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`
`Peter Kang (SBN 158101)
`peter.kang@bakerbotts.com
`Jeremy J. Taylor (SBN 249075)
`jeremy.taylor@bakerbotts.com
`Katherine Burgess (SBN 330480)
`katherine.burgess@bakerbotts.com
`BAKER BOTTS L.L.P.
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Tel: (415) 291-6200
`Fax: (415) 291-6300
`
`Bailey Morgan Watkins (pro hac vice)
`bailey.watkins@bakerbotts.com
`BAKER BOTTS L.L.P
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Tel: (512) 322-2500
`Fax: (512) 322-2501
`
`Attorneys for Defendants
`Booking.com B.V.,
`Priceline.com LLC,
`Agoda Company PTE. LTD.,
`and OpenTable, Inc.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`EXPRESS MOBILE, INC.,
`
` Civil Action No. 3:20-cv-08491-RS
`
`Plaintiff,
`
`v.
`BOOKING.COM B.V., PRICELINE.COM LLC,
`AGODA COMPANY PTE. LTD., and
`OPENTABLE, INC
`
`DEFENDANTS’ BOOKING.COM B.V.,
`PRICELINE.COM LLC, AGODA
`COMPANY PTE. LTD., and
`OPENTABLE, INC’S INVALIDITY
`CONTENTIONS
`
`JURY TRIAL DEMANDED
`
`Defendants.
`
`
`
`
`
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`
`
`
`
`CASE NO. 3:20-CV-08491-RS
`
`Booking, Exh. 1023, Page 1
`
`

`

`
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`
`Pursuant to Patent Local Rule 3-3, Defendants Booking.com B.V., Priceline.com LLC,
`Agoda Company PTE. LTD, and OpenTable, Inc. (collectively “Defendants”) hereby provide
`Plaintiff Express Mobile, Inc. (“Express Mobile” or “Plaintiff”) with Defendants’ invalidity
`contentions (“Invalidity Contentions”). Defendants make these Invalidity Contentions based on
`their best efforts to understand Express Mobile’s current Infringement Contentions and the
`contended scope of the asserted claims.
`The following contentions are based on Defendants’ current understanding of the asserted
`claims and Express Mobile’s deficient infringement contentions, which appear to be based on
`overly broad interpretations of the asserted patents. Accordingly, these Invalidity Contentions
`may reflect various potential and alternative positions regarding claim construction and scope.
`To the extent these contentions reflect or suggest a particular interpretation or reading of any
`claim element not construed by the Court, Defendants do not adopt, advocate, or acquiesce in
`such interpretation or reading. Nor do these contentions constitute any admission by Defendants
`that any accused products, including any current or past versions of those products, are covered
`by any asserted claim. Moreover, to the extent that prior art cited for a particular limitation
`discloses functionality that is the same or similar in some respects to the alleged functionality in
`the accused products as set forth in Plaintiff’s Infringement Contentions, Defendants do not
`concede that those limitations are in fact met by those accused functionalities.
`Defendants further reserve the right to seek to supplement and amend these disclosures
`and associated document production based on further investigation, analysis, and discovery, and
`Defendants’ consultation with experts and others. Because Defendants are continuing their
`search for and analysis of relevant prior art, Defendants reserve the right to seek to revise,
`amend, and/or supplement the information provided herein, including identifying, charting,
`and/or relying upon additional prior art references, relevant disclosures, and bases for invalidity
`contentions. Additional prior art, disclosures, and other information, whether or not cited in this
`disclosure and whether known or not known to Defendants may become relevant as
`investigation, analysis, and discovery continue.
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`1
`
`Case No. 3:20-cv-08491-RS
`
`
`
`Booking, Exh. 1023, Page 2
`
`

`

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`
`Defendants are currently unaware of the extent, if any, to which Plaintiff will contend
`that limitations of the asserted claims are not disclosed in the prior art identified by Defendant.
`To the extent that such an issue arises, Defendants reserve the right to identify and rely upon
`other references or portions of references regarding the allegedly missing limitation(s).
`Additionally, because discovery is ongoing, Defendants reserve the right to present
`additional prior art references and/or disclosures under 35 U.S.C. §§ 102(a), (b), (e), (f), and/or
`(g), and/or § 103, located during the course of such discovery or further investigation, and to
`assert invalidity under 35 U.S.C. §§ 102(c), (d), or (f), to the extent that such discovery or
`investigation yields information forming the basis for such invalidity. Defendants have served
`Plaintiff with discovery requests, including requests for Plaintiff’s analyses concerning the
`infringement of the Asserted Patents, analyses or positions concerning the validity of the
`Asserted Patents, communications regarding the Asserted Patents, and documents relating to the
`alleged invention of the Asserted Patents, including evidence of conception and reduction to
`practice. Plaintiff has not produced documents in response to these requests, and Plaintiff’s
`failure to produce documents in response has prejudiced Defendants’ ability to fully prepare their
`invalidity contentions. Consequently, Defendants’ invalidity contentions are made without the
`benefit of relevant documents that have yet to be produced by Plaintiff. Defendants reserve the
`right to amend their invalidity contentions. Additionally, Defendants reserve the right to rely on,
`and specifically incorporate, any invalidity contentions or other invalidity positions offered in
`any other litigation or other proceeding related to the asserted patents and their family members.
`In Express Mobile’s Infringement Contentions served May 27, 2021 (“Infringement
`Contentions”), Express Mobile alleges that the following claims are infringed:
`
`
`
`
`
`
`
`
`Claim 1 of U.S. Patent No. 6,546,397 (“the ’397 patent”);
`Claims 1, 4, and 6 of U.S. Patent No. 7,594,168 (“the ’168 patent”, collectively
`with the ’397 patent, the “First Set of Patents”);
`
`Claims 1, 3, 5-7, 11, 12, 14, 16-18, 21, and 22 of U.S. Patent No. 9,063,755 (“the
`’755 patent”);
`
`Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of U.S. Patent No. 9,471,287
`(“the ’287 patent”); and
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`2
`
`Case No. 3:20-cv-08491-RS
`
`
`
`Booking, Exh. 1023, Page 3
`
`

`

`
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`28
`
`
`
`I.
`
`Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of U.S. Patent No. 9,928,044 (“the
`’044 patent”, collectively with the ’755 and ’287 patents, the “Second Set of
`Patents”).
`IDENTIFICATION OF PRIOR ART
`The claim charts attached as exhibits to these Invalidity Contentions identify each item of
`prior art that anticipates each asserted claim or renders it obvious. In addition, Defendants below
`identify additional items of prior art that Defendants may rely upon for additional anticipation
`and/or obviousness arguments. Defendants’ investigation of the prior art is ongoing. Defendants
`expressly reserve the right to rely upon other prior art, including products that embody the
`patents, accused products, or asserted prior art references, in supplemental invalidity arguments.
`Certain prior art publications identified below describe or are otherwise associated with
`corresponding prior art systems. Defendants may rely on these publications to provide evidence
`or corroboration of prior invention under the provisions of 35 U.S.C. § 102. In addition,
`Defendants may also rely on each prior art publication as an independent basis for invalidity
`separate and distinct from its corresponding prior art system and/or other related publications.
`These Invalidity Contentions, in part, are based upon Plaintiff’s apparent interpretations
`of the asserted claims of the asserted patents, to the extent those interpretations can be discerned
`from Plaintiff’s Infringement Contentions and apparent claim constructions in this case.
`Defendants disagree with Plaintiff’s Infringement Contentions, and these Invalidity Contentions
`are not, and should not be construed as, an endorsement or acceptance of any of Plaintiff’s
`contentions or interpretations of the asserted patents. Defendants reserve the right to supplement
`these disclosures based on, among other things, third party discovery. Defendants also
`incorporate by reference any other grounds of invalidity asserted by any other party sued by
`Express Mobile to the extent relevant and not already addressed in these Invalidity Contentions.
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`3
`
`Case No. 3:20-cv-08491-RS
`
`
`
`Booking, Exh. 1023, Page 4
`
`

`

`
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` 2
` 3
` 4
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`10
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`12
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`15
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`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`A.
`
`Prior Art Patents to the ’397 and ’168 Patents
`
`Patent Number
`
`Country of
`Origin
`
`Date of
`Issue
`
`6,230,174 (“Berger”)
`
`6,141,018 (“Beri”)
`
`6,1010,509 (“Hanson”)
`
`6,313,835 (“Gever”)
`
`6,343,302 (“Graham”)
`
`6,175,842 (“Kirk”)
`
`6,396,500 (“Qureshi”)
`
`6,185,587 (“Bernardo”)
`
`5,842,020 (“Faustini”)
`
`6,219,680 (“Bernardo ’680”)
`
`6,289,362 (“Van Der Meer I”)
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`6,415,316 (“Van Der Meer II”)3
`
`U.S.
`
`6,209,029 (“Epstein”)
`
`U.S.
`
`May 8,
`2001
`October 31,
`2000
`August 8,
`2000
`November
`6, 2001
`January 29,
`2002
`January 16,
`2001
`May 28,
`2002
`February 6,
`2001
`November
`24, 1998
`April 17,
`2001
`September
`11, 2001
`July 2,
`2002
`March 27,
`2001
`
`Anticipation
`and/or
`Obviousness1
`O
`
`O
`
`O
`
`A, O
`
`A, O
`
`A, O
`
`O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`Exhibits2
`
`A-4
`B-4
`A-5
`B-5
`A-27
`B-26
`A-23
`B-22
`A-25
`B-24
`A-31
`B-29
`A-45
`B-44
`A-7
`B-7
`A-19
`B-19
`A-8
`B-8
`A-54
`B-52
`A-54
`B-52
`A-18
`B-18
`
`
`1 Specific claims that are anticipated and/or rendered obvious, or elements taught by these
`references are identified in the claim charts attached hereto. Defendant’s identification of
`whether a particular reference anticipates or renders obvious the Patents-in-Suit is based upon
`Plaintiff’s apparent positions as to claim scope.
`2 Exhibit A-* indicates Defendants assert the reference against the ’397 Patent. Exhibit B-*
`indicates Defendants assert the reference against the ’168 Patent.
`3 Defendants incorporate by reference arguments made by Unified Patents, Inc. in the ex parte
`reexamination proceedings concerning U.S. Patent No. 6,546,397. Defendants also incorporate
`by reference arguments made by Facebook, Inc. in IPR2021-01224 concerning the ’397 Patent
`and IPR2021-01226 concerning the ’168 Patent. Defendants also incorporate by reference
`arguments made by Google LLC in IPR2021-00700 concerning the ’397 Patent.
`DEFENDANTS’ INVALIDITY CONTENTIONS
`Case No. 3:20-cv-08491-RS
`4
`
`
`
`Booking, Exh. 1023, Page 5
`
`

`

`
` 1
` 2
` 3
` 4
` 5
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` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Patent Number
`
`Country of
`Origin
`
`Date of
`Issue
`
`6,492,995 (“Atkin”)
`
`6,684,369 (“Bernardo ’369”)
`
`6,178,432 (“Cook”)
`
`6,026,433 (“D’Arlach”)
`
`6,230,185 (“Salas”)
`
`6,343,318 (“Hawkins”)
`
`5,796,401 (“Winer”)
`
`5,845,299 (“Arora”)
`
`5,796,395 (“de Hond”)
`
`6,484,149 (“Jammes”)
`
`6,348,927 (“Lipkin”)
`
`5,940,834 (“Pinard”)
`
`5,913,212 (“Sutcliffe ’212”)
`
`6,253,216 (“Sutcliffe ’216”)
`
`6,018,343 (“Wang”)
`
`5,475,843 (“Halviatti”)
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`December
`10, 2002
`January 27,
`2004
`January 23,
`2001
`February
`15, 2000
`May 8,
`2001
`January 29,
`2002
`August 18,
`1998
`December
`1, 1998
`August 18,
`1998
`November
`19, 2002
`February
`19, 2002
`August 17,
`1999
`June 15,
`1999
`June 26,
`2001
`January 25,
`2000
`December
`12, 1995
`
`Anticipation
`and/or
`Obviousness1
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`O
`
`Exhibits2
`
`A-2
`B-2
`A-6
`B-6
`A-13
`B-13
`A-14
`B-14
`A-46
`B-45
`A-28
`
`A-58
`B-56
`A-1
`B-1
`A-15
`B-15
`A-29
`B-27
`A-37
`B-35
`A-42
`B-41
`A-51
`B-50
`A-52
`B-51
`A-56
`B-55
`B-25
`
`B.
`
`Prior Art Published Patent Applications to the ’397 and ’168 Patents
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`5
`
`Case No. 3:20-cv-08491-RS
`
`
`
`Booking, Exh. 1023, Page 6
`
`

`

`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Number
`
`Country of
`Origin
`
`Date of
`Publication
`
`98/20434 (“Lenz”)
`
`2002/0091725 (“Skok”)
`
`WO /
`PCT/US
`U.S.
`
`2003/0074634 (“Emmelmann”) U.S.
`
`1997/027553 (“Krishna”)
`
`2001/0056377 A1 (“Kondoh”)
`
`WO /
`PCT/US
`U.S.
`
`May 14,
`1998
`July 11,
`2002
`April 17,
`2003
`July 31,
`1997
`December
`27, 2001
`
`C.
`
`Prior Art Publications to the ’397 and ’168 Patents
`
`Title
`
`A Visual Programming
`Tool for User Interface and
`Web Page Generation
`(“Yan”)
`Web Content Delivery to
`Heterogeneous Mobile
`Platforms (“Gaedke”)
`
`Towards the Virtual
`Internet Gallery (“Müller”)
`
`Date of
`Publication
`
`Sept. 22-25,
`1998
`
`Nov. 19-20,
`1998
`
`Author and
`Publisher (where
`known)
`Z. Yan and K.
`Zhang, Technology
`of Object Oriented
`Languages
`M. Gaedke et al.,
`Proceedings of the
`Workshops on Data
`Warehousing and
`Data Mining:
`Advances in
`Database
`Technologies
`June 7-9, 1999 A. Müller, et al.,
`IEEE International
`Conference on
`
`Anticipation
`and/or
`Obviousness4
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`A, O
`
`Exhibits5
`
`A-34
`B-32
`A-50
`B-49
`A-17
`B-17
`A-33
`B-31
`A-32
`B-30
`
`Anticipation
`and/or
`Obviousness6
`A, O
`
`O
`
`Exhibit7
`
`A-59
`B-57
`
`A-22
`
`A, O
`
`A-39
`B-38
`
`
`4 Specific claims that are anticipated and/or rendered obvious, or elements taught by these
`references are identified in the claim charts attached hereto. Defendants’ identification of
`whether a particular reference anticipates or renders obvious the Patents-in-Suit is based upon
`Plaintiff’s apparent positions as to claim scope.
`5 Exhibit A-* indicates Defendants assert the reference against the ’397 Patent. Exhibit B-*
`indicates Defendants assert the reference against the ’168 Patent.
`6 Specific claims that are anticipated and/or rendered obvious, or elements taught by these
`references are identified in the claim charts attached hereto. Defendant’s identification of
`whether a particular reference anticipates or renders obvious the Patents-in-Suit is based upon
`Plaintiff’s apparent positions as to claim scope.
`7 Exhibit A-* indicates Defendant asserts the reference against the ’397 Patent. Exhibit B-*
`indicates Defendants assert the reference against the ’168 Patent.
`DEFENDANTS’ INVALIDITY CONTENTIONS
`6
`
`Case No. 3:20-cv-08491-RS
`
`
`
`Booking, Exh. 1023, Page 7
`
`

`

`Title
`
`An Introduction to Amaya
`(“Quint”)
`
`Amaya: an Authoring Tool
`for the Web (“Quint1”)
`
`Creating GeoCities
`Websites, (“Sawyer”)
`
`Cospace: Combining Web
`Browsing and Dynamically
`Generated, 3D, Multiuser
`Environments (“Selfridge”)
`Building Interactive
`Animations using VRML
`and Java (“Tamiosso”)
`
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`WebWriter: A Browser-
`Based Editor for
`Constructing Web
`Applications (“WebWriter
`I”)
`Responsive Interaction for
`a Large Web Application
`(“WebWriter II”)
`
`May 6-10,
`1996
`
`Sept. 1997
`
`Java Studio, by Sun
`Microsystems (“Java
`Studio Program”)
`
`1998
`
`April 1998
`
`Li, “Synchronization in
`WebSmart Multimedia
`Authoring” (“Li”)
`November
`Maurer et al., “Course
`Development Environment
`1998
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`
`
`Date of
`Publication
`
`1998
`
`Author and
`Publisher (where
`known)
`Multimedia
`Computing and
`Systems
`Feb. 20, 1997 V. Quint & I.
`Vatton, W3
`Consortium
`R. Guetari, et al.,
`Proceedings of the
`5th Maghrebian
`Conference on
`Software
`Engineering and
`Artificial
`Intelligence
`B. Sawyer & D.
`Greely, Muska &
`Lipman Publishing
`P. Selfridge & T.
`Kirk, Intelligence
`
`1999
`
`Spring 1999
`
`Oct. 14-17,
`1997
`
`Anticipation
`and/or
`Obviousness6
`
`Exhibit7
`
`O
`
`O
`
`A, O
`
`A, O
`
`O
`
`O
`
`O
`
`A, O
`
`A, O
`
`A-43
`B-42
`
`A-44
`B-43
`
`A-47
`B-46
`
`A-48
`B-47
`
`A-53
`
`A-57
`B-55
`
`A-57
`B-55
`
`A-30
`B-
`
`A-35
`B-28
`
`A, O
`
`A-38
`B-36
`Case No. 3:20-cv-08491-RS
`
`F. Tamiosso, et al.,
`Brazilian
`Symposium on
`Computer Graphics
`and Image
`Processing
`A. Crespo and E.
`Bier, Fifth Annual
`World Wide Web
`Conference
`
`A. Crespo et al., 29
`Computer
`Networks and
`ISDN Systems 8-
`13, 1507-17
`Weaver, L. and
`Robertson, L., Sun
`Microsystems
`Press
`Lan Li, University
`of British
`Columbia Library
`Hermann Maurer,
`WebNet 98 World
`7
`
`Booking, Exh. 1023, Page 8
`
`

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` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Anticipation
`and/or
`Obviousness6
`
`Exhibit7
`
`Author and
`Publisher (where
`known)
`Conference of the
`WWW, Internet
`and Intranet
`Proceedings (3rd,
`Orlando, FL,
`November 7-12,
`1998)
`NetObjects, Inc.
`
`A, O
`
`O
`
`Soung C. Liew,
`Thomas Lau, Eddie
`Lau, and Walter
`Fung
`
`Date of
`Publication
`
`1997
`
`June 11, 1999
`
`Title
`
`for Hyperwave”
`(“Maurer”)
`
`NetObjects Fusion Version
`2.0 User Guide
`(“NetObjects User Guide”)
`S. Liew, et al.,
`INTELLECT: A System for
`Authoring, Distributing,
`and Presenting Multimedia
`Contents over the Internet,
`IEEE Int’l Conference on
`Multimedia Computing and
`Systems (June 7-11, 1999)
`(“Liew”)
`RandomNoise Coda
`(“Coda”)
`OLAP, Relational and
`Multidimensional Database
`Systems, George Colliat
`(“Colliat”)
`
`A-40
`B-39
`
`A-36
`B-34
`
`A-10
`B-10
`A-12
`B-12
`
`1997
`
`
`
`A, O
`
`September
`1996
`
`George Colliat
`
`
`
`D.
`Prior Art Systems to the ’397 and ’168 Patents
`Defendants also identify systems (with related publications) as prior art under 35 U.S.C.
`§§ 102(a), (b), and/or (g)(2). Although Defendants’ investigation continues, information
`available to date, and provided below, shows that each system/product/process was (1) known or
`used by others in this country or described in a printed publication before the alleged invention
`of the claimed subject matter of the asserted claims of the ’397 and ’168 Patents; (2) in public
`use, on sale, and/or described in a printed publication in this country more than one year prior to
`the date of the application for the patents-in-suit; and/or (3) made in this country by another
`inventor who had not abandoned, suppressed, or concealed it. At this time, Defendants identify
`public information available to Defendants regarding these systems. Defendants intend to seek
`further information through third-party discovery and will supplement these Invalidity
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
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`Contentions as appropriate. Defendants may also seek third-party discovery of source code and
`other non-public documentation for one or more of the systems disclosed herein and will
`likewise supplement these Invalidity Contentions as appropriate. Defendants identify systems
`(with related publications) as prior art under 35 U.S.C. §§ 102(a), (b), and/or (g)(2):
`1.
`FrontPage 2000, Microsoft Corporation (“FrontPage”)
`On information and belief, Microsoft Corporation’s FrontPage was known or used by others,
`publicly used, offered for sale, or sold by Microsoft Corporation at least as early as September
`30, 1998. FrontPage is described/depicted in at least the following:
`
`
`
`Neil Randall and Dennis Jones, Special Edition Using FrontPage 2000, Que
`Publishing (May 1999) (“Randall”); and
`
`
`
`Microsoft Corp., Microsoft Unveils New FrontPage 2000: Broad New Feature Set
`Delivers A Breakthrough in Ease of Use, Press Release (Sept. 30, 1998)
`(available at
`https://web.archive.org/web/20191029221945/https://news.microsoft.com/1998/0
`9/30/microsoft-unveils-new-frontpage-2000-broad-new-feature-set-delivers-a-
`breakthrough-in-ease-of-use/).
`Charts relating to the teachings of FrontPage are attached as Exhibits A-21 and B-21.
`2.
`NetObjects Fusion 4.0 (“NetObjects”)
`On information and belief, NetObjects, Inc.’s NetObjects Fusion 4.0 was known or used
`by others, publicly used, offered for sale, or sold by NetObjects, Inc. at least as early as 1998.
`NetObjects is described/depicted in at least the following:
`
`
`NetObjects Fusion 4.0 User Guide (“User Guide”);
`
`NetObjects Dynamic Actions Reference (“Dynamic Actions Reference”);
`
`Creating Dynamic Pages (“Dynamic Pages”); and
`
`NetObjects Fusion 4.0 (“NetObjects”).
`Charts relating to the teachings of NetObjects are attached as Exhibits A-40 and B-39.
`3.
`Silverstream System, by Silverstream Software, Inc. (“Silverstream”)
`On information and belief, Silverstream Software, Inc.’s Silverstream 1.5 was known or
`used by others, publicly used, offered for sale, or sold by Silverstream Software, Inc. at least as
`early as 1997. Silverstream is described/depicted in at least the following:
`
`
`U.S. Patent Appl. Publ. No. 2002/0091725 to Skok (“Skok”);
`
`Block, H.M. and Dunn, A.J., Silverstream: The Authorized Guide, McGraw-Hill,
`DEFENDANTS’ INVALIDITY CONTENTIONS
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`Inc. (September 1998) (“Silverstream Guide”);
`
`CD-ROM of Silverstream Application Server Sample Version 1.5 Software, P/N
`643190-7 (“Silverstream CD”) and printouts of documentation from the
`Silverstream CD (“Silverstream CD Excerpts”);
`
`Silverstream version 1.0;
`Silverstream version 1.5;
`The Silverstream Web Application Platform Confidential White Paper (1997)
`(“Silverstream White Paper”);
`
`U.S. Patent No. 6,209,029 to Epstein, filed May 12, 1998 (“Epstein”);
`Silverstream Tutorial, Silverstream Software, Inc. (November, 1997)
`(“Silverstream Tutorial”);
`
`Silverstream Product Demonstration, previously available at
`http://silverstream.com:80/products/demo/screengrabdemo/demo.html
`(“Silverstream Website”);
`
`Silverstream Product Demonstration, previously available at
`http://silverstream.com:80/products/demo/ et seq., and archived at
`https://web.archive.org/web/19980214095429fw_/http://silverstream.com:80/prod
`ucts/demo/ et seq. (“Silverstream Product Demonstration”;
`
`Deposition of David Skok, March 26, 2018 (“Skok Deposition I”), taken in
`BigCommerce;
`
`Deposition of David Skok, September 17, 2019 (“Skok Deposition II”), taken in
`X.Commerce, Inc. v. Express Mobile, Inc.; and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Silverstream Software, Inc., Registration Statement (Form S-1) (June 11, 1999).
`Charts relating to the teachings of Silverstream are attached as Exhibits A-49 and B-48.
`4. WebWriter
`On information and belief, A. Crespo and E. Bier’s WebWriter System was known or
`used by others, publicly used, offered for sale, or sold by A. Crespo and E. Bier at least as early
`as September 1997. The WebWriter System is described/depicted in at least the following:
`
`
`
`Crespo and E. Bier, WebWriter: A Browser-Based Editor for Constructing Web
`Applications, Fifth Annual World Wide Web Conference (May 6-10, 1996)
`(“WebWriter I”); and
`
`Crespo et al., Responsive Interaction for a Large Web Application, 29 Computer
`Networks and ISDN Systems 8-13, 1507-17 (Sept. 1997) (“WebWriter II”).
`Charts relating to the teachings of WebWriter are attached as Exhibit A-57 and B-55.
`5.
`Netscape Communicator System by Netscape Communications
`Corporation
`DEFENDANTS’ INVALIDITY CONTENTIONS
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`On information and belief, Netscape Communications Corporation’s Netscape
`Communicator System was known or used by others, publicly used, offered for sale, or sold by
`Netscape Communications Corporation at least as early as 1997. The Netscape Communicator
`System is described/depicted in at least the following:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Deborah S. Ray & Eric J. Ray, Netscape Composer for Dummies (IDG Books
`Worldwide 1997) (“Ray”);
`
`Laura Lemay, Netscape Navigator Gold 3 Deluxe Edition (Sams.net Publishing
`1997) (“Lemay”);
`
`Netscape Composer and Navigator Gold (“Netscape Composer”);
`Paul E. Hoffman, Netscape Communicator 4.5 for Dummies (IDG Books
`Worldwide 1998) (“Hoffman”);
`
`Netscape Company Press Relations, Netscape Communicator 4.5 Ships Today,
`Making Internet Navigation Easier for Millions of Consumers (Oct. 1998),
`available at
`https://web.archive.org/web/19990202113411/http://www68.netscape.com:80/ne
`wsref/pr/newsrelease688.html;
`
`Netscape Netcenter, Netscape Products, available at
`https://web.archive.org/web/19990418062919/http:/www.home.netscape.com/do
`wnload/index.html; and
`
`Historic code for Netscape Communicator, available at
`https://dxr.mozilla.org/classic/source/ and
`https://ftp.mozilla.org/pub/mozilla/source/.
`
`Charts relating to the teachings of the Netscape Communicator System are attached as
`Exhibits A-41 and B-40.
`6.
`Visual JavaScript by Netscape Communications Corporation
`Visual JavaScript was a software system developed and sold by Netscape
`Communications Corporation. As Visual JavaScript was published, made publicly available, on
`sale, and in public use by no later than March 1997, it is prior art to under at least pre-AIA 35
`U.S.C. § 102(a) and (b). Documents evidencing Visual JavaScript include, but are not limited to,
`the following references:
`
`Doug Lloyd, Official Netscape Visual JavaScript Book (1998) (“Lloyd”);
`Visual JavaScript Developer’s Guide (Nov. 6., 1997) (“Developer’s Guide”),
`available at
`https://web.archive.org/web/19981202121543/http:/developer.netscape.com/docs/
`manuals/visualjs/index.htm; and
`DEFENDANTS’ INVALIDITY CONTENTIONS
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`
`Executable Code for Visual JavaScript.
`Charts relating to the teachings of Visual JavaScript are attached as Exhibits A-55 and B-
`
`53.
`
`7.
`Claris HomePage 3.0
`Claris HomePage (“Claris”) was a software system developed and sold by Claris
`International, Inc. As Claris was published, made publicly available, on sale, and in public use
`by no later than 1997, it is prior art to under at least pre-AIA 35 U.S.C. § 102(a), (b), (e), and (g).
`Documents evidencing Claris include, but are not limited to, the following references:
`
`
`CLARIS HOMEPAGE 3.0 USER’S GUIDE (1997) (“User’s Guide”).
`Charts relating to the teachings of Claris are attached as Exhibits A-9 and B-9.
`8.
`Allaire ColdFusion 3.1
`Allaire ColdFusion 3.1 was a software system developed and sold by Allaire Corporation.
`As Allaire ColdFusion 3.1 was published, made publicly available, on sale, and in public use by
`no later than January, 1998, it is prior art under at least pre-AIA 35 U.S.C. § 102(a) and (b).
`Documents evidencing Allaire ColdFusion 3.1include, but are not limited to, the following
`references:
`
` Cold Fusion User Guide 3.1 (“ColdFusion 3.1 User Guide”)
` Cold Fusion Language Reference 3.1 (“ColdFusion 3.1 Language Reference”)
` Getting Started With ColdFusion (“ColdFusion GS”)
`Charts relating to the teachings of the Allaire ColdFusion 3.1 System are attached as
`Exhibits A-11 and B-11.
`9.
`Macromedia Flash 2
`Macromedia Flash 2 was a software system developed and sold by Macromedia
`Corporation. As Macromedia Flash 2 was published, made publicly available, on sale, and in
`public use by no later than June 1997, it is prior art under at least pre-AIA 35 U.S.C. § 102(a)
`and (b). Documents evidencing Macromedia Flash 2 include, but are not limited to, the
`following references:
`
` Flash! by Darrel Plant (“Flash!”)
` Macromedia Flash 2.0 on the Macintosh Repository, available at
`https://www.macintoshrepository.org/18829-macromedia-flash-2
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
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` Macromedia Flash 2.0 on the Web Design Museum, available at
`https://www.webdesignmuseum.org/old-software/macromedia-flash/macromedia-flash-2-
`0
` Flash 2.0 web site, archive April 12, 1997 available at,
`https://web.archive.org/web/19970412150516/http://www.macromedia.com/software/flas
`h/
`
`Charts relating to the teachings of the Macromedia Flash 2 are attached as Exhibits A-20
`and B-20.
`
`10. GoLive CyberStudio 3.1
`GoLive CyberStudio 3.1 was a software system developed and sold by GoLive Systems,
`Inc.. As GoLive CyberStudio 3.1 was published, made publicly available, on sale, and in public
`use by no later than September, 1998, it is prior art under at least pre-AIA 35 U.S.C. § 102(a)
`and (b). Documents evidencing GoLive CyberStudio 3.1 include, but are not limited to, the
`following references:
`
` GoLive CyberStudio 3.1 -Virtual QuickStart Guide, by Shelly Brisbin (“VQG”).
` GoLive CyberStudio Review, available at https://www.mymac.com/1998/09/golive-
`cyberstudio-3-1-review/
` GoLive CyberStudio - JAHC, available at https://quod.lib.umich.edu/cgi/p/pod/dod-
`idx/golive-cyberstudio-30-professional-
`edition.pdf?c=jahc;idno=3310410.0002.118;format=pdf
`
`Charts relating to the teachings of the GoLive CyberStudio 3.1 are attached as Exhibits
`A-24 and B-23.
`11. Macromedia Dreamweaver 1.2
`Macromedia Dreamweaver 1.2 was a software system developed and sold by
`Macromedia, Inc.. As Macromedia Dreamweaver 1.2 was published, made publicly available,
`on sale, and in public use by no later than March, 1998, it is prior art under at least pre-AIA 35
`U.S.C. § 102(a) and (b). Documents evidencing Macromedia Dreamweaver 1.2 include, but are
`not limited to, the following references:
`
` Using Dreamweaver 1.2 Book by Rick Darnell and Timothy Webster (“Using
`Dreamweaver”)
` Dreamweaver Bible by Joseph W. Lowery (“Dreamweaver Bible”)
` Dreamweaver 1.2 in 1998, available at
`https://www.youtube.com/watch?v=yGwuzlqBl5Q&feature=youtu.be
` Macromedia Introduces Dreamweaver, archived February 3, 1999, available at
`https://web.archive.org/web/19990203223258/http://www.macromedia.com/macromedia/
`proom/pr/1997/dreamweaver.html
`DEFENDANTS’ INVALIDITY CONTENTIONS
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` Macromedia Ships Dreamweaver, archived February 4, 1999,available at
`https://web.archive.org/web/19990204000855/http://www.macromedia.com/macromedia/
`proom/pr/1997/dw_ship.html
` Macromedia Introduces Dreamweaver 1.2. archived February 18, 1999, available at
`https://web.archive.org/web/19990218080548/http://www.macromedia.com/macromedia/
`proom/pr/1998/dreamweaver12.html
`
`
`
`Charts relating to the teachings of the Macromedia Dreamweaver 1.2 are attached as
`Exhibits A-16 and B-16.
`12.
`Prior Art OpenTable.com and Associated System (“OpenTable
`Platform”)
`The OpenTable Platform was a website and software system developed and made
`available by OpenTable, Inc. As the OpenTable Platform was published, made publicly
`available, on sale, and in public use by no later than August 1999, it is prior art under at least
`pre-AIA 35 U.S.C. § 102(a). To the extent that aspects of the OpenTable Platform predate the
`’397 and ’168 Patents, they are prior art according to Plaintiff’s apparent construction and
`apparent interpretations of the asserted claims of the asserted patents, to the extent those
`interpretations can be discerned from Plaintiff’s Infringement Contentions. Defendants disagree
`with Plaintiff’s Infringement Contentions, and these Invalidity Contentions are not, and should
`not be construed as an endorsement or acceptance of any of Plaintiff’s contentions,
`interpretations of the asserted patents, or application of the asserted patents to OpenTable or any
`other accused products. In addition to witness testimony and other evidence to be produced in
`this case, documents that Defendants are currently aw