`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`UNILOC 2017 LLC,
`
`
`
`
`
`Plaintiff,
`
`Civil Action No. 2:18-cv-00553-JRG
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANT GOOGLE LLC’S P.R. 3-3 AND 3-4 INVALIDITY CONTENTIONS
`
`
`
`Pursuant to Patent Local Rules 3-3 and 3-4, and pursuant to the Docket Control Order
`
`entered by the Court (Dkt. 42), Defendant Google LLC (“Google”) respectfully submits these
`
`invalidity contentions and an accompanying production with respect to the claims identified by
`
`Plaintiff Uniloc 2017 LLC (“Uniloc”) in its Disclosures Pursuant to Local P.R. 3-1 and 3-2. The
`
`asserted claims include claims 6-12 (“the Asserted Claims”) of U.S. Pat. No. 6,366,908 (“the ’908
`
`Patent” or “the Asserted Patent”).
`
`PATENT LOCAL RULE 3-3 DISCLOSURES
`
`
`
`This disclosure is directed to preliminary invalidity and unenforceability issues only and
`
`does not address claim construction or non-infringement. Google reserves all rights with respect
`
`to such issues, including but not limited to its position that the Asserted Claims of the ’908 Patent
`
`are to be construed in a particular manner and are not infringed.
`
`
`
`These invalidity contentions are preliminary and are based on Google’s current knowledge,
`
`understanding, and belief as to the facts and information available as of the date of these
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`Page 1 of 32
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`GOOGLE EXHIBIT 1042
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`

`

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`contentions. Google have not yet completed its investigation, discovery, or analysis of information
`
`related to this action, and additional discovery may require Google to supplement or amend its
`
`invalidity contentions. Google reserves the right to amend or supplement their contentions once
`
`it gains access to relevant materials Uniloc has not yet produced. While Google has made a good-
`
`faith effort to provide a comprehensive list of prior art relevant to this case, Google reserves the
`
`right to modify or supplement its prior art list and invalidity contentions at a later time with or
`
`based upon pertinent information that may be subsequently discovered from Uniloc or third
`
`parties. Moreover, discovery is ongoing and Google reserves the right to pursue all other defenses
`
`that may be available to them, including but not limited to defenses that the ’908 Patent is
`
`unenforceable based on laches, estoppel, waiver, acquiescence, inequitable conduct, patent misuse,
`
`patent exhaustion, unfair competition, unclean hands, express or implied license, or any other
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`grounds.
`
`Any invalidity analysis depends, ultimately, upon claim construction, which is a question
`
`of law reserved for the Court. The Asserted Claims have not yet been construed by the Court in
`
`this case and, thus, Google has not yet had the opportunity to compare the Asserted Claims of
`
`the ’908 Patent (as construed by the Court) with the prior art. Google reserves the right to amend,
`
`supplement, or materially modify its invalidity contentions after the claims have been construed
`
`by the Court. Google also reserves the right to amend, supplement, or materially modify its
`
`invalidity contentions in response to any claim construction positions that Uniloc may take in this
`
`case. Google also reserves the right to assert that a claim is indefinite, not enabled, or fails to meet
`
`the written description requirement based on any claim construction positions Uniloc may take in
`
`this case or based on any claim construction the Court may adopt in this case.
`
`
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`2
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`Google’s invalidity contentions are directed to the claims asserted by Uniloc that are
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`identified in Uniloc’s Disclosures Pursuant to Local P.R. 3-1 and 3-2. Google reserves the right
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`to modify, amend, supplement or otherwise alter its invalidity contentions in the event that Uniloc
`
`supplements or amends its infringement contentions or takes a claim construction position that is
`
`different than or in addition to those set forth in its infringement contentions, or for any other
`
`reason constituting good cause to modify, amend, supplement or otherwise alter these invalidity
`
`contentions.
`
`Google further contends that Uniloc appears to be pursuing overly broad constructions of
`
`the Asserted Claims of the ’908 Patent in an effort to piece together an infringement claim where
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`none exists and to accuse products that do not practice the claims as properly construed. At the
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`same time, Uniloc’s infringement contentions are in most places too general and vague to discern
`
`exactly how Uniloc contends Google Search (“the Accused Product”) practices each element of
`
`the Asserted Claims. Accordingly, these invalidity contentions are not intended to be, and are not,
`
`an admission that the Asserted Claims are infringed by any of Google’s products or technology,
`
`that any particular feature or aspect of the Accused Product practices any elements of the Asserted
`
`Claims, or that any of Uniloc’s proposed constructions are supportable or proper. To the extent
`
`that any of the prior art references disclose the same functionality or feature of any of the Accused
`
`Product, Google reserves the right to argue that said feature or functionality does not practice any
`
`element of any of the Asserted Claims, and to argue, in the alternative, that if said feature or
`
`functionality is found to practice any element of any of the Asserted Claims of the ’908 Patent,
`
`then the prior art reference demonstrates that that element is not novel, is obvious, or is not
`
`patentable.
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`
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`3
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`Attached hereto as Exhibits A-1 to A-23 are representative claim charts that demonstrate
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`how the Asserted Claims of the ’908 Patent are invalid in view of certain prior art. The references
`
`cited in the attached claim charts may disclose the limitations of the Asserted Claims of the ’908
`
`Patent expressly and/or inherently. Moreover, the suggested obviousness combinations are in the
`
`alternative to Google’s contentions regarding anticipation. These obviousness combinations
`
`should not be construed to suggest that any reference included in any combination is not
`
`anticipatory in its own right.
`
`In this action, Uniloc asserts that Google infringes certain claims of the ’908 Patent.
`
`Although Uniloc asserts that these claims are either literally infringed or infringed under the
`
`doctrine of equivalents, Uniloc has failed to provide any analysis or explanation regarding alleged
`
`infringement of the Asserted Claims of the ’908 Patent under the doctrine of equivalents. Google
`
`reserves the right to modify, amend, supplement or otherwise alter its preliminary invalidity
`
`contentions in the event Uniloc is permitted to modify, amend, supplement, or clarify its
`
`infringement contentions with respect to direct infringement (literal and under the doctrine of
`
`equivalents).
`
`Prior art not included in this disclosure, whether known or not known to Google, may
`
`become relevant. In particular, Google is currently unaware of the extent to which Uniloc will
`
`contend that limitations of the Asserted Claims are not disclosed in the prior art identified herein.
`
`To the extent that such an issue arises, Google reserves the right to identify additional teachings in
`
`the same references or in other references that anticipate or would have made the addition of the
`
`allegedly missing limitation obvious. Moreover, Google may subpoena third parties believed to
`
`have information relevant to this disclosure and expressly reserves the right to amend, supplement,
`
`
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`4
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`or modify this disclosure as additional information is obtained from third parties, or from Uniloc
`
`itself.
`
`Google further reserves the right to rely on uncited portions of the prior art references and
`
`in other publications and testimony as aids in understanding and interpreting the cited portions, as
`
`providing context thereto, and as additional evidence that a claim limitation is known or disclosed.
`
`Google further reserves the right to rely on uncited portions of the prior art references, other
`
`publications, and testimony to establish bases for combinations of certain cited references that
`
`render the asserted claims obvious.
`
`The references discussed in the claim charts identified above or elsewhere may disclose
`
`the elements of the Asserted Claims explicitly and/or inherently, and/or they may be relied upon
`
`to show the state of the art in the relevant time frame. Google further reserves the right to rely on
`
`additional publications, materials, and testimony that are not yet currently identified for purposes
`
`other than as prior art, including but not limited to background, state of the art in the relevant time
`
`frame, level of ordinary skill in the art, and motivation to combine. The suggested obviousness
`
`combinations below are provided in the alternative to Google’s anticipation contentions and are
`
`not to be construed to suggest that any reference included in the combinations is not by itself
`
`anticipatory.
`
`Google is providing invalidity contentions only for the claims asserted by Uniloc, but
`
`hereby reserves the right to seek invalidation of all claims in the ’908 Patent.
`
`Google reserves the right to modify, amend, or supplement these disclosures as additional
`
`information becomes available, and as its discovery and investigation proceed.
`
`I.
`
`THE ’908 PATENT
`
`
`
`5
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`A.
`
`Patent Local Rule 3-3(a): Identification of Prior Art1
`
`At this time, Google contends that the following prior art references described and charted
`
`in Exhibits A-1 to A-23 anticipate or render obvious, either alone or in combination, one or more
`
`of the Asserted Claims of the ’908 Patent. In these invalidity contentions, including the exhibits,
`
`any citation to a printed publication or other reference describing a prior art system should also be
`
`construed to include a reference to the prior art system itself. Each listed document or item became
`
`prior art at least as early as the dates set forth herein.
`
`1.
`
`Patent References
`
`Google identifies below the patent references presently known to Google that anticipate
`
`and/or render obvious the Asserted Claims of the ’908 Patent. Google incorporates by reference
`
`all prior art references cited in the patents listed herein and/or their file histories. Google reserves
`
`the right to rely upon foreign counterparts of the U.S. Patents identified in these invalidity
`
`contentions, U.S. counterparts of foreign patents and foreign patent applications identified in these
`
`invalidity contentions, U.S. and foreign patents and patent applications corresponding to articles
`
`and publications identified in these invalidity contentions, and any systems, products, or prior
`
`inventions related to any of the references identified in these invalidity contentions. The following
`
`patents are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), (f), and/or (g).
`
`Country of Origin
`U.S.
`
`Issue Date
`June 13, 2000
`
`Priority Date
`March 7, 1997
`
`Patent Number
`6,076,051
`(“Messerly”)
`6,167,370
`(“Tsourikov”)
`5,933,822
`(“Braden-Harder”)
`0597630
`(“Addison”)
`
`1 To the extent one or more prior art patents or publications are identified in the claim charts
`attached to this document but are not included in the tables and lists for the ’908 Patent, those
`prior art patents or publications should also be considered as prior art to the ’908 Patent.
`
`U.S.
`
`U.S.
`
`EP
`
`December 26, 2000
`
`May 27, 1999
`
`August 3, 1999
`
`July 22, 1997
`
`July 31, 2002
`
`November 4, 1992
`
`
`
`6
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`Page 6 of 32
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`

`

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`
`
`
`
`
`U.S.
`
`U.S.
`
`5,331,556
`(“Black, Jr.”)
`6,006,221
`(“Liddy”)
`
`July 19, 1994
`
`June 28, 1993
`
`December 21, 1999
`
`August 14, 1996
`
`2.
`
`Publications
`
`Google identifies below the publications presently known to Google that anticipate and/or
`
`render obvious the Asserted Claims of the ’908 Patent. Google incorporates by reference all prior
`
`art references cited in the publications listed herein. To the extent the following publications
`
`disclose and describe particular products and/or software programs that were publicly known
`
`and/or in public use prior to the priority date of the ’908 Patent, in addition to each publication
`
`itself serving as a prior art reference under 35 U.S.C. § 102, the various products and/or software
`
`programs described in the publications may also serve as grounds for invalidity under 35 U.S.C. §
`
`102 because they were in public use, in which case it would have been obvious to a person of
`
`ordinary skill in the art to combine the actual systems in public use with the published documents
`
`describing those systems because the documents described the systems in public use and refer to
`
`them throughout. In some of these cases, Google has served subpoenas and/or otherwise requested
`
`information pertaining to the products and/or software programs (and/or obtained the actual
`
`products and/or software programs themselves). To the extent necessary, Google will amend
`
`and/or supplement these invalidity contentions based on information received in response. The
`
`following patents are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), (f), and/or (g).
`
`Title
`
`Natural Language Processing for
`Information Retrieval (“Chong
`I”)
`Keyfact-based Information
`Retrieval System (“Jun I”)
`
`Date of
`Publication
`1997
`
`Author(s)
`
`Publisher
`
`Kyung Taek
`Chong
`
`The Magazine of the
`IEEE
`
`1997
`
`Mi Seon Jun;
`Se Young Park
`
`International
`Symposium on Digital
`Library
`
`
`
`7
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`Page 7 of 32
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`

`

`Keyfact Concept for an
`Information Retrieval System
`(“Jang I”)
`
`
`
`1995
`
`Ho Wook
`Jang; Se
`Young Park
`
`Document Ranking Method for
`High Precision Rate (“Jeon I”)
`
`1995
`
`Mee-Sun Jeon;
`Se Young Park
`
`A Method for Improving Recall
`Precision on Information
`Retrieval Systems Using Multiple
`Terms (“Choi”)
`The Fact Extraction Using the
`Keyfact (“Jun II”)
`
`Keyfact Concept to Improve the
`Accuracy of Information
`Retrieval System (“Jang II”)
`Using Mutual Information to
`Resolve Query Translation
`Ambiguities and Query Term
`Weighting (“Jang III”)
`Natural Language Information
`Retrieval (“Strzalkowski’)
`Word Sense Disambiguation for
`Free-text Indexing Using a
`Massive Semantic Network
`(“Sussna”)
`
`1998
`
`1996
`
`1995
`
`1999
`
`1995
`
`1993
`
`Jonghee Choi;
`Dongsi Choi;
`Seyoung Park;
`Heekuck Oh
`Mi-Seon Jun;
`Se-Young
`Park; Man-Soo
`Kim
`
`HoWook Jang;
`SeYoung Park
`
`Myung-Gil
`Jang; Sung
`Hyon Myaeng;
`Se Young Park
`Tomek
`Strzalkowski
`Michael
`Sussna
`
`
`
`
`
`Proc. of Natural
`Language Processing
`Pacific Rim
`Symposium
`Proceedings of the 10th
`Pacific Asia
`Conference on
`Language, Information
`and Computation
`The Korean Institute of
`Information Scientists
`and Engineers
`
`Applications of Natural
`Language to
`Information Systems:
`Proceedings of the
`Second International
`Workshop, June 26-28,
`1996, Amsterdam, The
`Netherlands
`The Korean Institute of
`Information Scientists
`and Engineers
`Association for
`Computational
`Linguistics
`
`Information Processing
`& Management
`Proceedings of the
`second international
`conference on
`Information and
`knowledge
`management, ACM
`
`3.
`
`Prior Art Systems
`
`Google identifies below the systems or software products presently known to Google that
`
`anticipate and/or render obvious the Asserted Claims of the ’908 Patent. Google incorporates by
`
`reference all prior art references cited in the publicly available materials listed herein. Although
`
`
`
`8
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`Google’s investigation continues, information available to date indicates that each system or
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`software product was (i) known or used in this country before the alleged invention of the claimed
`
`subject matter of the asserted claims; (ii) was in public use and/or on sale in this country and/or
`
`was the subject of a printed publication more than one year before the filing date of the patent;
`
`and/or (iii) was invented by another who did not abandon, suppress, or conceal, before the alleged
`
`invention of the claimed subject matter of the asserted claims. While Google is producing publicly
`
`available materials uncovered to date regarding these systems, discovery into the functionality
`
`embodied in these systems is ongoing. In some of these cases, Google has served subpoenas and/or
`
`otherwise requested information pertaining to the products and/or software programs (and/or
`
`obtained the actual products and/or software programs themselves) and expects to supplement its
`
`contentions as additional information is provided, for example through third-party subpoenas and
`
`further discovery from Plaintiff. The following systems or software products are prior art under
`
`at least 35 U.S.C. §§ 102(a), (b), (f), and/or (g).
`
`System
`
`Date Became Public
`
`SMART Information Retrieval
`System (“SMART”)
`WordNet system (“WordNet”)
`IRENA system (“IRENA”)
`
`1966
`
`1990
`June 1997
`
`Microsoft Encarta (“Encarta”)
`Verity Portal (“Portal”)
`
`September 1998
`1993
`
`CLARIT system (“CLARIT”)
`
`1991
`
`
`
`Entities Involved in
`Public Use
`Cornell University
`
`Princeton University
`University of Nijmegen
`Netherlands
`Microsoft Corp.
`Micro Focus (US), Inc.,
`Hewlett Packard
`Enterprise Co.,
`Autonomy corporation
`PLC, Autonomy Inc.,
`Verity, Inc.
`Carnegie Mellon
`University;
`CLARITECH Corp.
`
`The claim charts attached as Exhibits A-1 to A-23 specify where the limitations of the
`
`
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`Asserted Claims in the ’908 Patent are disclosed in the prior art. Specifically, as shown by Exhibits
`
`A-1 to A-23, each claim chart is directed to one of the Asserted Claims and details where the
`
`limitations of that Asserted Claim are disclosed in the prior art.
`
`B.
`
`Patent Local Rule 3-3(b): Whether Each Prior Art Anticipates or Renders
`Obvious the Asserted Claims
`
`Uniloc asserts claims 6-12 of the ’908 Patent against Google in this action. Each of those
`
`claims is invalid because it fails to meet one or more requirements for patentability. The individual
`
`bases for invalidity, including whether and how each item of prior art anticipates each Asserted
`
`Claim or renders it obvious, are provided in the charts attached as Exhibits A-1 to A-23. Each of
`
`the foregoing listed prior art references, the underlying work, and/or the underlying apparatus or
`
`method qualifies as prior art under one or more subsections of 35 U.S.C. § 102 or § 103.
`
`Although Google has identified at least one citation per limitation for each reference, each
`
`and every disclosure of the same limitation in the same reference is not necessarily identified.
`
`Rather, in an effort to focus the issues, Google has generally cited representative portions of
`
`identified references, even where a reference may contain additional support for a particular claim
`
`element. In addition, persons of ordinary skill in the art generally read a prior art reference as a
`
`whole and in the context of other publications and literature. Thus, to understand and interpret
`
`any specific statement or disclosure within a prior art reference, such persons would rely on other
`
`information within the reference, along with other publications and their general scientific
`
`knowledge. Google may rely upon uncited portions of the prior art references and on other
`
`publications and expert testimony to provide context, and as aids to understanding and interpreting
`
`the portions that are cited. Google may also rely on the prior art of record for any permissible
`
`purpose, including prior art discussed in the ’908 Patent specification itself, including to show that
`
`the ’908 Patent is anticipated or obvious, show the state of the art, show motivation to combine a
`
`
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`10
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`
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`reference with one or more other references, and to show the proper scope of the claims. Google
`
`may also rely on uncited portions of the prior art references, other disclosed publications, and the
`
`testimony of experts to establish that a person of ordinary skill in the art would have been
`
`motivated to modify or combine certain of the cited references so as to render the claims obvious.
`
`1.
`
`Priority
`
`Uniloc’s Patent L.R. 3-1(e) disclosures assert that the Asserted Claims of the ’908 Patent
`
`are entitled to a priority date of June 28, 1999, which is the filing date of Korean patent application
`
`Serial No. 99-25035. Uniloc has provided no evidence to support its contention that the Asserted
`
`Claims of the ’908 Patent are entitled to claim priority back to this or any earlier-filed application,
`
`and Google asserts the Asserted Claims of the ’908 Patent are not entitled to the benefit of the
`
`Korean patent application. Google reserves the right to assert a later priority date based on any
`
`findings as to the priority date of the Asserted Claims by the Court, information learned through
`
`discovery, or otherwise.
`
`2.
`
`Anticipation
`
`Some or all of the Asserted Claims of the ’908 Patent are invalid as anticipated under 35
`
`U.S.C. § 102 under the prior art references identified above and in the claim charts included in
`
`Exhibits A-1 to A-23, which identify specific examples of where each limitation of the Asserted
`
`Claims is found in the prior art references. As explained above, the cited portions of prior art
`
`references identified in the attached claim charts are exemplary only and representative of the
`
`content and teaching of the prior art references, and should be understood in the context of the
`
`reference as a whole and as they would be understood by a person of ordinary skill in the art.
`
`3.
`
`Obviousness
`
`Each anticipatory prior art reference, either alone or in combination with other prior art,
`
`also renders the asserted claims obvious to one of ordinary skill in the art. To the extent any
`
`
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`
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`limitation is deemed not to be exactly met, either explicitly or inherently, by an item of prior art
`
`listed above and in Exhibits A-1 to A-23, then any purported differences are such that the claimed
`
`subject matter as a whole would have been obvious to one skilled in the art at the time of the
`
`alleged invention, in view of the state of the art and knowledge of those skilled in the art. In
`
`particular, each anticipatory prior art reference on its own renders obvious the claimed inventions
`
`and also may be combined with (i) information known to persons skilled in the art at the time of
`
`the alleged invention and/or (ii) any of the other anticipatory prior art references. The item of prior
`
`art would, therefore, render the relevant claims invalid for obviousness under 35 U.S.C. § 103(a).
`
`In addition, the references identified above render one or more Asserted Claims of the ’908
`
`Patent obvious when the references are read in combination with each other, and/or when read in
`
`view of the state of the art and knowledge of those skilled in the art. Each and every reference
`
`identified is also relevant to the state of the art at the time of the alleged invention. Any of the
`
`references disclosed above may be combined to render obvious (and therefore invalid) each of
`
`Uniloc’s Asserted Claims. Google may rely upon all or a subset of the references identified above,
`
`including all references in Exhibits A-1 to A-23 and Exhibit B, for purposes of obviousness
`
`depending on the Court’s claim construction, positions taken by Uniloc during this litigation, and
`
`further investigation and discovery. Google may rely on combinations with any reference in
`
`Exhibits A-1 to A-23 and Exhibit B and any of the other references disclosed herein with respect
`
`to the ’908 Patent, including combinations with any of the patents, publications or systems
`
`identified herein as prior art to the ’908 Patent. Combining the references disclosed in herein and
`
`in Exhibits A-1 to A-23 and Exhibit B would have been obvious, as the references identify and
`
`address the same technical issues and suggest very similar solutions to those issues. Google
`
`reserves the right to amend or supplement these invalidity contentions to identify additional
`
`
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`reasons that combining the references would be obvious to one of ordinary skill in the art, including
`
`with expert testimony to be disclosed in accordance with the rules of this Court.
`
`The Supreme Court clarified the standard for what types of inventions are patentable. See
`
`KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1731 (2007) (“the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than yield predictable
`
`results”). In particular, the Supreme Court emphasized that inventions arising from ordinary
`
`innovation, ordinary skill or common sense should not be patentable. See id. at 1732,1738-39,
`
`1742-43, 1746. Because the ’908 Patent simply combines elements well known in the art in a
`
`straightforward fashion to achieve a well-known and obvious result and thus yield no more than
`
`one skilled in the art would expect from such combinations, the claims of the ’908 Patent are
`
`obvious. The Asserted Claims are therefore invalid under 35 U.S.C. § 103 because they do nothing
`
`more than combine known techniques and apparatuses according to their known and ordinary uses
`
`to yield predictable results.
`
`The Supreme Court further held that “[w]hen a work is available in one field of endeavor,
`
`design incentives and other market forces 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 reason, if a technique has been used to improve one device, and a
`
`person of ordinary skill in the art would recognize that it would improve similar devices in the
`
`same way, using the technique is obvious unless its actual application is beyond his or her skill
`
`....” See id. at 1740. Accordingly, a person of skill in the art would have been motivated to
`
`combine or adapt known or familiar methods in the art, especially where market forces prompt
`
`such variations.
`
`In view of KSR, the United States Patent and Trademark Office issued a set of Examination
`
`
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`Guidelines. See Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103, 72
`
`Fed. Reg. 57526 (Oct. 10, 2007). These Guidelines identify various rationales under KSR for
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`finding a claim obvious at the time of the filing of the application for this patent, including those
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`based on other precedents, including but not limited to:
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`(A) Combining prior art elements according to known methods to yield predictable results;
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`(B) Simple substitution of one known element for another to obtain predictable results;
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`(C) Use of known techniques to improve similar devices (methods, or products) in the same
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`way;
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`(D) Applying a known technique to a known device (method, or product) ready for
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`improvement to yield predictable results;
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`(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions,
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`with a reasonable expectation of success;
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`(F) Known work in one field of endeavor may prompt variations of it for use in either the
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`same field or a different one based on design incentives or other market forces if the variations
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`would have been predictable to one of ordinary skill in the art;
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`(G) Some teaching, suggestion, or motivation in the prior art that would have led one of
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`ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive
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`at the claimed invention. See 72 Fed. Reg. 57529.
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`The ways in which the subject matter of a patent claim may be shown to be obvious,
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`identified by KSR, are merely illustrative. The main thrust of KSR was that “[r]igid preventative
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`rules that deny factfinders recourse to common sense”—such as the overturned “teaching,
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`suggestion, or motivation” test—are neither necessary under our case law nor consistent with it.”
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`KSR, 127 S.Ct. at 1742-43; citing with approval, e.g., DyStar Textilfarben GmbH & Co.
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`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test
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`is in actuality quite flexible and not only permits, but requires, consideration of common
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`knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (Fed. Cir.
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`2006) (“There is flexibility in our obviousness jurisprudence because a motivation may be found
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`implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine
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`...”).
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`These rationales apply in rendering obvious the Asserted Claims of the ’908 Patent. Here,
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`the state of the art at the relevant time expressly taught and suggested combining various
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`techniques of natural language processing. See Exhibit A-23. As a result, one skilled in the art
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`would have known to combine or modify references that described known systems and methods
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`which one of skill in the art would have recognized as offering improvements to solutions at that
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`time. Each of the prior art references identified herein and in Exhibits A-1 to A-23 and Exhibit B
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`described systems and methods that were known to offer such improvements, and, accordingly,
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`one of skill in the art would have been motivated to combine or modify the references as described
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`herein.
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`In accordance with Patent L.R. 3-3(b), prior art references rendering the asserted claims of
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`the ’908 Patent obvious, alone or in combination with other references, are discussed above and
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`included in Exhibits A-1 to A-23. Exhibits A-1 to A-23 include exemplary claim charts for the
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`’908 Patent showing specific combinations of references, including citations to relevant
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`disclosures in those references.
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`In particular, Google contends that the Asserted Claims of the ’908 Patent would have been
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`obvious in view of the prior art references identified herein. For example, Exhibits A-1 to A-23
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`include exemplary claim charts that describe how the Asserted Claims of the ’908 Patent would
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`have been obvious. Google may rely on a combination of an identified primary reference and one
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`or more of the secondary references identified in Exhibit B. Each of these primary references
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`teaches all of the limitations of the ’908 Patent’s Asserted Claims. To the extent any claim
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`limitations are found to be missing from the primary references, in addition to the references
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`designated for combination with the primary references, described in each exhibit, it would have
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`been obvious to one of ordinary skill in the art to add the missing limitation based on the
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`corresponding disclosure of that limitation in Exhibits A-1 to A-23, including Exhibit B.
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`The obviousness combinations set forth in herein reflect Google’s present understanding
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`of the potential scope of the claims that Uniloc appears to be advocating and should not be seen as
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`Google’s acquiescence to Uniloc’s interpretation of the patent claims. Google reserves the right
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`to amend or supplement these contentions regarding anticipation or obviousness of the Asserted
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`Claims, in view of further information from Uniloc, information discovered during discovery, or
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`a claim construction ruling by the Court. Uniloc has not identified what elements or combinations
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`it alleges were not known to one of ordinary skill in the art at the time. Therefore, for any claim
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`limitation that Uniloc alleges is not disclosed in a particular prior art reference, Google reserves
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`the right to assert that any such limitation is either inherent in the disclosed reference or obvious
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`to one of ordinary skill in the art at the time in light of the same, or that the limitation is disclosed
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`in another of the references disclosed above and in combination would have rendered the Asserted
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`Claims obvious.
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`Reasons exist to combine one or more of the references included in these invalidity
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`contentions with each other. Generally, reasons to combine any of these references with others
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`exists within the references themselves, as well as within the knowledge of those of ordinary skill
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`in the art at the relevant time. For example, many of these references identify and address the
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`same technical issues and suggest very similar solutions to those issues in the field of natural
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`language processing. See Exhibit A-23. Moreover, several of these references cross-refe