Overture Services, Inc. v. Google Inc., No. 3:2002cv01991 - Document 36 (N.D. Cal. 2002)
Court Description: Reply Memorandum to Motion re 25 for an Extension of Time to Serve Initial Invalidity Contentions filed by Google Inc.. (Attachments: # 1 Proposed Order Granting Google's Motion for an Extension of Time to Serve Initial Invalidity Contentions)(Kwun, Michael)
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Overture Services, Inc. v. Google Inc. Doc. 36 Case 3:02-cv-01991-JSW 1 2 3 4 5 6 7 Document 36 Filed 12/12/2002 Page 1 of 9 KEKER & VAN NEST, LLP JOHN W. KEKER - #49092 JON B. STREETER - #101970 DARALYN J. DURIE - #169825 MICHAEL S. KWUN - #198945 710 Sansome Street San Francisco, CA 94111-1704 Telephone: (415) 391-5400 Facsimile: (415) 397-7188 Attorneys for Defendant GOOGLE INC. 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN FRANCISCO DIVISION 11 12 13 OVERTURE SERVICES, INC., a Delaware corporation, 16 GOOGLE’S REPLY TO OVERTURE’S FURTHER OPPOSITION TO MOTION FOR AN ORDER EXTENDING TIME TO SERVE INITIAL INVALIDITY CONTENTIONS Plaintiff, 14 15 Case No. C 02-01991 CRB (EDL) v. GOOGLE INC., a California corporation, Date: Time: Dept: Judge: Defendant. 17 18 19 I. 20 December 18, 2002 3:00 p.m. Courtroom E, 15th Floor Hon. Elizabeth D. Laporte INTRODUCTION Overture cannot deny that the claim chart it submitted under Patent L.R. 3-1(c) provides 21 no meaningful information beyond identifying the asserted claims and the accused 22 instrumentality – information that is independently required by subsections (a) and (b) of Patent 23 L.R. 3-1. If, as Overture contends, its claim chart complies with Patent L.R. 3-1(c), then the 24 claim chart requirement is superfluous. 25 26 II. A. ARGUMENT 27 Overture’s claim chart has not disclosed, as required by Patent L.R. 3-1(c), the elements of the Google system that allegedly correspond to the limitations of the asserted claims. 28 The requirements of subsections (a), (b), and (c) of Patent L.R. 3-1 are straightforward. 1 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Dockets.Justia.com Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 2 of 9 1 Every patent infringement claim raises the question whether an asserted patent claim “reads” on 2 an accused product. See, e.g., Amhil Enters., Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 3 1996) (“Literal infringement of a claim exists . . . when the properly construed claim reads on the 4 accused device exactly.”). The plaintiff’s task is to read each limitation of each asserted claim 5 onto a corresponding element of each accused instrumentality. See, e.g., Allen Eng’g Corp. v. 6 Bartell Indus., 299 F.3d 1336, 1344 (Fed. Cir. 2002) (determining infringement requires a 7 comparison of the “claim limitations to the elements of the accused device”). Subsections (a), 8 (b), and (c) of Patent L.R. 3-1 require the patentee to disclose how it intends to accomplish this 9 task. Subsection (a) asks, “What claims read on the defendant’s products or services?” 10 Subsection (b) asks, “What products or services do those claims read on?” And subsection (c) 11 asks, “What element of each accused instrumentality corresponds to each limitation of each 12 asserted claim?” See Patent L.R. 3-1(c) (Overture must provide a claim chart “identifying 13 specifically where each element of each asserted claim is found within each Accused 14 Instrumentality”). 15 1. 16 17 18 19 20 Overture has failed to identify specific elements in the Google AdWords Select service. Overture’s disclosures answer the first two questions, but only dance around the third. Four examples – all from the portion of Overture’s claim chart that addresses the very first claim – are illustrative: Selected Limitations Recited by Claim 1 of U.S. Patent No. 6,269,361 Elements of the Google AdWords Select Service Identified by Overture’s Claim Chart receiving a search request from the searcher; AWS receives a search request from the searcher. ordering the identified search listings into a search result list in accordance with the values of the respective bid amounts for the identified search listings; AWS gathers all search listings that match a particular search term and sorts the listings in accordance with their respective bid amounts. receiving a retrieval request from the searcher to retrieve information associated with a search listing in the search result list; and AWS receives a retrieval request associated with a search listing. 21 22 23 24 25 26 27 28 2 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW 1 2 3 4 5 6 Document 36 Filed 12/12/2002 Page 3 of 9 Selected Limitations Recited by Claim 1 of U.S. Patent No. 6,269,361 Elements of the Google AdWords Select Service Identified by Overture’s Claim Chart recording a retrieval request event including account identification information corresponding to the network information provider, to permit maintenance of accurate account debit records. AWS records a retrieval request event including account identification information to permit maintenance of accurate account debit records. 7 See Kwun Declaration in Support of Google’s Motion (“Kwun Decl.”), Exh. 4 (filed Oct. 7, 8 2002). Overture’s claim chart fails to disclose that which it must disclose: the specific element 9 of Google’s AdWords Select service (“AWS”) that Overture contends corresponds to each 10 limitation of each asserted claim. See Patent L.R. 3-1(c). What element of AWS, for example, 11 satisfies claim 1’s “receiving a search request from the searcher” limitation? Overture merely 12 asserts that AWS receives a search request from the searcher. But where “specifically” in AWS 13 is that element? Overture does not say. 14 In both its Opposition and its Further Opposition, Overture notes that it cited several 15 Google web pages as part of its Preliminary Infringement Contentions. See Oppo. at 2:8-13 16 (filed Oct. 10, 2002); Further Oppo. at 3:28-4:2 (filed Dec. 9, 2002); see also Kwun Decl., Exh. 17 3 at 2:12-15; McMahon Declaration in Support of Overture’s Opposition (“McMahon Decl.”), 18 Exh. 1 (filed Oct. 10, 2002). However, nowhere in its Preliminary Infringement Contentions, its 19 Opposition, or its Further Opposition does Overture offer a comparison on an element-by- 20 element basis of the asserted claims and those web pages. See Patent L.R. 3-1(c) (requiring 21 identification “specifically where each element of each asserted claim is found” (emphasis 22 added)). The entire point of Patent L.R. 3-1(c) is to require an element-by-element comparison, 23 and therefore Overture’s non-specific citation to several Google web pages (without reference to 24 specific claim limitations, or even to specific claims) cannot cure the deficiencies discussed 25 above. 26 27 28 2. Overture’s claim chart is deficient to the point of asserting “infringement contentions” for claims that Overture later conceded Google does not infringe. In its Preliminary Infringement Contentions, Overture asserted that Google infringes 3 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 4 of 9 1 every claim of the 361 patent except claims 3, 6, and 19. Kwun Decl., Exh. 3 at 2:4-6. For 2 claims 31 and 32, both of which depend from independent claim 30, Overture’s claim chart 3 includes conclusory statements that AWS meets the additional limitations required by those 4 claims: 5 Claims Elements of the Google’s AdWords Select Service Identified by Overture’s Claim Chart 6 7 31. The method of claim 30, wherein the AWS includes non-paid listings on a search result list further includes at least search result list. one search listing having a bid amount of zero. 8 9 32. The method of claim 30, wherein the AWS includes listings on a search result search result list further includes at least list that are not included in the account one search listing that is not included in database. the account database. 10 11 12 13 See Kwun Decl., Exh. 4 at 7. The day after Google filed the motion now before the Court, 14 however, Overture informed Google that it was not in fact asserting that Google infringes claims 15 31 and 32, Kwun Declaration in Support of Reply (“Kwun Reply Decl.”), Exh. A, thereby tacitly 16 admitting that Overture does not believe that AWS includes the additional limitations recited by 17 claims 31 and 32. Overture’s claim chart is so conclusory and so circular that Overture managed 18 not to notice that it included limitations that even Overture admits are not present in AWS. 19 Overture flouts the rules and argues that it only needs to provide “preliminary” 20 infringement contentions, not “detailed” contentions. Overture’s Further Oppo. at 4:19-21. But 21 Google seeks precisely what Patent L.R. 3-1(c) requires – a claim chart that specifically 22 identifies where each claim limitation is found in AWS. 23 B. 24 25 Overture has demonstrated that it is capable of providing a far more specific disclosure of its infringement contentions. Overture appears also to argue that any deficiencies in its claim chart should be excused 26 because it needs further discovery before stating its specific infringement contentions. Overture, 27 however, provided the PTO with a sworn declaration identifying its infringement contentions 28 (with respect to several other companies’ systems) – without the benefit of discovery – in greater 4 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 5 of 9 1 detail than it has provided in this case. And the 361 patent itself describes elements of preferred 2 embodiments by repeatedly referring to an example web page – an approach that Overture had 3 refused to take in identifying the elements of AWS that allegedly meet the limitations of the 4 asserted claims. 5 1. 6 7 Overture stated infringement contentions with greater specificity while prosecuting the application for the 361 patent. While prosecuting the application for the 361 patent, Overture filed a “petition to make 8 special” pursuant to 37 C.F.R. § 1.102(d) to expedite the patent office’s consideration of its 9 application. Kwun Reply Decl., Exh. B. Overture averred that it had made a “rigid comparison 10 between the Internet search engine services of [several alleged] infringers or potential infringers 11 and the pending claims.” Id., Exh. B at 2. The result of that comparison was detailed in a 12 declaration of named inventor Darren J. Davis. Id., Exh. C. 13 For example, Davis stated his belief that SearchUP, Inc.’s search engine would infringe 14 then-pending claims 15 and 30. See id., Exh. C at ¶ 4. Davis identified a specific screen shot 15 that, according to Davis, included a “search result list,” as recited by pending claims 15 and 30. 16 See id., Exh. C at ¶ 4(d) (stating that the screen shot includes the “search result list”) & Exh. D 17 (screen shot that was attached as Exhibit 4 to the Davis declaration). Pending claims 15 and 30 18 both recited that the search listings must “hav[e] . . . a bid amount” (see id., Exh. C at ¶ 4(b), (c)), 19 and thus, as part of his comparison, Davis stated that “[t]he bid amount, e.g. $20/year, is shown 20 for each entry.” See id., Exh. C at ¶ 4(d); see also id., Exh. D. Similarly, to support his assertion 21 that the “authenticated login access” limitation of pending claims 15 and 30 (see id., Exh. C at 22 ¶ 4(b), (c)) was present, Davis identified a specific screen shot that he asserted showed that this 23 feature was present. Id., Exh. C at ¶ 4(d); see also id., Exh. E (screen shot that was attached as 24 Exhibit 5 to the Davis declaration). Davis further stated his belief that SearchUP, Inc.’s service 25 satisfied the “account identifier” limitation because “[t]he user’s email address is used as the 26 account identifier.” Id., Exh. C at ¶ 4(d). 27 28 Davis went on to identify screen shots from the websites for Hitsgalore.com, I Seek It, and BeFirst.com that he asserted contained “search result lists.” See id., Exh. C at ¶ 6(a), (b), (c); 5 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 6 of 9 1 see also id., Exhs. F-H (screen shots that were attached as Exhibits 11, 17, and 23 to the Davis 2 declaration). In asserting that Hitsgalore.com’s service would infringe pending claim 1 (which 3 also recited a “bid amount” for search listings, see id., Exh. C at ¶ 7(b)), Davis stated that the 4 money amounts, for example $0.05, shown on the Hitsgalore.com “search result list” were “bid 5 amounts.” Id., Exh. C at ¶ 7(c). Davis further stated that the limitation of “receiving a search 6 request from a searcher” was shown to be present by virtue of the “search box at the top of 7 Exhibits 9, 10, and 11, where the searcher can type in a search request, which may comprise one 8 or more keywords.” Id. Davis also asserted that a “click through” would be a “retrieval 9 request,” and that such requests must be recorded (as required by pending claim 1), because 10 otherwise the service would not be able properly to deduct the bid amount from the website 11 owner’s account. Id. Davis provided a similarly detailed summary of the results of his 12 comparison between the I Seek It and BeFirst.com services and the limitations of pending claim 13 1. Id., Exh. C at ¶ 7(d), (e). 14 Overture’s claim chart in the case at bar provides no such detail. For example, where is 15 the “search result list” in AWS? Overture does not say. See, e.g., Kwun Decl., Exh. 4 at 1 16 (section of claim chart for claim 1). What in AWS satisfies the “bid amount” limitation? Again, 17 Overture does not say. See id. These examples are not mere nitpicks. When a user performs a 18 search at the www.google.com website, the web page generated may include at least three 19 different types of results. See Kwun Reply Decl., Exh. I (annotated print-out of a Google web 20 search result page). Google is entitled to know what set of results Overture asserts is a “search 21 result list”– type 1, type 2, type 3, a combination of the three, or perhaps something else that 22 Overture has not yet explained. 23 Similarly, Google’s service includes at least two different types of money amounts that 24 Overture may be accusing of being a “bid amount.” See McMahon Decl., Exh. 1 at 1 (Google 25 web page stating that AWS users choose a “maximum cost-per-click” for each “Ad Group,” but 26 explaining that the actual amount charged per click will vary, depending on a variety of 27 conditions). If Overture contends that the “maximum cost-per-click” is the “bid amount,” it must 28 so state. If it contends that the actual amount charged per click is the “bid amount,” Google is 6 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 7 of 9 1 entitled to know that. If it contends that something else is the “bid amount,” Patent L.R. 3-1(c) 2 requires Overture to identify that other thing – specifically. 3 Overture argues that Google seeks a premature statement of Overture’s proposed claim 4 constructions. See Overture’s Further Oppo. at 4:20-23. However, the disclosure Google seeks 5 does not require Overture to expose its claim construction contentions. For example, if Overture 6 thinks that the AWS “maximum cost-per-click” (or the actual cost per click charged in AWS, or 7 something else in AWS) is the bid amount, it need only say so – it is not required to define “bid 8 amount,” but only to state what in AWS is a “bid amount.” 9 2. 10 The 361 patent specification identifies several limitations by referring to illustrative web pages. 11 Overture’s extensive use of screen shots in its petition to make special is no mere 12 aberration. Indeed, the 361 patent specification repeatedly uses web pages to show where claim 13 limitations are present in the disclosed preferred embodiments. As noted in Google’s moving 14 papers, the specification identifies search result list entries by pointing to specific parts of a web 15 page. See Kwun Decl., Exh. 1 at col. 18, ll. 4-8 (referring to “[s]earch result list entries 710a- 16 710h”) and fig. 7 (illustrating items 710a-710h as parts of a web page). Various components of 17 the “search result list” and “search listings” are also identified by reference to a web page. See, 18 e.g., Kwun Decl., Exh. 1 at col. 17, ll. 53-63 & fig. 7. 19 20 21 3. Overture can state its infringement contentions with greater specificity without taking further discovery. Overture claims it requires further discovery prior to making more than conclusory 22 assertions of infringement. For example, Overture attempts to lay the blame for its minimalist 23 claim chart on Google’s delayed production of documents. See Overture’s Oppo. at 4:12-27. As 24 of today, however, Overture has had approximately 60,000 pages of documents produced by 25 Google for over two months, yet has not served amended Infringement Contentions. Kwun 26 Reply Decl. ¶¶ 2-5. Moreover, Overture itself has delayed production of documents responsive 27 to Google’s document requests for over a month – and, as of today, still has not produced such 28 documents. Id. ¶ 6. 7 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 8 of 9 1 Overture also argues that it cannot state anything beyond its “belief” that the limitations 2 of the asserted non-method claim (claim 14) are present in AWS. See Overture’s Further Oppo. 3 at 2:16-20. Rule 11 of the Federal Rules of Civil Procedure requires that Overture have a good 4 faith basis for believing that AWS meets the limitations of claim 14. Google is entitled to know 5 (and thus Overture must disclose) the factual basis for Overture’s assertion that Google infringes 6 claim 14 – and Patent L.R. 3-1(c) requires that this disclosure be made in an element-by-element 7 manner. 8 In the context of drafting the 361 patent and during the prosecution of that patent 9 application, Overture was capable of providing specific examples illustrating the elements of its 10 claims. It is equally capable of doing so now. 11 III. CONCLUSION 12 As demonstrated in Google’s moving papers, Overture’s claim chart provides little 13 information beyond that which is independently required by Patent L.R. 3-1(a)-(b). And, for the 14 reasons given above, neither Overture’s Opposition nor its Further Opposition rebuts Google’s 15 showing that Overture has failed to comply fully with Patent L.R. 3-1(c). Google therefore 16 requests that the Court grant this motion. Specifically, Google requests that the Court order 17 Overture to serve forthwith a revised version of its Preliminary Infringement Contentions that 18 fully complies with Patent L.R. 3-1, and that Google’s deadline for serving its Preliminary 19 Invalidity Contentions accordingly be extended to forty-five days after the date on which 20 Overture serves revised Preliminary Infringement Contentions that fully comply with Patent L.R. 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 8 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL) Case 3:02-cv-01991-JSW Document 36 Filed 12/12/2002 Page 9 of 9 1 3-1. See Patent L.R. 3-3 (Preliminary Invalidity Contentions must be served “[n]ot later than 45 2 days after service” of Preliminary Infringement Contentions pursuant to Patent L.R. 3-1). 3 4 Dated: December 12, 2002 KEKER & VAN NEST, LLP 5 6 7 8 By: ______/s/ Michael S. Kwun______ MICHAEL S. KWUN Attorneys for Defendant GOOGLE INC. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 302734.03 GOOGLE’S REPLY RE MO. FOR AN ORDER EXT. TIME TO SERVE INIT. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB (EDL)
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