6

have been in public use or on sale by PointCast, Inc., before March 22, 1995.

7

12.

Systems and methods invented, designed, developed and/or in public use or on

8

sale related to AOL’s email or instant messaging systems, as exemplified by “The Official

9

America Online for Windows Tour Guide” (2d ed. 1994) and subject to further discovery. Based

10

upon information currently available to Defendants, Defendants believe that such a system was

11

designed and developed by AOL during or prior to 1994, and may have been in public use or on

12

sale by AOL during or prior to 1994.

13

13.

Systems and methods invented, designed, developed and/or in public use or on

14

sale related to the Zephyr Notification Service, as exemplified by “The Zephyr Notification

15

Service,” C. Anthony DellaFera, MIT 1988, and subject to further discovery. Based upon

16

information currently available to Defendants, Defendants believe that such a system was

17

designed and developed by Ciarán Anthony DellaFera, Michael R. Gretzinger, Mark W. Eichin,

18

Robert S. French, David C. Jedlinsky, John T. Kohl, and/or William E. Sommerfeld during or

19

prior to 1986, and may have been in public use or on sale by Ciarán Anthony DellaFera, Michael

20

R. Gretzinger, Mark W. Eichin, Robert S. French, David C. Jedlinsky, John T. Kohl, and/or

21

William E. Sommerfeld before March 22, 1995.

22

B.

23

Pursuant to P.R. 121, Defendants identify the following additional prior art references and

Obviousness

24

systems now known to Defendants that either alone or in combination with other prior art

25

(including any of the above-identified anticipatory prior art and the additional prior art disclosed

26

in this section) render one or more of the asserted claims of the ’314 Patent invalid as obvious

27

under 35 U.S.C. § 103. Invalidity claim charts for these references with respect to the ’314 Patent

28

are also attached to these Invalidity Contentions. Defendants further identify combinations of
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 20 -

1

prior art (including any of the above-identified anticipatory prior art and the additional prior art

2

disclosed in this section) that render one or more of the asserted claims of the ’314 Patent invalid

3

as obvious under 35 U.S.C. § 103. In certain instances, the suggested obviousness combinations

4

are provided in the alternative to Defendants’ anticipation contentions and are not to be construed

5

to suggest that any reference included in the combinations is not by itself anticipatory.

6

1.

U.S. Patent No. 5,572,643 to Judson (issued November 5, 1996)

7

2.

U.S. Patent No. 5,819,284 to Farber et al. (issued October 6, 1998)

8

3.

U.S. Patent No. 5,796,967 to Filepp et al. (issued August 18, 1998)

9

4.

U.S. Patent No. 5,436,637 to Gayraud et al. (issued July 25, 1995)

10

5.

U.S. Patent No. 5,309,234 to Kranawetter et al. (issued May 3, 1994)

11

6.

U.S. Patent No. 5,781,894 to Petrecca et al. (issued July 14, 1998)

12

7.

U.S. Patent No. 5,617,526 to Oran et al. (issued April 1, 1997)

13

8.

The Zephyr Notification Service, C. Anthony DellaFera, (MIT 1988)

14

9.

Systems and methods invented, designed, developed and/or in public use or on

15

sale related to DeskPicture by Peirce Software and subject to further discovery. Based upon

16

information currently available to Defendants, Defendants believe that such a system was

17

designed and developed by Peirce Software during or prior to 1993, and may have been in public

18

use or on sale by Peirce Software during or prior to 1993.

19
20

10.

Buying a Real Computer Monitor, Walter Salm, (Popular Electronics, October

1994)

21

Each prior art reference and systems (collectively for this subsection, “references”)

22

disclosed in the preceding Anticipation section and in this Obviousness section, either alone or in

23

combination with other prior art, also renders the asserted claims of the ’314 Patent invalid as

24

obvious.

25

In addition, each anticipatory prior art reference and/or each additional prior art reference

26

may be combined with (1) information known to persons skilled in the art at the time of the

27

alleged invention, (2) any of the anticipatory prior art references, and/or (3) any of the additional

28

prior art references identified above in this section to render these claims invalid as obvious.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 21 -

1

Defendants hereby incorporate the description in the February 28, 2011 Invalidity

2

Contentions served by all above-named defendants summarizing the law regarding obviousness.

3

Because the ’314 Patent simply arranges old elements with each performing the same

4

function it had been known to perform and yields no more than what one would expect from such

5

an arrangement, the combination is obvious. Further, in the prior art, there were well-recognized

6

design needs and market pressures to present information to a user in the vicinity of a display

7

device. Such design needs and market pressures provided ample reason to combine the prior art

8

elements. KSR, 127 S. Ct. at 1742. Moreover, since there were a finite number of predictable

9

solutions, a person of ordinary skill in the art had good reason to pursue the known options. Id.

10

The above identified prior art references use those familiar elements for their primary or well-

11

known purposes in a manner well within the ordinary level of skill in the art. Accordingly,

12

common sense and knowledge of the prior art render the claims invalid under either § 102 or

13

§ 103.

14

Moreover, a person of ordinary skill would have been motivated to combine the above

15

prior art based on the nature of the problem to be solved, the teachings of the prior art, and the

16

knowledge of persons of ordinary skill in the art. The identified prior art addresses the same or

17

similar technical issues and suggests the same or similar solutions to those issues. To the extent

18

that Plaintiff challenges a combination of prior art with respect to a particular element,

19

Defendants reserve the right to supplement these contentions to further specify the motivation to

20

combine the prior art. Defendants may rely on cited or uncited portions of the prior art, other

21

documents, and expert testimony to establish that a person of ordinary skill in the art would have

22

been motivated to modify or combine the prior art so as to render the claims invalid as obvious.

23

Below are several examples of prior art combinations with respect to particular

24

limitations. These prior art combinations are not exhaustive; rather, they are illustrative examples

25

of the prior art combinations disclosed generally above. These exemplary combinations are

26

alternatives to Defendants’ anticipation and single reference obviousness contentions, and, thus,

27

they should not be interpreted as indicating that any of the individual references included in the

28

exemplary combinations are not alone invalidating prior art under 35 U.S.C. §§ 102 and/or 103.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 22 -

1

To the extent that Plaintiff contends that any of the above-identified prior art fails to

2

disclose one or more limitations of the asserted claims of the ’314 Patent, Defendants reserve the

3

right to identify other prior art references that would render the claims obvious despite the

4

allegedly missing limitation. Defendants reserve all rights to supplement or modify these Joint

5

Invalidity Contentions and to rely on other references that prove invalidity of these claims in a

6

manner consistent with the Federal Rules of Civil Procedure and the Rules of this Court.

7

1.

U.S. Patent No. 5,748,190 to Kjorsvik, in view of one or more of the following:

8

o U.S. Patent No. 5,913,040 to Rakavy et al.

9

o U.S. Patent No. 5,796,945 to Tarabella

10

o U.S. Patent No. 5,959,623 to Van Hoff et al.

11

o U.S. Patent No. 5,740,549 to Reilly et al.

12

o PCT Publication No. WO 94/30000 to Beaumont et al.

13

o The Official America Online for Windows Tour Guide

14

o Novell GroupWise Version 4.1 Reference for Macintosh

15

o U.S. Patent No. 5,572,643 to Judson

16

o U.S. Patent No. 5,819,284 to Farber et al.

17

o U.S. Patent No. 5,796,967 to Filepp et al.

18

o U.S. Patent No. 5,436,637 to Gayraud et al.

19

o U.S. Patent No. 5,309,234 to Kranawetter et al.

20

o U.S. Patent No. 5,781,894 to Petrecca et al.

21

o U.S. Patent No. 5,617,526 to Oran et al.

22

o The Zephyr Notification Service, C. Anthony DellaFera

23

o Buying a Real Computer Monitor, Walter Salm

24
25

2.

U.S. Patent No. 5,913,040 to Rakavy et al., in view of one or more of the
following:

26

o U.S. Patent No. 5,748,190 to Kjorsvik

27

o U.S. Patent No. 5,796,945 to Tarabella

28

o U.S. Patent No. 5,959,623 to Van Hoff et al.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 23 -

1

o U.S. Patent No. 5,740,549 to Reilly et al.

2

o PCT Publication No. WO 94/30000 to Beaumont et al.

3

o The Official America Online for Windows Tour Guide

4

o Novell GroupWise Version 4.1 Reference for Macintosh

5

o U.S. Patent No. 5,572,643 to Judson

6

o U.S. Patent No. 5,819,284 to Farber et al.

7

o U.S. Patent No. 5,796,967 to Filepp et al.

8

o U.S. Patent No. 5,436,637 to Gayraud et al.

9

o U.S. Patent No. 5,309,234 to Kranawetter et al.

10

o U.S. Patent No. 5,781,894 to Petrecca et al.

11

o U.S. Patent No. 5,617,526 to Oran et al.

12

o The Zephyr Notification Service, C. Anthony DellaFera

13

o Buying a Real Computer Monitor, Walter Salm

14

3.

U.S. Patent No. 5,796,945 to Tarabella, in view of one or more of the following:

15

o U.S. Patent No. 5,748,190 to Kjorsvik

16

o U.S. Patent No. 5,913,040 to Rakavy et al.

17

o U.S. Patent No. 5,959,623 to Van Hoff et al.

18

o U.S. Patent No. 5,740,549 to Reilly et al.

19

o PCT Publication No. WO 94/30000 to Beaumont et al.

20

o The Official America Online for Windows Tour Guide

21

o Novell GroupWise Version 4.1 Reference for Macintosh

22

o U.S. Patent No. 5,572,643 to Judson

23

o U.S. Patent No. 5,819,284 to Farber et al.

24

o U.S. Patent No. 5,796,967 to Filepp et al.

25

o U.S. Patent No. 5,436,637 to Gayraud et al.

26

o U.S. Patent No. 5,309,234 to Kranawetter et al.

27

o U.S. Patent No. 5,781,894 to Petrecca et al.

28

o U.S. Patent No. 5,617,526 to Oran et al.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 24 -

1

o The Zephyr Notification Service, C. Anthony DellaFera

2

o Buying a Real Computer Monitor, Walter Salm

3

4.

4

U.S. Patent No. 5,959,623 to Van Hoff et al., in view of one or more of the
following:

5

o U.S. Patent No. 5,748,190 to Kjorsvik

6

o U.S. Patent No. 5,913,040 to Rakavy et al.

7

o U.S. Patent No. 5,796,945 to Tarabella

8

o U.S. Patent No. 5,740,549 to Reilly et al.

9

o PCT Publication No. WO 94/30000 to Beaumont et al.

10

o The Official America Online for Windows Tour Guide

11

o Novell GroupWise Version 4.1 Reference for Macintosh

12

o U.S. Patent No. 5,572,643 to Judson

13

o U.S. Patent No. 5,819,284 to Farber et al.

14

o U.S. Patent No. 5,796,967 to Filepp et al.

15

o U.S. Patent No. 5,436,637 to Gayraud et al.

16

o U.S. Patent No. 5,309,234 to Kranawetter et al.

17

o U.S. Patent No. 5,781,894 to Petrecca et al.

18

o U.S. Patent No. 5,617,526 to Oran et al.

19

o The Zephyr Notification Service, C. Anthony DellaFera

20

o Buying a Real Computer Monitor, Walter Salm

21

5.

U.S. Patent No. 5,572,643 to Judson, in view of one or more of the following:

22

o U.S. Patent No. 5,748,190 to Kjorsvik

23

o U.S. Patent No. 5,913,040 to Rakavy et al.

24

o U.S. Patent No. 5,796,945 to Tarabella

25

o U.S. Patent No. 5,959,623 to Van Hoff et al.

26

o U.S. Patent No. 5,740,549 to Reilly et al.

27

o PCT Publication No. WO 94/30000 to Beaumont et al.

28

o The Official America Online for Windows Tour Guide
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 25 -

1

o Novell GroupWise Version 4.1 Reference for Macintosh

2

o U.S. Patent No. 5,819,284 to Farber et al.

3

o U.S. Patent No. 5,796,967 to Filepp et al.

4

o U.S. Patent No. 5,436,637 to Gayraud et al.

5

o U.S. Patent No. 5,309,234 to Kranawetter et al.

6

o U.S. Patent No. 5,781,894 to Petrecca et al.

7

o U.S. Patent No. 5,617,526 to Oran et al.

8

o The Zephyr Notification Service, C. Anthony DellaFera

9

o Buying a Real Computer Monitor, Walter Salm

10

6.

U.S. Patent No. 5,740,549 to Reilly et al., in view of one or more of the following:

11

o U.S. Patent No. 5,748,190 to Kjorsvik

12

o U.S. Patent No. 5,913,040 to Rakavy et al.

13

o U.S. Patent No. 5,796,945 to Tarabella

14

o U.S. Patent No. 5,959,623 to Van Hoff et al.

15

o PCT Publication No. WO 94/30000 to Beaumont et al.

16

o The Official America Online for Windows Tour Guide

17

o Novell GroupWise Version 4.1 Reference for Macintosh

18

o U.S. Patent No. 5,572,643 to Judson

19

o U.S. Patent No. 5,819,284 to Farber et al.

20

o U.S. Patent No. 5,796,967 to Filepp et al.

21

o U.S. Patent No. 5,436,637 to Gayraud et al.

22

o U.S. Patent No. 5,309,234 to Kranawetter et al.

23

o U.S. Patent No. 5,781,894 to Petrecca et al.

24

o U.S. Patent No. 5,617,526 to Oran et al.

25

o The Zephyr Notification Service, C. Anthony DellaFera

26

o Buying a Real Computer Monitor, Walter Salm

27
28

7.

PCT Publication No. WO 94/30000 to Beaumont et al., in view of one or more of
the following:

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

- 26 -

1

o U.S. Patent No. 5,748,190 to Kjorsvik

2

o U.S. Patent No. 5,913,040 to Rakavy et al.

3

o U.S. Patent No. 5,796,945 to Tarabella

4

o U.S. Patent No. 5,959,623 to Van Hoff et al.

5

o U.S. Patent No. 5,740,549 to Reilly et al.

6

o The Official America Online for Windows Tour Guide

7

o Novell GroupWise Version 4.1 Reference for Macintosh

8

o U.S. Patent No. 5,572,643 to Judson

9

o U.S. Patent No. 5,819,284 to Farber et al.

10

o U.S. Patent No. 5,796,967 to Filepp et al.

11

o U.S. Patent No. 5,436,637 to Gayraud et al.

12

o U.S. Patent No. 5,309,234 to Kranawetter et al.

13

o U.S. Patent No. 5,781,894 to Petrecca et al.

14

o U.S. Patent No. 5,617,526 to Oran et al.

15

o The Zephyr Notification Service, C. Anthony DellaFera

16

o Buying a Real Computer Monitor, Walter Salm

17
18

8.

The Official America Online for Windows Tour Guide, in view of one or more of
the following:

19

o U.S. Patent No. 5,748,190 to Kjorsvik

20

o U.S. Patent No. 5,913,040 to Rakavy et al.

21

o U.S. Patent No. 5,796,945 to Tarabella

22

o U.S. Patent No. 5,959,623 to Van Hoff et al.

23

o U.S. Patent No. 5,740,549 to Reilly et al.

24

o PCT Publication No. WO 94/30000 to Beaumont et al.

25

o Novell GroupWise Version 4.1 Reference for Macintosh

26

o U.S. Patent No. 5,572,643 to Judson

27

o U.S. Patent No. 5,819,284 to Farber et al.

28

o U.S. Patent No. 5,796,967 to Filepp et al.
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 27 -

1

o U.S. Patent No. 5,436,637 to Gayraud et al.

2

o U.S. Patent No. 5,309,234 to Kranawetter et al.

3

o U.S. Patent No. 5,781,894 to Petrecca et al.

4

o U.S. Patent No. 5,617,526 to Oran et al.

5

o The Zephyr Notification Service, C. Anthony DellaFera

6

o Buying a Real Computer Monitor, Walter Salm

7

9.

8

Novell GroupWise Version 4.1 Reference for Macintosh, in view of one or more
of the following:

9

o U.S. Patent No. 5,748,190 to Kjorsvik

10

o U.S. Patent No. 5,913,040 to Rakavy et al.

11

o U.S. Patent No. 5,796,945 to Tarabella

12

o U.S. Patent No. 5,959,623 to Van Hoff et al.

13

o U.S. Patent No. 5,740,549 to Reilly et al.

14

o PCT Publication No. WO 94/30000 to Beaumont et al.

15

o The Official America Online for Windows Tour Guide

16

o U.S. Patent No. 5,572,643 to Judson

17

o U.S. Patent No. 5,819,284 to Farber et al.

18

o U.S. Patent No. 5,796,967 to Filepp et al.

19

o U.S. Patent No. 5,436,637 to Gayraud et al.

20

o U.S. Patent No. 5,309,234 to Kranawetter et al.

21

o U.S. Patent No. 5,781,894 to Petrecca et al.

22

o U.S. Patent No. 5,617,526 to Oran et al.

23

o The Zephyr Notification Service, C. Anthony DellaFera

24

o Buying a Real Computer Monitor, Walter Salm

25
26
27
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10.

U.S. Patent No. 5,748,190 to Kjorsvik in view of Buying a Real Computer

Monitor, Walter Salm
11.

U.S. Patent No. 5,913,040 to Rakavy et al. in view of Buying a Real Computer

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

- 28 -

1
2
3

12.
Kjorsvik
C.

4
5

U.S. Patent No. 5,913,040 to Rakavy et al. in view of U.S. Patent No. 5,748,190 to

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

6

identification of “any grounds for invalidity based on indefiniteness, enablement, or written

7

description under 35 U.S.C. § 112.” Defendants provide below their preliminary invalidity

8

contentions on those three issues, for the asserted claims, preserving all other invalidity

9

contentions under other provisions of Section 112 (or any other Sections, such as Section 101),

10

and preserving all invalidity contentions for the non-asserted claims.

11

Defendants hereby incorporate the description in the February 28, 2011 Invalidity

12

Contentions served by all above-named defendants summarizing the law regarding § 112.

13

As Defendants best understand Plaintiff’s Infringement Contentions at this time, certain

14

asserted claims of the ’652 Patent fail to meet the requirements of 35 U.S.C. § 112(2) and/or 35

15

U.S.C. § 112(1) for at least the following reasons.

16

1.

17
18

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

Additional Legal Principles

Defendants hereby incorporate section IV(C)(1)(a).

19

b.

Indefinite Claims

20

All Asserted Claims

21

All the asserted claims are indefinite because each of the claim terms or phrases quoted

22

below does not have a meaning that can be clearly and definitely determined, and thus fails to put

23

the public on notice of what is and is not covered by the claims.

24

•

“peripheral attention”

25

•

“set of content data”

26

•

“selectively display [selectively displaying on the display device. . . /apparatus that

27
28

effects selective display on the display device]
•

“in an unobtrusive manner that does not distract a user of the apparatus from a

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

- 29 -

1

primary interaction with the apparatus”

2

•

“engaging [enabling engagement of] the peripheral attention of a user”

3

•

“wherein the one or more sets of content data are selected from a plurality of sets

4

of content data”

5

•

“without the content data being aggregated”

6

•

“the respective content provider may provide”

7

•

all the “instructions” limitations

8

•

control option(s) [claims 7, 9, 10, 12, 13, and 15]

9

Independent Claim 3

10

For the reasons discussed above in section IV(C)(1)(b) for claims 15, 17, and 18 of the

11

’652 patent relating to the “instructions for/that” language, the following limitations fail to satisfy

12

the requirements of § 112(2), rendering claim 3 and all claims dependent thereon indefinite.

13

•

“instructions for providing one or more sets of content data to a content display

14

system associated with the display device and located entirely in the same physical

15

location as the display device”

16

•

“instructions for providing to the content display system a set of instructions for

17

enabling the content display system to selectively display, in an unobtrusive

18

manner that does not distract a user of the display device or an apparatus

19

associated with the display device from a primary interaction with the display

20

device or apparatus, an image or images generated from a set of content data”

21

•

“instructions for auditing the display of sets of content data by the content display

22

system”

23

Independent Claim 7

24

For the reasons discussed above in section IV (C)(1)(b) for claims 15, 17, and 18 of the

25

’652 patent relating to the “instructions for/that” language, the following limitations fail to satisfy

26

the requirements of § 112(2), rendering claim 7 and all claims dependent thereon indefinite.

27

Although the term “means” is not present in the claim, the claim limitations with the

28

“apparatus/device that” language fail to recite sufficient structure for performing the functions as
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 30 -

1

demonstrated below.

2

•

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

3

•

“display apparatus that effects selective display on the display device, in an

4

unobtrusive manner that does not distract a user of the display device or an

5

apparatus associated with the display device from a primary interaction with the

6

display device or apparatus, of an image or images generated from the set of

7

content data”

8

•

9

options during the selective display of the image or images generated form the set

10
11

“user input apparatus that enables selection by a user of one or more control

of content data”
•

12

“a system control device that controls aspects of the operation of the system in
accordance with a selected control option”

13

Independent Claim 13

14

For the reasons discussed above in section IV(C)(1)(b) for claims 15, 17, and 18 of the

15

’652 patent relating to the “instructions for/that” language, the following limitations fail to satisfy

16

the requirements of § 112(2), rendering claim 13 and all claims dependent thereon indefinite.

17

•

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

18

•

“instructions for selectively displaying on the display device, in an unobtrusive

19

manner that does not distract a user of the display device or an apparatus

20

associated with the display device from a primary interaction with the display

21

device or apparatus, an image or images generated from the set of content data”

22

•

“instructions for enabling selection by a user of one or more control options during

23

the selective display of the image or images generated from the set of content

24

data”

25
26

•

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

27
28
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

- 31 -

1

2.

2
3

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

4

art rejection violates the written description requirement if it introduces new concepts. See In re

5

Xi, 2008 WL 5232784, at *1-*3 (BPAI 2008) (determining a negative limitation to remove

6

impurities from a chemical compound that was added to overcome a prior art rejection violated

7

the written description requirement because the specification did not disclose that these impurities

8

could not be present”) (citing Ex parte Grasselli, 231 U.S.P.Q. 393, 394 (BPAI 1983) (finding the

9

negatively claimed language “said catalyst being free of uranium and the combination of

10

vanadium and phosphorous” in a product claim introduced new concepts because “the express

11

exclusion of certain elements implies the permissible inclusion of all other elements not so

12

expressly excluded”), aff’d, 738 F.2d 453 (Fed. Cir. 1983) (unpublished)).

13

b.

Invalid Claims

14

All Asserted Claims

15

During prosecution, the following negative limitation was added to overcome prior art that

16

allegedly aggregated content data at a single service node. Amendment D (10/28/2003) at 9-10.

17

There is nothing in the specification to indicate that the patentee possessed an invention that

18

prohibited remote aggregation of content data as claimed. In fact, the term “aggregation” fails to

19

appear anywhere in the ’314 specification, and there is nothing in the specification to suggest that

20

content data can never be stored in a common remote location prior to being provided to a content

21

display system. Therefore, the following negative limitation added to “carve out” subject matter

22

from a prior art reference has no support in the specification and violates the written description

23

requirement.

24

•

“without the content data being aggregated at a common physical location remote

25

from the content display system prior to being provided to the content display

26

system”

27
28

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

- 32 -

1
2

independent transmission/receipt of content data, discussed.
•

“wherein each associated content provider is located in a different physical

3

location than at least one other content provider and each content provider

4

provides its content data to the content display system independently of each other

5

content provider”

6

3.

7
8
9

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

10

The “instructions for” and “apparatus/device that” limitations described above in section

11

V(C)(1)(b) for claims 3, 7, and 13 as invalid means-plus-function limitations are also invalid for

12

lack of enablement under § 112(1). The functions the “instructions” and “apparatus/device” must

13

perform are not adequately disclosed such that a programmer of ordinary skill in the art could

14

create the necessary software and/or hardware without undue experimentation.

15
16
17
18
19
20
21
22

DATED this 26 day of May, 2011.
/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]

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24
25
26
27

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

- 33 -

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2
3
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5
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/s/ Brian M. Berliner
Brian M. Berliner (pro hac vice)
[e-mail]
Neil L. Yang (pro hac vice)
[e-mail]
Xin-Yi Zhou (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
1155 Avenue of the Americas
New York, New York 10036

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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20
21
22
23
24

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

25
26
27
28

Michael A. Jacobs (pro hac vice)
[e-mail]
Matthew I. Kreeger (pro hac vice)
[e-mail]
Richard S.J. Hung (pro hac vice)
[e-mail]
Defendants’ Amended Invalidity Contentions
with Respect to U.S. Patents Nos. 6,034,652 and
6,788,314 (10-cv-01385-MJP)

/s/ Mark P. Walters
Mark P. Walters, WSBA No. 30819
[e-mail]
Dario A. Machleidt, WSBA No. 41860
[e-mail]
FROMMER LAWRENCE & HAUG LLP
- 34 -

1
2
3
4
5

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

- 35 -

1

CERTIFICATE OF SERVICE

2

I certify that, on this 26th day of May, 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:

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

- 36 -

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2
3
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5

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])

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I further certify that, on this 26th day of May, 2011, I caused to be served via shared
workspace and via FedEx Defendants’ Supplemental Claim Charts accompanying their Amended
Invalidity Contentions on Plaintiff’s counsel.
DATED: May 26, 2011

10
By: /s/ Xin-Yi Zhou_____
Xin-Yi Zhou, State Bar No. 251969 (pro hac vice)
O’MELVENY & MYERS LLP
400 South Hope Street
Los Angeles, California 90071
Tel: [phone]
Fax: [phone]
Email: [e-mail]

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

- 37 -