HYPERPHRASE TECHNOLOGIES, LLC v. GOOGLE INC.

Filing 103

BRIEF in Support by Defendant GOOGLE INC. re: 100 MOTION for Summary Judgment filed by GOOGLE INC. Memorandum In Support of Google's Motion for Summary Judgment of Noninfringement of U.S. Patent Nos. 5,903,889 and 6,516,321 (Peterson, James)

HYPERPHRASE TECHNOLOGIES, LLC v. GOOGLE INC.

Doc. 103

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 1 of 42

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WISCONSIN HYPERPHRASE TECHNOLOGIES, LLC and HYPERPHRASE INC., Plaintiffs, v. GOOGLE INC., Defendant. MEMORANDUM IN SUPPORT OF GOOGLE'S MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT OF U.S. PATENT NOS. 5,903,889 AND 6,516,321 Civil Action No. 06 C 0199 S

Dockets.Justia.com

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 2 of 42

TABLE OF CONTENTS Page I. II. III. INTRODUCTION .............................................................................................................1 OPERATION OF AUTOLINK .........................................................................................2 LEGAL STANDARDS .....................................................................................................4 A. To Successfully Oppose Summary Judgment, HyperPhrase Must Set Forth Specific Facts that Show There Is a Genuine Issue for Trial.........................................................................................................4 1. Summary Judgment of Noninfringement Should Be Granted Where, As Here, the Properly Construed Claims Do Not Cover Google's Technology. ........................................................4 a. b. 2. IV. Claims should be given a meaning consistent with the intrinsic record. ................................................................5 Claim preambles can be limitations...............................................6

A Claim is Not Infringed Where a Single Limitation is Lacking. .....................................................................................................6

ARGUMENT.....................................................................................................................8 A. AutoLink Does Not Infringe the '889 Patent.........................................................8 1. AutoLink does not have a "standardized format for addressing."................................................................................................8 a. b. 2. "Standardized format for addressing" means exactly what it says. .......................................................................8 Application of the "standardized format for addressing" construction to AutoLink. ..........................................9

AutoLink Does Not Modify the First Data Record to Create an Address of the Referenced Record. .........................................10 a. Claim element 1(e) requires "modifying said reference to said second data record to create an address," and that address must be "the address of the referenced record." ............................................................11 Application of the "address" construction to AutoLink. .....................................................................................12

b. 3.

AutoLink Does Not Modify the First Data Record At All. ...........................................................................................................12 i

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 3 of 42

TABLE OF CONTENTS Page I. II. III. INTRODUCTION .............................................................................................................1 OPERATION OF AUTOLINK .........................................................................................2 LEGAL STANDARDS .....................................................................................................4 A. To Successfully Oppose Summary Judgment, HyperPhrase Must Set Forth Specific Facts that Show There Is a Genuine Issue for Trial.........................................................................................................4 1. Summary Judgment of Noninfringement Should Be Granted Where, As Here, the Properly Construed Claims Do Not Cover Google's Technology. ........................................................4 a. b. 2. IV. Claims should be given a meaning consistent with the intrinsic record. ................................................................5 Claim preambles can be limitations...............................................6

A Claim is Not Infringed Where a Single Limitation is Lacking. .....................................................................................................6

ARGUMENT.....................................................................................................................8 A. AutoLink Does Not Infringe the '889 Patent.........................................................8 1. AutoLink does not have a "standardized format for addressing."................................................................................................8 a. b. 2. "Standardized format for addressing" means exactly what it says. .......................................................................8 Application of the "standardized format for addressing" construction to AutoLink. ..........................................9

AutoLink Does Not Modify the First Data Record to Create an Address of the Referenced Record. .........................................10 a. Claim element 1(e) requires "modifying said reference to said second data record to create an address," and that address must be "the address of the referenced record." ............................................................11 Application of the "address" construction to AutoLink. .....................................................................................12

b. 3.

AutoLink Does Not Modify the First Data Record At All. ...........................................................................................................12 i

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 4 of 42

a.

The "first data record" refers to one of the plurality of data records stored in the plurality of databases, it does not mean some other data record. ..........................................................................................12 Application of the "modification of the first data record" limitation to AutoLink. ...................................................15

b. B.

AutoLink Does Not Infringe the '321 Patent.......................................................15 1. Claim 1 is not infringed by AutoLink......................................................15 a. AutoLink does not satisfy the "modifier reference" limitation. ...................................................................16 i. The term "modifier reference" means "a word or phrase that further specifies a specific record or record segment." .................................17 Application of the "modifier reference" limitation to AutoLink. ....................................................18

ii. b.

AutoLink does not satisfy the "when" or "realtime" limitation. ...........................................................................18 i. ii. iii. iv. The '461 Patent. ...............................................................19 The '171 Patent ................................................................21 The '321 Patent ................................................................22 Application of the "when" or "real-time" requirement to AutoLink..................................................24

2.

Claim 27 is not infringed by AutoLink....................................................24 a. b. AutoLink does not satisfy the "when" or "realtime" limitation. ...........................................................................24 AutoLink does not have a plurality of subject matter specific tag pairs, one for each information type...........................................................................25 i. A "subject matter specific tag pair" means "two matching tags, each identifying a specific subject matter." .............................25 Application of the "subject matter specific tag pair" limitations to AutoLink. ......................26 ii

ii.

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 5 of 42

a.

The "first data record" refers to one of the plurality of data records stored in the plurality of databases, it does not mean some other data record. ..........................................................................................12 Application of the "modification of the first data record" limitation to AutoLink. ...................................................15

b. B.

AutoLink Does Not Infringe the '321 Patent.......................................................15 1. Claim 1 is not infringed by AutoLink......................................................15 a. AutoLink does not satisfy the "modifier reference" limitation. ...................................................................16 i. The term "modifier reference" means "a word or phrase that further specifies a specific record or record segment." .................................17 Application of the "modifier reference" limitation to AutoLink. ....................................................18

ii. b.

AutoLink does not satisfy the "when" or "realtime" limitation. ...........................................................................18 i. ii. iii. iv. The '461 Patent. ...............................................................19 The '171 Patent ................................................................21 The '321 Patent ................................................................22 Application of the "when" or "real-time" requirement to AutoLink..................................................24

2.

Claim 27 is not infringed by AutoLink....................................................24 a. b. AutoLink does not satisfy the "when" or "realtime" limitation. ...........................................................................24 AutoLink does not have a plurality of subject matter specific tag pairs, one for each information type...........................................................................25 i. A "subject matter specific tag pair" means "two matching tags, each identifying a specific subject matter." .............................25 Application of the "subject matter specific tag pair" limitations to AutoLink. ......................26 ii

ii.

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 6 of 42

3.

Claim 86 is not infringed by AutoLink....................................................27 a. "Specifying reference" means (1) a combination of a first DR, a second DR, and a MR, or (2) it is a combination of a DR, a first MR, and second MR. ..............................................................................................27 Application of the "specifying reference" limitation to AutoLink. ................................................................28 The alleged AutoLink SRs are not "seemingly general" and they do not become "relatively specific." ......................................................................................28

b. c.

C.

There Is No Liability For Licensed Microsoft Software Users, Because Microsoft Software Users are Licensed to Use the '889 and '321 Patents...................................................................................................29

V.

CONCLUSION................................................................................................................32

iii

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 7 of 42

TABLE OF AUTHORITIES Page(s) Cases Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241 (Fed. Cir. 2000)........................................................................................... 7 Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615 (Fed. Cir. 1995)........................................................................................... 6, 9 Celotex Corp. v. Catrett, 477 U.S. 317 (1986)............................................................................................................ 4 Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317 (Fed. Cir. 2002)............................................................................... 7, 10, 28 Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394 (Fed. Cir. 1994)............................................................................................... 7 Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332 (Fed. Cir. 2003)........................................................................................... 6 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002).................................................................................... 7, 12, 15, 24, 27 Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311 (Fed. Cir. 2001)........................................................................................... 7 General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978 (Fed. Cir. 1997)............................................................................................. 4 HyperPhrase Technologies LLC v. Google Inc., ___ F.3d ____, 2007 WL 4509047 (Fed. Cir. Dec. 26, 2007) (slip. op.)................................... 1, 10, 11, 12 Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566 (Fed. Cir. 1993)......................................................................................... 29 Johnston v. IVAC Corp., 885 F.2d 1574 (Fed. Cir. 1989)........................................................................................... 6 Kahn v. General Motors Corp., 135 F.3d 1472 (Fed. Cir. 1998)....................................................................................... 6, 7 Kurek v. Pleasure Driveway and Park Dist. of Peoria, Ill., 557 F.2d 580 (7th Cir.1977............................................................................................... 18 LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364 (Fed. Cir. 2006)................................................................................... 29, 32 Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., 66 F.3d 285 (Fed. Cir. 1995)............................................................................................... 7 i

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 8 of 42

Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995)........................................................................................... 4, 5 Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574 (1986)............................................................................................................ 4 Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004)........................................................................................... 6 Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353 (Fed. Cir. 2005)......................................................................................... 29 NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005)................................................................................. 6, 9, 25 PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359 (Fed. Cir. 2005)......................................................................................... 28 Pharmacia & UpJohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999)......................................................................................... 18 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)....................................................................................... 5, 6 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999)........................................................................................... 6 Quanta Computer, Inc. v. LG Electronics, Inc., _____ U.S. _____, 128 S.Ct. 28, 168 L.Ed.2d 805 (2007)............................................... 29 Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998)........................................................................................... 5 Sage Prods, Inc. v. Devon Indus., Inc., 126 F.3d 1420 (Fed. Cir. 1997)........................................................................................... 7 Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005)........................................................................................... 6 SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107 (Fed. Cir. 1985)........................................................................................... 4 TechSearch, LLC v. Intel Corp., 286 F.3d 1360 (Fed. Cir. 2002)........................................................................................... 5 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)............................................................................................. 5 Warner-Jenkinson Co. Inc. v. Hilton-Davis Chem. Co., 520 U.S. 17 (1997).............................................................................................................. 7 Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192 (Fed. Cir. 1994)............................................................................................. 7 ii

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 9 of 42

Statutes and Rules 35 U.S.C. § 112 ¶ 2....................................................................................................................... 13 Fed. R. Civ. P. 56(c) ....................................................................................................................... 4

iii

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 10 of 42

I.

INTRODUCTION In 2006, HyperPhrase sued Google, alleging infringement of five different patents by four

different Google technologies. In the series of filings and opinions since that time, this case has been narrowed to one technology (AutoLink) and six claims from two patents: claims 1 and 7 of the '889 patent and claims 1, 24, 27, and 86 of the '321 patent.1 As the Court may recall, the '889 and '321 patents generally concern various methods pertaining to the storage, retrieval and addressing of records. The claims that remain relate to the address specification aspects of the purported invention, particularly as used for automatic hyperlink generation for linking records. While the accused technology, like many of the prior art references, also relates generally to automatic hyperlink generation, it is fundamentally different. It does not automatically generate hyperlinks in the manner the claims require, nor does it generate the type of hyperlinks or tags the claims specify. In fact, AutoLink does not infringe at least five of the six remaining (claims 1 and 7 of the '889 patent and claims 1, 24, and 86 of the '321 patent) for the same reasons both this Court and the Federal Circuit previously noted in agreeing that the "links" created by the AutoLink client point to a process on an intermediate computer, not to any record, and the ultimate record links do not share a common address format: AutoLink clearly operates the same way the disclosed prior art system does. After identifying tokens, the processing device (i.e., the user's computer) does not convert them into the same address format as that used by the database holding the contextually related record (e.g., UPS's database). Instead AutoLink sends the token to Google's servers, which like the intermediate computers of the prior art systems, conduct the necessary translation into the address format used by each database. HyperPhrase Technologies LLC v. Google Inc., ___ F.3d ____, 2007 WL 4509047 at 7 (Fed. Cir. Dec. 26, 2007) (slip. op.). There are other reasons the remaining claims are not infringed as well. For the '889 patent, the "first data record" is not modified by AutoLink as the claims require, because the

The '889 patent is found at Dkt. No. 26 (Woodford Decl.), Ex. A and the '321 patent is found at Dkt. No. 26, Ex. E. For simplicity, we will refer to them as just the '889 patent and the '321 patent.

1

1

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 11 of 42

hyperlinks are created in a file separate from the web page itself. Additional reasons the '321 patent is not infringed are: · While the patent's "modifier reference" (claims 1 and 86) exists to choose between multiple records of potential interest, AutoLink triggers do not, and instead are used to determine whether a token should be linked at all The "when" or "real time" limitation (claims 1 and 27) is not satisfied because the browser user must manually intervene in the AutoLink process There is no "subject matter specific tag pair" (claim 27) because AutoLink employs only a single tag (the anchor tag), which does not identify the subject matter There is no "seemingly general" SR that becomes "relatively specific" (claim 86).

· ·

·

This motion turns almost entirely on claim construction. We have omitted a detailed discussion of the patents-in-suit, which can be found in Google's earlier summary judgment filings and the Court's subsequent opinion and order. (See Dkt. Nos. 17 and 64.) Those facts material to this motion are either not genuinely disputed or are the law of the case, so summary judgment is appropriate. Finally, apart from all the other failings in HyperPhrase's case, most of its case also fails because of a license HyperPhrase granted to Microsoft and its users, which are admittedly responsible for several of the alleged infringing systems and steps in well-over 90% of the infringements for which HyperPhrase seeks damages. Licensed uses are of course not infringing ones. II. OPERATION OF AUTOLINK The Google Toolbar, which includes the accused AutoLink feature, is software that can optionally be installed on a computer with a Web browser, such as Microsoft Internet Explorer. The Toolbar requires a Web browser to operate. (Google's Proposed Finding of Fact and Conclusions of Law In Support of Its Motions for Summary Judgment Regarding U.S. Patent Nos. 5,903,889 and 6,516,321 ("PFOF"), No. 50.) The AutoLink feature has two components, a client component, which is located with the browser on a user computer, and a server component which is located on at least one computer at Google. (PFOF 51.) 2

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 12 of 42

The AutoLink client can recognizes certain types of information from a web page, such as ISBNs, VINs, package tracking numbers, or postal addresses, from a Web page by matching text strings to patterns of particular types. Strings that match of one of the predetermined patterns are assumed to in fact be information of a particular type and, on that basis, are called "tokens." (PFOF 52.) The AutoLink client also recognizes certain words called "triggers," such as "book," "car," and "fedex." (PFOF 53.) The absence of an appropriate accompanying trigger indicates that certain tokens are false positives even though the tokens otherwise match a pattern of interest; conversely, if the trigger is present with a proper token, the AutoLink button becomes enabled, to indicate to the user the potential availability of other information of interest to the user. (Id.) If the enabled AutoLink button is then manually selected by the browser user, the AutoLink client can create an anchor tag to identify the token obtained from the browser, which includes a first URL that points to a process on the AutoLink server. (PFOF 54.) However, AutoLink inserts the anchor tag into what is called a "document object model" or "DOM" representation of the web page created by the browser, not into the web page itself stored locally on the user computer, and certainly not the web page located on any third party server. (PFOF 55.) If the browser user does not select the AutoLink button, then nothing further happens and neither a first URL nor an anchor tag is created. (PFOF 56.) Assuming the user has manually selected the AutoLink button and an anchor tag (together with a first URL) was created, if the user then further clicks on that anchor tag, then the browser sends the first URL to the AutoLink server. (PFOF 57.) The AutoLink server processes the first URL by running a "redir" command contained in the first URL, which causes the server to select one of over twenty different URL formats to return to the browser as a second URL. (PFOF 58.) There are no records located in the AutoLink server, and therefore the AutoLink server does not return any records to the user. (PFOF 59.) Instead, upon receipt of the second URL by the browser, the browser can forward that second URL as an HTTP request to yet

3

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 13 of 42

another server (typically a third party server), which will process the second URL and which may ultimately return information of interest to the user. (PFOF 60.) The Google Toolbar is used with Microsoft systems and software, by Microsoft users, to function, such use includes the operation of AutoLink feature. (PFOF 61.) Microsoft's products, systems, users, and licensed third parties are licensees of the '889 and '321 patents. (PFOF 62.) III. LEGAL STANDARDS A. To Successfully Oppose Summary Judgment, HyperPhrase Must Set Forth Specific Facts that Show There Is a Genuine Issue for Trial.

Summary judgment is appropriate where, as here, there is no genuine issue as to any material fact, and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The burden of demonstrating the absence of any genuine dispute as to material facts rests with the moving party. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed. Cir. 1985). To defeat a well-founded summary judgment motion, the nonmoving part must do "more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Instead, the nonmoving party must set forth "specific facts showing that there is a genuine issue for trial." Id. at 587. The question of infringement is particularly amenable to summary judgment where, as here, there can be no material dispute over the relevant facts regarding the accused technology. General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 980-81 (Fed. Cir. 1997). 1. Summary Judgment of Noninfringement Should Be Granted Where, As Here, the Properly Construed Claims Do Not Cover Google's Technology.

Determining whether an accused product or method infringes a patent claim is a two-step process. First, the Court construes the asserted claims to determine their scope and meaning. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Second, the properly construed claims are compared to the allegedly infringing products and methods. Id. As the patentee, HyperPhrase bears the burden of proving infringement. 4

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 14 of 42

TechSearch, LLC v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir. 2002). General assertions of fact and conclusory statements are insufficient to satisfy this burden. Id. at 1371-72. a. Claims should be given a meaning consistent with the intrinsic record.

Claim construction is a question of law. Markman, 52 F.3d at 983-84. The first step in the claim construction process is to analyze the language of the claims themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). "It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Id. In some cases claim construction "involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. This is true for several terms at issue in the instant motion. The claims must always be read in view of the patent specification. Id. at 1315. "Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Id. (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). After reviewing the claims and the patent specification, the Court should also consider the final piece of the intrinsic record--the prosecution history. Phillips, 415 F.3d at 1317. The prosecution history includes the complete record of proceedings before the patent office and the prior art cited during the examination of the patent. Id. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. The prosecution histories of related applications are also part of the intrinsic record, and may also be used to construe and limit the 5

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 15 of 42

claims. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004) (the prosecution history of one patent is relevant to an understanding of the scope of a common term in a related patent). Although the intrinsic record is the most important evidence in claim construction, courts may also look to extrinsic evidence, but this evidence is only reliable when considered in the context of the intrinsic evidence. Phillips, 415 F.3d at 1317-19. For example, dictionaries and treatises can be useful tools in claim construction to help the court better understand the technology at issue and the way in which one of skill in the art may use the claim terms. Id. at 1318. Expert testimony may also be useful to provide background on the technology at issue, but should be rejected when it is at odds with the intrinsic record. Id. at 1318. b. Claim preambles can be limitations.

Courts must construe claim preambles according to the general principles of claim construction. Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). A preamble that merely states an intended purpose or use of the invention is not limiting, but if language in the preamble is necessary to give meaning to the claim, the preamble must be read as a limitation on the claim. Id. at 620-21. When a preamble provides antecedent basis for terms in the body of the claim, courts have consistently found the preamble to be limiting because the term in the body cannot be properly understood without reference to its antecedent in the preamble. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005); Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1376 (Fed. Cir. 2005); Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305-06 (Fed. Cir. 1999). 2. A Claim is Not Infringed Where a Single Limitation is Lacking.

An accused product or process must meet every limitation of a patent claim, exactly, in order to literally infringe a patent claim. Kahn v. General Motors Corp., 135 F.3d 1472, 1476 (Fed. Cir. 1998); Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989). "If any claim 6

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 16 of 42

limitation is absent from the accused device, there is not literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). A product or process that does not literally infringe may nonetheless infringe under the doctrine of equivalents if the accused device contains an equivalent to every limitation that is not literally met. Warner-Jenkinson Co. Inc. v. Hilton-Davis Chem. Co., 520 U.S. 17, 24 (1997). If an accused product or process does not satisfy each and every limitation of a claim either literally or under the doctrine of equivalents, then the claim is not infringed. Kahn, 135 F.3d at 1481. However, the patent holder cannot automatically seek a finding of infringement under the doctrine of equivalents, however, because there are several legal limitations to the application of the doctrine: (1) vitiation, (2) disavowal, and (3) prosecution claim amendment. First, if a patentee's theory of equivalents would "vitiate a particular claim element, [then] partial or complete summary judgment [of non-infringement] should be rendered by the court." Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002); Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1320-21 (Fed. Cir. 2001) (allowing "front" or "back" to be the equivalent of "lateral" would cause a vitiation of the claim limitation); Sage Prods, Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425-26 (Fed. Cir. 1997); Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 400 (Fed. Cir. 1994) ("[T]he concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims"). Second, a patentee may not claim equivalents for subject matter it disavowed during prosecution. Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., 66 F.3d 285, 291 (Fed. Cir. 1995). Third, where a patentee narrows a claim by amendment while prosecuting the patent, any narrowed limitation is presumed to have no equivalents at all. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 739-40 (2002). Where an independent claim asserted in the patent is not infringed, it follows as a matter of law that any claims depending from that independent claim are also not infringed. Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994).

7

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 17 of 42

IV.

ARGUMENT Four independent claims remain in this case, one from the '889 patent and three from the

'321 patent. Two dependent claims also remain, but since the independent claims are not infringed, the dependent claims are also not infringed and therefore need not be separately discussed. A. AutoLink Does Not Infringe the '889 Patent.

AutoLink does not employ a "standardized format for addressing," does not create an address to the referenced record, and does not modify the "first data record" at all. Independent claim 1 (and thus dependent claim 7) requires: 1. A computer system with a plurality of data records on a plurality of databases, and a standardized format for addressing said data records, said computer system comprising: (a) a user interface having an interactive display program for requesting one of said data records and displaying a plurality of interface supported data formats; (b) means for receiving a reference to a first data record from said interactive display program; (c) means for retrieving said first data record; (d) means for parsing said first data record to identify a reference to a second data record; (e) means for modifying said reference to said second data record to create an address, said address being operable to retrieve said second data record; and (f) means for sending said modified first data record to said interactive display program. 1. AutoLink does not have a "standardized format for addressing."

The Federal Circuit found that AutoLink did not infringe the '567 patent because it does not employ a common address format as between the various systems alleged to be part of the infringement. This holding dispositive of claims 1 and 7 of the '889 patent. a. "Standardized format for addressing" means exactly what it says.

The term "standardized format for addressing" is found in the preamble. As the plain language of the claim suggests, the claim concerns a computer system with a number of records,

8

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 18 of 42

on a number of databases, and a standard way to format the addresses of those records in the databases. The preamble is a limitation here because (1) the body of claim 1 relies upon the preamble for antecedent basis for the term "data records," (2) the limitation specifies a characteristic of how the addresses of those data records in the plurality of databases are to be specified, and (3) the body of the claim requires a means for creating these addresses. Bell Commc'ns Research, Inc., 55 F.3d at 620-621; see also NTP, Inc., 418 F.3d at 1305-06. The preamble therefore clearly breathes life and meaning into the claim and is thus a limitation. HyperPhrase's own validity expert, Dr. Sergei Nirenburg, apparently agrees, because he used the preamble to allegedly distinguish claim 1 from the Anthony prior art submitted with Google's previous motion for summary judgment of invalidity. (Dkt. No. 45 (HyperPhrase Decl. of Nirenburg ISO Opp to Google's MSJ of Invalidity) at 12 ("The preamble of Claim 1 of the '889 patent states that there must be a plurality of databases as follows...").) Furthermore, the Summary of the Invention states that the '889 patent is concerned with standardizing, among other things, the way in which data records are to be accessed: It is the object of this invention to provide a means of processing and converting existing data records formatted, structured, and accessed according to a multitude of disparate standards to common standards by which they may be accessed, controlled, and/or displayed though a single interactive display program. ('889 patent at 2:65-3:3.) This further shows that standardized addressing is an important feature of the invention and not merely an intended purpose or use. b. Application of the "standardized format for addressing" construction to AutoLink.

In its discussion regarding AutoLink and the '567 patent, the Federal Circuit held that AutoLink did not employ a common address format and moreover that it operated precisely the way the prior art distinguished in the patent operated. Specifically, the Federal Circuit found:

9

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 19 of 42

HyperPhrase, 2007 WL 4509047 at 7. Thus, AutoLink does not employ a standardized format for addressing records in the alleged plurality of databases. (Id.) Instead, the alleged plurality of databases supposedly used by AutoLink each use a different addressing scheme. (Id.; PFOF 59.) Indeed, HyperPhrase itself pointed to over twenty different URL templates in the AutoLink server code to somehow prove AutoLink infringes other patent claims in earlier briefing to this Court. (Dkt. No. 37 (11/21/06 HyperPhrase Opp'n to Google's MSJ of Noninfringement) at 15.) The fact that there are over twenty different possible URL templates, each having a different putative address format and each pointing to a different (mostly third party) putative database, shows that there is no standardized format for addressing all of, or even some of, the alleged infringing data records in the plurality of databases. AutoLink also does not infringe under the doctrine of equivalents, either, because the alleged infringing system operates in exactly the opposite way of the claim ­ not using standard address formats at all. See, e.g., Cooper Cameron Corp., 291 F.3d at 1322. 2. AutoLink Does Not Modify the First Data Record to Create an Address of the Referenced Record.

Not only is there no standardized format for addressing in AutoLink, but it is undisputed that the first URL created by the AutoLink client points to a process on the Google AutoLink server and not to some data record. (PFOF 54 and 59.) The Federal Circuit noted this too, 10

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 20 of 42

stating "AutoLink practices the prior art as described by the '567 patent," because just like the prior art AutoLink employs an "intermediate computer" to translate between the various databases because "each database requires different record formats and address formats." HyperPhrase, 2007 WL 4509047 at 7. This is an independent reason AutoLink does not infringe the '889 patent. a. Claim element 1(e) requires "modifying said reference to said second data record to create an address," and that address must be "the address of the referenced record."

Claim element 1(e) requires "modifying said reference to said second data record to create an address." During prosecution, HyperPhrase repeatedly argued this limitation to distinguish the Meske prior art, asserting the address created by Meske was different than HyperPhrase's invention because Meske did not "modif[y] the first data record to create an address of the referenced record." (Dkt. No. 26 (Woodford Decl.), Exhibit B ('889 patent file history) at GOOG056999-57000 (10/6/98 Response A at pp. 3-4) (emphasis added).) HyperPhrase's complete response is shown below:

(Id.) HyperPhrase thus confirmed during prosecution the natural reading of claim 1 ­ the "address" required by the claim is the "address of the referenced record." In fact, so important was this characteristic of the invention to HyperPhrase that it made this same argument three 11

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 21 of 42

times in the same paragraph: "to create an address of the referenced record," "to refer to another file by its address," and "to create an address of the referenced record." Id. (emphasis added). b. Application of the "address" construction to AutoLink.

The URL created by the AutoLink client plainly is not "the address of the referenced record." (PFOF 54.) In fact, it is not the address of any record. (PFOF 59.) It is, as the Federal Circuit held, a URL to an intermediate computer. HyperPhrase, 2007 WL 4509047 at 7. The intermediate computer, Google's AutoLink server, has no data records at all. (PFOF 59.) Thus, AutoLink does not satisfy the "address" requirement of claims 1 and 7 of the '889 patent and does not literally infringe. Furthermore, because this limitation was argued during prosecution to overcome the prior art, the doctrine of equivalents is not available. See Festo Corp., 535 U.S. at 739-40. 3. AutoLink Does Not Modify the First Data Record At All. AutoLink does not satisfy the further requirement of claim element 1(e) that the "first data record" in the plurality of databases, specifically the reference to the second data record contained in the first data record, be modified to form the required address. AutoLink does not modify the first data record in any of the alleged plurality of databases, nor has HyperPhrase offered evidence that it does. a. The "first data record" refers to one of the plurality of data records stored in the plurality of databases, it does not mean some other data record.

The "first data record" required by claim 1 is one of the plurality of records in the plurality of databases referred to earlier in the claim, and is the thing operated upon by the various "means" of the claim. Claim 1 requires:

12

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 22 of 42

1. A computer system with a plurality of data records on a plurality of databases, and a standardized format for addressing said data records, said computer system comprising: (a) a user interface having an interactive display program for requesting one of said data records and displaying a plurality of interface supported data formats; (b) means for receiving a reference to a first data record from said interactive display program; (c) means for retrieving said first data record; (d) means for parsing said first data record to identify a reference to a second data record; (e) means for modifying said reference to said second data record to create an address, said address being operable to retrieve said second data record; and (f) means for sending said modified first data record to said interactive display program. The plain language of the claim shows that (1) the "plurality of data records" and "said data records" in the preamble include the first and second records; (2) the "first data record" in element (b) is "one of said data records" referenced in element (a); (3) element (d) requires parsing the first data record for a reference; (4) element (e) requires modifying the reference parsed from the first data record; and (5) element (f) requires sending the modified first data record. The term "said modified first data record" has no antecedent basis, which raises indefinite issues under 35 U.S.C. § 112 ¶ 2, but the claim can be construed in a way that preserves its validity and in a way that makes sense of the claim overall, if the "modified first data reference" is understood to refer to modifying the reference parsed from the first data record, and thus, modifying the first data record in the database as is stated in the preamble. The prosecution history confirms this view. During prosecution, HyperPhrase expressly clarified that the self-same record is operated on in all steps of claim 1. HyperPhrase made this clarification after the patent examiner rejected claim 1 in view of the Meske patent. Specifically, the patent examiner found that Meske made claim 1 unpatentable:

13

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 23 of 42

(Dkt. No. 26 (Woodford Decl.), Exhibit B ('889 patent file history) at GOOG056991 (7/30/98 Office Action at p. 4).) HyperPhrase argued in response that Meske did not modify the first data record (the "parsed record"), but rather modified additional files created from the first data record:

(Id. at GOOG056999-57000 (10/6/98 Response A at pp. 3-4).) These remarks leave no doubt that Google's proposed reading of the claim is correct. Finally, Google's view is further supported by HyperPhrase's validity expert, Dr. Nirenburg, who interpreted the claim the same way, concluding that Google's prior art failed to anticipate the claim because "the source documents are never modified (or, for that matter, modified in the document itself). Again, claim limitation 1(e) requires `modifying' the reference itself." (Dkt. No. 45 (Decl. of Nirenburg ISO HyperPhrase Opp'n to Google's MSJ of Invalidity) at 17.)

14

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 24 of 42

b.

Application of the "modification of the first data record" limitation to AutoLink.

AutoLink does not modify the first data record in any database. In fact, we further note, as the AutoLink creator has testified, AutoLink does not even modify the web page retrieved by the browser, instead it modifies the DOM representation of the web page that is constructed by the browser. (PFOF 55.) In this respect, AutoLink operates just like the Meske patent HyperPhrase distinguished to get its claims allowed. Since AutoLink does not modify the first data record (claim element 1(e)), it cannot infringe for the same reasons Meske does not invalidate claim 1 of the '889 patent. Moreover, AutoLink cannot infringe under the doctrine of equivalents because HyperPhrase surrendered the claim scope when it argued this limitation to overcome the rejection of claim 1 in view of Meske. See Festo Corp., 535 U.S. at 739-40. Each of the above grounds stands on its own as a reason why AutoLink does not infringe claim 1 of the '889 patent. Because asserted claim 7 depends upon claim 1, it is not infringed either. B. AutoLink Does Not Infringe the '321 Patent.

Claims 1, 27, and 86 of the '321 patent are also not infringed by AutoLink. Google presents four claim terms for construction here: "modifier reference" (claims 1 and 86), "when" (claims 1 and 27), "subject matter specific tag pair" (claim 27), and "specifying reference" (claim 86). Because the claims of the '321 patent differ in their use of certain terms, different terms affect different claims. We address each claim in its numerical order. 1. Claim 1 is not infringed by AutoLink.

Claim 1 requires a "modifier reference" that further specifies a particular record or record segment. It also requires performance of the steps linked with the "when" term automatically in real-time. Claim 1 reads:

15

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 25 of 42

1. A method for identifying a referenced record referenced in a referencing record wherein the referenced record is referenced in the referencing record by at least a combination including a data reference (DR) and a modifier reference (MR), the method comprising the steps of: (i) receiving the referencing record; (ii) analyzing the referencing record to identify a DR, when a DR is identified: (a) identifying an MR rule set (MRRS) specifying the relationship between an MR and the DR; (b) analyzing the referencing record in accordance with the MRRS to identify the existence of the MR and, when the MR is identified; (c) identifying the referenced record associated with the DR/MR combination. a. AutoLink does not satisfy the "modifier reference" limitation.

Under the proper construction of the term "modifier reference," AutoLink does not infringe claim 1 of the '321 patent. The point of the modifier reference according to the '321 patent was to assist in situations where the data reference failed to point to something specific enough. For example, a doctor may ask a nurse to bring up the ECG, but the nurse may need to ask "which ECG?" See '321 patent at 3:50-67. In this instance, the term "ECG" is a data reference, but it might refer to more than one ECG, so the modifier reference is used to point specifically to one of those ECGs, for example the "admission" or "post-op" "ECG." It is, then, the point of the modifier reference to further specify a specific record or record segment that cannot adequately identified by a data reference alone. AutoLink does not do this. HyperPhrase asserts that an AutoLink token, such as an ISBN, is a data reference, and that the AutoLink trigger, a term such as "book" is a modifier reference. But the ISBN is already as specific as possible. It describes, at most, one book. AutoLink triggers are not used to make the ISBN point to something more specific. Instead, the trigger is used to confirm that a number that looks like it might be an ISBN is one. That is, while the patent contemplates a data reference that refers to an "X" and a modifier reference answers the question "which X?," AutoLink triggers answer a completely different question: "is the token possibly an X?" The AutoLink trigger is not used as specified by the claim because it simply throws out candidate tokens which may not be tokens at all ­ it does not modify the token

16

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 26 of 42

as HyperPhrase asserts. (PFOF 53.) Thus, AutoLink does not satisfy the modifier reference limitation of the claims. i. The term "modifier reference" means "a word or phrase that further specifies a specific record or record segment."

The term "modifier reference" has no plain ordinary meaning. Google's position is that the term "modifier reference" means "a word or phrase that further specifies a specific record or record segment identified by a data reference." The last time HyperPhrase litigated this term was in the Microsoft litigation before Judge Crabb in 2003. There, HyperPhrase said the term meant "a reference which, in combination with a DR, may be used to refer to a specific and distinct record or record segment," adding further that "[t]he meaning of this term is clear from the context of use in the specification of the '321 patent." (Dkt. No. 35 (Woodford Decl. Exhs.), Exhibit V (9/24/03 HyperPhrase Supp. Brief on Claim Constr) at p. 22.) Turning to the specification, it states that a modifier reference further specifies a particular record or record segment identified by a data reference, so it is used to precisely pinpoint what was already referred to by the data reference: A wrinkle of complexity is added to the referencing scheme whereby modifier references (MRs) may be used to further specify a specific record or record segment when a DR is identified. In this case, when a DR is identified, the record is further examined to identify modifier references (MRs) which identify a specific segment of a record which is associated with the data reference. When an MR is located, additional information is sought within the record for building an address to the record or record segment referenced by the DR/MR combination. Once again, a link is created between the referencing record and the referenced record or record segment. See '321 patent at 3:21-32 (emphasis added).2 As described in the patent, if just the term ECG was identified as the DR, it might be unclear which ECG was meant to be referred to by the record author, which is why the modifier reference "admission" narrows ECG to identify not one of many ECG records, but a specific record or record segment. See, e.g., '321 patent at 11:6512:8.
This conclusion is also amply supported by the '321 patent, which makes repeated reference to the importance of linking from one record to another, specific record. See, e.g., '321 patent at 2:22-25; 2:60-62; 3:8-10; 3:13-17; 3:30-32; 4:24-27; 5:5-8; and 5:47-50.
2

17

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 27 of 42

ii.

Application of the "modifier reference" limitation to AutoLink.

HyperPhrase asserts that the AutoLink trigger is the modifier reference. The AutoLink trigger includes text like "book" or "auto" or "fedex." (PFOF 53.) However, the AutoLink trigger does not make the token more specific, nor does it make the token refer to a specific record or record segment. This is because (1) the token alone was already determined to be, for example, a specific book ISBN, a vehicle VIN, or a FedEx shipping number (PFOF 52), and (2) even if the token and trigger are said to be used in "combination," they do not point to a specific record or record segment, but to a process on the AutoLink server (PFOF 54), which has no records at all (PFOF 59). Thus, AutoLink does not satisfy the modifier reference limitation of claim 1 of the '321 patent. The AutoLink trigger is not equivalent to the modifier reference either because, as is mentioned above, it does not perform the same function (further specifying a particular data record), it does not do so the same way (combining the DR and the MR), and it does not achieve the same result (linking to a specific data record or record segment). Furthermore, since claim 1 is not infringed, claim 24, which depends from claim 1, is also not infringed. b. AutoLink does not satisfy the "when" or "real-time" limitation.

The "when" language found twice in claim 1 requires real-time processing and precludes user intervention. HyperPhrase simply ignores the "when" language in the claims in its analysis of infringement, but to do so erases it from the claims. The language quite plainly imparts a temporal element and a precise sequence in which the steps must be performed, which is automatically in real-time. (See, e.g., Declaration of Jason W. Wolff ISO Google's Motions for Summary Judgment Regarding U.S. Patent Nos. 5,903,889 and 6,516,321 ("Wolff Decl."), Exhibit E (Merriam Webster definition of "when").) This conclusion is buttressed by the fact that Judge Crabb reached the same conclusion in HyperPhrase's litigation with Microsoft. There, Judge Crabb found that the "as" and "when" language both required real-time processing of the steps and did not allow manual user intervention. (See, e.g., Dkt. No. 35 (Woodford Decl. 18

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 28 of 42

Exhs.), Exhibit S (6/18/03 Order re Constr Claims), at 14-15.) HyperPhrase is collaterally estopped from challenging this construction now.3 (Dkt. No. 35 (Woodford Decl. Exhs.), Exhibit W (9/24/03 Order re Microsoft MSJ) at 24-26.) The AutoLink process is fundamentally different than what is claimed because it requires manual user intervention to perform the alleged infringing steps. Below, Google marshals the intrinsic record of the family of patent applications that led to the '321 patent to show why, beyond just the plain language of the claim, the "when" term adds a "real-time" limitation to the claims where it is used. i. The '461 Patent.

U.S. Patent No. 5,895,461 (the "'461 patent"), which is a parent application to the '321 patent, issued from an application filed in 1996, based on a provisional application filed earlier that same year. As the background of the invention spells out in unusually clear terms, the invention was designed to overcome two alleged problems with the straightforward use of hyperlinks, of the type widely used on the internet, for linking one data record to another in a data-intensive environment. The alleged problems were (1) where and how should the records be stored and (2) how to reduce the inefficiency and potential for error introduced when individual users manually created the hyperlinks. (Dkt. No. 27 (Woodford Decl. Exhs.), Exhibit I ('461 patent) at 2:52-3:25.) To solve the first problem, the inventors proposed a system in which the keyword phrase portion of the hyperlink (i.e., the underlined or highlighted text the user sees on the screen) would itself be used to construct the address at which the data record would be stored. An
3

HyperPhrase did file an appeal in this prior case, but that does not bar application of collateral estoppel. Kurek v. Pleasure Driveway and Park Dist. of Peoria, Ill., 557 F.2d 580, 595 (7th Cir.1977) vacated and remanded on other grounds by 435 U.S. 992, 98 S.Ct. 1642 (1978) (the pendency of an appeal does not suspend the operation of an otherwise final judgment as collateral estoppel, unless the appeal removes the entire case to the appellate court and constitutes a proceeding de novo), Pharmacia & UpJohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373, 1381 (Fed. Cir. 1999) (stating "[t]he law is well settled that the pendency of an appeal has no effect on the finality or binding effect of a trial court's holding" and applying the rule in a patent invalidity setting). Moreover, HyperPhrase subsequently dismissed that appeal and did not seek vacatur of the underlying district court judgment.

19

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 29 of 42

example given in the patent is to use the "report type" keyword phrase, such as a hospital "discharge report", to construct the address at which the discharge report will be stored. (Id. at 7:51-64.) The inventors considered this first solution so important that all 42 claims in the original application were addressed to it. (Dkt. No. 28 (Woodford Decl. Exhs.), Exhibit J ('461 patent file history) at GOOG074485-74896 ('461 patent original application at pp. 30-41.) All of those claims required that the records be stored at "predetermined addresses" which were "defined" by keyword phrases. After amendments not pertinent here, these original 42 claims became claims 1-47 of the issued '461 patent ­ none of which is asserted in this case. It was the inventors' attempt to patent their solution to the second alleged problem that resulted in the asserted claims of the '461. That solution was to have the system automatically generate hyperlinks when it recognized that the user had entered selected keywords or keyword phrases. (Id., Exhibit I ('461 patent) at 7:65-8:15.) It was hoped that replacing manual creation of hyperlinks by the user with automatic creation by the system would reduce error and insure uniformity. The inventors added new claims to their application (43-60) to explicitly cover this automatic hyperlink creation aspect of the alleged invention. (Id., Exhibit J ('461 patent file history) at GOOG074539-74543 (7/21/98 Response at pp. 1-5).) The Patent Office rejected both sets of claims because of a prior art patent to Vasudevan. (Id. at. GOOG074527-74536 (4/21/98 Office Action) and GOOG074550-74552 (10/14/98 Office Action at pp. 2-4).) In arguing against the first rejection, the applicants stressed that their invention "establishes a hyperlink . . . in real time" and Vasudevan did not. (Id. at GOOG074544-74555 (7/21/98 Response A at pp. 6-7).) But the examiner rejected all of the claims a second time, again based on Vasudevan, nonetheless. (Id. at GOOG074552 (10/14/98 Office Action).) The examiner observed that "Applicant admits that hypertext linking is a wellknown system allowing the identifying [of] components/files over the Internet. Therefore, it is the examiner's position Vasudevan discloses the claimed limitation." (Id.) However, the examiner agreed "that an `on-the-fly' recognition of files named according to keywords as they 20

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 30 of 42

are entered by a user and using hypertext linking is novel and unobvious." (Id.) The trouble, according to the examiner, was that the claims did not capture the patentable subject matter while avoiding the prior art. (Id.) After this second rejection, the applicants' attorney interviewed the examiner; it was agreed in that interview that the applicants would "submit a response presenting arguments as to how the claim language sets forth a `real time' system." (Id. at GOOG074563 (11/18/98 Interview Summary).) The next day, the applicants obliged by pointing out "[t]he claims recite that keywords and keyword phrases are recognized `as' they are entered or `when' they are entered by the user, i.e., they are recognized as soon as their entry by the user is complete." (Id. at GOOG074555 (11/19/98 Response B).) The examiner then immediately allowed all claims. (Id. at GOOG074560-74562 (12/3/98 Notice of Allowance).) The statement of reasons for allowance reads: "Applicant's arguments regarding the claim interpretation are considered persuasive. Applicant has cited specific language and specific references in the specification that demonstrate that the claims set forth a `real time' system for processing keywords and keyword phrases in creating a file name/reference. The prior art of record merely discloses performing these operations only after the link or object is created and not in real time as the user enters the keywords. Therefore, this feature renders the claims allowable over the prior art of record." (Id.) Exactly the same language that the applicants pointed to in the '461 patent as requiring a real time system ­ linking "as" text is entered or "when" a record is created ­ appears in asserted independent claims 1, 27, and 86 of the '321 patent. ii. The '171 Patent

U.S. Patent No. 6,308,171 (the "'171 patent") issued from a continuation-in-part ("CIP") of a continuation-in-part of the original application on which the '461 patent was based. All 23 of the figures in the '171 patent are new, as are more than 10 columns of text. While much of the added material is not directly relevant to this case (for example, there are many columns dealing with specific ways of constructing hyperlink addresses using recognized key words or 21

Case: 3:06-cv-00199-jcs

Document #: 103

Filed: 02/29/2008

Page 31 of 42

phrases), to the extent all the changes signal an attempt to change and broaden what the inventors initially regarded as their own, the changes are telling. The story of the '171 patent prosecution history is simple: the applicants (1) took the real time language out of the independent claims (thus broadening those claims as compared to the '461), and (2) removed all mention of "hyperlinks" or "hypertext linking" (substituting the broader terms "associating" or "identifying" instead), while (3) failing to tell the examiner ­ who was different than the '461 examiner ­ about Vasudevan. Perhaps not surprisingly, the result was a patent that issued with no substantive examination. The examiner merely issued a double patenting rejection based on the '461 patent because, of course, "[t]he subject matter claimed in the instant application is fully disclosed in the ['461] patent and is covered by the patent since the patent and the application are claiming common subject matter . . . ." (Wolff Decl., Exhibit F ('171 patent file history) at GOOG086791 (1/18/01 Office Action at p. 3).) Mr. De La Huerga duly filed a terminal disclaimer, and the '171 duly issued. The result is a patent with a set of claims clearly designed to broaden the claims of the '461 patent in certain respects. iii. The '321 Patent

The '321 patent is a CIP of a CIP of a CIP of the '461 patent. Like the '171 patent, all the figures (29 of them) are new. There are also approximately 28 columns of new text ­ so much new text, that it is fair to say the '321 patent has been completely re-written. Though filed before the application that issued as the '171 patent, the '321 issued years later, in February of 2003. The reason for part of the delay is particularly relevant here: after pursuing claims to the basic idea of hyperlinking (albeit it in phraseology different from both the '461 and '171 patents), through a prosecution lasting almost 3 years and culminating in an initial notice of allowance in