IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PARUS HOLDINGS INC.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`PARUS HOLDINGS INC.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`Defendant.
`
`PARUS HOLDINGS INC.,
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC.,
`Defendants.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION 6:19-cv-00432-ADA
`
`JURY TRIAL DEMANDED
`
`[LEAD CASE]
`
`
`
`CIVIL ACTION No. 6:19-cv-00433-
`ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`CIVIL ACTION No. 6:19-cv-00437-
`ADA
`
`JURY TRIAL DEMANDED
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`1
`
`Parus Exhibit 2011
`Google LLC, et al. v. Parus Holdings, Inc.
`IPR2020-00846
`Page 1 of 62
`
`

`

`PARUS HOLDINGS INC.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO.,
`LTD.,
`SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Defendants.
`
`
`
`
`PARUS HOLDINGS INC.,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC.,
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`CIVIL ACTION No. 6:19-cv-00438-
`ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`CIVIL ACTION No. 6:19-cv-00454-
`ADA
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANTS’ CORRECTED PRELIMINARY INVALIDITY CONTENTIONS
`
`I.
`
`INTRODUCTION
`
`Pursuant to the January 17, 2020 Scheduling Order (D.I. 85), Defendants Apple Inc.
`
`(“Apple”); Google LLC (“Google”); LG Electronics, Inc., LG Electronics USA, Inc. (“LG
`
`Defendants”); Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. (“Samsung
`
`Defendants”); and Amazon.Com, Inc. (“Amazon”) (collectively, “Defendants”) provide these
`
`Preliminary Invalidity Contentions to Plaintiff Parus Holdings Inc. (“Parus”) for the following
`
`patents (collectively, “Asserted Patents”) and claims (collectively, “Asserted Claims”) identified
`
`as asserted in Parus’s Preliminary Infringement Contentions and Disclosure of Priority Dates and
`
`
`
`2
`
`Parus Exhibit 2011, Page 2 of 62
`
`

`

`Dates of Conception/Reduction to Practice served on December 11, 2019 (“Infringement
`
`Contentions”):
`
`• U.S. Patent No. 7,076,431 (“’431 Patent”) — Claims 1, 2, 4, 5, 6, 7, 9, 10, 13, 14
`(“’431 Asserted Claims”)
`
`• U.S. Patent No. 9,451,084 (“’084 Patent”) — Claims 1, 2, 4, 5, 6, 7, 10, 14 (“’084
`Asserted Claims”)1
`
`Defendants address the invalidity of the Asserted Claims and conclude with a description
`
`of their document productions and identification of additional reservations and explanations.
`
`These Preliminary Invalidity Contentions use the acronym “POSITA” to refer to a person having
`
`ordinary skill in the art to which the claimed inventions pertain. Although the Court
`
`consolidated the related cases filed by Parus, each Defendant is entitled to its own trial and
`
`nothing in these contentions limits any particular Defendant’s right to select defenses for trial.
`
`II.
`
`PRIORITY DATE OF THE ASSERTED PATENTS AND CLAIMS
`
`Parus asserts the following priority dates for all Asserted Claims in its December 11,
`
`2019 Infringement Contentions:
`
`• Priority Date: October 13, 1998
`
`• Conception: October 13, 1998
`
`• Actual Reduction to Practice: January 16, 2000
`
`• Constructive Reduction to Practice: February 4, 2000
`
`It is Parus’s burden to show entitlement to its asserted priority dates, and Defendants
`
`assert that Parus has failed to meet that burden. The documents produced by Parus in support of
`
`its alleged conception and actual reduction to practice dates (PARUS_00000001-8645) do not
`
`show that the named inventors of the Asserted Patents conceived the Asserted Claims on or after
`
`
`1 The Asserted Patents are governed by the pre-AIA statutory framework as the applications were filed before March
`16, 2013.
`
`
`
`3
`
`Parus Exhibit 2011, Page 3 of 62
`
`

`

`October 13, 1998, do not show that the named inventors of the Asserted Patents were diligent in
`
`reducing to practice their alleged inventions, and do not show that the alleged inventions were
`
`actually reduced to practice on or after January 16, 2000. In addition, provisional application
`
`No. 60/180,344, filed February 4, 2000, on which Parus appears to rely to support its alleged
`
`constructive reduction to practice, fails to disclose all elements of the Asserted Claims.
`
`Similarly, provisional application No. 60/233,068, filed September 15, 2000, fails to disclose all
`
`elements of the Asserted Claims. Finally, as described below, elements of the Asserted Claims
`
`lack written description and enablement support, and those Asserted Claims therefore cannot
`
`claim priority to earlier continuation applications on the face of the Asserted Patents. For
`
`purposes of these Preliminary Invalidity Contentions, Defendants identify art that qualifies as
`
`prior art under 35 U.S.C. § 102 (pre-AIA) on or before February 4, 2000, the filing date of the
`
`earliest allegedly related provisional application to the Asserted Patents.
`
`III.
`
`INVALIDITY UNDER 35 U.S.C. § 101
`
`To be patentable subject matter under § 101, a claim must be directed to one of four
`
`eligible subject matter categories: “new and useful process, machine, manufacture, or
`
`composition of matter.” 35 U.S.C. § 101. “Claims that fall within one of the four subject matter
`
`categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena,
`
`or abstract ideas.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). The Supreme Court
`
`established a two-step test for deciding the subject matter eligibility of claims under § 101. Alice
`
`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). First, the claims must be
`
`analyzed to determine whether they are drawn to one of the statutory exceptions. Id. Claims that
`
`invoke generic computer components instead of reciting specific improvements in computer
`
`capabilities are abstract under this first step. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
`
`1335-36 (Fed. Cir. 2016). Second, the elements of the claims must be viewed both individually
`
`
`
`4
`
`Parus Exhibit 2011, Page 4 of 62
`
`

`

`and as an ordered combination to see if there is an “inventive concept.” Id. The mere fact that a
`
`claim recites or implies that an abstract idea is implemented using a general-purpose computer
`
`does not supply an inventive concept necessary to satisfy § 101. See Elec. Power Grp., LLC v.
`
`Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016); Alice, 134 S. Ct. at 2357-59.
`
`All of the Asserted Claims are directed to ineligible subject matter under 35 U.S.C. § 101
`
`and applicable case law authority.2 Pursuant to the Court’s guidance, Defendants will present
`
`any § 101 motions after claim construction.
`
`IV.
`
`’431 PATENT
`
`Prior Art References
`
`A.
`Defendants identify the following prior art now known to Defendants to anticipate or
`
`render obvious the ’431 Asserted Claims under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g),
`
`and/or § 103, either expressly or inherently as understood by a POSITA.
`
`
`2 See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014); Mayo Collaborative
`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012); Trading Techs. Int’l, Inc. v. IBG, LLC,
`921 F.3d 1084 (Fed. Cir. 2019); ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir.
`2019); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018); Interval Licensing
`LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018); Aatrix Software, Inc. v. Green Shades
`Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018); Two-Way Media Ltd. v. Comcast Cable
`Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017), cert. denied, 139 S. Ct. 378 (2018);
`Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017); Apple,
`Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v. DIRECTV,
`LLC, 838 F.3d 1253 (Fed. Cir. 2016); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
`(Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Genetic Techs.
`Ltd. v. Merial L.L.C., 818 F.3d 1369 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One
`Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015); Internet Patents Corp. v. Active Network, Inc, 790
`F.3d 1343 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
`2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
`1343 (Fed. Cir. 2014); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014);
`buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); Digitech Image Techs., LLC v.
`Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions,
`Inc., 654 F.3d 1366 (Fed. Cir. 2011).
`
`
`
`5
`
`Parus Exhibit 2011, Page 5 of 62
`
`

`

`Prior Art Publications
`
`1.
`The following patents and publications are prior art to the ’431 Asserted Claims under at
`
`least 35 U.S.C. §§ 102(a), (b), (e), and/or (g). Invalidity claim charts for these references are
`
`attached as Exhibits A1 through A25.
`
`1. U.S. Patent No. 7,203,646 (“Bennett 646”). See Ex. A1.
`
`2. Voice Browsing the Web for Informational Access (“InfoPhone”). See Ex. A2.
`
`3. U.S. Patent No. 6,269,336 (“Ladd”). See Ex. A3.
`
`4. U.S. Patent No. 6,173,279 (“Levin”). See Ex. A4.
`
`5. PhoneBrowser: A Web-Content-Programmable Speech Processing Platform
`(“PhoneBrowser”). See Ex. A5.
`
`6. U.S. Patent No. 6,188,985 (“Thrift”). See Ex. A6.
`
`7. U.S. Patent No. 6,003,030 (“Kenner”). See Ex. A7.
`
`8. U.S. Patent No. 6,088,731 (“Kiraly”). See Ex. A8.
`
`9. WO 2001/050453 (“Kovatch”). See Ex. A9.
`
`10. U.S. Patent No. 6,615,172 (“Bennett 172”). See Ex. A10.
`
`11. U.S. Patent No. 6,434,524 (“Weber”). See Ex. A11.
`
`12. U.S. Patent No. 6,970,915 (“Partovi 915”). See Ex. A12.
`
`13. Susan Feldman, The Answer Machine (“Feldman”). See Ex. A13.
`
`14. U.S. Patent No. 7,376,586 (“Partovi 586”). See Ex. A14.
`
`15. U.S. Patent No. 7,203,721 (“Ben-Efraim”). See Ex. A15.
`
`16. U.S. Patent No. 6,311,182 (“Colbath”). See Ex. A16.
`
`17. U.S. Patent No. 6,078,886 (“Dragosh”). See Ex. A17.
`
`18. U.S. Patent No. 6,859,776 (“Cohen”). See Ex. A18.
`
`19. The Open Agent Architecture: A Framework for Building Distributed Software
`Systems (“OAA A Framework”). See Ex. A19.
`
`20. Multimodal user Interfaces in the open Agent Architecture (“Multimodal User
`
`
`
`6
`
`Parus Exhibit 2011, Page 6 of 62
`
`

`

`Interfaces in OAA”). See Ex. A20.
`
`21. Spoken Language and Multimodal Applications for Electronic realities (“Spoken
`Language”). See Ex. A21.
`
`22. Designing, Developing & Evaluating Multimodal Applications (“Designing and
`Developing in OAA”). See Ex. A22.
`
`23. Development Tools for the Open Agent Architecture (“Development Tools for the
`OAA”). See Ex. A23.
`
`24. Multimodal Maps: An Agent-Base Approach (“Multimodal Maps”). See Ex. A24.
`
`25. OAA Applications. See Ex. A25.
`
`Defendants additionally identify and rely on patent or publication references that describe
`
`or are otherwise related to the prior art systems identified below. Defendants’ investigation into
`
`prior art patent and publication references remains ongoing, and Defendants reserve the right to
`
`identify and rely on additional patent or publication references that are identified through further
`
`investigation or discovery. To the extent any Defendant had knowledge of a prior art reference
`
`that was not disclosed in these contentions, such knowledge is not attributed to other
`
`Defendants. Defendants reserve the right to supplement as further prior art is identified through
`
`investigation or discovery.
`
`Prior Art Systems
`
`2.
`The following systems are prior art to the ’431 Asserted Claims under at least 35 U.S.C.
`
`§§ 102(a), (b) and/or (g). Invalidity claim charts for these references are attached as Exhibits B1
`
`through B18.
`
`1. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to the Galaxy System (“Galaxy”).
`Galaxy qualifies as prior art under § 102 because it was either (1) in public use or on
`sale in the United States no later than the priority date of the Asserted Claims or (2)
`reduced to practice in the United States no later than the priority date of the Asserted
`Claims without being abandoned, suppressed, or concealed. Defendants reserve the
`right to rely on other sources of evidence identified as discovery and Defendants’
`investigation progresses. The substantive disclosures of Galaxy, as compared to the
`
`
`
`7
`
`Parus Exhibit 2011, Page 7 of 62
`
`

`

`limitations of the ’431 Asserted Claims, is provided in Exhibit B1. Defendants reserve
`the right to supplement, amend, add to, or otherwise revise this disclosure to rely on
`other sources of evidence identified as discovery and Defendants’ investigation
`progresses.
`
`2. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to the Open Agent Architecture
`System (“OAA”). OAA qualifies as prior art under § 102 because it was either (1) in
`public use or on sale in the United States no later than the priority date of the Asserted
`Claims or (2) reduced to practice in the United States no later than the priority date of
`the Asserted Claims without being abandoned, suppressed, or concealed. Defendants
`reserve the right to rely on other sources of evidence identified as discovery and
`Defendants’ investigation progresses. The substantive disclosures of OAA, as
`compared to the limitations of the ’431 Asserted Claims, is provided in Exhibit B2.
`Defendants reserve the right to supplement, amend, add to, or otherwise revise this
`disclosure to rely on other sources of evidence identified as discovery and Defendants’
`investigation progresses.
`
`3. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to the InfoWiz System (“InfoWiz”).
`InfoWiz qualifies as prior art under § 102 because it was either (1) in public use or on
`sale in the United States no later than the priority date of the Asserted Claims or (2)
`reduced to practice in the United States no later than the priority date of the Asserted
`Claims without being abandoned, suppressed, or concealed. Defendants reserve the
`right to rely on other sources of evidence identified as discovery and Defendants’
`investigation progresses. The substantive disclosures of InfoWiz, as compared to the
`limitations of the ’431 Asserted Claims, is provided in Exhibit B3. Defendants reserve
`the right to supplement, amend, add to, or otherwise revise this disclosure to rely on
`other sources of evidence identified as discovery and Defendants’ investigation
`progresses. Defendants reserve the right to rely on the InfoWiz system as a standalone
`system and as an application of the OAA system.
`
`4. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to the Sun Microsystems SpeechActs
`System (“SpeechActs”). SpeechActs qualifies as prior art under § 102 because it was
`either (1) in public use or on sale in the United States no later than the priority date of
`the Asserted Claims or (2) reduced to practice in the United States no later than the
`priority date of the Asserted Claims without being abandoned, suppressed, or
`concealed. Defendants reserve the right to rely on other sources of evidence identified
`as discovery and Defendants’ investigation progresses. The substantive disclosures of
`SpeechActs, as compared to the limitations of the ’431 Asserted Claims, is provided in
`Exhibit B4. Defendants reserve the right to supplement, amend, add to, or otherwise
`revise this disclosure to rely on other sources of evidence identified as discovery and
`Defendants’ investigation progresses.
`
`5. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to 888TelSurf by TelSurf Networks,
`
`
`
`8
`
`Parus Exhibit 2011, Page 8 of 62
`
`

`

`Inc. (“888TelSurf”). 888TelSurf qualifies as prior art under § 102 because it was either
`(1) in public use or on sale in the United States no later than the priority date of the
`Asserted Claims or (2) reduced to practice in the United States no later than the priority
`date of the Asserted Claims without being abandoned, suppressed, or concealed.
`Defendants reserve the right to rely on other sources of evidence identified as discovery
`and Defendants’ investigation progresses. The substantive disclosures of 888TelSurf
`system, as compared to the limitations of the ’431 Asserted Claims, is provided in
`Exhibit B5. Defendants reserve the right to supplement, amend, add to, or otherwise
`revise this disclosure to rely on other sources of evidence identified as discovery and
`Defendants’ investigation progresses.
`
`6. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to AskJeeves Telephone
`(”AskJeeves”). AskJeeves qualifies as prior art under § 102 because it was either (1)
`in public use or on sale in the United States no later than the priority date of the Asserted
`Claims or (2) reduced to practice in the United States no later than the priority date of
`the Asserted Claims without being abandoned, suppressed, or concealed. Defendants
`reserve the right to rely on other sources of evidence identified as discovery and
`Defendants’ investigation progresses. The substantive disclosures of AskJeeves , as
`compared to the limitations of the ’431 Asserted Claims, is provided in Exhibit B6.
`Defendants reserve the right to supplement, amend, add to, or otherwise revise this
`disclosure to rely on other sources of evidence identified as discovery and Defendants’
`investigation progresses.
`
`7. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to AudioPoint. AudioPoint qualifies
`as prior art under § 102 because it was either (1) in public use or on sale in the United
`States no later than the priority date of the Asserted Claims or (2) reduced to practice
`in the United States no later than the priority date of the Asserted Claims without being
`abandoned, suppressed, or concealed. Defendants reserve the right to rely on other
`sources of evidence identified as discovery and Defendants’ investigation progresses.
`The substantive disclosures of AudioPoint, as compared to the limitations of the ’431
`Asserted Claims, is provided in Exhibit B7. Defendants reserve the right to
`supplement, amend, add to, or otherwise revise this disclosure to rely on other sources
`of evidence identified as discovery and Defendants’ investigation progresses.
`
`8. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to BeVocal. BeVocal qualifies as
`prior art under § 102 because it was either (1) in public use or on sale in the United
`States no later than the priority date of the Asserted Claims or (2) reduced to practice
`in the United States no later than the priority date of the Asserted Claims without being
`abandoned, suppressed, or concealed. Defendants reserve the right to rely on other
`sources of evidence identified as discovery and Defendants’ investigation progresses.
`The substantive disclosures of BeVocal, as compared to the limitations of the ’431
`Asserted Claims, is provided in Exhibit B8. Defendants reserve the right to
`supplement, amend, add to, or otherwise revise this disclosure to rely on other sources
`of evidence identified as discovery and Defendants’ investigation progresses.
`
`
`
`9
`
`Parus Exhibit 2011, Page 9 of 62
`
`

`

`9. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to General Magic Serengeti or Portico
`(“General Magic”). General Magic qualifies as prior art under § 102 because it was
`either (1) in public use or on sale in the United States no later than the priority date of
`the Asserted Claims or (2) reduced to practice in the United States no later than the
`priority date of the Asserted Claims without being abandoned, suppressed, or
`concealed. Defendants reserve the right to rely on other sources of evidence identified
`as discovery and Defendants’ investigation progresses. The substantive disclosures of
`General Magic, as compared to the limitations of the ’431 Asserted Claims, is provided
`in Exhibit B9. Defendants reserve the right to supplement, amend, add to, or otherwise
`revise this disclosure to rely on other sources of evidence identified as discovery and
`Defendants’ investigation progresses.
`
`10. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to HeyAnita. HeyAnita qualifies as
`prior art under § 102 because it was either (1) in public use or on sale in the United
`States no later than the priority date of the Asserted Claims or (2) reduced to practice
`in the United States no later than the priority date of the Asserted Claims without being
`abandoned, suppressed, or concealed. Defendants reserve the right to rely on other
`sources of evidence identified as discovery and Defendants’ investigation progresses.
`The substantive disclosures of HeyAnita, as compared to the limitations of the ’431
`Asserted Claims, is provided in Exhibit B10. Defendants reserve the right to
`supplement, amend, add to, or otherwise revise this disclosure to rely on other sources
`of evidence identified as discovery and Defendants’ investigation progresses.
`
`11. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to Info-by-Voice (VAL by BellSouth)
`(“Info-by-Voice”). Info-by-Voice qualifies as prior art under § 102 because it was
`either (1) in public use or on sale in the United States no later than the priority date of
`the Asserted Claims or (2) reduced to practice in the United States no later than the
`priority date of the Asserted Claims without being abandoned, suppressed, or
`concealed. Defendants reserve the right to rely on other sources of evidence identified
`as discovery and Defendants’ investigation progresses. The substantive disclosures of
`Info-by-Voice, as compared to the limitations of the ’431 Asserted Claims, is provided
`in Exhibit B11. Defendants reserve the right to supplement, amend, add to, or
`otherwise revise this disclosure to rely on other sources of evidence identified as
`discovery and Defendants’ investigation progresses.
`
`12. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to Quack.com. Quack.com qualifies
`as prior art under § 102 because it was either (1) in public use or on sale in the United
`States no later than the priority date of the Asserted Claims or (2) reduced to practice
`in the United States no later than the priority date of the Asserted Claims without being
`abandoned, suppressed, or concealed. Defendants reserve the right to rely on other
`sources of evidence identified as discovery and Defendants’ investigation progresses.
`The substantive disclosures of Quack.com, as compared to the limitations of the ’431
`Asserted Claims, is provided in Exhibit B12. Defendants reserve the right to
`
`
`
`10
`
`Parus Exhibit 2011, Page 10 of 62
`
`

`

`supplement, amend, add to, or otherwise revise this disclosure to rely on other sources
`of evidence identified as discovery and Defendants’ investigation progresses.
`
`13. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to TellMe Networks (“TellMe”).
`TellMe qualifies as prior art under § 102 because it was either (1) in public use or on
`sale in the United States no later than the priority date of the Asserted Claims or (2)
`reduced to practice in the United States no later than the priority date of the Asserted
`Claims without being abandoned, suppressed, or concealed. Defendants reserve the
`right to rely on other sources of evidence identified as discovery and Defendants’
`investigation progresses. The substantive disclosures of TellMe, as compared to the
`limitations of the ’431 Asserted Claims, is provided in Exhibit B13. Defendants reserve
`the right to supplement, amend, add to, or otherwise revise this disclosure to rely on
`other sources of evidence identified as discovery and Defendants’ investigation
`progresses.
`
`14. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to Webley Systems (“Webley”).
`Webley qualifies as prior art under § 102 because it was either (1) in public use or on
`sale in the United States no later than the priority date of the Asserted Claims or (2)
`reduced to practice in the United States no later than the priority date of the Asserted
`Claims without being abandoned, suppressed, or concealed. Defendants reserve the
`right to rely on other sources of evidence identified as discovery and Defendants’
`investigation progresses. The substantive disclosures of Webley as compared to the
`limitations of the ’431 Asserted Claims, is provided in Exhibit B14. Defendants reserve
`the right to supplement, amend, add to, or otherwise revise this disclosure to rely on
`other sources of evidence identified as discovery and Defendants’ investigation
`progresses.
`
`15. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to Wildfire by Wildfire
`Communications, Inc. (“Wildfire”). Wildfire qualifies as prior art under § 102 because
`it was either (1) in public use or on sale in the United States no later than the priority
`date of the Asserted Claims or (2) reduced to practice in the United States no later than
`the priority date of the Asserted Claims without being abandoned, suppressed, or
`concealed. Defendants reserve the right to rely on other sources of evidence identified
`as discovery and Defendants’ investigation progresses. The substantive disclosures of
`Wildfire, as compared to the limitations of the ’431 Asserted Claims, is provided in
`Exhibit B15. Defendants reserve the right to supplement, amend, add to, or otherwise
`revise this disclosure to rely on other sources of evidence identified as discovery and
`Defendants’ investigation progresses.
`
`16. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to Jupiter. Jupiter qualifies as prior
`art under § 102 because it was either (1) in public use or on sale in the United States no
`later than the priority date of the Asserted Claims or (2) reduced to practice in the
`United States no later than the priority date of the Asserted Claims without being
`
`
`
`11
`
`Parus Exhibit 2011, Page 11 of 62
`
`

`

`abandoned, suppressed, or concealed. Defendants reserve the right to rely on other
`sources of evidence identified as discovery and Defendants’ investigation progresses.
`The substantive disclosures of Jupiter, as compared to the limitations of the ’431
`Asserted Claims, is provided in Exhibit B16. Defendants reserve the right to
`supplement, amend, add to, or otherwise revise this disclosure to rely on other sources
`of evidence identified as discovery and Defendants’ investigation progresses.
`Defendants reserve the right to rely on the Jupiter system as a standalone system and
`as an application of the Galaxy system.
`
`17. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to WebGALAXY. WebGALAXY
`qualifies as prior art under § 102 because it was either (1) in public use or on sale in
`the United States no later than the priority date of the Asserted Claims or (2) reduced
`to practice in the United States no later than the priority date of the Asserted Claims
`without being abandoned, suppressed, or concealed. Defendants reserve the right to
`rely on other sources of evidence identified as discovery and Defendants’ investigation
`progresses. The substantive disclosures of WebGALAXY, as compared to the
`limitations of the ’431 Asserted Claims, is provided in Exhibit B17. Defendants reserve
`the right to supplement, amend, add to, or otherwise revise this disclosure to rely on
`other sources of evidence identified as discovery and Defendants’ investigation
`progresses. Defendants reserve the right to rely on the WebGALAXY system as a
`standalone system and as an application of the Galaxy system.
`
`18. Products, components, systems, and methods invented, designed, developed, reduced
`to practice, and/or in public use or on sale related to DINEX. DINEX qualifies as prior
`art under § 102 because it was either (1) in public use or on sale in the United States no
`later than the priority date of the Asserted Claims or (2) reduced to practice in the
`United States no later than the priority date of the Asserted Claims without being
`abandoned, suppressed, or concealed. Defendants reserve the right to rely on other
`sources of evidence identified as discovery and Defendants’ investigation progresses.
`The substantive disclosures of DINEX, as compared to the limitations of the ’431
`Asserted Claims, is provided in Exhibit B18. Defendants reserve the right to
`supplement, amend, add to, or otherwise revise this disclosure to rely on other sources
`of evidence identified as discovery and Defendants’ investigation progresses.
`Defendants reserve the right to rely on the DINEX system as a standalone system and
`as an application of the Galaxy system.
`
`Defendants’ investigation into prior art systems remains ongoing and Defendants reserve
`
`the right to identify and rely on systems that represent different versions or are otherwise related
`
`variations of the systems identified above.
`
`Obviousness Prior Art
`
`3.
`Defendants identify the following additional prior art now known to Defendants that, in
`
`
`
`12
`
`Parus Exhibit 2011, Page 12 of 62
`
`

`

`combination with the foregoing patents, publications, and systems, render obvious the ’431
`
`Patent Asserted claims under 35 U.S.C. § 103, either expressly or inherently as understood by a
`
`POSITA, for at least the reasons stated in Section VI. Invalidity claim charts for these prior art
`
`obviousness references are provided in Exhibit C.
`
`1. U.S. Patent No. 6,427,165 to Anderson (“Anderson”)
`
`2. U.S. Patent No. 6,112,203 to Bharat (“Bharat”)
`
`3. U.S. Patent No. 6,397,212 to Biffar (“Biffar”)
`
`4. U.S. Patent No. 6,418,433 to Chakrabarti (“Chakrabarti”)
`
`5. J. Cho and H. Garcia-Molina, The Evolution of the Web and Implications for an
`Incremental Crawler (“Cho”)
`
`6. M. Chun and J. Wolfe, Just Say No: How Are Visual Searches Terminated When There
`Is No Target Present? (“Chun”)
`
`7. U.S. Patent App. Pub. No. 2005/0108219 to De La Huerga (“De La Huerga”)
`
`8. U.S. Patent No. 5,787,470 to DeSimone (“DeSimone”)
`
`9. U.S. 6,317,778 to Dias (“Dias”)
`
`10. JP H11265400A to Fujinami (“Fujinami”)
`
`11. U.S. Patent No. 6,393,423 to Goedken (“Goedken”)
`
`12. U.S. Patent No. 5,774,859 to Houser (“Houser”)
`
`13. JP H9-311869 to Kurosawa (“Kurosawa”)
`
`14. U.S. Patent No. 5,941,944 to Messerly (“Messerly”)
`
`15. U.S. Patent No. 5,913,214 to Madnick (“Madnick”)
`
`16. U.S. Patent No. 6,427,187 to Malcolm (“Malcolm”)
`
`17. U.S. Patent No. 6,262,987 to Mogul (“Mogul”)
`
`18. U.S. Patent No. 6,324,534 to Neal (“Neal”)
`
`19. U.S. Patent No. 6,421,675 to Ryan (“Ryan”)
`
`20. Network Working Group, Request for Comments 2182: Selection and Operation of
`
`
`
`13
`
`Parus Exhibit 2011, Page 13 of 62
`
`

`

`Secondary DNS Servers (“RFC 2182”)
`
`21. U.S. Patent No. 6,650,998 to Rutledge (“Rutledge”)
`
`22. University of Sheffield TREC-8 Q&A publication (“Sheffield”)
`
`23. U.S. Patent No. 7,181,438 to Szabo (“Szabo”)
`
`24. U.S. Patent No. 6,976,053 to Tripp (“Tripp”)
`
`25. G. Michael Youngblood, Web Hunting: Design of a Simple Intelligent Web Search
`Agent (“Youngblood”)
`
`26. U.S. Patent No. 5,915,001 to Uppaluru
`
`27. U.S. Patent No. 6,101,473 to Scott
`
`28. U.S. Patent No. 6,353, 661 to Bailey
`
`29. U.S. Patent No. 6,446, 076 to Burkey
`
`30. U.S. Patent No. 6,606, 611 to Khan
`
`31. U.S. Patent No. 6,286,029 to Delph
`
`3