KEKER & VAN NEST LLP
`ROBERT A. VAN NEST - # 84065
`rvannest@kvn.com
`CHRISTA M. ANDERSON - # 184325
`canderson@kvn.com
`MATTHIAS A. KAMBER - # 232147
`mkamber@kvn.com
`JUSTINA SESSIONS- # 270914
`jsessions@kvn.com
`DAVID J. ROSEN - # 296139
`drosen@kvn.com
`633 Battery Street
`San Francisco, CA 94111-1809
`Telephone: (415) 391 5400
`Facsimile: (415) 397 7188
`
`Attorneys for Defendant
`GOOGLE INC.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`
`
`RICHARD A. WILLIAMSON, ON BEHALF
`OF AND AS TRUSTEE FOR AT HOME
`BONDHOLDERS’ LIQUIDATING TRUST,
`Plaintiff,
`
` Case No. 3:15-CV-00966-BLF
`
`DEFENDANT GOOGLE INC.’S FIRST
`AMENDED INVALIDITY
`CONTENTIONS
`
`Judge: Hon. Beth Labson Freeman
`
`
`
`
`
`v.
`GOOGLE INC.,
`
`Defendant.
`
`
`
`
`990714
`
`GOOG 1032
`Google Inc. v. At Home Bondholders' Liquidating Trust
`IPR2015-00662
`
`

`
`DEFENDANT GOOGLE INC.’S FIRST AMENDED INVALIDITY CONTENTIONS
`
`Table of Contents
`
`I.
`
`II.
`
`P.L.R. 3-3(a) – Identification of Prior Art Under 35 U.S.C. §§ 102 and/or 103 ................... 2
`
`P.L.R. 3-3(b) & (c) – Identification of Anticipation or Obviousness Defenses .................... 7
`
`A.
`
`Anticipation................................................................................................................ 8
`
`1.
`
`2.
`
`The ’045 patent .............................................................................................. 8
`
`The ’698 patent ............................................................................................ 11
`
`B.
`
`Obviousness ............................................................................................................. 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Unblockable Signals .................................................................................... 17
`
`Redirect Signals ........................................................................................... 27
`
`Proxy Servers ............................................................................................... 33
`
`Cache Checking ........................................................................................... 37
`
`Counting Displays (Impressions) ................................................................. 44
`
`Distributed Computing / Load Balancing .................................................... 46
`
`Inter Partes Review Petitions ...................................................................... 49
`
`III.
`
`P.L.R. 3-3(d) – Invalidity under 35 U.S.C. §§ 101, 112(1), and 112(2) .............................. 55
`
`A.
`
`B.
`
`35 U.S.C. § 101 – Nonpatentable Subject Matter .................................................... 55
`
`35 U.S.C. § 112(1) and (2) – Written Description and Indefiniteness ..................... 56
`
`1.
`
`The ’045 patent ............................................................................................ 57
`
`a)
`
`b)
`
`35 U.S.C. § 112(1) – Written Description and Enablement ............ 57
`
`35 U.S.C. § 112(2) – Indefiniteness ................................................. 58
`
`2.
`
`The ’698 patent ............................................................................................ 60
`
`a)
`
`b)
`
`35 U.S.C. § 112(1) – Written Description and Enablement ............ 60
`
`35 U.S.C. § 112(2) – Indefiniteness ................................................. 61
`
`
`
`i
`
`

`
`DEFENDANT GOOGLE INC.’S FIRST AMENDED INVALIDITY CONTENTIONS
`
`Pursuant to Patent Local Rules (“P.L.R.”) 3-3 and 3-6 of the United States District Court
`
`for the Northern District of California, the parties’ agreement to provide amended contentions in
`
`compliance with the Patent Local Rules, and the Court’s September 3, 2015 Case Management
`
`Order [Dkt. No. 108], Defendant Google Inc. (“Google”) hereby provides to Plaintiff Richard A.
`
`Williamson, on behalf of and as trustee for At Home Bondholders’ Liquidating Trust
`
`(“Williamson”), these First Amended Invalidity Contentions with respect to the Asserted Claims
`
`of U.S. Patent Nos. 6,014,698 (“the ’698 patent”) and 6,286,045 (“the ’045 patent”)
`
`(collectively, “the Asserted Patents”).
`
`The First Amended Invalidity Contentions set forth below are based on information
`
`currently available to Google. As before, Google’s investigation and analysis of prior art is
`
`ongoing. Furthermore, Williamson’s infringement contentions remain high-level, generally non-
`
`specific, and do not comply with the Patent Local Rule 3-1 (as addressed in a related letter dated
`
`September 21, 2015). Moreover, Williamson has still not produced documents regarding any
`
`alleged prior conception and reduction to practice, or any prior art identified in any prior
`
`communications concerning the Asserted Patents or otherwise known to Williamson. Google
`
`therefore reserves all rights to supplement or modify these contentions based on continued
`
`discovery, evaluation of the scope and content of the prior art, and/or changes in Williamson’s
`
`Asserted Claims or contentions.
`
`In addition, the Court has not yet issued a claim construction ruling. Accordingly,
`
`Google cannot provide complete and final invalidity contentions at this time. In the interim,
`
`Google’s First Amended Invalidity Contentions are based on the claim constructions apparently
`
`underlying the infringement contentions set forth in Williamson’s First Amended Patent
`
`Infringement Contentions, to the extent that such constructions are discernable. These First
`
`
`
`
`
`

`
`Amended Invalidity Contentions are not intended to, and do not, reflect Google’s positions as to
`
`the proper construction of the Asserted Claims. To the extent that the following First Amended
`
`Invalidity Contentions reflect an interpretation consistent with the apparent construction adopted
`
`by Williamson’s First Amended Infringement Contentions, no inference is intended nor should
`
`any be drawn that Google agrees with Williamson’s claim constructions, and Google expressly
`
`reserves its right to contest such constructions.1 Further, no inference is intended nor should any
`
`be drawn that the claim limitations satisfy 35 U.S.C. § 112, and Google reserves the right to
`
`contend otherwise.
`
`I.
`
`P.L.R. 3-3(a) – Identification of Prior Art Under 35 U.S.C. §§ 102 and/or 103
`
`The Asserted Patents share a substantially identical specification and, further, have
`
`similar claims. In compliance with P.L.R. 3-3(a), Google provides a consolidated list identifying
`
`each piece of prior art that anticipates and/or renders obvious one or more claims of the Asserted
`
`Patents. The list also includes items being relied upon to show knowledge or use by others under
`
`§ 102(a), public use or on-sale bar under § 102(b), derivation or prior inventorship under
`
`§§ 102(f)/(g), and the identity of person(s) or entities involved in and the circumstances
`
`surrounding the making of the invention before the patent applicant(s), including relevant dates
`
`where presently known.
`
`Patent or Patent Publication (and Author)
`
`Date of Filing, Issuance and/or Publication
`
`U.S. Patent No. 5,933,811 (Angles)
`
`filed August 20, 1996; issued August 3, 1999
`
`U.S. Patent No. 6,108,637 (Blumenau)
`
`filed September 3, 1996; issued August 22,
`
`
`1 For example, Williamson’s contentions do not address the requirement that the first request
`signal includes information intended to prevent it from being blocked “as a result of pervious
`caching,” effectively reading that limitation (and others like it) out of the claims.
`
`
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`
`

`
`2000
`
`U.S. Patent No. 5,796,952 (Davis)
`
`filed March 21, 1997; issued August 18, 1998
`
`U.S. Patent No. 5,812,769 (Graber)
`
`filed September 20, 1995; issued September 22,
`1998
`
`U.S. Patent No. 5,751,956 (Kirsch)
`
`filed February 21, 1996; May 12, 1998
`
`U.S. Patent No. 5,948,061 (Merriman)
`
`U.S. Patent No. 5,960,409 (Wexler)
`
`filed October 29, 1996; issued September 7,
`1999
`
`filed October 11, 1996; issued September 28,
`1999
`
`Other Printed Publications
`
`Date of Publication
`
`R. Bennett, “How Interactive Ads are
`Delivered and the Measurement Implications,”
`CASIE Glossary of Internet Advertising Terms
`and Interactive Media Measurement
`Guidelines (“Bennett CASIE Article”)
`
`1997
`
`C. Brown and S. Benford, “Tracking WWW
`Users: Experience from the Design of
`HyperVisVR,” Proceedings of Webnet 96
`
`Oct. 15-19, 1996
`
`A. Dingle & T. Partl, et al., “Web Cache
`Coherence”
`
`May 6-10, 1996
`
`T. Berners-Lee et al., “Hypertext Transfer
`Protocol – HTTP/1.0” (“HTTP 1.0”)
`
`February 19, 1996
`
`R. Fielding et al., “Hypertext Transfer Protocol
`– HTTP/1.1”
`
`November 22, 1995
`
`R. Fielding et al., “Hypertext Transfer Protocol
`– HTTP/1.1”
`
`April 23, 1996
`
`R. Fielding et al., “Hypertext Transfer Protocol
`– HTTP/1.1”
`
`January 1997
`
`M. Garland et al., “Implementing Distributed
`Server Groups for the World Wide Web”
`
`January, 25, 1995
`
`S. Gundavaram, “CGI Programming on the
`World Wide Web”
`
`March 1996
`
`
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`
`

`
`Other Printed Publications (cont’d)
`
`Date of Publication
`
`Google Groups postings regarding, among
`other things, accurately counting ads delivered
`over the Internet – various authors (“Google-
`Group Materials”)
`
`IAB’s Media Measurement Task Force
`Executive Summary 2.0
`
`Y. Khoda & S. Endo, “Ubiquitous advertising
`on the WWW: Merging advertisement on the
`browser”
`
`Online Advertising postings regarding, among
`other things, accurately counting ads delivered
`over the Internet, MatchLogic TrueCount,
`AdForce/Imgis, and NetGravity – various
`authors (“O-A Materials”)
`
`April 13, 1996 – May 29, 1997
`
`June 12, 1997
`
`May 6-10, 1996
`
`Sept. 1996 – June 1998
`
`M. Meeker, “The Internet Advertising Report”
`Morgan Stanley, U.S. Investment Research
`
`December 1996
`
`M. Meeker, “The Internet Report,” Morgan
`Stanley, U.S. Investment Research
`
`February 1996
`
`A. Lopez-Ortiz & D. German, “A
`Multicollaborative Push-Caching HTTP
`Protocol for the WWW”
`
`November 25, 1996
`
`J. Mogul & P. Leach, “Simple Hit-Metering
`for HTTP”
`
`January 1997
`
`H. Skardal, “A Trip Report and some
`reflections,” W3C Meeting on Web Efficiency
`and Robustness
`
`T. Novak et al, “New Metrics for New Media:
`Toward the Development of Web
`Measurement Standards”
`
`April 22, 1996
`
`Sept. 26, 1996
`
`J. Sterne, Advertising on the Web (1st ed.)
`
`January 1997
`
`
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`

`
`Other Forms of Prior Art2
`
`AdForce (f.k.a. Imgis)
`
`DoubleClick
`
`FocaLink SmartBanner
`
`NetGravity
`
`Accipiter
`
`NCSA Mosaic web browser (versions 1.0-2.0)
`
`Relevant Dates including Offers for Sale,
`Public Used or Knowledge, or Invented
`
`Publicly used and/or sold in the United States as
`of the second half of 1996, and at least before
`March 1997, before the priority date(s) of the
`Asserted Patents.
`
`Publicly used and/or sold in the United States
`since at least 1996, before the priority date(s) of
`the Asserted Patents.
`
`Publicly used and/or sold in the United States
`since at least 1996, before the priority date(s) of
`the Asserted Patents.
`
`Publicly used and/or sold in the United States as
`early as 1996, and at least as early as March 11,
`1997, before the priority date(s) of the Asserted
`Patents.
`
`Publicly used and/or sold in the United States as
`early as 1996, before the priority date(s) of the
`Asserted Patents.
`
`Publicly used and/or sold in the United States
`1993-1994, and at least as early as March 11,
`
`
`2 With respect to the prior art systems noted above, Google has provided claim charts for
`AdForce and NetGravity. Those claim charts cite items demonstrating various features of those
`systems, as well as materials being relied upon to show knowledge or use by others under
`§ 102(a), public use or on-sale bar under § 102(b), prior inventorship or derivation under
`§§ 102(f)/(g), and the identity of person(s) or entities involved in and the circumstances
`surrounding the making of the invention of the prior art systems listed above before the patent
`applicant(s), including relevant dates where presently known. For each of the systems—i.e.,
`AdForce, NetGravity, DoubleClick, FocaLink SmartBanner, and Accipiter—Google previously
`produced materials relevant to the foregoing topics. And, Google also made available archival
`source code for AdForce, DoubleClick, and NetGravity. Further, Google has disclosed the
`identity of individuals who may be relied upon to provide testimony with respect to the
`foregoing topics for at least AdForce, Double Click, and NetGravity. Discovery is ongoing.
`Google reserves the right to produce and rely upon additional materials when it becomes aware
`of them or in response to any positions taken by Williamson. To the extent that Google
`identifies other or additional individuals, it will supplement its disclosures in accordance with the
`Patent Local Rules and the Federal Rules of Civil Procedure.
`
`
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`

`
`Netscape Navigator web browser (versions 1.0-
`3.0)
`
`Microsoft Internet Explorer web browser
`(versions 1.0-3.0)
`
`1997, before the priority date(s) of the Asserted
`Patents.
`
`Publicly used and/or sold in the United States
`1994-1996, and at least as early as March 11,
`1997, before the priority date(s) of the Asserted
`Patents.
`
`Publicly used and/or sold in the United States
`1995-1996, and at least as early as March 11,
`1997, before the priority date(s) of the Asserted
`Patents.
`
`Additionally, in the overlapping specification of the Asserted Patents, the alleged
`
`inventors admit that the technical bases for their alleged inventions were known in the prior art.
`
`As the specification puts it, at the time of the alleged invention, there was a “well-developed
`
`state of the art in the displaying of information, banners, and advertisements in conjunction with
`
`web pages, documents, or other information.” ’045 patent, 3:13-16.3 The specification goes on
`
`to discuss much of the state of the art, including, for example, well known Internet protocols and
`
`conventions of the World Wide Web, such as Uniform Resource Locators (URL), Hypertext
`
`Transfer Protocol (HTTP), Hypertext Markup Language (HTML), and Transmission Control
`
`Protocol/Internet Protocol (TCP/IP). E.g., ’045 patent, 7:28-45. And, although the putative
`
`novelty of the Asserted Claims is rooted in using a combination of unblockable requests and
`
`redirect commands to enable an ad server to serve and accurately count ads by avoiding caching
`
`of ad requests, the specification acknowledges that both unblockable requests and redirect
`
`commands were known in the prior art. E.g., ’045 patent, 17:22-18:61. Indeed, the inventors did
`
`not claim to make any innovative contribution to computer networking, as such. Rather, the
`
`3 All citations are to the first-filed ’045 patent, although the same disclosure also appears in
`the ’698 patent, which derived from a later-filed continuation-in-part application.
`
`
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`
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`
`

`
`specification contends—incorrectly—that the alleged inventions are novel because they are
`
`directed to the problem of counting banner ads. See, e.g., ’045 patent, 3:7-28. Google reserves
`
`the right to rely on each and every admission of prior art in the specification of the Asserted
`
`Patents, including but not limited to those noted above.
`
`II.
`
`P.L.R. 3-3(b) & (c) – Identification of Anticipation or Obviousness Defenses
`
`All of the prior art cited above anticipates and/or renders obvious, alone or in
`
`combination with other of the above-identified references, one or more of the Asserted Claims of
`
`the Asserted Patents. Google sets forth below examples of anticipation and obviousness based
`
`on the above-identified prior art. Google also sets forth below exemplary combinations of
`
`references that render the Asserted Claims obvious. Google expressly reserves the right to
`
`supplement and/or amend these contentions as noted above.
`
`Google also attaches limitation-by-limitation claim charts demonstrating where,
`
`specifically, in each prior art item each limitation of the Asserted Claims is found. These claim
`
`charts are based on Google’s current understanding of the terms and limitations of Williamson’s
`
`Asserted Claims. To the extent any limitation is deemed not to be met exactly by an item of
`
`prior art, Google contends that the differences are such that the claimed inventions would have
`
`been obvious to a person of ordinary skill in the art and within the knowledge of one skilled in
`
`the art at the time of the alleged invention, so that the claimed invention would have been
`
`obvious both in light of the single reference alone and/or in light of combined references.
`
`As a general matter, all portions of each prior art item are relied upon to support the
`
`disclosure of each patent claim limitation, as all portions provide general support. Supporting
`
`citations are nevertheless provided, but do not necessarily represent every location where a
`
`particular claim term may be found in the prior art item. Where elements are disclosed at
`
`
`990714
`
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`
`

`
`multiple locations within a single item of prior art, Google has not necessarily identified every
`
`iteration of every disclosure. Google therefore reserves the right to rely on additional, or
`
`different, portions of the prior art items other than those specifically cited in the claims chart
`
`provided herewith. Google reserves the right to supplement and/or amend these contentions
`
`based on the above-identified prior art considered individually or in combination with additional
`
`information learned during discovery and/or the Court’s claim construction ruling. In addition,
`
`Google may become aware of additional references as discovery progresses, and Google reserves
`
`the right to use such references to demonstrate that the Asserted Claims are invalid as anticipated
`
`or obvious.
`
`A.
`
`Anticipation
`
`1.
`
`The ’045 patent
`
`The references cited below anticipate the asserted claims of the ’045 patent by disclosing
`
`each and every limitation of the claims at issue before the priority date of the ’045 patent: May
`
`19, 1997. Thus, the references below invalidate the ’045 patent under the provisions of one or
`
`more of 35 U.S.C. §§ 102(a), (b), (e), or (g). For each anticipatory reference, Google cites to an
`
`attached exhibit providing a chart identifying specifically in each alleged item of prior art where
`
`each limitation of each asserted claim is found, subject to the conditions above.
`
`Patent or Patent Publication
`
`Exhibit – Chart
`
`U.S. Patent No. 5,960,409 (Wexler)
`
`U.S. Patent No. 5,948,061 (Merriman)
`
`U.S. Patent No. 5,751,956 (Kirsch)
`
`U.S. Patent No. 5,933,811 (Angles)
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`
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`

`
`Other Forms of Prior Art
`
`Exhibit – Chart
`
`NetGravity
`
`AdForce
`
`Exhibit 5
`
`Exhibit 6
`
`Notably, it was known in the art that, among other systems, NetGravity and AdForce
`
`anticipated the purported invention of the Asserted Patents, which Williamson alleges was
`
`embodied in TrueCount. For example, in a posting to a public online message board, Rick
`
`Bruner noted that Imgis (AdForce) and MatchLogic’s TrueCount worked the same way:
`
`As far as I understand, MatchLogic’s True Count, before trying to
`serve the ad, sends a ping to the proxy server inquiring whether the
`ad it wants to serve is already in the proxy’s cache. If it is, then
`True Count just sends a command that the ad should be served to
`the browser out of the cache. If it’s not in the cache, True Count
`will serve the ad to the viewer itself and make sure it gets cached
`so it can serve it out of the proxy server’s cache next time. I gather
`Imgis does pretty much the same thing.
`
`See R. Bruner, online post in the thread titled “Re: ONLINE-ADS>> Charging for cached ad
`
`views” (Feb. 18, 1998), available at http://www.o-a.com/archive/1998/February/0056.html
`
`(GOOG_WAH_00134831-33 at -31); see also M. Tanne, online post in the thread titled “Re:
`
`ONLINE-ADS>> Charging for cached ad views” (Feb. 18, 1998), available at http://www.o-
`
`a.com/archive/1998/February/0068.html (noting that “IMGIS does count cached impressions,
`
`and has done so for a long time. Both MatchLogic and IMGIS do this to get to accurate
`
`numbers,” and that “[e]ven most on-site ad servers like NetGravity count based on the image
`
`request”) (GOOG_WAH_00134828-30 at -28). Along similar lines, Mr. Bruner later made
`
`available a publication titled “Cache Counting and Busting” in which he notes that
`
`MatchLogic did not invent this cache counting methodology with
`its TrueCount service, it was simply the first to gain a lot of
`publicity about it by issuing a press release. . . . Imgis, with its
`network approach to ad serving, delivers all of its ads using this
`cache counting approach, while Accipiter and NetGravity enable it
`
`
`990714
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`
`

`
`with their technology, but it is up to their client sites to implement
`it on an individual basis.
`
`See GOOG_WAH_000540098-10 at -99; see also R. Bruner, online post in the thread titled
`
`“ONLINE-ADS>> Cache Busting, in Detail” (Mar. 4, 1998), available at http://www.o-
`
`a.com/archive/1998/March/0017.html (GOOG_WAH_00134813-14). The substance of this
`
`posting was echoed in other posts by contemporaries and reflects the fact that the Asserted
`
`Patents were neither new nor novel. See T. Hukins, online post in the thread titled “Re:
`
`ONLINE-ADS>> Cache Busting, in Detail” (Mar. 9, 1998), available at http://www.o-
`
`a.com/archive/1998/March/0046.html (responding to Bruner’s article regarding “Cache Counting
`
`and Busting”) (GOOG_WAH_00134819-22); G. Fleishman, online post in the thread titled “Re:
`
`ONLINE-ADS>> Cache Busting, in Detail” (Mar. 15, 1998), available at http://www.o-
`
`a.com/archive/1998/March/0028.html (discussing the ways in which Imgis/AdForce worked)
`
`(GOOG_WAH_00134822-23); see also G. Fleishman, online post in the thread titled “Re:
`
`ONLINE-ADS>> cache counting standards” (June 8, 1998), available at http://www.o-
`
`a.com/archive/1998/June/0029.html (GOOG_WAH_00134824-25). Accordingly, MatchLogic’s
`
`TrueCount product was simply based on prior art and therefore not patentable. See D. Gildor,
`
`online post in the thread titled “Re: ONLINE-ADS>> cache counting standards” (June 9, 1998),
`
`available at http://www.o-a.com/archive/1998/June/0036.html. (All assembled as the “O-A
`
`Materials referenced above.)
`
`In addition, Google denies that DoubleClick infringes the asserted claims of the ’045
`
`patent; however, Google reserves its right to argue that DoubleClick anticipates and/or renders
`
`obvious those claims if Williamson pursues its related infringement theory (which at this point
`
`remains unclear because of deficiencies in the infringement contentions that fail to delineate
`
`whether and how each of the diverse “Google Accused Products” allegedly infringe). As noted
`
`
`990714
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`

`
`above, DoubleClick was publicly used and/or sold in the United States prior to at least the filing
`
`date of the ’045 patent. Archival source code reveals that, prior to the filing date of the ’045
`
`patent, DoubleClick used unique tags that ensured that requests for ads would bypass caches.4
`
`DoubleClick also employed redirect requests that enabled a primary server to receive a request
`
`from a client and send the location of an ad to the client, which would then request the ad from
`
`an ad server that served up banner ads and counted ad impressions.5 The foregoing disclosures
`
`are merely exemplary, and Google reserves the right to rely on other materials and testimony to
`
`prove invalidity of the ’045 patent in light of earlier uses of DoubleClick.
`
`2.
`
`The ’698 patent
`
`The references cited below anticipate the asserted claims of the ’698 patent by disclosing
`
`each and every limitation of the claims at issue before the alleged priority date of the ’698 patent:
`
`May 19, 1997. Thus, the references below invalidate the ’698 patent under the provisions of one
`
`or more of 35 U.S.C. §§ 102(a), (b), (e), or (g). For each anticipatory reference, Google cites to
`
`an attached exhibit providing a chart identifying specifically in each alleged item of prior art
`
`where each limitation of each asserted claim is found, subject to the conditions above.
`
`Patent or Patent Publication
`
`Exhibit – Chart
`
`U.S. Patent No. 5,960,409 (Wexler)
`
`U.S. Patent No. 5,948,061 (Merriman)
`
`U.S. Patent No. 5,751,956 (Kirsch)
`
`U.S. Patent No. 5,933,811 (Angles)
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`
`4 See, e.g., Appendix A (Restricted Confidential – Source Code).
`5 See, e.g., Appendix A (Restricted Confidential – Source Code).
`
`
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`

`
`Other Forms of Prior Art
`
`Exhibit – Chart
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`NetGravity
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`AdForce
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`Exhibit 11
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`Exhibit 12
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`For the same reasons discussed above related to the ’045 patent, it was known in the art
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`that, among other systems, NetGravity and AdForce anticipated the purported invention of the
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`Asserted Patents. See, supra, discussion of O-A Materials.
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`In addition, Google denies that DoubleClick infringes the asserted claims of the ’698
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`patent. But, for the reasons stated above with respect to the ’045 patent, Google reserves its right
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`to argue that DoubleClick anticipates and/or renders obvious the Asserted Claims of the ’698
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`patent if Williamson pursues its related infringement theory.
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`B.
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`Obviousness
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`As the U.S. Supreme Court held in KSR Int’l Co. v. Teleflex, Inc., “[t]he combination of
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`familiar elements according to known methods is likely to be obvious when it does no more than
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`yield predictable results.” 127 S. Ct. 1727, 1739 (2007). The Supreme Court further held that,
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`“[w]hen a work is available in one field of endeavor, design incentives and other market forces
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`can prompt variations of it, either in the same field or a different one. If a person of ordinary
`
`skill can implement a predictable variation, § 103 likely bars its patentability. For the same
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`reason, if a technique has been used to improve one device, and a person of ordinary skill in the
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`art would recognize that it would improve similar devices in the same way, using the technique
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`is obvious unless its actual application is beyond his or her skill.” Id. at 1740.
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`Moreover, the Supreme Court held that “in many cases a person of ordinary skill will be
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`able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 1742. Indeed,
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`the Supreme Court held that it is sufficient that a combination of elements was “obvious to try”
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`holding that, “[w]hen there is a design need or market pressure to solve a problem and there are a
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`finite number of identified, predictable solutions, a person of ordinary skill has good reason to
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`pursue the known options within his or her technical grasp. If this leads to the anticipated
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`success, it is likely the product not of innovation but of ordinary skill and common sense.” Id.
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`“In that instance the fact that a combination was obvious to try might show that it was obvious
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`under § 103.” Id. “Rigid preventative rules that deny factfinders recourse to common sense,
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`however, are neither necessary under our case law nor consistent with it.” Id.
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`Finally, the Supreme Court recognized that “[g]ranting patent protection to advances that
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`would occur in the ordinary course without real innovation retards progress and may, in the case
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`of patents combining previously known elements, deprive prior inventions of their value or
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`utility.” Id. at 1741.
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`For the Asserted Patents, each of the above-identified prior art items is directed to the
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`same or similar fields of endeavor. Accordingly, one of ordinary skill in the art would have
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`recognized that the results of the combinations were predictable, and would have been clearly
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`motivated to modify and combine the prior art items identified above to arrive at the alleged
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`inventions of claims of the asserted patents. Indeed, at least the following rationales support a
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`finding of obviousness based on the combinations set forth in detail below:
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`(B)
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`(A) Combining prior art elements according to known methods to yield predictable
`results;
`Simple substitution of one known element for another to obtain predictable
`results;
`(C) Use of known technique to improve similar devices (methods, or products) in the
`same way;
`(D) Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
`“Obvious to try”—choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success;
`
`(E)
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`(F) Known work in one field of endeavor may prompt variations of it for use in either
`the same field or a different one based on design incentives or other market forces
`if the variations would have been predictable to one of ordinary skill in the art;
`and
`(G) Some teaching, suggestion, or motivation in the prior art that would have led one
`of ordinary skill to modify the prior art reference or to combine prior art reference
`teachings to arrive at the claimed invention.
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`In addition, evidence of contemporaneous invention may provide evidence that a claimed
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`invention was obvious to those of skill in the art. See, e.g., Concrete Appliances Co. v. Gomery,
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`269 U.S. 177, 185 (1925); Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d
`
`1294, 1305–06 (Fed. Cir. 2010); Senju Pharm. Co. Ltd. v. Apotex Inc., 2010 WL 2380735, *16–
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`*17 (D. Del. 2010). Counting ad impressions was a well-known issue, which then-existing ad-
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`serving systems addressed. See J. Sterne, Advertising on the Web at 149-155 (1st ed. Jan. 1997)
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`(“Counting Impressions” section discussing, among other things, NetGravity and Focalink). As
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`related to this case, various systems contemporaneously addressed the same technical problem
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`(counting ad impressions) using the same or similar technical solutions. For example,
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`NetGravity, AdForce, FocaLink, and Accipiter—all of which were in public use at or around the
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`time the Asserted Patents were filed—used unblockable signals to request banner ads and
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`thereby count ad impressions. See GOOG_WAH_000540098-10 at -99 (Bruner publication
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`regarding “Cache Counting and Busting”). Similarly, various contemporaneous patents provided
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`similar disclosures, including without limitation Kirsch, Graber, and Angles. In addition to
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`supporting obviousness standing alone, this evidence also demonstrates that it would have been
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`obvious to modify references such as Merriman and/or Wexler using admitted prior art
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`techniques for making HTTP requests unblockable (e.g., random numbers, time stamps, and CGI
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`scripts).
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`As further evidence of invalidity as demonstrated by both the then-existing state of the art
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`and contemporaneous invention, various trade associations were developing similar standards for
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`online ad impression counting at or around the time the Asserted Patents were filed. These
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`include, without limitation, the Internet Advertising Bureau (IAB), Future of Advertising
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`Stakeholders (FAST), and the Coalition for Advertising Supported Information and
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`Entertainment (CASIE). For example, the IAB’s Media Measurement Task Force Executive
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`Summary 2.0 (June 12, 1997), discussed methods of counting ad impressions by way of ad
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`requests and serving banners from browser or proxy cache, as follows:
`
`The reason we propose counting at the “request” level instead of at
`the delivery level is that only a percentage of the images are
`“logged” or recorded by the publisher. In the steps above, you can
`see many different places along the process where a visitor can get
`the requested elements and only one of them is from the publisher.
`This also happens to be the order in which a visitor can receive the
`elements.
`
`The visitor receives the page and then the browser to the visitor’s
`local cache first. If the image is there, it goes no further and does
`NOT record back to the publisher, even though the image appeared
`before the visitor. If the image is not in the local cache, it will look
`to the proxy server. If it finds the image there, it will look no
`further and NOT report back to the publisher, even though the
`image appeared before the visitor. However, if the image is not
`found in the visitor’s cache or in a proxy location, then the image
`will be served from the publisher and “logged” or recorded by the
`publ