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Adam Logal
officer (VP Finance, CAO & Treasurer)
Purchased 50,000 shares on 2/1/2013
Courtesy of JonnyQwan Raging bull #'s 356015 and 356016:
From a recent court filing from Vertical vs LG in Texas:
PLAINTIFF, VERTICAL COMPUTER SYSTEMS, INC.'S, RESPONSE IN OPPOSITION TO LG ELECTRONICS MOBILECOMM U.S.A., INC. AND LG ELECTRONICS INC. MOTION TO SEVER AND TRANSFER CLAIMS TO THE U. S. DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY OR IN THE NORTHERN DISTRICT OF CALIFORNIA Filed 08/10/12
My favorite paragraph follows:
"Samsung and LG infringe these two patents through their manufacture, importation and sale of cellular telephones and tablet computers having an Android operating system. In fact, for purposes of this litigation, the accused products of Samsung and LG are essentially the same. They all include the Android operating system, which forms the basis of Vertical's claims of infringement. (The Android Operating system originates from one company Google.) Thus, the infringement contentions and claim charts provided by Vertical in this action cover the same claims and the same accused technology. Vertical attaches its claim charts for Samsung as Exhibit C and for LG as Exhibit D. A comparison of these two sets of claim charts shows that the evidence on the issue of infringement is essentially the same for both Samsung and LG."
Sweet Dreams!!!!
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# 356016:
And then there is more........
From the same filing.... I wonder why they keep mentioning GOOGLE???
"D. Cooperation Between LG, Samsung and Google
As stated above, LG and Samsung, for purposes of these patents-in-suit, have essentially the same products, with relevant parts sourced from the same company (Google), which cooperates with LG and Samsung to see that these parts (the Android operating system) adhere to Google's compatibility requirements. When Samsung filed its motion to transfer on February 25, 2011, STA's director of project management, Seo-Won Kwon, filed a declaration stating that:
10. STA maintains a development lab in San Jose, California, which works with Google on the Android-related aspects of Samsung's Android Devices. This lab performs a variety of software engineering work related to the Android platform, including optimizing device performance and conducting internal benchmarking. The lab also works closely with the Android team at Google to ensure that Samsung's Android Devices adhere to Google's compatibility requirements.
(Declaration of Seo-Won Kwon attached as Exhibit H).
Mr. James Fishler, LG's Marketing Vice President, in his declaration supporting LG's present motion was not quite as forthcoming as Mr. Kwon, but he, nonetheless, admitted that LG "works with Google's Android focused engineers and support staff located in Mountain View, California."
Based on these admissions, one can easily conclude that both LG and Samsung use the same operating system and they both cooperate with Google to meet Google's compatibility requirements. The evidence on infringement, invalidity and unenforceability is entirely the same for both LG and Samsung."
Think about it.... which customers of Google would you pinch, if you were attempting to cause Google some discomfort???
Maybe their largest (Samsung) and their second largest (LG)???
Phillip Frost MD ET AL owns 33.3 mill shares of ROX. Which in and of itself makes it at least a 5 out of 10
Frost bought another 40,000 shares on 1/31/2013. First purchase since 1/15/2013.
I have been a Fan of this guy since 1995 when I bought CNU. This stock looks very good. That 8 Billion vitamin D comment sound great
According to Dr. Frost OPK will introduce a new more responsive test for Prostate Cancer (the 4K test) within a few months (2-4).
Better and more sensitve than the PSA test
Jim Cramer Mad Money 1/28/2013
Courtesy of SmoothSailing20 Raging bull:
Pacer update / Stipulation signed by Seeborg
01/15/2013 159 STIPULATION AND ORDER re 157 Request for Order Reinstating Vertical's August 31, 2012 Amended Infringement Contentions for Claims 56 and 57 of U.S. Patent No. 6,826,744. Signed by Judge Richard Seeborg on 1/15/13. (cl, COURT STAFF) (Filed on 1/15/2013) (Entered: 01/15/2013)
look like we are on our way to trial
Courtesy of JonntQwan #349263.
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
v.
VERTICAL COMPUTER SYSTEMS,
Defendant.
____________________________________/
No. CV 10-04645 RS
ORDER DENYING PLAINTIFF’S
MOTION FOR SUMMARY
JUDGMENT
I. INTRODUCTION
On October 14, 2010, Interwoven, Inc. (“Interwovenâ€) filed a Complaint seeking a
declaratory judgment that the 6,826,744 (“the ‘744 patentâ€) and 7,716,629 (“the ‘629 patentâ€)
patents held by Vertical Computer Systems (“Verticalâ€) are invalid and unenforceable, or that no
valid, enforceable claim within the patents-in-suit is infringed by plaintiff’s software. An
Amended Complaint was later filed further seeking a declaration that the ‘744 patent and the
‘629 patent are invalid due to inequitable conduct before the United States Patent and Trademark
Case3:10-cv-04645-RS Document158 Filed01/04/13 Page1 of 12
NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
Office (“PTOâ€) and enjoining defendant from prosecuting or instituting any action against
plaintiff claiming that the patents-in-suit are valid, enforceable, or infringed. Interwoven has
moved for summary judgment seeking: (1) a determination that the ‘744 patent is unenforceable
due to inequitable conduct based on the inventor’s alleged failure to disclose prior art to the
PTO; (2) that the child ‘629 patent is infected by the unenforceability of the parent ‘744 patent,
or, in the alternative, that the ‘629 patent is not entitled to the earlier filing date of the ‘744
patent; and/or (3) that the patents are invalid under the 35 U.S.C. §102(b) on-sale bar. For the
following reasons, Interwoven’s Motion for Summary Judgment is denied. II. BACKGROUND1
The technology in this matter involves a system for generating software applications in
an “arbitrary object framework.†Aubrey McAuley is the inventor, and Vertical is the owner of
the ‘744 and ‘629 patents at issue in this suit. The ‘744 patent application was filed on October
1, 1999 and granted on November 30, 2004. The ‘629 patent is a continuation application filed
on November 29, 2004 and granted on May 11, 2010. McAuley drafted the specification for the
application and initially provided four drawings that now appear as Figures 1 through 4. Before
filing the ‘744 application, Figure 5 was added, describing an “embodiment†of the invention.
Figure 5 depicts a number of features of McAuley’s prior art WebOS product and was not
created for the patent application. McAuley’s Company, Adhesive, had been marketing and
selling its WebOS lines of products since as early as 1996. The WebOS User’s Guide, provided
to McAuley’s customers, is dated June 9, 1998.
In 2007, Vertical filed an action for infringement against Microsoft in the Eastern District
of Texas. Microsoft answered the complaint and counterclaimed for inequitable conduct,
alleging that Figure 5 showed a prior art system that was available more than one year before the
1 Facts are drawn from the First Amended Complaint, Motion for Summary Judgment,
Opposition, and Reply. Vertical objects to Interwoven’s Exhibits A-1 through A-5, referring to
chapters of “The Complete Idiot’s Guide to Microsoft Visual InterDev,†and arguments in the
Reply brief that allege Vertical did not disclose the WebOS system to the PTO. The Court has
not relied on Exhibits A-1 through A-5 in coming to its decision. Whether the WebOS system
was disclosed appears to be a fact in dispute, and thus not an appropriate basis on which to grant
summary judgment.
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NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
filing date of the ‘744 patent application and was not an embodiment of the present invention. It
also alleged that McAuley should have submitted Figure 5 as prior art. After settling with
Microsoft, while the application for the ‘629 patent was pending, McAuley and Vertical changed
the label of Figure 5 on the ‘629 patent to describe an “environment,†rather than an
“embodiment†of the invention. They claim the original word choice was merely a
typographical error that they felt wasn’t necessary to change in the ‘744 patent. Additionally,
McAuley and Vertical state they disclosed as prior art a description of the WebOS system, from
which Figure 5 originated, and documentation of the WebOS system to the PTO. Interwoven
disputes that the WebOS system was ever disclosed to the PTO during the prosecution of the
‘629 patent, saying the bits and pieces of documentation referring to WebOS could not provide
the public with notice and thus are insufficient to constitute a disclosure. During the prosecution
of the ‘629 patent, McAuley and Vertical also selectively disclosed to the PTO twenty-four
pieces of the over 60 pieces of prior art that had been identified over the course of the Microsoft
litigation. The PTO did not apply the WebOS reference to the claims of the ‘629 patent in
granting it.
The present case was filed in 2010. Following the 2011 Claim Construction Order issued
by this Court, Interwoven filed petitions for reexamination of the ‘744 and ‘629 patents, but did
not cite to the WebOS materials in its requests, nor seek to change the “typographical error†in
the ‘744 patent referring to “embodiment†rather than “environment.†The PTO undertook the
requested reexaminations. It subsequently issued a reexamination certificate for the ‘629 patent
and a notice of intent to issue a reexamination certificate for the ‘744 patent.
It is undisputed that, during the prosecution of the ‘744 patent, the inventor never
disclosed the WebOS system to the PTO. As a result, the PTO did not know that the WebOS
product, from which Figure 5 was taken, was on sale and available to the public more than a year
before filing the application leading to the ‘744 patent. Vertical states Figure 5 does not disclose
the inventions of the ‘744 or ‘629 patents and that the references to Figure 5 in those patents do
not discuss the claimed subject matter or the arbitrary objects, the claimed advance in the
Case3:10-cv-04645-RS Document158 Filed01/04/13 Page3 of 12
NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
patents-in-suit. It asserts that the prior art references cited by the examiner in the ‘744 patent
show similar systems and are thus cumulative to Figure 5, as they make essentially the same
disclosure. According to Vertical, the WebOS system from which the diagram was taken did not
include arbitrary objects. Rather, the system suffered from the very inefficiencies arbitrary
objects are intended to fix. Vertical avers that it was not until Version 7 of WebOS was
introduced between 1999 and 2001, that the system utilized arbitrary objects.
Interwoven insists nonetheless that the WebOS product is material prior art of which
McAuley was aware and the existence of which he should have disclosed to the PTO upon filing
his application for the ‘744 patent. It contends Vertical’s position is contradictory: if it were true
that the WebOS product is unrelated to the patented invention, Figure 5 would be an irrelevant
diagram that should not have been included in the patent application. If the WebOS drawing is
part of the patented subject matter, on the other hand, it was on sale before the filing of the
patents-in-suit, rendering the patents invalid pursuant to the on-sale bar. Moreover, Interwoven
contends Figure 5 is not cumulative, as it discloses an object manager managing objects of
various types in an object library that no other figure depicts. Interwoven concludes that, had the
PTO known the WebOS product or its derivatives had been sold and in public use prior to the
filing of the ‘744 application and that a diagram of the WebOS product depicted an embodiment
of the invention, the patent would not have been granted.
III. LEGAL STANDARD
A. Summary Judgment
Summary judgment is appropriate “if the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to a judgment as a
matter of law.†Fed. R. Civ. P. 56(c). The moving party bears the initial burden of
demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). If the movant succeeds, the burden then shifts to the nonmoving party to “set
forth specific facts showing that there is a genuine issue for trial.†Fed. R. Civ. P. 56(e). See
Case3:10-cv-04645-RS Document158 Filed01/04/13 Page4 of 12
NO. 10-CV-04645 RS
ORDER
28
United States District Court
For the Northern District of California
also Celotex, 477 U.S. at 323. A genuine issue of material fact is one that could reasonably be
resolved in favor of the nonmoving party, and which could affect the outcome of the suit.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The court must view the evidence in
the light most favorable to the nonmoving party and draw all justifiable inferences in its favor.
Id. at 255.
B. Inequitable Conduct
Inequitable conduct is a defense to patent infringement arising out of the doctrine of
unclean hands. To stem the tide of inequitable conduct claims, the Court of Appeals for the
Federal Circuit recently articulated a new, heightened standard for an inequitable conduct
defense. See Therasense v. Becton Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011). To
prevail on a motion for inequitable conduct, a party must show that “the patentee acted with the
specific intent to deceive the PTO.†Id. at 1290 (citing Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1365, 1366 (Fed. Cir. 2008)). A finding of gross negligence or that the
patentee “should have known†is not sufficient. Id. (citing Kingsdown, 863 F.2d at 876). Rather,
there must be clear and convincing evidence that the applicant made a deliberate decision to
withhold a known material reference. Id. A sliding scale should not be used in making a finding
of intent and materiality, nor can intent be inferred from materiality. Id.; See also Praxair, Inc.
v. ATMI, Inc., 543 F.3d 1306, 1313 (Fed. Cir. 2008) (explaining that “a showing of materiality
alone does not give rise to a presumption of intent to deceive.â€). Nevertheless, because evidence
of direct intent is rare, intent may be inferred from indirect and circumstantial evidence. Id.
(citing Larson Mfg. Co. of S.D., Inc., v. Aluminart Prods. Ltd., 559 F.3d 1317, 1340 (Fed. Cir.
2009)). To meet the clear and convincing standard, the specific intent to deceive must be the
single most reasonable inference to be drawn from the evidence. Id. (citing Star, 537 F.3d at
1366).
The materiality required to establish inequitable conduct is “but-for†materiality. Id. at
1291. When an applicant fails to disclose prior art, it qualifies as “but-for†material if the PTO
would not have approved a claim if it had been aware of the prior art. Id. To determine whether
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NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
the PTO would have issued the patent, a preponderance of the evidence standard applies, giving
the claims their broadest possible construction. Id. at 1291-92. An exception to the “but-forâ€
materiality standard exists for acts of affirmative egregious misconduct. Id. at 1292. One
example of such misconduct is the filing of an unmistakably false affidavit. Id. (citing Rohm &
Haas Co. v. Chrystal Chem. Co. 722 F. 2d 1556, 1571 (Fed. Cir. 1983).
The remedy for inequitable conduct is the “atomic bomb†of patent law. Id. at 1288.
This is because, unlike invalidity defenses which render individual claims invalid, inequitable
conduct makes the entire patent unenforceable and can infect related patents and applications in
the same technology family. Id. Because it is an equitable doctrine, inequitable conduct should
only be found in instances where the patentee’s misconduct resulted in an unfair benefit from the
unwarranted claim. Id. at 1292.
C. On-Sale Bar
The on-sale bar prevents a person from acquiring a patent if the invention was “in public
use or on sale in this country, more than one year prior to the date of the application for patent in
the United States.†35 U.S.C. §102(b). This serves as a limiting provision, both excluding ideas
that are already in the public domain from patent protection and confining patent protection to
the statutory term. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 64(1998). The Supreme Court has
articulated a two-part test to determine whether the on-sale bar applies: (1) the product must be
the subject of a commercial offer for sale; and (2) the invention must be ready for patenting. Id.
at 67. To overcome the presumption of validity, a challenger must demonstrate these factors by
clear and convincing evidence. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 846 (Fed. Cir.
2010).
To meet the first prong, the Federal Circuit has held that “the invention that is the subject
matter of the offer for sale must satisfy each claim limitation of the patent, though it may do so
inherently.†Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1329 (Fed. Cir. 2001).
Nevertheless, it is not necessary to show that all embodiments were on sale more than one year
before the date of filing. Id. at 1330. The second condition may be satisfied by either proof of
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NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
reduction to practice before the critical date or by proof that the inventor had, prior to the critical
date, described the invention in sufficient detail to enable a person skilled in the art to practice it.
Id. at 67-68.
IV. DISCUSSION
Specific Intent
Inventor McAuley declares he prepared the entire patent application himself. Originally,
he included the diagrams now labeled as Figures 1-4. When his patent attorney told him the
application needed more diagrams, he provided the WebOS diagram for inclusion as Figure 5.
There is no dispute that the drawing was a pre-existing diagram and was not created for the
patent application. McAuley maintains that he did not think the diagram was important to the
invention, and thus had not included it in his original submission. He further maintains that, at
the time he drafted the application, he did not appreciate the precise meaning that “embodimentâ€
has in patent law. As a result, he and his lawyer failed to catch what he alleges to be a
typographical error in the description of the diagram.
Interwoven contends that McAuley “should have been aware he needed to disclose his
prior art WebOS product†to the PTO during prosecution of his ‘744 patent. The inquiry into
what McAuley “should have†known, however, is irrelevant to the question of inequitable
conduct. Under the heightened intent requirements articulated by the Federal Circuit in
Therasense, Interwoven must show that McAuley made a deliberate decision to withhold a
known material reference. Interwoven has not met its burden. It presents no evidence from
which such deliberation can be inferred. Rather, the evidence proffered could suggest just as
easily that McAuley was mistaken, or at worse negligent, in his decision to disclose certain
pieces of prior art, but not his WebOS product.
Interwoven argues McAuley and Vertical’s behavior once the alleged error was
discovered is sufficient to infer intent to deceive the PTO. Specifically, Interwoven notes
Vertical chose to disclose WebOS during the prosecution of the ‘629 patent, but failed to correct
its disclosure for the ‘744 patent. It claims that hiding the WebOS product itself during the
Case3:10-cv-04645-RS Document158 Filed01/04/13 Page7 of 12
NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
prosecution of the ‘744 patent can only be explained as specific intent to mislead the PTO. In
support of this argument, it relies on Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324 (Fed.
Cir. 2012), in which the court deemed selective concealment of prior art as sufficient to find
specific intent. Unlike the present case, however, Aventis, was decided after a trial on the merits,
not at the summary judgment stage. The court concluded that the inventor’s testimony for
withholding select prior art was simply not credible. Id. at 1235-36. Here, by contrast,
McAuley’s declarations that he maintained an honest belief the WebOS product was not relevant
to the patent has yet to be subject to examination. McAuley’s intent remains a fact that must be
found by the trier of fact. It is enough to defeat summary judgment that a question remains as to
the inventor’s credibility.
Interwoven further asserts that Vertical never disclosed the WebOS Manual to the PTO,
indicating an intent to deceive. As noted above, it is undisputed that the product was not
disclosed during the prosecution of the ‘744 patent, but Vertical disputes the contention that the
WebOS product was not disclosed during the prosecution of the ‘629 patent. Interwoven insists
that, from the perspective of the PTO, the disclosure of the The Complete Idiot’s Guide to
Microsoft’s Visual InterDev was completely unrelated to the WebOS product. It is difficult, if
not impossible, however, to determine how the PTO interpreted the disclosures Vertical
provided. The Guide did refer to the WebOS product. It would thus be a stretch to conclude that
the PTO did not consider them in coming to its decision to issue the ‘629 patent. While
Interwoven accuses Vertical of assuming the WebOS system was disclosed and making “an
erroneous leap in logic†that only references specifically cited in the claims are material,
Interwoven is guilty of similar assumptions and leaps in concluding, as a matter of law, that the
WebOS system was not disclosed and that it is materially relevant to the claimed invention.
Interwoven next points to McAuley’s refusal to explain the claimed invention to
opposing counsel during his deposition as evidence of deceptive intent. It cites Advanced
Magnetic Closures, Inc. v. Rome Fasteners, 607 F.3d 817, 830-31 (Fed. Cir. 2010), to support
the proposition that deceptive intent can be premised on the inventor directing opposing counsel
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NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
to read the patent, rather than explaining the invention himself. In that case, the question was
whether the named inventor was the exclusive inventor. Id. at 828. The court, after trial, found,
among other things, the named inventor was 1) either unable or unwilling to articulate his
claimed invention, 2) could not offer any scientific or technical explanation of his own patent,
and 3) offered evasive, argumentative, and sometimes contradictory testimony regarding his
status as the inventor. Id. at 830. The court thus concluded that his testimony bore indicia of
fabrication, and that the single most reasonable inference was intent to deceive the PTO. Id.
While it is true that, during his deposition, McAuley refused to elaborate on the information
contained within the specification of the patents-in-suit, the question of inequitable conduct in
this case has nothing to do with McAuley’s familiarity with the claimed invention. Indeed, it is
undisputed that he wrote the initial drafts of the patent application himself. Whether or not
McAuley was willing to expand upon the language set forth in the patent seems more a question
of litigation strategy than an indication of inequitable conduct before the PTO. Thus, specific
intent cannot be unambiguously inferred from any refusal to answer opposing counsel’s
questions.
Material Prior Art
Interwoven makes much of the fact that the inventor conceded Figure 5 depicts a number
of features of his prior WebOS product, including its ability to handle data objects, logic objects,
formatting objects and variables using an object manager, and an object library. Interwoven
contends that these features correspond to those of the patents-in-suit as disclosed in the ‘744
specification. Vertical counters by arguing that Figure 5 has nothing to do with arbitrary objects,
which are the most significant aspect of the claimed invention. Figure 5, McAuley insists, has
the same framework as the claimed invention, but the introduction of arbitrary objects changed
everything about the way the product worked. It was not until the introduction of WebOS
Version 7 around 2001, then renamed SiteFlash, that the WebOS program adopted the
improvements described in Vertical’s patent application.
Case3:10-cv-04645-RS Document158 Filed01/04/13 Page9 of 12
NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
During Claim Construction, this Court noted that “the innovation of the patents is the
ability to separate form from function from content, but such separation is not required in every
instance.†This Court construed an “arbitrary object†to be “an object that can be created
independently by individual preference, are interchangeable, and that may be, but need not be,
accessed solely by name, the object being an entity that can have form, content, or functionality
or any combination of form, content and functionality.†While arbitrary objects and the ability to
separate form, content, and function were the focus of claim construction, Figure 5 does not
specifically reference any of these elements. Thus, Figure 5 does not, by its terms, encompass
the elements of the claimed invention. Interwoven, however, observes that a claimed advantage
of the invention is that it allows for personalization and profiling. It points out that this feature is
depicted only in the piece of Figure 5 labeled “User Profile and Password Database 70.†This
improvement, however, appears only in the description of the invention, not in the claims
themselves. Thus the reference contained in Figure 5 indeed may not be relevant to the claimed
aspects of the invention. In any event, it cannot be said at this stage that, as a matter of law, the
depicted improvement is “but for†material to the claimed invention.
Nevertheless, Interwoven contends that because the diagram was put forth as an
embodiment of the invention, the WebOS product is “clearly material prior art.†Embodiments,
however, need not be covered by the claims of the patent. See TIP Sys., LLC v. Phillips &
Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008) (noting that, “read in the context of
the specification, the claims of the patent need not encompass all disclosed embodiments.
[citation omitted] Our precedent is replete with examples of subject matter that is included in the
specification, but is not claimed.â€); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63
(Fed. Cir. 1991) (explaining that “subject matter disclosed but not claimed in a patent application
is dedicated to the public.â€). Accordingly, the mere labeling of the diagram as an “embodimentâ€
is insufficient to make the reference per se material.
Interwoven insists Vertical’s explanation that the use of the word “embodiment†rather
than “environment†was merely a mistake is implausible. Nevertheless, it contends that, even if
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NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
WebOS had been accurately labeled as an “environment†in the ‘744 patent, as it is in the ‘629
patent, its disclosure would still have been materially relevant to the PTO’s determination.
Interwoven premises this assertion on the assumption that WebOS was never disclosed to the
PTO as prior art. Vertical, however, disputes that assumption, arguing it did in fact disclose the
WebOS product following the Microsoft litigation while the prosecution of the ‘629 patent was
still pending. The issue of disclosure therefore remains in dispute. Moreover, Interwoven
conceded at oral argument that, had Figure 5 been labeled as an “environment†in the ‘744
patent, it would have no claim for inequitable conduct. Rather, it would only have potential
claims of invalidity. The question of whether WebOS is material with respect to an
“environment†of the claimed invention is therefore not relevant to a determination of
inequitable conduct.
Vertical points out that Interwoven did not use the WebOS material in its request for
reexamination of the patent. It contends that this is evidence Interwoven itself did not believe its
assertion that WebOS and Figure 5 are material to the patents-in-suit, and that it knew the PTO
had considered the WebOS disclosure and not found it material. At oral argument, Interwoven
responded to this contention by saying it was not obligated to present all alleged prior art during
the reexamination process, and that it wanted to preserve the WebOS issue for trial. While true
that there is no requirement all prior art be presented at reexamination, this response cannot hold
water. The PTO determines materiality in the first instance; the courts are a last resort. If the
PTO had concluded the omission of WebOS as a prior art reference was material, this entire
litigation would have been avoided. Thus, to suggest Interwoven was holding the reference in its
back pocket for trial is nonsensical. Had it believed Figure 5 and the WebOS product to be
materially relevant to the validity of the patents-in-suit, it should have sought such a
determination from the PTO during their reexamination.
On-Sale Bar
The ‘744 patent was filed on October 1, 1999. Thus, the critical date is October 1, 1998.
If the claimed invention was on sale before this critical date, the patent is invalid under the on-
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NO. 10-CV-04645 RS
ORDER
United States District Court
For the Northern District of California
sale bar doctrine. There is no dispute that the WebOS product was on sale well before this
critical date. Nevertheless, there is dispute as to whether that product anticipated or rendered
obvious the claimed invention. “The on-sale bar is evaluated on a claim-by-claim basis, so that
some claims of a patent may be found to be barred while others are not.†Allen Engineering
Corp. v. Bartell Indus., 299 F.3d 1336, 1353 (Fed. Cir. 2002). Thus each claim of the patents-insuit
must be construed and specific findings of fact must link elements of the product on sale to
each claim limitation. Id. at 1355.
As discussed above, it is the challenger’s burden to prove, by clear and convincing
evidence, that each element of the claimed invention was on sale prior to the critical date.
Interwoven has not met this burden. Rather, it states generally that the WebOS product
embodies the claimed invention. This statement depends on the fact that Figure 5, originating
from the WebOS manual, is labeled as an “embodiment.†However, as discussed, there is
dispute as to whether Figure 5 actually is an embodiment of the invention, or if such labeling was
merely a typographical error. Interwoven does not identify the specific claims allegedly
anticipated or rendered obvious by the sale of the early versions of the WebOS product. Without
such specific claims, the on-sale bar cannot be adequately evaluated. Thus, on the evidence
presently available, the patents-in-suit do not fail by virtue of the on-sale bar.
V. CONCLUSION
For the foregoing reasons, Interwoven’s Motion for Summary Judgment with respect to
inequitable conduct before the PTO, and invalidity due to the on-sale bar, is denied in its
entirety.
IT IS SO ORDERED.
Dated: 1/4/13
RICHARD SEEBORG
courtesy of jonnyQwan ragingbull #348855:
New Pacer in SF... Stipulation..
Case3:10-cv-04645-RS Document157 Filed01/02/13 Page1 of 4
STIPULATED REQUEST FOR REINSTATEMENT OF
VERTICAL'S AMENDED INFRINGEMENT CONTENTIONS
CASE NO. 3:10-CV-04645-RS
STIPULATED REQUEST FOR ORDER REINSTATING VERTICAL'S AUGUST 31, 2012 AMENDED INFRINGEMENT CONTENTIONS FOR CLAIMS 56 AND 57 OF U.S. PATENT NO. 6,826,744
Plaintiff, Interwoven, Inc., ("Interwoven") and Defendant, Vertical Computer Systems, Inc. ("Vertical"), by and through their respective counsel of record, hereby stipulate to the reinstatement of the infringement contentions related to Claims 56 and 57 of U.S. Patent No. 6,826,744 (the “’744 Patent) included in Vertical's August 31, 2012 Amended Infringement Contentions ("Amended Infringement Contentions") that the Court struck following a hearing on Interwoven’s Motion to Strike held October 16, 2012 [See Dkt. Nos. 126, 129], and to the entry of Vertical’s modified Amended Infringement Contentions, attached hereto as Exhibit A. Vertical further agrees that it will not separately assert Claims 1 and/or 26 of the ’744 Patent against Interwoven or any related entity, including but not limited to Autonomy, Inc. and Hewlett-Packard Co., which have been cancelled in the reexamination proceedings, and the inclusion of Claims 1 and 26 in the Amended Infringement Contentions is solely because asserted dependent claims depend on these independent claims, and not because these claims are being asserted against Interwoven in this litigation.
Interwoven maintains that Vertical's August 31, 2012 Amended Infringement Contentions represent a significant and material change from Vertical's May 26, 2011 initial infringement contentions, thus implicating the doctrine of intervening rights. Interwoven further maintains that Vertical's Amended Infringement Contentions remain deficient. Interwoven does not waive any of its rights by entering into this stipulation and expressly reserves its rights to challenge the sufficiency of Vertical's Amended Infringement Contentions at any time.
Vertical does not agree with any allegations in the previous paragraph. Vertical asserts that the doctrine of intervening rights does not apply and that Vertical's contentions are not deficient. But, in the interest of finalizing the contentions, enters into this Stipulation.
Case3:10-cv-04645-RS Document157 Filed01/02/13 Page2 of 4
STIPULATED REQUEST FOR REINSTATEMENT OF
VERTICAL'S AMENDED INFRINGEMENT CONTENTIONS
CASE NO. 3:10-CV-04645-RS
The parties further stipulate that Interwoven's September 14, 2012 Amended Invalidity Contentions are the operative invalidity contentions in this litigation and do not currently require any modification as a result of the changes in Vertical’s Amended Infringement Contentions. Interwoven expressly reserves its rights to amend its invalidity contentions upon good cause pursuant to this Court’s Patent Local Rules.
Date: January 2, 2013
Respectfully submitted,
/s/ Vasilios D. Dossas VASILIOS D. DOSSAS (Pro Hac Vice) dossas@nshn.com NIRO, HALLER &NIRO 181 West Madison, Suite 4600 Chicago, IL 60602-4515 Telephone: (312) 236-0733 MARK V. ISOLA (SBN 154614) misola@rehonroberts.com REHON &ROBERTS, APC 830 The Alameda San Jose, CA 95126 Telephone: (408) 494-0900 Attorneys for Vertical Computer Systems, Inc.
Date: January 2, 2013
Respectfully submitted, /s/ Thomas C. Flynn
BIJAL V. VAKIL (Cal. Bar No. 192878) bvakil@whitecase.com NOAH A. BRUMFIELD (Cal. Bar No. 203653) nbrumfield@whitecase.com JENNIFER P. GOSSAIN (Cal. Bar No. 254174) jgossain@whitecase.com THOMAS C. FLYNN (Cal. Bar. No. 257945) tflynn@whitecase.com WHITE &CASE LLP 3000 El Camino Real 5 Palo Alto Square, 9th Floor Palo Alto, CA 94306 Telephone: (650) 213-0300 Attorneys for Plaintiff, Interwoven, Inc.
Case3:10-cv-04645-RS Document157 Filed01/02/13 Page3 of 4
STIPULATED REQUEST
Courtesy of SmoothSailing20 Raging Bull #346380:
Texas Pacer update
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
VERTICAL COMPUTER SYSTEMS, INC.,
Plaintiff,
v.
LG ELECTRONICS MOBILECOMM U.S.A., INC., LG ELECTRONICS INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC.,
Defendants.
Civil No. 2:10-CV-00490
Hon. Rodney Gilstrap
JURY TRIAL DEMANDED
VERTICAL'S NOTICE OF ASSERTED CLAIMS
As required by the Court's Docket Control Order (Dkt. No. 68), on December 19, 2012, Vertical Computer Systems, Inc. notified counsel for Defendants, LG Electronics Mobilecomm U.S.A., Inc., LG Electronics, Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. that it has limited its asserted claims to ten (10) as follows:
For U.S. Patent No. 6,826,744 B1: Claims 3, 4, 17, 25 and 56.
For U.S. Patent No. 7,716,629: Claims 1, 21, 24, 28 and 32.
The ten (10) asserted claims are subject to Vertical's right to amend its infringement contentions pursuant to Patent Local Rule 3-6.
SmoothSailing20, Raging Bull #345165:
Pacer update
12/12/2012 Minute Entry: Settlement Conference- case did not settle (Date Filed: 12/12/2012). (Court Reporter N/A.) (knm, COURT STAFF) (Date Filed: 12/12/2012) (Entered: 12/12/2012)
and so it continues
posy 1067 = post 1067
Posy # 1067:
TO ALL PARTIES AND COUNSEL OF RECORD:
The above matter was referred to Magistrate Judge Elizabeth D. Laporte for Settlement
Conference. You are hereby notified that the conference is scheduled for December 11, 2012, at
11:00 a.m., Courtroom E, 15th Floor, Federal Building, 450 Golden Gate Avenue, San Francisco,
California 94102. If the above date is not possible for the parties and counsel, or if the parties believe
that settlement discussions would be more productive at a different time, counsel shall confer with each
other and then contact Magistrate Judge Laporte's Courtroom Deputy within a week at
to determine whether it is possible and appropriate to reschedule the conference.
Lead trial counsel or a party without a lawyer shall appear at the Settlement Conference with
the parties and with the person or persons having full authority to negotiate and to settle the case. In
all cases in which a party is insured, the carrier's claims representative and attorney, if any, with full
authority to negotiate up to the limits of coverage shall also attend the Settlement Conference. In cases
where settlement authority rests with a governing body, counsel or a party without a lawyer, shall
advise the Court and opposing party by letter at least 72 hours prior to the conference, of the manner in
which the governing body will appear.
Case3:10-cv-04645-RS Document153 Filed11/29/12 Page1 of 3
Looks like we will have to wait until the 11'th, hopefully we will get some idea of where we are going then.
to early to tell but this could be the turning point.
However
643,056 in short sales
Date|Symbol|ShortVolume|ShortExemptVolume|TotalVolume|Market
20121206|VCSY|643056|0|1009863|O
http://regsho.finra.org/FORFshvol20121206.txt
Huh? Pacer update...
courtesy of SmoothSailing20 raging bull # 343842
Conference moved up
12/05/2012 Set Hearing: Telephone Conference set for 12/6/2012 09:30 AM in Courtroom E, 15th Floor, San Francisco before Magistrate Judge Elizabeth D. Laporte. (knm, COURT STAFF) (Filed on 12/5/2012) (Entered: 12/05/2012)
By: JonnyQwan
30 Nov 2012, 05:57 PM CST
Rating: You rated it: Msg. 343185 of 343195
Jump to msg. #
Motion for Summary Judgement....
The hearing on the 13th is to hear oral arguments concerning Interwoven's Motion for Summary Judgement.
If no settlement prior.... Judge Seeborg will hear those arguments and rule on that motion.
Looks like Seeborg sent a strong message by requesting the settlement conference moved to being prior to that hearing, that he wants this thing settled!
IMO, this gives Interwoven it's last piece of leverage in negotiating a settlement ( albeit... not much leverage ).
I think this is Seeborg's last peace offering to Interwoven, and if Interwoven does not agree to a settlement, Judge Seeborg is prepared to deny Summery Judgement.. AND issue an injunction against IDOL/Teamsite! I
We shall see soon!
settlement conference
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
INTERWOVEN, INC.,
Plaintiff, No. C-10-4645 RS (EDL)
v. NOTICE OF SETTLEMENT
CONFERENCE AND SETTLEMENT
CONFERENCE ORDER
VERTICAL COMPUTER SYSTEMS, INC.,
Defendant.
___________________________________/
TO ALL PARTIES AND COUNSEL OF RECORD:
The above matter was referred to Magistrate Judge Elizabeth D. Laporte for Settlement
Conference. You are hereby notified that the conference is scheduled for December 11, 2012, at
11:00 a.m., Courtroom E, 15th Floor, Federal Building, 450 Golden Gate Avenue, San Francisco,
California 94102. If the above date is not possible for the parties and counsel, or if the parties believe
that settlement discussions would be more productive at a different time, counsel shall confer with each
other and then contact Magistrate Judge Laporte's Courtroom Deputy within a week at
to determine whether it is possible and appropriate to reschedule the conference.
Lead trial counsel or a party without a lawyer shall appear at the Settlement Conference with
the parties and with the person or persons having full authority to negotiate and to settle the case. In
all cases in which a party is insured, the carrier's claims representative and attorney, if any, with full
authority to negotiate up to the limits of coverage shall also attend the Settlement Conference. In cases
where settlement authority rests with a governing body, counsel or a party without a lawyer, shall
advise the Court and opposing party by letter at least 72 hours prior to the conference, of the manner in
which the governing body will appear.
Case3:10-cv-04645-RS Document153 Filed11/29/12 Page1 of 3
United States District Court
For the Northern District of California
Personal attendance by counsel or a party without a lawyer will not be excused under any
circumstances and personal attendance by a party will rarely be excused. Permission for a party to
attend by telephone may be granted, in the Court's discretion, upon written request made at least two
weeks in advance of the conference, if the party lives and works outside of the Northern District of
California and the Court determines that personal attendance would constitute a hardship and is not
needed in order to have an effective settlement conference. The nature of the hardship must be
explained. A copy of the written request must be served on all other parties. Any objection to the
request must be submitted within forty-eight (48) hours of receipt. Both the request and objection may
be submitted in letter form either by mail or facsimile to (415) 522-2002. If telephone attendance is
allowed, the party must be available throughout the entire conference.
On or before Monday, December 3, 2012, at noon, the parties shall deliver directly to the
Magistrate Judge a Confidential Settlement Conference Statement which should not be filed with
the Clerk of the Court or served upon other parties.
The Confidential Settlement Conference Statement shall not exceed twenty-five (25) pages of
text exclusive of exhibits. (Parties are encouraged to include as exhibits any key documents and
deposition excerpts). The Confidential Settlement Conference Statement shall include the following:
1. A brief statement of the facts of the case.
2. A brief statement of the claims and defenses including, but not limited to, statutory or
other grounds upon which the claims are founded, a candid, forthright evaluation of the parties'
likelihood of prevailing on the claims and defenses and a description of the major issues in dispute.
3. A list of the key facts in dispute and a brief statement of the specific evidence relevant
to those facts.
4. A summary of the proceedings to date and any pending motions.
5. An estimate of the out of pocket expenses, attorney's fees and time to be expended for
further discovery, pretrial and trial.
6. The relief sought, including an itemization of damages.
7. The party's position on settlement, including present demands and offers and a history
of past settlement discussions.
Case3:10-cv-04645-RS Document153 Filed11/29/12 Page2 of 3
United States District Court
For the Northern District of California
8. If there have been no prior settlement discussions, plaintiff must serve a demand letter
outlining its theories for recovery, supporting facts and damages in writing at least 7 business days
before the conference, and defendant must respond in writing at least 3 business days before the
conference.
It is not unusual for conferences to last several hours or at times, all day. No participant in the
settlement conference will be permitted to leave the settlement conference before it is concluded without
the permission of the settlement conference judge.
Parties are encouraged to participate and frankly discuss their case. Statements they make
during the conference will not be admissible at trial to prove or disprove liability in the event the case
does not settle. The parties should be prepared to discuss such items as their settlement objectives, any
impediments to settlement that they perceive, whether they have enough information to discuss
settlement and, if not, what additional information is needed and the possibility of a creative resolution
of the dispute.
Any request to continue the settlement conference shall be submitted in writing as soon as
possible after consultation with the opposing party. The request must demonstrate a compelling
reason for a continuance, and state whether the opposing party(ies) agree or oppose the request. Any
party who objects to the continuance should submit a written response within 2 business days.
Submission by facsimile is acceptable at facsimile number (415) 522-2002. Courtesy copies of any
electronically filed documents must be delivered to chambers as provided in Civil Local Rule 5-
1(e)(7).
The parties shall notify Magistrate Judge Laporte's Courtroom Deputy immediately at (415)
522-3694 if this case settles prior to the date set for settlement conference.
Dated: November 29, 2012
ELIZABETH D. LAPORTE
United States Magistrate Judge
Case3:10-cv-04645-RS Document153 Filed11/29/12 Page3 of 3
Why Autonomy bought Interwoven:
Why Autonomy Did It
Autonomy believes that this acquisition will enable them to provide their customers the "next generation unstructured information management software" and will strengthen their access to the worldwide legal and compliance industry that Interwoven has a strong presence within.
The combination of Autonomy's IDOL technology and Interwoven's suite of enterprise content management products will see the creation of a new set of technologies that will help reduce some of the manual effort now required for some of Interwoven's products.
http://www.cmswire.com/cms/enterprise-cms/the-search-is-over-autonomy-acquires-interwoven-003810.php
Why HP bought Autonomy:
?Businesses today deal with a ton of data, so Autonomy’s software to help manage that data will be in demand for years to come. None of HP’s current businesses have that kind of growth potential.
Autonomy represents an opportunity for HP to accelerate our vision to . . . lead a large and growing space, which is enterprise information management. If we execute this deal it will position HP as a large and growing leader in the space
http://gigaom.com/2011/08/18/hp-betting-farm-on-autonomy/
11/19/2012 147 CLERKS NOTICE RESCHEDULING SETTLEMENT CONFERENCE Settlement Conference set for 12/17/2012 11:00 AM. (Filed on 11/19/2012) (Entered: 11/19/2012)
744 USPTO cert issued today.
http://www.uspto.gov/web/patents/dailycert/20121116-Friday/US06826744-20121116.html
Aubrey McAuley, Austin, Tex. (US)
Assigned to Vertical Computer Systems, Inc., Los Angeles, Calif. (US)
Reexamination Request No. 90/009,982, Jan. 6, 2012.
Reexamination Certificate for Patent 6,826,744, issued Nov. 30, 2004, Appl. No. 09/410,334, Oct. 1, 1999.
Ex Parte Reexamination Certificate issued under 35 U.S.C. 307 on Nov. 16, 2012.
Int. Cl. G06F 9/45 (2006.01); G06F 19/00 (2006.01)
U.S. Cl. 717—108
AS A RESULT OF REEXAMINATION, IT HAS BEEN DETERMINED THAT:
The patentability of claims 6, 8, 19, 22, 30, 32, 41, 44, 50 and 51 is confirmed.
Claims 1 and 26 are cancelled.
Claims 2-5, 7, 9-11, 18, 21, 23, 25, 27-29, 31, 33, 40, 45, 47-49 and 52-53 are determined to be patentable as amended.
Claims 24 and 46, dependent on an amended claim, are determined to be patentable.
New claims 54-57 are added and determined to be patentable.
Claims 12-17, 20, 34-39 and 42-43 were not reexamined.
2. The method of claim 1 [ 56] , wherein said computer application is a web site.
3. The method of claim 1 [ 56] , wherein said various object types comprise text file pointers.
4. The method of claim 1 [ 56] , wherein said various object types comprise binary file pointers.
5. The method of claim 1 [ 56] , wherein said various object types comprise compiled executables.
7. The method of claim 1 [ 56] , wherein said various object types comprise remote procedure calls.
9. The method of claim 1 [ 56] , wherein said various object types comprise cached executables.
10. The method of claim 1 [ 56] , wherein said various object types comprise cached database queries.
11. The method of claim 1 [ 56] , wherein said various object types comprise local variables.
18. The method of claim 1 [ 56] , wherein the step of managing said arbitrary objects further comprises using revision tracking.
21. The method of claim 1 [ 56] , wherein said arbitrary objects can be accessed and deployed into said design framework using said corresponding arbitrary names.
23. The method of claim 1 [ 56] , further comprising caching objects.
25. The method of claim 1 [ 56] , further comprising generating arbitrary objects in a programming language that is compatible or supported by said host system.
27. The method of claim 26 [ 57] , wherein said various object types comprise text file pointers.
28. The method of claim 26 [ 57] , wherein said various object types comprise binary file pointers.
29. The method of claim 26 [ 57] , wherein said various object types comprise compiled executables.
31. The method of claim 26 [ 57] , wherein said various object types comprise remote procedure calls.
33. The method of claim 26 [ 57] , wherein said various object types comprise local variables.
40. The method of claim 26 [ 57] , wherein the step of managing said arbitrary objects further comprises using revision tracking.
45. The method of claim 26 [ 57] , further comprising caching objects.
47. The method of claim 26 [ 57] , further comprising generating arbitrary objects in a programming language that is compatible or supported by said host system.
48. The method of claim 26 [ 57] , wherein said various object types comprise cached executable.
49. The method of claim 25 [ 57] , wherein said various object types comprise cached database queries.
52. The method of claim 26 [ 57] , wherein said container page comprises arbitrary objects with both dynamic and static elements.
53. The method of claim 26 [ 57] , wherein said content of said web site and said function of said web site can be syndicated.
[ 54. A method for generating a computer application on a host system in an arbitrary object framework that separates a content of said computer application, a form of said computer application and a functionality of said computer application, said method comprising:
creating arbitrary objects with corresponding arbitrary names of various object types for generating said content of said computer application, said form of said computer application, and said functionality of said computer application;
managing said arbitrary objects in an object library;
deploying said arbitrary objects from said object library into a design framework to create said computer application; and
swapping an arbitrary object of one type with an arbitrary object of another type.]
[ 55. A method for generating a web site on a host system in an arbitrary object framework that separates a content of said web site, a form of said web site, and a functionality of said web site, said method comprising:
creating arbitrary objects with corresponding arbitrary names of various object types for generating said content of said web site, said form of said web site, and said functionality of said web site;
managing said arbitrary objects in an object library;
deploying said arbitrary objects from said object library to a container page to create said web site; and
swapping an arbitrary object of one type with an arbitrary object of another type.]
[ 56. A method for generating a computer application on a host system in an arbitrary object framework that separates a content of said computer application, a form of said computer application and a functionality of said computer application, said method comprising:
creating arbitrary objects with corresponding arbitrary names of various object types for generating said content of said computer application, said form of said computer application, and said functionality of said computer application, said arbitrary objects being objects that can be created independently by individual preference, that are interchangeable, and that may be, but need not be, accessed solely by name, the object being an entity that can have form, content, or functionality or any combination of form, content and functionality;
managing said arbitrary objects in an object library; and
deploying said arbitrary objects from said object library into a design framework to create said computer application.]
[ 57. A method for generating a web site on a host system in an arbitrary object framework that separates a content of said web site, a form of said web site, and a functionality of said web site, said method comprising:
creating arbitrary objects with corresponding arbitrary names of various object types for generating said content of said web site, said form of said web site, and said functionality of said web site, said arbitrary objects being objects that can be created independently by individual preference, that are interchangeable, and that may be, but need not be, accessed solely by name, the object being an entity that can have form, content, or functionality or any combination of form, content and functionality;
managing said arbitrary objects in an object library; and
deploying said arbitrary objects from said object library to a container page to create said web site.]
Line #16 "Face the Camera"
courtesy of JonnyQwan Raging Bull # 340182:
This speaks volumes......
This blurb at the end of the deposition:
"That the amount of time used by each party at the
deposition is as follows:
Ms. Gossain: 5 hours, 32 minutes
Mr. Dossas: 13 minutes"
The Interwoven attorney spent 5 & 1/2 hours trying to get McAuley to slip up. She failed miserably!!!!
Here is the questioning, all 13 minutes of it by Dossas:
EXAMINATION
14 BY MR. DOSSAS:
15 Q. Mr. McAuley, when was the first time you wrote
16 a program? Face the camera.
17 A. When I was a teenager; I think, actually,
18 thinking back, it was probably around 1980.
19 Q. How old?
20 A. I would have been 16.
21 Q. Oh, okay. What kind of program did you write?
22 A. It was a game. I was using a Sinclair V80
23 computer, and I was trying to design a computer-based
24 role-playing game.
25 Q. Oh. Did you design one? Were you successful?
1 A. More or less.
2 Q. Okay. 16, you would have been in high school?
3 A. Correct.
4 Q. Did you write any other programs in high
5 school?
6 A. I had wrote a lot of programs, but none of them
7 were anything to write home about.
8 Q. What --
9 A. Fairly basic.
10 Q. Okay. None were commercialized?
11 A. No.
12 Q. Okay. How about in college, did you do a lot
13 of programming then?
14 A. I did, yes.
15 Q. What kind of programs did you write then?
16 A. I took a year and a half of computer courses
17 toward a computer science minor, and that included
18 FORTRAN programming on a VAX and -- and another course
19 that was a theoretical programming class, one of the
20 better classes that I've had, that was not just a
21 particular language but an amalgamation of all computer
22 languages into a single unified -- it wasn't a real
23 language, but it was a way to learn a little bit about
24 all of the different computer languages.
25 Q. (By Mr. Dossas) Where did you take thatcourse?
2 A. That was Pierce Junior College in California.
3 Q. California. Any other computer training or
4 education?
5 A. Yes. I also wrote basic programs on an
6 Apple II during college, and in addition to the FORTRAN
7 programming classes on the VAX computer. And then over
8 the years, I learned, after college, I continued to
9 learn and work with different programs, even though I
10 was primarily editing computer magazines, I continued to
11 develop software.
12 Q. Okay. And so from -- is it safe to say from
13 age 16 to the present, you've always been programming in
14 one form or another?
15 A. Yes.
16 Q. Okay. Ms. Gossain brought up Walls
17 Newspapers. I forget the exact name of the company. Do
18 you --
19 A. Walls New Media was the company that worked --
20 was a subsidiary of Walls Newspapers.
21 Q. Okay. And who was your contact at Walls New
22 Media?
23 A. Well, there were two, Lee Walls, Jr.
24 Q. Uh-huh.
25 A. And Bryan Bunch.
204
1 Q. And again, I'm sorry to fall into the same trap
2 as Ms. Gossain, but what was Bryan Bunch's --
3 A. He was the technical director for Walls New
4 Media.
5 Q. Walls New Media. And what did you sell Walls
6 New Media, what kind of --
7 A. NewsFlash.
8 Q. Just NewsFlash?
9 A. Just NewsFlash.
10 Q. Okay. And did that NewsFlash that you sold
11 them, did that have anything to do with arbitrary
12 objects?
13 A. No, sir.
14 Q. None at all?
15 A. None.
16 Q. Did they ever upgrade -- while -- while you
17 dealt with them -- how long did you deal with them? Let
18 me ask you that.
19 A. For many years they ran -- I think they
20 continued to use that original product that we sold them
21 until 2004.
22 Q. Okay.
23 A. So eight years, probably.
24 Q. Okay. And you had -- you had no contact with
25 Walls after 2004?
A. I did, actually, in 2004, I want to say, I
2 worked for them briefly to help them trans -- migrate
3 off of the product to another SQL-based solution.
4 Q. And that other SQL-based solution, what was
5 that?
6 A. I wasn't involved in the details. What I did
7 for them was help them extract the data from their old
8 NewsFlash product --
9 Q. Okay.
10 A. -- and export it to another format so that they
11 could build whatever application they wanted on top of
12 it.
13 Q. Okay. Did that 2000 -- did that transition,
14 did that transition in 2004 involve going to a system
15 that had anything to do with arbitrary objects?
16 A. No, sir.
17 Q. None at all?
18 A. No.
19 Q. So to your knowledge, Walls Media, News Media,
20 never implemented any -- anything involving arbitrary
21 objects?
22 A. That's correct. They never used the version of
23 our product that included the invention.
24 Q. Okay. Let me show you what Ms. Gossain
25 initially marked as Deposition Exhibit Number 1 for
1 identification.
2 A. Okay.
3 Q. That's U.S. patent -- the '744 patent.
4 A. Correct.
5 Q. And that patent names you as the inventor,
6 correct?
7 A. Correct.
8 Q. Did -- is -- are there anybody else that
9 contributed to this patent or to this invention that's
10 described in this patent?
11 A. No, sir.
12 Q. Let me direct your attention to exhibit --
13 McAuley Exhibit Number 9 for identification, and ask you
14 to take a look at it. And specifically, I'm going to
15 direct your attention to Page V000116.
16 A. Okay.
17 Q. Okay. Do you see that figure there?
18 A. Yes.
19 Q. Does that have anything to do with arbitrary
20 objects?
21 A. No, sir.
22 Q. Does anything in this document that you went
23 over with Ms. Gossain have anything to do with arbitrary
24 objects?
25 A. No, sir.
Q. Let me direct your attention to exhibit number
2 -- of McAuley Exhibit Number 10 for identification,
3 which is the next document on your stack. Could you
4 take that and take a look at that?
5 A. (Witness complies.) Okay.
6 Q. And I'm going to direct you to page -- I'm not
7 going to repeat the -- the prefix, but 26945, and Page
8 10, basically. I think you got it.
9 A. Got it.
10 Q. Okay. It's Interwoven PA00026945, for the
11 record. See that chart there that you talked to Mr. --
12 Ms. Gossain about?
13 A. Yes.
14 Q. Does that have anything to do with arbitrary
15 objects?
16 A. No, sir.
17 Q. Does anything in this document that you
18 reviewed with Ms. Gossain have anything to do with
19 arbitrary objects?
20 A. No, sir.
21 Q. Let me direct your attention again to exhibit
22 -- McAuley Exhibit 1 for identification, and just
23 represent to you that it's the '744 patent, and direct
24 your attention to Figure 5.
25 A. Okay.
208
1 Q. Does that having anything to do with arbitrary
2 objects?
3 A. No, sir.
4 Q. So it's not material to your invention?
5 A. No.
6 Q. Now, Ms. Gossain asked you about sales of
7 product in the 2000, 2001, 2002 time frame. And I
8 believe that was during the dot-com bust. Were you
9 involved in attempting to sell Adhesive product during
10 that time?
11 A. Yes, sir.
12 Q. Okay. After -- after Vertical obtained the
13 assets in bankruptcy -- indirectly through the bank --
14 the bank, were you involved in the -- the sales of any
15 product to any companies?
16 A. Only indirectly, yes.
17 Q. Sure.
18 A. I mean, as a support basis, yes.
19 Q. Do you remember any companies in any country
20 that you could recall the names of?
21 A. Yes. Actually, we talked about this earlier,
22 and I think the -- she had asked if there was company --
23 other companies, and the -- the Japanese company that
24 licensed our product and resold it, actually, had
25 several sales in Japan.
Q. Do you remember who their sales were to?
2 A. Yeah. It was Honda implemented the use of the
3 arbitrary object facility to develop 800 Web sites for
4 all their dealers in Japan.
5 Q. Okay. Do you remember about the time frame
6 that that happened?
7 A. Yeah. That would have been -- what, 2002,
8 2003, about. I'm not sure exactly what the time frame
9 was, but it was well after Vertical had taken over the
10 product.
11 Q. Okay. Anything else? Anybody else?
12 A. Yes. There was the World's Cup Soccer Web site
13 was also another --
14 Q. Okay.
15 A. -- project that they did.
16 Q. All right. Do you remember anything else?
17 A. No.
18 Q. Okay.
19 A. I don't remember any other ones, no.
20 MR. DOSSAS: Jennifer, I think I'm done.
21 Let me just quickly look at the notes.
22 MS. GOSSAIN: Sure.
23 MR. DOSSAS: Okay. Can we go off the
24 record for a couple of minutes?
25 THE VIDEOGRAPHER: We are off the record
210
1 at 4:49.
2 (Recess.)
3 THE VIDEOGRAPHER: We are back on the
4 record at 4:50.
5 MR. DOSSAS: I have no further questions.
11/09/201 CASE REFERRED to Magistrate Judge Kandis A. Westmore for Settlement (Entered: 11/09/2012)
U.S. District Court
California Northern District (San Francisco)
CIVIL DOCKET FOR CASE #: 3:10-cv-04645-RS
Interwoven, Inc. v. Vertical Computer Systems, Inc.
Assigned to: Hon. Richard Seeborg
Referred to: Magistrate Judge Joseph C. Spero
Magistrate Judge Kandis A. Westmore (Settlement)
Relate Case Cases: 3:11-cv-02425-RS
3:11-cv-00189-RS
Cause: 35:271 Patent Infringement
Courtesy of JonnyQwan Raging Bull # 339987:
From McAuley's deposition....
Very lengthy, but a good read....
Interesting background information about McAuley's background. VERY impressive!
All questions (unless otherwise marked as Mr Dossas, are from Jennifer Gossain, representing Interwoven.
All answers, unless otherwise marked are from Aubrey McAuley, the inventor of 744/629 patents
I am very impressed with McAuley's background and his testimony, under some hostile examination:
Starts a few minutes into over 5 hours of direct examination by Ms Gossain. There is much... much more. This is but a small part of the deposition.
A. Well, the -- I founded Adhesive Media in
21
October 1993, and in -- several years later,
22
approximately 1995, we split the company into two
23
entities, Adhesive Software and Eden Matrix Online
24
Services. And Adhesive Software -- well, I stayed with
25
Adhesive Software. So Adhesive Software then lasted
1
until 2000, approximately, and after dot-com bubble
2
burst, and then I was at EnFacet for a brief period of
3
time, and then at Vertical after that.
4
Q. Okay.
5
A. And I was doing essentially the same job the
6
entire time, working with the same products and the same
7
clients, for different employers, so that's why it's one
8
entry on my resume.
9
Q. Okay. So when you founded Adhesive Media, were
10
you the only founder or were there other people
11
involved?
12
A. No. There were other people involved there.
13
Q. Who were the other people?
14
A. John C. Herzer.
15
Q. Anyone else?
16
A. He was my partner.
17
Q. Okay. Was there anyone else?
18
A. No. Well, there were -- I had employees.
19
Q. How many employees did you have?
20
A. At the beginning? One.
21
Q. Who was that employee?
22
A. Patrick Price.
23
Q. And by the time you time split off Adhesive
24
Media into the two companies you mentioned, Adhesive
25
Software and Eden Matrix, how many employees did you
19
1
have at that time?
2
A. I'm not sure exact -- the exact number, but it
3
was probably four or five employees that were
4
specifically working for Adhesive.
5
Q. Adhesive Software?
6
A. And that began to grow rapidly.
7
Q. Okay.
8
A. Yes, Adhesive Software, correct.
9
Q. Okay.
10
A. And -- and we grew Adhesive Software up to the
11
point where we had 50 or so employees before the dot-com
12
bubble burst.
13
Q. So by the time you got to around the 2000 time
14
frame, Adhesive Software had about 50 employees?
15
A. Yes. Correct.
16
Q. That's really impressive.
17
A. We had the 6th Floor of this building, 100
18
Congress.
19
Q. Oh. Oh, really.
20
A. Yeah.
21
Q. Okay. You're revisiting your --
22
A. Yeah.
23
Q. -- office. Okay. So what about Eden Matrix
24
would -- was that company involved?
25
A. Eden Matrix was an online service company. We
20
1
were the -- Eden Matrix was the second commercial
2
Internet service provider in Austin. And was a very
3
different line of business from software development.
4
The software development actually started as an offshoot
5
of the online service. The online service came first,
6
and the demand for software development on the Internet
7
was so great at the time, because nobody knew anything
8
about the Internet.
9
Q. Uh-huh.
10
A. We pioneered the Internet, and there were a lot
11
of things that we did that nobody had ever done before,
12
including developing the -- the beginnings of this
13
application that was later became a patent.
14
Q. Okay.
15
A. So it started very early on.
16
Q. Yeah. I think I see on your LinkedIn profile
17
that there's a lot of milestones that we now take for
18
granted. And yeah, it's definitely true, because back
19
then it was so hard to type in these HTML codes. So
20
having, kind of like, I guess, how would you describe
21
it, is it a component-based kind of programming to
22
create Web sites? Is that --
23
MR. DOSSAS: Is that a question?
24
Objection, vague and ambiguous.
25
A. I don't know. What -- what exactly are you
asking? I mean, yes, I -- there was -- there were no
2
tools for developing of Web applications --
3
Q. (By Ms. Gossain) Uh-huh.
4
A. -- in those days. There were static documents,
5
and there was a specification for CGI interface, but
6
nobody had any software. You basically had to write
7
everything from scratch when we started.
8
Q. Okay. So you developed --
9
A. And we developed the tool set that helped
10
facilitate the application development on the Web.
11
Q. Okay. And how does it help facilitate the
12
application development?
13
MR. DOSSAS: Objection, vague and
14
ambiguous. How does what? I'm sorry, I just state --
15
Q. (By Ms. Gossain) You can answer.
16
A. Can you explain what it is you're trying to
17
find out?
18
Q. Sure. You said that --
19
A. As long as you're clear that we're not talking
20
about my patent here. At the time, we were developing
21
basic tools for automating the development of Web, Web
22
sites. We had several clients that were creating
23
e-commerce and wanted to create e-commerce solutions on
24
the net, and nobody had ever built e-commerce solutions
25
on the net, Internet, before. We were one of the first
companies to developed e-commerce solutions on the
2
Internet. International Golf Outlet was one of the big
3
companies that we did. Compubooks was another one of
4
the big companies that we did. Compubooks was the --
5
basically the model that Amazon used for their business
6
when they started, and they eventually ended up
7
acquiring Compubooks because he didn't have nearly the
8
backing of Jeff Bezos. So -- I mean, that's where we
9
were. We were there before Amazon, before Google,
10
before any of those companies; we were already
11
developing these technologies.
12
Q. Okay. So you mentioned this golf company and
13
Compubooks. When did you develop these Web sites for --
14
MR. DOSSAS: Objection, mischaracterizes
15
his testimony, your question does.
16
A. Okay. No, I'm not sure I understand the
17
question.
18
Q. (By Ms. Gossain) When did you first get
19
IGolf -- and I apologize if I got the company wrong --
20
A. International Golf Outlet.
21
Q. International --
22
A. The Web site was IGoGolf.com.
23
Q. Oh, great -- great name.
24
A. Yeah.
25
Q. And when did you develop this Web site using
this tool that you did?
2
A. '94.
3
Q. '94. Okay. And what about Compubooks?
4
A. Yeah, in the same time frame.
5
Q. In the time -- same time frame. And this tool
6
that you mentioned, did you have a name for it?
7
A. At the time, well, when we first started
8
developing it, we didn't realize that it was going to be
9
a tool at all, so no, we -- we developed software for
10
these particular Web sites. And then that -- but we got
11
so many requests for similar things that we realized
12
that we had to create a reusable tool set, and that's
13
when we created WebOS.
14
Q. And around what time period would you say WebOS
15
was developed, I guess, matured enough to call it a tool
16
set?
17
A. I'm not sure. I mean, it started in -- it
18
starts -- it started in 1994, and I'm not sure when we
19
produced the first WebOS material to package the
20
software as a product.
21
Q. Okay.
22
A. It might have been 1995 by that point.
23
Q. Okay. And you mentioned "we" developed this
24
WebOS tool. Who else assisted you?
25
A. Who worked for me?
Q. I guess, who developed --
2
A. Who were my partners?
3
Q. Yeah. Was it just you --
4
A. When I say "we," I'm talking about the company.
5
Q. Okay. Adhesive Software?
6
A. Yes.
7
Q. And who were the developers involved, other
8
than yourself?
9
A. Well, you want me to list all 50 employees?
10
Q. Were they all --
11
A. 40 of them were software developers and
12
customer engineers.
13
Q. Well, for those employees, was it just their
14
role to use this tool to help your clients actually
15
create their Web sites?
16
A. About half were core developers and about half
17
were customer solutions.
18
Q. And what do you mean by "core developer"?
19
A. Working on the tool -- the base tool set and
20
not interfacing directly with customers.
21
Q. Okay.
22
A. Whereas the other 20 were actually working on
23
specific customer projects.
24
Q. Using the WebOS tool?
25
A. Yeah. Correct
Q. So about half them were working on developing
2
the WebOS tool and, you know, enhancing it or whatever
3
and --
4
A. Right.
5
Q. -- and the other half were helping customers?
6
A. Correct.
7
Q. Okay. And I just want to clarify, so around
8
this time frame, I think we're talking about the 1995
9
time frame when WebOS has become a tool that you're
10
using to help these customers, did you already have
11
about 40 to 50 employees at the time?
12
A. No, that came later.
13
Q. Okay. So then this was a time that you had
14
about four to five people?
15
A. Right.
16
Q. And who -- do you recall who those people were?
17
A. Yeah. Let's see, we had a salesperson named
18
Scotty McNutt. We had a software developer named
19
Kenneth Scott. We had a software developer named Jim
20
McDonald. And I don't remember the other -- who else
21
was with us yet by that point. The company grew by
22
leaps and bounds, and so I would not be able to list off
23
all the names of the employees. But those were some --
24
a couple of the early ones.
25
Q. Okay.
A. The gentleman I mentioned earlier, Patrick
2
Price, was with -- was no longer with us by that
3
point. He was one of -- one of my first programmers and
4
-- but he didn't last.
5
Q. Okay. And so out of these people that you
6
mentioned, Scotty McNutt, Ken Scott, Jim McDonald, did
7
they all move on to EnFacet and Vertical later with you?
8
MR. DOSSAS: Excuse me. I didn't hear one
9
word. Could you read back the --
10
THE REPORTER: Move on to "something" and
11
Vertical. I didn't understand it either.
12
Q. (By Ms. Gossain) Did they all move on to
13
EnFacet and Vertical?
14
MR. DOSSAS: Oh, "EnFacet," that's the
15
word. Okay.
16
A. Some of them did. Most of them did not.
17
Q. (By Ms. Gossain) Okay.
18
A. The shift from Adhesive to EnFacet was a vast
19
downsizing.
20
Q. Okay. Can you describe EnFacet did?
21
A. EnFacet was a reseller of the technology. They
22
had a license to resell the -- the tool set, and so when
23
Adhesive failed, we went to work for EnFacet.
24
Q. Okay.
25
A. Because they had clients that were using the
tool set, and so we were able to find work there
2
continuing the product, to support and sell the product
3
to customers.
4
Q. I just want to clarify when you say "tool set"
5
and "the product," you mean the WebOS product; is that
6
correct?
7
A. No. By that point, we no longer owned the name
8
"WebOS" anymore.
9
Q. Okay.
10
A. We sold it.
11
Q. Who did you sell the WebOS name to?
12
A. A company called "My WebOS." Apparently, they
13
didn't do a very good trademark search before they
14
formed the company.
15
Q. Did My WebOS use the WebOS tool that you
16
developed?
17
A. No. It had nothing to do with us whatsoever.
18
We just sold them the name and domain.
19
Q. So after you sold the name, did you rename the
20
WebOS tool to something else?
21
A. Yes.
22
Q. What did you rename it to?
23
A. SiteFlash.
24
Q. And --
25
A. There were several different versions, though,
and there was BizFlash, SiteFlash, NewsFlash,
2
VarsityFlash. We basically went after vertical markets
3
with repackaged versions of the same tool set aimed at a
4
specific business.
5
Q. Okay. So all of these tools are basically
6
WebOS but just renamed to target a specific area; is
7
that correct?
8
A. No. They used the same core engine. They did
9
not use the same -- they looked and functioned entirely
10
different to the customer.
11
Q. Okay. And by the "core engine," do you mean
12
the WebOS tool?
13
A. Well --
14
Q. I understand where --
15
A. It's hard to draw the line exactly. Yeah.
16
Q. Okay.
17
A. The -- by the -- you know, by 2000, we were
18
using, obviously, the latest version, which included the
19
technology in our patent application.
20
Q. Okay. What was the first version of WebOS that
21
you developed?
22
MR. DOSSAS: Objection, vague and
23
ambiguous.
24
A. You already asked me that question, the first
25
version of WebOS, I already answered it.
MR. DOSSAS: And asked and answered.
2
Q. (By Ms. Gossain) Did you have a version
3
number?
4
A. Did I have a version number?
5
Q. Associated with that first product?
6
A. Yes.
7
Q. Well, I guess that's my question: What do you
8
recall --
9
A. The first time we probably talked about -- we
10
kept version numbers for every revision that we did, and
11
probably the first major release was WebOS 2.0. I -- by
12
the time we had any technology -- any of the -- well, I
13
would say the version numbers went all the way up to
14
Version 7, I think was the last version I remember. And
15
by that point, it was called "SiteFlash."
16
Q. Okay. So approximately what time period was
17
WebOS 2.0 around?
18
A. I --
19
MR. DOSSAS: Objection, vague to around or
20
introduced?
21
A. It was around for a long time.
22
MR. DOSSAS: I'm sorry.
23
A. I mean, were you --
24
Q. (By Ms. Gossain) When was it introduced then?
25
A. I don't recall exactly the date it was.
Looks like Seeborg has had enough!!!
He wants this thing settled!!!
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
v.
VERTICAL COMPUTER SYSTEMS, INC.,
Defendants.
____________________________________/
No. C 10-04645 RS
MAGISTRATE JUDGE REFERRAL
This matter is referred to a randomly assigned Magistrate Judge for the purpose of
completing a settlement conference within the next sixty (60) days. The parties shall promptly
notify the Court whether the case is resolved at the conference.
IT IS SO ORDERED.
DATED: 11/8/12
_______________________________
RICHARD SEEBORG
United States District Judge
For 744 cert, it looks like it will take about 2.5 weeks from now - here's what happened with 629 and their cert being publicized - took about 2.5 weeks:
629
10-11-2012 Input Issue Number and Issue Date for Reexamination
09-24-2012 Reexam Forwarded to Office of Publications
09-18-2012 RX - Mail Notice of Intent to Issue a Reexam Certificate
09-18-2012 RX - Ex Parte Notice of Intent to Issue a Reexam Certificate
744
11-08-2012 Reexam Forwarded to Office of Publications
10-25-2012 RX - Mail Notice of Intent to Issue a Reexam Certificate
Raging Bull # 339539:
McAuley - Case3:10-cv-04645-RS Document134-4 Filed11/05/12
(4 pages)
I, Aubrey McAuley, hereby declare:
l. I am the inventor of U.S. PatentNos.6,826,744 and7,7l6,629,the patents-in-suit in the lawsuit identified above.
2. I am also very familiar with the WebOS software system identified in the "Other Publications" section of U. S. Patent No. 7,716,629.
3. The prior WebOS system does not include the elements of the claimed inventions of the patents-in-suit. With the prior WebOS technology, if a company had multiple newspapers, for example, it would have to have a separate object library and database for each newspaper it owned. This is an absolute requirement because each object in the object library for each paper was hardcoded to specify details for that paper. The objects were not re-usable on the other papers; they were not interchangeable with each other; and they could not separately service multiple papers. Each object library was only able to function with the database and format templates for the specific paper for which it was coded during the initial installation. If a new object was created for one paper, and any other paper wanted to make use of that object, the second paper would have to copy the code from the first one, and a programmer would have to change the hardcoded details in that object before it could function in the second paper. This manual process would have to be repeated for each paper.
4. Between 1999 and 2001, Adhesive introduced Version 7 of WebOS, which by now had changed names to SiteFlash. It implemented arbitrary objects and the inventions of the patents-in-suit, while any version of WebOS smaller than 7 did not implement arbitrary objects. This new Version 7 also used an object library which supported a vastly more efficient technology in arbitrary objects, With the invention of arbitrary objects, SiteFlash could have used a single object library to support all of the newspapers of the multi-newspaper customer in the above example. A programmer would only need to create a single object, which could then be syndicated to each paper without any further effort by the programmer. The specification of the U.S. Patent No. 6,826,744 in column 2, lines 43-49, and column 6, lines 30-45 explains how the use of arbitrary objects solved the problems described above.
I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct and based upon my personal knowledge, and if called upon as a witness, I could and would testify thereto.
Executed this (5th) day of November, 2012
New Pacer out of SF.....
Sounds like a settlement is not likely. Vertical must be asking for "Big $$$$$"!!!!!!
BIJAL V. VAKIL (Cal. Bar No. 192878)
bvakil@whitecase.com
NOAH A. BRUMFIELD (Cal. Bar No. 203653)
nbrumfield@whitecase.com
JENNIFER P. GOSSAIN (Cal. Bar No. 254174)
jgossain@whitecase.com
THOMAS C. FLYNN (Cal. Bar No. 257945)
tflynn@whitecase.com
WHITE & CASE LLP
5 Palo Alto Square, 9th Floor
3000 El Camino Real
Palo Alto, CA 94306
Telephone: 650.213.0300
Facsimile: 650.213.8158
Attorneys for Plaintiff and Counterclaim Defendant
Interwoven, Inc.
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
vs.
VERTICAL COMPUTER SYSTEMS, INC.,
Defendant.
No. 3:10-cv-4645-RS
AMENDED SUPPLEMENTAL JOINT
CASE MANAGEMENT STATEMENT
Pursuant to Federal Rule of Civil Procedure 26(f) and Northern District of California Local
Rule 16-9, Plaintiff Interwoven, Inc. (“Interwovenâ€) and Defendant Vertical Computer Systems,
Inc. (“Verticalâ€) submit the following Amended Supplemental Joint Case Management Statement.
The parties conducted teleconferences and exchanged proposed drafts during the week of October
29, 2012. Thomas Flynn participated in these conferences on behalf of Interwoven. Vasilios
Dossas participated on behalf of Vertical.
Case3:10-cv-04645-RS Document132 Filed11/01/12 Page1 of 7
2 JOINT CASE MANAGEMENT STATEMENT
CASE NO. 10-CV-4645-RS
1. Jurisdiction and Service
No supplement needed.
2. Facts
No supplement needed.
3. Legal Issues
Plaintiff’s Supplemental Statement: The principal legal issues in this case are the
invalidity and unenforceability of the Patents-In-Suit and the non-infringement of the
Patents-In-Suit by Interwoven’s products. Interwoven filed this declaratory judgment suit against
Vertical on October 14, 2010. Interwoven contends that the Patents-In-Suit are invalid under 35
U.S.C. §§ 101, 102, 103, and/or 112, and unenforceable as a result of inequitable conduct before the
United States Patent and Trademark Office (“PTOâ€). Vertical then filed a counterclaim for patent
infringement. Vertical purports to be the owner of the Patents-In-Suit and has counterclaimed that
Interwoven infringes the Patents-In-Suit. Interwoven denies Vertical’s allegations of infringement
and contends Vertical is not entitled to damages for patent infringement under either a reasonable
royalty, lost profits, or any other damages theory, and that Vertical is not entitled to any other form
of relief, including injunctive relief. Interwoven asserts this is an exceptional case under 35 U.S.C.
§ 285 and that Interwoven is entitled to attorneys’ fees and costs.
Requests for reexamination of the ’744 Patent and the ’629 Patent were filed on January 6,
2012, and March 5, 2012, respectively. In the reexamination of the ’744 Patent, independent
claims 1 and 26 were cancelled, claims 2-5, 7, 9-11, 18, 21, 23-25, 27-29, 31, 33, 40, 45-49, 52, and
52 were amended, new claims 54-57 were added and allowed, and the remaining claims subject to
reexamination were confirmed. A notice of intent to issue a reexamination certificate was issued in
the reexamination of the ’744 Patent on October 25, 2012. In the reexamination of the ’629 Patent,
claims 1-6, 8-17, 19, 20, 28, and 31 were amended, and the remaining claims subject to
reexamination were confirmed. A reexamination certificate was issued in the reexamination of
the’629 on October 12, 2012. Once a reexamination certificate issues in the reexamination of
the’744 Patent, based on the final versions of the claims added and amended during the
Case3:10-cv-04645-RS Document132 Filed11/01/12 Page2 of 7
3 JOINT CASE MANAGEMENT STATEMENT
CASE NO. 10-CV-4645-RS
reexaminations, Interwoven may move to limit damages based on the doctrine of intervening
rights.
In its February 22, 2011 counterclaim, Vertical initially asserted that Interwoven infringed
claims 1-11, 18-19, 21, 23-33, 40-41, and 45-53 of the ’744 Patent and claims 1-6, 8-17, 19-26, and
28-32 of the ’629 Patent. Eighteen months later, on August 31, 2012, and citing the same sources
that were publicly available to Vertical prior to the filing of this litigation, Vertical added
allegations that Interwoven also infringed claims 16-17, 22, 38-39, 43-44 of the ’744 Patent, as well
as new claims 56-57 from the still-pending reexamination of the’744 Patent. On October 16, 2012,
Judge Spero allowed the addition of the new claims to Vertical’s infringement contentions, but
rejected the addition of claims still in reexamination. Based on the PTO’s notice of intent to issue a
reexamination certification for the ’744 Patent, Interwoven is working in good faith with Vertical to
amend Vertical’s infringement contentions based on the reexamination so that the cancelled claims
can be replaced with the newly allowed amended claims. With respect to the additional claims,
Interwoven may seek additional claim construction on additional, disputed terms.
Defendant’s Supplemental Statement:
Vertical contends that Interwoven manufactures, makes, uses, sells and/or offers for sale
software such as the Interwoven TeamSite product that infringes all the claims identified in its
amended infringement contentions, including newly added claims 56 and 57 of the '744 patent.
Interwoven has also induced others to infringe and/or has contributorily infringed those claims of
the '744 and '629 patents. Vertical contends that Interwoven intentionally concealed its
infringement of the '744 patent and that Interwoven continues to infringe the '744 and '629 patentss.
Acocordingly, Interwoven is a willful inringer of the '744 and '629 patents. Thus, this case is
exceptional under 35 U.S.C. § 285, and Vertical is entitled to multiplication of its damages, up to
three times, and to its attorneys' fees and costs. Vertical also seeks a permanent injunction.
Interwoven moved to strike the amended infringement contentions served by Vertical
pursuant to the Stipulation between the parties. Magistate Spero denied that motion as to all claims,
except the two newly added claims, because the Patent Office had not yet issued a notice of intent to
Case3:10-cv-04645-RS Document132 Filed11/01/12 Page3 of 7
4 JOINT CASE MANAGEMENT STATEMENT
CASE NO. 10-CV-4645-RS
allow those claims. He suggested that Vertical file a motion to reinstate the infringement
contentions for claims 56 and 57 as soon as the Patent Ofrice issued the notice. Those claims
merely include the previous claims of the '744 patent with this Court's claim construction for
"arbitrary objects" embedded into them. Should Interwoven oppose the reinstatement of those
contentions, Vertical will file the motion suggested by Magistrate Spero and will oppose any
motion for a new claim construction, as the new claims do not add any new claimed subject matter
into this case. Vertical will also oppose any motion based on intervening rights.
4. Motions
Plaintiff’s Supplemental Statement: Interwoven filed a motion for summary judgment of
unenforceability due to inequitable conduct and invalidity due to violation of the on-sale bar on
October 22, 2012. Interwoven anticipates filing additional motions for summary judgment and
motions in limine on the issues of invalidity and/or non-infringement as well as a motion for
summary judgment on the issue of damages.
There are no other pending motions.
Defendant's Supplemental Statement: Vertical does not plan to file any dispositive
motions.
5. Amendment of Pleadings
No supplement needed.
6. Evidence Preservation
No supplement needed.
7. Disclosures
No supplement needed.
8. Discovery
Fact discovery is complete. The parties have reached an agreement for the depositions three
witnesses, namely Rajib SenGupta, Jack Stone, and Ivan Posey, to take place after the close of fact
discovery in order to accommodate the schedules of these witnesses.
Case3:10-cv-04645-RS Document132 Filed11/01/12 Page4 of 7
5 JOINT CASE MANAGEMENT STATEMENT
CASE NO. 10-CV-4645-RS
The parties expect expert discovery to be completed by February 15, 2013 in accordance
with the Court’s September 11, 2012 Order. See Dkt. No. 125.
9. Class Actions
No supplement needed.
10. Related Cases
No supplement needed.
11. Relief
No supplement needed.
12. Settlement and ADR
The Parties remain far apart on settlement and have not engaged in further ADR.
Plaintiff’s Supplemental Statement: Interwoven remains open to ADR options, and to
additional court-ordered mediation.
Defendant’s Supplemental Statement: Vertical has made various settlement proposals,
including cross-licensing, payment of money, and other business solutions. Vertical believes that
further ADR attempts will be fruitless as Interwoven has not reacted positively to any proposal
offered by Vertical.
13. Consent to Magistrate Judge for All Purposes
No supplement needed.
14. Other References
No supplement needed.
15. Narrowing of Issues
No supplement needed.
16. Scheduling
The Court set a schedule through trial in its May 25, 2012 Order, as modified by the
September 11, 2012 Order. See Dkt. Nos. 117, 125. Trial is set to begin on August 12, 2013. The
Parties do not anticipate any changes to the schedule at this time.
Case3:10-cv-04645-RS Document132 Filed11/01/12 Page5 of 7
6 JOINT CASE MANAGEMENT STATEMENT
CASE NO. 10-CV-4645-RS
17. Trial
No supplement needed.
18. Disclosure of Non-Party Interested Entities or Persons
No supplement needed.
Dated: November 1, 2012
Respectfully submitted,
WHITE & CASE LLP
By: /s/ Bijal V. Vakil
Bijal V. Vakil
ATTORNEYS FOR PLAINTIFF
INTERWOVEN, INC.
Respectfully submitted,
NIRO, HALLER & NIRO
By: /s/ Vasilios Dossas
Vasilios Dossas
ATTORNEYS FOR DEFENDANT
VERTICAL COMPUTER SYSTEMS, INC.
courtesy of JonnyQwan Raging Bull #338831:
New Pacer out of San Francisco....
I think interwoven is really starting to pi$$ off Judge Seeborg!!!!
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
v.
VERTICAL COMPUTER SYSTEMS,
Defendant.
____________________________________/
No. CV 10-04645 RS
ORDER DENYING MOTION TO
SEAL AND SETTING HEARING
DATE FOR MOTION FOR
SUMMARY JUDGMENT
Plaintiff filed an administrative motion to file portions of a summary judgment motion
under seal. The redacted motion for summary judgment indicated plaintiff contemplated a
November 29, 2012 hearing date for the substantive motion. However, plaintiff failed to
properly notice that date and, as a result, the hearing has not been set. That date is now closed.
Consequently, plaintiff’s motion for summary judgment shall be heard on December 13, 2012 at
1:30 p.m.
Furthermore, most, if not all, of the information plaintiff has requested be filed under seal
does not meet the requirements of Civil Local Rule 79-5. Simply designating documents as
“highly confidential†during the discovery process does not entitle them to be filed under seal in
court. Plaintiff’s motion to file under seal is denied without prejudice to re-file an appropriately
“narrowly tailored†request.
IT IS SO ORDERED
Case3:10-cv-04645-RS Document131 Filed10/30/12 Page1 of 2
NO. 12-CV-00014 RS
ORDER
United States District Court
For the Northern District of California
Dated: 10/30/12
RICHARD SEEBORG
UNITED STATES DISTRICT JUDGE
Courtesy of Smothsailing20 Raging Bull #338143744 Cert issued today
90/009,982 SYSTEM AND METHOD FOR GENERATING WEB SITES IN AN ARBITRARY OBJECT FRAMEWORK 2556.205 Printer Friendly Version
Transaction History
Date Transaction Description
10-25-2012 RX - Mail Notice of Intent to Issue a Reexam Certificate
10-23-2012 RX - Ex Parte Notice of Intent to Issue a Reexam Certificate
Raging Bull # 338148:
"All claims upheld including newly added claims which cancelled claims 1 & 26, per their agreement with the examiner "
Here is Interwoven's motion...
30 pages worth, minus a bunch of redacted info (Blacked out )
Sounds very desperate!!!! $$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$
BIJAL V. VAKIL (Cal. Bar No. 192878)
bvakil@whitecase.com
NOAH A. BRUMFIELD (Cal. Bar No. 203653)
nbrumfield@whitecase.com
JENNIFER P. GOSSAIN (Cal. Bar No. 254174)
jgossain@whitecase.com
THOMAS C. FLYNN (Cal. Bar No. 257945)
tflynn@whitecase.com
WHITE&CASE LLP
3000 El Camino Real
5 Palo Alto Square, 9th Floor
Palo Alto, CA 94306
Telephone: (650) 213-0300
Facsimile: (650) 213-8158
ATTORNEYS FOR PLAINTIFF AND COUNTERCLAIMDEFENDANT
INTERWOVEN, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
vs.
VERTICAL COMPUTER SYSTEMS, INC.,
Defendant.
)))))))))))))))))
Civil Case No.: 3:10-cv-04645-RS
PLAINTIFF AND COUNTERCLAIM
DEFENDANT INTERWOVEN, INC.’S NOTICE
OFMOTION AND MOTION FOR SUMMARY
JUDGMENT FOR UNENFORCEABILITY AND
INVALIDITY OF U.S. PATENT NO. 6,826,744
AND U.S. PATENT NO. 7,716,629
Date: November 29, 2012
Time: 1:30 p.m.
Dept: Courtroom 3
Judge: Hon. Richard Seeborg
JURY TRIAL DEMANDED
FILED UNDER SEAL
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AND INVALIDITY OF THE ’744 AND ’629 PATENTS
CASE NO. 3:10-CV-4645-RS
TO DEFENDANT AND ITS ATTORNEY OF RECORD:
PLEASE TAKE NOTICE that on November 29, 2012 at 1:30 p.m., or as soon thereafter
as the matter may be heard, before the Honorable Judge Richard Seeborg in Courtroom 3 of this
Court, located at 450 Golden Gate Avenue, San Francisco, CA 94102, Plaintiff and
Counterclaim-Defendant Interwoven, Inc. (“Interwovenâ€) will, and hereby does, move this Court
for an order of Unenforceability and Invalidity of U.S. Patent No. 6,826,744 and U.S. Patent No.
7,716,629 (collectively, “Patents-in-Suitâ€). The Patents-in-Suit are unenforceable because the
inventor knew of his own WebOS product and intentionally withheld this material prior art with
the intent to deceive the U.S. Patent and Trademark Office. Further, the Patents-in-Suit are
invalid under the 35 U.S.C. § 102(b) on-sale bar because the claimed inventions in the Patents-in-
Suit were based upon the inventor’s own WebOS line of products, which were on sale and in
public use more than one year prior to filing of the Patents-in-Suit. This motion is based upon
this Notice of Motion, the Memorandum of Points and Authorities in Support of the Motion, all
pleadings and records on file in this action and any and all other arguments and evidence
presented to this Court at, or before, the hearing on this motion.
Dated: October 22, 2012 Respectfully submitted,
WHITE&CASE LLP
By: /s/ Bijal V. Vakil
Bijal V. Vakil
ATTORNEYS FOR PLAINTIFF AND COUNTERCLAIMDEFENDANT
INTERWOVEN, INC.
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NOAH A. BRUMFIELD (Cal. Bar No. 203653)
nbrumfield@whitecase.com
BIJAL V. VAKIL (Cal. Bar No. 192878)
bvakil@whitecase.com
JENNIFER P. GOSSAIN (Cal. Bar No. 254174)
jgossain@whitecase.com
THOMAS C. FLYNN (Cal. Bar No. 257945)
tflynn@whitecase.com
WHITE&CASE LLP
3000 El Camino Real
5 Palo Alto Square, 9th Floor
Palo Alto, CA 94306
Telephone: (650) 213-0300
Facsimile: (650) 213-8158
ATTORNEYS FOR PLAINTIFF AND COUNTERCLAIMDEFENDANT
INTERWOVEN, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
vs.
VERTICAL COMPUTER SYSTEMS, INC.,
Defendant.
)))))))))))))))))))
Civil Case No.: 3:10-cv-04645-RS
PLAINTIFF AND COUNTERCLAIM
DEFENDANT INTERWOVEN, INC.’S
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF ITS MOTION
FOR SUMMARY JUDGMENT FOR
UNENFORCEABILITY AND INVALIDITY OF
U.S. PATENT NO. 6,826,744 AND U.S.
PATENT NO. 7,716,629
Date: November 29, 2012
Time: 1:30 p.m.
Dept: Courtroom 3
Judge: Hon. Richard Seeborg
JURY TRIAL DEMANDED
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TABLE OF CONTENTS
I. INTRODUCTION................................................................................................................... 1
II. STATEMENT OF UNDISPUTED FACTS ........................................................................... 3
A. The WebOS Product Pre-dates the Patents-in-Suit ...................................................... 3
B. The Prior Art, Parent Patent, and Child Patent Contain the Same Drawing
Depicting the WebOS Product ..................................................................................... 4
C. The Inventor Confirmed that these Drawings Were Correct by Leaving them
Unchanged in the Recent Reexaminations of the Patents-in-Suit ................................ 7
III. LEGAL STANDARD FOR SUMMARY JUDGMENT ........................................................ 7
IV. ARGUMENT .......................................................................................................................... 9
A. The Patents-in-Suit are Unenforceable Because the Inventor Engaged in
Inequitable Conduct and Intentionally Deceived both the Patent Office and the
Public ............................................................................................................................ 9
1. The Inventor Provided the WebOS Diagram to His Patent Attorney ............... 10
2. The ’744 Patent Refers to the WebOS Diagram as an Embodiment of the
Invention ........................................................................................................... 11
3. The Inventor Intentionally Misled the Patent Office by Failing to Disclose
WebOS in the ’744 Patent ................................................................................ 13
4. Alternatively, the Inventor Intentionally Misled the Patent Office by
Disclosing the WebOS Drawing in the ’744 Patent as an Embodiment of the
Invention ........................................................................................................... 18
5. Infectious Unenforceability Also Renders the Child ’629 Patent
Unenforceable ................................................................................................... 18
6. Alternatively, the ’629 Patent is Not Entitled to the Filing Date of the
Unenforceable ’744 Patent................................................................................ 19
B. Both the ’744 and ’629 Patents Are Subject to an On-Sale bar and are Invalid in
Light of the Sale and Public Use of the Inventor’s Own WebOS Product ................ 19
1. It is Undisputed WebOS Was On Sale and in Public Use in the United
States More than One Year Prior to the Filing Date of the ’744 Patent ........... 20
2. WebOS is an Embodiment of the ’744 Patent and was Ready to Patent Prior
to the Filing of the ’744 Patent ......................................................................... 20
V. CONCLUSION ..................................................................................................................... 23
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TABLE OF AUTHORITIES
Page(s)
Abbott Labs. v. Geneva Pharms., Inc.,
182 F.3d 1315 (Fed. Cir. 1999) ........................................................................................... 9, 20
Advanced Magnetic Closures, Inc. v. Rome Fastener,
607 F.3d 817 (Fed. Cir. 2010) ................................................................... 13, 14, 15, 16, 17, 18
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1985) .................................................................................................................. 7
Aventis Pharma S.A. v. Hospira, Inc.,
675 F.3d 1324 (Fed. Cir. 2012) ............................................................................................... 13
Baxter Int’l, Inc. v. McGaw, Inc.,
149 F.3d 1321 (Fed. Cir. 1998) ............................................................................................... 19
Celotex Corp. v. Catrett,
477 U.S. 317 (1986) .................................................................................................................. 7
Fox Indus., Inc. v. Structural Preservation Sys., Inc.,
922 F.2d 801 (Fed. Cir. 1990) ........................................................................................... 18, 19
In re Cygnus Telecommc’ns Tech., LLC,
481 F. Supp. 2d 1029 (N.D. Cal. 2007) (Whyte, J.) ........................................................... 8, 21
Pfaff v. Wells Elecs., Inc.,
525 U.S. 55 (1998) .......................................................................................................... 8, 9, 20
Scaltech, Inc. v. Retec/Tetra, LLC,
269 F.3d 1321 (Fed. Cir. 2001) ................................................................................. 8, 9, 20, 21
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
537 F.3d 1357 (Fed. Cir. 2008) ................................................................................................. 8
Therasense, Inc. v. Becton Dickinson & Co.,
649 F.3d 1276 (Fed. Cir. 2011) ..................................................................................... 8, 13, 17
Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:04-cv-02123,
2012 LEXIS 42100 (N.D. Cal. Mar. 27, 2012) ......................................................................... 7
Townsend Eng’g Co. v. HiTec Co.,
829 F.2d 1086 (Fed. Cir. 1987) ................................................................................................. 7
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STATUTES
35 U.S.C. § 102(b) ........................................................................................ 3, 4, 7, 8, 9, 11, 19, 23
OTHER AUTHORITIES
Fed. R. Civ. P. 56 ............................................................................................................................ 7
MPEP § 1.56 ................................................................................................................................... 8
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I. INTRODUCTION
The two patents in this case, U.S. Patent No. 6,826,744 (the “’744 Patentâ€) and the child
U.S. Patent No. 7,716,629 (the “’629 Patentâ€) (collectively, “Patents-in-Suitâ€), are both based on
the inventor’s own product, WebOS, which was on sale and in public use years before October 1,
1999, the filing date of the parent ’744 Patent. In the application that resulted in the ’744 Patent,
the inventor included a drawing depicting an embodiment of his invention—a drawing identical
to the one used in the manuals to describe his own earlier WebOS product. This WebOS drawing
has been labeled as Figure 5 in the Patents-in-Suit. Despite knowing that the WebOS product was
on sale and in public use for years before filing the patent applications, the inventor failed to
disclose this material prior art product to the United States Patent and Trademark Office (“Patent
Officeâ€) during the prosecution of the parent ’744 Patent. The inventor now tries to distance
himself from this inequitable conduct by claiming that Figure 5, the WebOS drawing, should
never have been part of the patent disclosures, or if it should have been, it only describes an
“environment†of the invention, not an embodiment.
The inventor’s attempts to explain away his inequitable conduct now are wholly
unconvincing. Tellingly, the inventor has repeatedly presented this exact same WebOS drawing
to the Patent Office with no changes whatsoever and without admitting to the Patent Office that
any change based on the drawings was necessary. This WebOS drawing, taken from the
inventor’s earlier WebOS product manuals, was included in the ’744 Patent application and used
to describe an embodiment of the invention. The exact same WebOS drawing was included in the
child application that resulted in the ’629 Patent.1 This WebOS drawing, Figure 5 of the Patentsin-
Suit, remained unchanged throughout the recent reexaminations of the Patents-in-Suit.
Moreover, the specification detailing Figure 5 as an embodiment of the inventions as claimed in
the Patents-in-Suit never changed, not even during the recent reexaminations. Although, again,
1 Another continuation application, U.S. Patent Appl. No. 12/777,885, which also claims priority
back to the parent ’744 Patent, is currently pending in front of the Patent Office. While that
application has not yet been confirmed as patentable by the Patent Office, and thus is not at issue
in this case, notably, the exact same WebOS drawing is again disclosed in that application.
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the patentee attempted to cover up this inequitable conduct by simply substituting the word
“environment†whenever the word “embodiment†appeared in the specification when referring to
the WebOS drawing in the child ’629 Patent. Such an attempt to continue the deception to the
Patent Office is, again, wholly unconvincing.
The patentee cannot have his cake and eat it too. Either the WebOS drawing is part of the
patented subject matter, or it is not. If the WebOS drawing is part of the patented subject matter,
then the inventor’s own WebOS product, on sale years before he filed for a patent, renders the
Patents-in-Suit invalid. If the WebOS drawing is not part of the patented subject matter, then it is
incumbent on the patentee to return to the Patent Office to try to get these Patents-in-Suit reissued
in light of full disclosures about the inventor’s own prior art WebOS product. It would then be up
to the Patent Office to confirm whether the claimed invention is patentable. Otherwise, the
inventor’s ever-shifting story, running the gamut from the WebOS drawing describing an
embodiment of the claimed invention, to the WebOS drawing describing an “environment†of the
claimed invention, to the WebOS drawing having nothing to do with the claimed invention, runs
entirely afoul of the public notice function of the United States Patent Laws.
Interwoven submits the following issues for the Court’s consideration and seeks a
determination:
1) that the parent ’744 Patent is unenforceable due to inequitable conduct based on
the inventor’s failure to disclose material prior art, namely his own WebOS prior
art, with an intent to deceive the Patent Office;
2) that the child ’629 Patent, which claims priority to the parent ’744 Patent, is
infected by the unenforceability of the parent ’744 Patent, and is thus also
unenforceable;
3) that in the alternative, the child ’629 Patent is not entitled to the filing date of the
invalid and unenforceable parent ’744 Patent; and/or
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4) that the Patents-in-Suit are invalid under the 35 U.S.C. § 102(b) on-sale bar
because the inventor’s own WebOS product was on sale and in public use over one
year prior to October 1, 1999, the filing date of the ’744 Patent.
There are no disputed facts at issue here. There is no dispute that the inventor included a
drawing from his own prior WebOS product in the application that resulted in the ’744 Patent.
There is no dispute that the ’744 patent specification describes this WebOS drawing as an
embodiment of the invention. There is no dispute that the inventor knew of his own WebOS
product and in fact, conceded the product was on sale well before October 1, 1998, more than one
year prior to the filing date of the ’744 patent. There is no dispute that during the prosecution of
the ’744 Patent, the inventor never disclosed the WebOS product to the Patent Office, or the fact
that the drawing describing an embodiment of the claimed invention came from the WebOS
product, which had been on sale and in public use for years. There is no dispute that the child
’629 Patent is a continuation of the parent ’744 Patent and claims priority to the ’744 Patent.
Accordingly, the Patents-in-Suit are invalid and/or unenforceable and this Court should grant
Interwoven’s motion for summary judgment.
II. STATEMENT OF UNDISPUTED FACTS
A. The WebOS Product Pre-dates the Patents-in-Suit
The inventor’s own company, Adhesive Software, Inc. (“Adhesiveâ€), had been marketing
and selling its WebOS line of products for years, long before the patent applications, long before
Vertical’s acquisition of the applications that lead to the Patents-in-Suit, and long before
Vertical’s assertion of these Patents-in-Suit in litigation against numerous companies, including
Microsoft Corporation, LG Electronics, Samsung Electronics—and in this case, Interwoven. Red
act
e
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Redacted
Redacted
Redacted
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Redacted
Redacted
Redacted
Redacted
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Figure 5 of the ’744 and ’629 Patents
Redacted
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C. The Inventor Confirmed that these Drawings Were Correct by Leaving them
Unchanged in the Recent Reexaminations of the Patents-in-Suit
As seen above, the inventor and Vertical used the same WebOS diagram as Figure 5,
disclosing the same elements and features in the same relationships, for both the ’744 and ’629
Patents. During the recent reexaminations of both patents, the inventor and Vertical again chose
to leave the drawing untouched. Further, despite attempts to now call Figure 5 an “environmentâ€
rather than an embodiment of the invention, the description of Figure 5 in the specification
remains otherwise unchanged.
III. LEGAL STANDARD FOR SUMMARY JUDGMENT
Summary judgment should be granted where “there is no genuine issue as to any material
fact and that the moving party is entitled to a judgment as a matter of law.†Fed. R. Civ. P. 56;
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The standard for summary judgment requires
that “there be no genuine issue of material fact,†meaning that “the mere existence of some
alleged factual dispute between the parties will not defeat an otherwise properly supported motion
for summary judgment.†Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1985)
(emphasis in original). A genuine issue of material fact exists “if the evidence is such that a
reasonable jury could return a verdict for the non-moving party.†Id. at 248.
“Summary judgment is as appropriate in a patent case as in any other.†Townsend Eng’g
Co. v. HiTec Co., 829 F.2d 1086, 1089 (Fed. Cir. 1987). Here, Interwoven presents four issues
suitable for summary judgment determination: that the parent ’744 Patent is unenforceable due to
inequitable conduct; that the child ’629 Patent is infected by the unenforceability of the
parent ’744 Patent and is also unenforceable; that in the alternative, the child ’629 Patent is not
entitled to the filing date of the invalid and unenforceable parent ’744 patent; and/or that the
Patents-in-Suit are invalid under the 35 U.S.C. § 102(b) on-sale bar. See, e.g., Therasense, Inc. v.
Becton, Dickinson and Co., Case No. 3:04-cv-02123, 2012 LEXIS 42100, at *39-41 (N.D. Cal.
Mar. 27, 2012) (Alsup, J.) (granting summary judgment of unenforceability on remand, due to
inequitable conduct based on inconsistent, incoherent explanation without documentary
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corroboration of alleged reasons to withhold prior art); In re Cygnus Telecommc’ns Tech., LLC,
481 F. Supp. 2d 1029, 1051-52 (N.D. Cal. 2007) (Whyte, J.) (granting summary judgment of
invalidity based on the on-sale bar due to public use of the system even when inventor had only
sought to recoup costs and not to make a profit).
A person applying for a patent has a continuing obligation to disclose prior art to the
Patent Office. See MPEP at § 1.56. To prevail on a motion for inequitable conduct, a party must
show that an individual “failed to disclose material information†during the prosecution of the
patent application and the “individual did so with a specific intent to deceive the PTO.†Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008). Information
is material if “the PTO would not have allowed a claim had it been aware of the undisclosed prior
art.†Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011).
Specific intent requires a showing of clear and convincing evidence that Vertical “knew of the
reference, knew that it was material, and made a deliberate decision to withhold it.†Id. at 1290.
According to Therasense, materiality and intent are distinct prongs and should be considered
separately, without using a sliding scale approach to permit a lesser finding of one prong in light
of a stronger finding of the other. Id. at 1290.
Based on the on-sale bar, a person is not entitled to a patent if the invention was “in public
use or on sale in this country, more than one year prior to the date of the application.†35 U.S.C.
§ 102(b). The Supreme Court has set forth a two-pronged test for deciding whether the on-sale
bar portion of § 102(b) applies: (1) the product whose sale is claimed to be invalidating must be
the subject of a commercial offer for sale, and (2) the invention must be ready for patenting. Pfaff
v. Wells Elecs., Inc., 525 U.S. 55, 67-68 (1998). Regarding the former prong, the Federal Circuit
has held that it is “not necessary for [a defendant] to show that all embodiments of the invention
were on sale more than one year before filing. It is sufficient to show that one embodiment of the
invention was offered for sale during the one-year period.†Scaltech, Inc. v. Retec/Tetra, LLC,
269 F.3d 1321, 1330 (Fed. Cir. 2001). As for the latter prong, an invention is ready for patenting
when “the concept of the invention [is] complete,†with no express requirement that it be reduced
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to practice. Pfaff, 525 at 60-61, 66. “[P]roof that prior to the critical date the inventor had
prepared drawings or other descriptions of the invention that were sufficiently specific to enable a
person skilled in the art to practice the invention†can establish readiness for patenting. Id. at 67-
68. When an invention is on sale, this short-circuits the ready for patenting analysis, and
“obviates any need for inquiry into conception.†Scaltech, 269 F.3d at 1331 (quoting Abbott
Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1318-19 (Fed. Cir. 1999)).
Here, summary judgment is appropriate. The facts are undisputed. The inventor knew of
his own prior WebOS product. The WebOS product was on sale and in public use since at least
1996, more than one year prior to October 1, 1999, the filing of the application that resulted in the
parent ’744 Patent, to which the child ’629 Patent claims priority. Figure 5 of the Patents-in-Suit
is identical to the WebOS drawing taken from the WebOS product manuals, and is described as
an embodiment of the invention in the ’744 Patent. The patentee never disclosed the fact that
WebOS was on sale more than one year prior to the Patent Office during the prosecution of
the ’744 Patent. A negative inference of an intent to deceive must be made in light of the
patentee’s behavior throughout the prosecution of the child ’629 Patent, as well as during the
reexamination of the Patents-in-Suit. For example, the patentee now attempts to describe Figure
5 as an “environment,†not an “embodiment†of the inventions. And although the patentee
attempted to whitewash the specification by changing the word “embodiment†to the word
“environment†when referring to Figure 5, the specification describing Figure 5 remains
otherwise unchanged. Thus, the Patents-in-Suit are unenforceable because the inventor had
knowledge of his own prior-art WebOS product and intentionally deceived the Patent Office by
not disclosing it to the Patent Office despite having a continuing obligation to do so. Further, the
Patents-in-Suit are invalid due to the 35 U.S.C. section 102(b) on-sale bar.
IV. ARGUMENT
A. The Patents-in-Suit are Unenforceable Because the Inventor Engaged in
Inequitable Conduct and Intentionally Deceived both the Patent Office and
the Public
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illustrated an embodiment of the invention, the Patent Office would never have granted the
patent. This is precisely the definition of “materiality†set forth in Therasense, 649 F.3d at 1291
(finding that information is material if “the PTO would not have allowed a claim had it been
aware of the undisclosed prior artâ€).
3. The Inventor Intentionally Misled the Patent Office by Failing to
Disclose WebOS in the ’744 Patent
Despite including the WebOS drawing as Figure 5 and describing it as an embodiment of
the invention in the specification of the parent ’744 Patent, the inventor elected not to disclose the
WebOS product itself to the Patent Office during prosecution of that application. On the face of
the parent ’744 Patent and in its prosecution history, there is no mention of the WebOS product or
any materials pertaining to the WebOS product.
This selective disclosure—representing the diagram as the invention but hiding the
WebOS product itself (from which the diagram was taken)—can only be explained as deliberate
action by the patentee with the specific intent to mislead the Patent Office. See Aventis Pharma
S.A. v. Hospira, Inc., 675 F.3d 1324, 1335-36 (Fed. Cir. 2012) (affirming a district court’s finding
of specific intent to deceive the Patent Office when the patentees selectively chose to provide the
Patent Office with a reference identifying a particular problem to be solved but concealed other
prior art disclosing the corresponding solution).
The child ’629 Patent suffers from all of the same defects. The deliberate intent is even
more apparent because the inventor only disclosed his prior art WebOS system during the
prosecution of the child ’629 Patent after Microsoft raised it as prior art during litigation, almost
49 months after the filing of the child ’629 Patent application. Compare Vakil Decl. at Ex. I
(Information Disclosure Statement submitted during prosecution of the ’629 Patent (Dec. 22,
2008)) with Vakil Decl. at Ex. A (’629 Patent, filed Nov. 29, 2004).
The inventor’s evasive conduct during the deposition and total refusal to explain his patent
also weigh in favor of a finding of deceptive intent. Advanced Magnetic Closures, Inc. v. Rome
Fastener, 607 F.3d 817, 830-31 (Fed. Cir. 2010). In Advanced Magnetic Closures, the Federal
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4. Alternatively, the Inventor Intentionally Misled the Patent Office by
Disclosing the WebOS Drawing in the ’744 Patent as an Embodiment
of the Invention
The facts above are undisputed. Now, in an effort to overcome this clear inequitable
conduct, Vertical claims that the WebOS product and Figure 5 are entirely unrelated to the
invention of the Patents-in-Suit.
That WebOS (and Figure 5) bears no relationship whatsoever to the Patents-in-Suit is
completely unbelievable. But if it were true that there is no connection between the WebOS
product, Figure 5, and the alleged invention, then the patentee misled the Patent Office and the
public by putting forth a completely irrelevant diagram as an alleged embodiment, leaving the
same diagram in during prosecution of the ’629 Patent, and again leaving the same diagram in
during the recent reexamination of both Patents-in-Suit.
5. Infectious Unenforceability Also Renders the Child ’629 Patent
Unenforceable
Based on the doctrine of infectious unenforceability, inequitable conduct in the parent
’744 Patent also transfers to the child ’629 Patent. See Fox Indus., Inc. v. Structural Preservation
Sys., Inc., 922 F.2d 801, 803-804 (Fed. Cir. 1990) (finding that “the duty of candor extends
throughout the patent’s entire prosecution history†and a breach of this duty “may render
unenforceable all claims which eventually issue from the same or a related applicationâ€). The
Federal Circuit later clarified this doctrine, holding that claims in a divisional application bearing
no relation to the omitted art are not unenforceable due to inequitable conduct committed in the
Redacted
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parent. Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1332 (Fed. Cir. 1998) (emphasis
added).
The present case is in stark contrast to the Baxter exception and remains squarely within
the realm of the doctrine described by Fox. The claims of the child ’629 Patent extend from the
parent ’744 Patent through a continuation, not a divisional, and are also tied to the omitted
WebOS prior art product. The child ’629 Patent cites WebOS on its face, the amended
specification indicates that the WebOS diagram is an “environment†of the invention, and the
claims of the child ’629 Patent are merely system variants of the parent ’744 Patent claims. Vakil
Decl. at Ex. A (’629 Patent, col. 5:6-19).
Because the child ’629 Patent claims are inextricably linked to the omitted WebOS art
from the parent ’744 Patent, the commission of inequitable conduct during prosecution of the
parent ’744 Patent infects the child ’629 Patent and renders it unenforceable as well.
6. Alternatively, the ’629 Patent is Not Entitled to the Filing Date of the
Unenforceable ’744 Patent
If the Court finds that the child ’629 Patent is not infected by the unenforceability of the
parent ’744 Patent, at the very least, the child ’629 Patent should not be entitled to the filing date
of the invalid and unenforceable parent ’744 Patent. An invalid and unenforceable patent cannot
serve as an application back to which a continuation application may claim priority.
Interwoven therefore requests the Court find that the child ’629 Patent may not claim a
priority date any earlier than its November 29, 2004 filing date.
B. Both the ’744 and ’629 Patents Are Subject to an On-Sale bar and are Invalid
in Light of the Sale and Public Use of the Inventor’s Own WebOS Product
Not only are the Patents-in-Suit unenforceable, plagued by the inequitable conduct
committed during prosecution of the parent ’744 Patent, the Patents-in-Suit are also invalid under
35 U.S.C. § 102(b). Early sales and public use of the inventor’s own WebOS line of products
embodying the patents render the Patents-in-Suit invalid under the 35 U.S.C. § 102(b) on-sale
bar.
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1. It is Undisputed WebOS Was On Sale and in Public Use in the United
States More than One Year Prior to the Filing Date of the ’744 Patent
The initial step in analyzing the first prong of the on-sale bar analysis, regarding
commercial offer for sale, is to determine the earliest filing date of the patent at issue. The
inventor filed for the ’744 Patent on October 1, 1999. The critical date for application of the onsale
bar in this instance is one year earlier, October 1, 1998.
The second step, determining whether the product was the subject of a commercial offer
for sale, is clearly met in this case.
Vertical
does not dispute the occurrence of these transactions. Documents describing multiple sales,
offers for sale, and instances of public usage, including news articles and Vertical’s own press
releases, in addition to the inventor’s testimony, provide irrefutable support that the WebOS and
NewsFlash products were on sale, sold, and in public use prior to the October 1, 1998 date. Vakil
Decl. at Ex. F (McAuley Deposition Exhibit 6) (describing sales and existing public use of
WebOS and NewsFlash on January 11, 1998); Vakil Decl. at Ex. G (McAuley Deposition Exhibit
8) (describing use of NewsFlash by an early customer in 1996); Vakil Decl. at Ex. H (McAuley
Deposition Exhibit 15) (Adhesive’s web site describing WebOS and its selling price, circa 1996).
2. WebOS is an Embodiment of the ’744 Patent and was Ready to Patent
Prior to the Filing of the ’744 Patent
The second prong of the on-sale bar analysis is to determine whether an invention is ready
for patenting, when “the concept of the invention [is] complete.†Pfaff, 525 at 60-61, 66.
Readiness for patenting may be established by drawings or descriptions of the invention. Id. at
67-68. Further, when an invention is actually on sale, this “obviates any need for inquiry into
conception†and short-circuits the readiness analysis. Scaltech, 269 F.3d at 1331 (quoting Abbott
Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1318-19 (Fed. Cir. 1999)).
As the WebOS product was both on sale and captured in drawings and description of the
invention before the October 1, 1998 critical date, the second prong is met.
Redacted
Redacted
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Within the section labeled “Detailed Description of the Invention,†the specification of the
parent ’744 Patent describes that the “arbitrary objects,†central to the invention as claimed in the
Patents-in-Suit, permit the creation of “dynamic web pages wherein objects used to construct the
form, function, and content of the web page can contain dynamic elements and static elements.â€
Vakil Decl. at Ex. D (’744 Patent, col. 4:64-67). Immediately after this description, the patent
specification refers to Figure 5 as depicting “components of one embodiment of the present
invention used to generate web sites,â€5 specifically highlighting various WebOS elements
including a “Web OS Object Manager,†“WebOS object library,†and “WebOS Information
Database.†Id., at col. 5:4-17 (emphasis added).
The WebOS product is one and the same as the subject matter of the claimed invention as
disclosed in the Patents-in-Suit, and it was incumbent on the part of the inventor to serve the
public interest in disclosing this to the Patent Office. See In re Cygnus Telecommc’ns Tech. LLC,
481 F. Supp. 2d at 1050 (“The public interest is best served, and the most effective patent
examination occurs when, at the time an application is being examined, the Office is aware of and
evaluates the teachings of all information material to patentability.â€). Both the inventor and his
counsel “had a duty to ensure filings were accurate†as “patent applications are ex parte
proceedings which have substantial effect upon the rights of the public.†Id.
In the specification of the child ’629 Patent, Vertical swapped the word “embodimentâ€
with the word “environment,†under the guise of a typographical error. Vakil Decl. at Ex. A
(’629 Patent, col. 5:6-19).6 This change, proper or not, fails to alter the analysis. Even as a
purported “environment†of the invention, the diagram remains closely integrated to the WebOS
5 Vertical has claimed that its use of the legal word “embodiment†is a typographical error.
Vertical’s Opening Claim Construction Brief, at p. 4 (Oct. 27, 2011).
6 Notably, the patentee never sought to correct this “typographical†error in the parent ’744
Patent, through either a Certificate of Corrections when the patent first issued, through a reissue,
through the recent reexamination, or by any other means.
Redacted
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product, at least in terms of the object manager and object library, and still depicts a significant
relationship between WebOS and the subject matter of the patent. Moreover, Vertical disclosed
information about its WebOS product line to the Patent Office during prosecution of the ’629
Patent, further highlighting the strong relevance of WebOS to the subject matter of the patent.
Vakil Decl. at Ex. I (Information Disclosure Statement submitted during prosecution of the ’629
Patent (Dec. 22, 2008)).
See Vakil Decl. at Ex.
J (Vertical’s Response to Interwoven’s Second Set of Interrogatories (Nos. 6-13), p. 6 (response
to Interrogatory No. 10 stating that WebOS “does not describe or suggest any element of any
claim of the Patents-in-Suitâ€) (emphasis added)); Vertical’s Answer to the Amended Complaint,
Dkt. No. 45, at ¶¶ 23-28 (alleging that “[t]o the extent that Adhesive sold or offered for sale
software and/or services that can be described as ‘WebOS’ technology, those goods and/or
services were unrelated and totally immaterial to the invention of the ’744 Patent.â€) (emphasis
added);
Not only are the suggestions of Vertical and the inventor in direct conflict to the public
notice function of patents, Vertical and the inventor may not reap the benefits of disclosing a
specific embodiment, potentially avoiding prior art, and only later claim that the disclosure is of
something completely unrelated. If the WebOS diagram shows an embodiment of the invention,
then the parent ’744 Patent is invalid because the WebOS product depicted in the diagram was on
sale more than a year prior to the filing date of the parent ’744 Patent. The child ’629 Patent is
also invalid for the same reason, despite Vertical’s attempts to insulate it from WebOS. On the
other hand, if the WebOS diagram is completely unrelated to the invention as claimed by Vertical
and McAuley, then the PTO granted both of the Patents-in-Suit based on a deliberately
misleading and erroneous disclosure of what the claimed invention actually involves.
Redacted
Redacted
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V. CONCLUSION
The uncontested facts before the Court show that both of the Patents-in-Suit are
unenforceable because the inventor deliberately withheld the existence of the WebOS product,
and the fact that it was on sale and in public use years before the filing of the Patents-in-Suit,
from the Patent Office during the entire prosecution of the parent ’744 Patent and for nearly 49
months after filing the continuation that led to the child ’629 Patent. Unenforceability of the
parent ’744 Patent infects the child ’629 Patent, making it unenforceable as well. Alternatively,
the child ’629 Patent is not entitled to claim priority back to an invalid and unenforceable parent
patent. Finally, both Patents-in-Suit are also subject to an on-sale bar because of early sales and
public use of the inventor’s own WebOS line of products.
Interwoven respectfully asks that this Court grant summary judgment that:
1) the parent ’744 Patent is unenforceable due to inequitable conduct;
2) the child ’629 Patent is unenforceable based on the doctrine of infectious
unenforceability;
3) alternatively, if the Court finds the parent ’744 Patent unenforceable, but elects not to
apply the doctrine of infectious unenforceability, Interwoven respectfully requests that
the Court find that the child ’629 Patent may only claim a priority date no earlier than
its filing date, November 29, 2004; and
4) that the Court grant summary judgment of invalidity of the Patents-in-Suit based on
the 35 U.S.C. § 102(b) on-sale bar in light of the sale and public use of the WebOS
product more than one year prior to the filing of the Patents-in-Suit.
The patentee cannot have its cake and eat it too. Allowing the inventor to obtain a patent
on an invention years after the same invention has been sold to the public, based on a pattern of
actions taken to mislead the patent office, flies in the face of the fundamental quid pro quo
exchange that is the foundation of the patent system. A patent may fairly grant rights to its owner
only as consideration for full and appropriate disclosure in light of the duty of candor.
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Is this the last arrow in IWOV's Quiver before they go to trial?
Fresh PACER from SFO...
Administrative Motion to File Under Seal Interwoven filed by Interwoven, Inc.. (Attachments: # (1) Declaration, # (2) Proposed Order, # (3) Proposed Redacted Motion for Summary Judgment, # (4) Declaration Bijal Vakil in Support of Motion for Summary Judgment, # (5) Exhibit A, # (6) Exhibit B, # (7) Exhibit C, # (8) Exhibit D, # (9) Exhibit E, # (10) Exhibit F, # (11) Exhibit G, # (12) Exhibit H, # (13) Exhibit I, # (14) Exhibit J, # (15) Exhibit K, # (16) Proposed Order)(Vakil, Bijal) (Filed on 10/22/2012
Jonnyqwan Raging bull # 337514:
NEW PACER INFO
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
CIVIL MINUTES
Date: 10/16/12
Time: 27 M (3:10-3:37)
Judge: Joseph C. Spero
Case No.: 3:10-cv-04645-RS (JCS)
Case Name: Interwoven, Inc. v. Vertical Computer Systems, Inc.
Attorney for Plaintiff: Tom Flynn and Jennifer Gossain
Attorney for Defendant: Vasilios Dossas
Deputy Clerk: Karen L. Hom
Court Reporter: Kathy Wyatt
PROCEEDINGS
1. Motion Hearing re: Joint Discovery Letter [docket no. 126] - Granted in part, denied in part.
ORDERED AFTER HEARING
New non-issued claims 56 and 57 from the ‘744 Patent are STRICKEN, otherwise the Motion to Strike is DENIED.
NOTES:
REFERRALS:
[ ] Case referred to ADR for by
[ ] Case referred to (random) Magistrate Judge for SETTLEMENT CONFERENCE by/during [TEXT HERE, or as soon thereafter as is convenient for the judge.
[ ] Case referred to (direct) Magistrate Judge for SETTLEMENT CONFERENCE by/during [TEXT HERE] , or as soon thereafter as is convenient for the judge.
PRETRIAL SCHEDULE:
Number of Depos: Discovery Cutoff:
Expert Disclosure: Expert Rebuttal:
Expert Discovery Cutoff:
Motions heard by: at 9:30 AM Pretrial Conference: at 1:30 PM
Trial: at 8:30 AM for days [ ] Jury [ ] Court
Courtesy of Smoothsailing20 Raging Bull:
Aubrey McAuley
Is he bitter?
"Pioneered numerous early web milestones that we all now take for granted, including database-driven web interfaces, online credit card transactions, and live Internet concert broadcasts."
www.linkedin.com/in/aubreymcauley
Aubrey McAuley
Business Intelligence Architect
Austin, Texas
Information Technology and Services
Previous
Cox Media Group
, WINAIX SOFTWARE
, VERTICAL COMPUTER SYSTEMS
Education
Bachelor of Arts (B.A.), English Language and Literature, General at Texas State University-San Marcos
Summary
* Innovative programmer and architect with 19+ years' success delivering next-generation solutions to meet ever-changing business requirements in diverse industries.
* Expert in the full software development lifecycle – from concept to delivery of rock-solid applications.
* Proven track record of delivering applications that meet or exceed user requirements on-time and under budget.
* Superb listener adept at focusing user requirements into deliverable solutions.
* Broad experience across a wide range of businesses and government agencies .
* Adaptable thinker skilled in delivering solutions that scale across multiple devices – from Unix, Windows, and Mac desktops to tablets and smartphones.
Experience
Systems Analyst
Cox Media Group
Privately Held; 10,001+ employees; Publishing industry
September 2005 – July 2012 (6 years 11 months) Atlanta, GA
Delivered key solutions for Business Intelligence (Data Warehousing Data Modeling, ETL Data Staging), Customer Relationship Management (CRM), and Workflow Management across multiple properties at market-leading media powerhouse.
Achievement Highlights:
* Business Intelligence (BI): Solved crucial corporate transition roadblocks by designing and deploying custom Data Warehousing and ETL Data Staging solutions. As a direct result, the company avoided loss of more than $50,000/month in subscriber revenue and was able to deploy a new corporate-wide Peoplesoft payroll system on schedule rather than being forced to delay it by more than a year.
* Customer Relationship Management: Collaborated with circulation teams to deploy new subscriber self-service portals, integrate iPad authentication, automate delivery of subscriber email alerts, redesign user interfaces, and create a new free trial subscription system to handle iPad/Kindle/Nook tablets and desktop interfaces from a single codebase. Designed, developed and deployed customer conversion process for Atlanta Journal-Constitution to seamlessly transition legacy subscribers to the new system.
* Workflow Management: Improved productivity for multiple departments by creating new automated workflow systems to replace time-consuming paper processes, including job request/assignment tracking, election results handling, local sports agate, prepress preflighting, and more.
Senior Software Engineer / Project Manager / DBA
WINAIX SOFTWARE
January 2004 – August 2005 (1 year 8 months) Austin, TX
(Started as contract project manager, software engineer and DBA until hired as regular employee.)
Successfully managed software development teams for multiple client projects, from project proposal writing to application design and software coding, testing, and support. Developed project plans, work breakdown structures, coding conventions, data models, and user interfaces. Managed client relations and projects, including sales support, needs analysis, project implementation, customer training, and technical support.
Achievement Highlights:
* Infrahealth: quadrupled performance and capacity for leading medical transcription service. Designed and deployed infrastructure upgrade under tight cutover schedule for 24x7 worldwide service operations handling hundreds of hospitals and doctors offices. Ported, tested, and debugged large Java J2EE transcription workflow service application, moving from WebLogic to more scalable server architecture running JBOSS and SQL Server.
* EatOutIn: spearheaded groundbreaking .NET e-commerce syndication project for large food delivery franchise with operations in 32 cities. From inception to completion, handled initial project proposal, architecture design, database modeling, client relations, and project management for remote development team in India. Used a Model/View/Controller architecture to facilitate team collaboration.
* Texas Railroad Commission: Senior Oracle Database Administrator (DBA) for project migrating massive oil lease records from IBM mainframe systems to Solaris open systems running Oracle 9i.
Vice President of Product Development and Sales Support
VERTICAL COMPUTER SYSTEMS
October 1993 – January 2004 (10 years 4 months) Richardson, TX
(Through a series of restructurings and acquisitions between 1993 and 2001, the entities described here include: EnFacet, Adhesive Software, Eden Matrix Online Services, Adhesive Media, and Vertical.)
Devised innovative solutions to meet broad range of business requirements in diverse industries. Work ranged from project management and strategic/tactical marketing to architecture design, software coding, testing, professional services, and support. Successfully designed and managed multiple core product releases in C/C++, Java, and PHP for content management and e-commerce syndication server across Windows and Unix server platforms. Developed business plans, marketing collateral, market research, technology white papers, and case studies for new target markets in emergency response, education and corporate portals. Planned and conducted technical presentations, trade shows, and product demonstrations for venture capital investors, international partners, analysts, and prospective clients. Managed client relations and projects, including needs analysis, project implementation, training, and technical support.
Achievement Highlights:
* Eden Matrix Online Service: Launched one of the first commercial Internet Service Providers in Austin, TX and grew the business to more than 10,000 subscribers.
* Pioneered numerous early web milestones that we all now take for granted, including database-driven web interfaces, online credit card transactions, and live Internet concert broadcasts.
* SiteFlash: Designed and developed some of the first successful database-driven web e-commerce and content management systems, including Compubooks (acquired by Amazon), IGOGolf (acquired by CBS Sportsline), and more than 40 daily newspapers.
* Patented key invention behind SiteFlash (US6826744).
* Won independent Open Systems Advisors A-List award in 2000 and 2001.
Patents
System and method for generating web sites in an arbitrary object framework
United States Patent 6826744
Issued November 30, 2004
Inventors: Aubrey M.
A system and method for generating computer applications in an arbitrary object framework. The method separates content, form, and function of the computer application so that each may be accessed or modified separately. The method includes creating arbitrary objects, managing the arbitrary objects throughout their life cycle in an object library, and deploying the arbitrary objects in a design framework for use in complex computer applications.
# 629 has been approved: Cert has been issued.
http://www.uspto.gov/web/patents/dailycert/20121012-Friday/US07716629-20121012.html
US 7,716,629 C1 (9,366th)
System and method for generating web sites in an arbitrary object framework
Aubrey McAuley, Austin, Tex. (US)
Assigned to Vertical Computer Systems, Inc., Fort Worth, Tex. (US)
Reexamination Request No. 90/009,983, Mar. 5, 2012.
Reexamination Certificate for Patent 7,716,629, issued May 11, 2010, Appl. No. 10/999,911, Nov. 29, 2004.
Application 90/009,983 is a continuation of application No. 09/410,334, filed on Oct. 1, 1999, granted, now 6,826,744.
This patent is subject to a terminal disclaimer.
Ex Parte Reexamination Certificate issued under 35 U.S.C. 307 on Oct. 12, 2012.
Int. Cl. G06F 9/45 (2006.01)
U.S. Cl. 717—100
AS A RESULT OF REEXAMINATION, IT HAS BEEN DETERMINED THAT:
The patentability of claims 21-26, 29, 30 and 32 is confirmed.
Claims 1, 8, 11, 13, 28 and 31 are determined to be patentable as amended.
Claims 2-6, 9, 10, 12, 14-17, 19 and 20, dependent on an amended claim, are determined to be patentable.
Claims 7, 18 and 27 were not reexamined.
1. A system for generating a computer application on a host system in an arbitrary object framework that separates a content of said computer application, a form of said computer application, and a functionality of said computer application, said system including a computer comprising a processor and a memory operably coupled to said processor, said memory being configured for storing a computer program executable by said processor, said computer program comprising:
a first set of executable instructions for creating arbitrary objects with corresponding arbitrary names of content objects used in generating said content of said computer application, form objects used in defining said form of said computer application, and function objects used in executing said functionality of said computer application each arbitrary object being separate from each other arbitrary object [ , said arbitrary objects being objects that can be created independently by individual preference, that are interchangeable, and that may be, but need not be, accessed solely by name, the object being an entity that can have form, content, or functionality or any combination of form, content and functionality] ;
a second set of executable instructions for managing said arbitrary objects in an arbitrary object library; and
a third set of executable instructions for deploying said arbitrary objects from said arbitrary object library into a design framework to create said computer application.
8. The system of claim 1, wherein the third set of exectable [ executable ] instructions include instructions to access and deploy arbitrary objects into said design framework using said corresponding arbitrary names.
11. The system of claim 10, wherein the executable instructions for caching objects further comprises exectable [ executable ] instructions for specifying some elements of an arbitrary object to be dynamic elements and specifying some elements of said arbitrary object to be static elements.
13. A system for generating a web site on a host system in an arbitrary object framework that separates a content of said web site, a form of said web site, and a functionality of said web site, said system including a computer comprising a processor and a memory operably coupled to said processor, said memory being configured for storing a computer program executable by said processor, said computer program comprising;
a first set of executable instructions for creating arbitrary objects with corresponding arbitrary names of content objects used in generating said content of said web site, form objects used in defining said form of said web site, and function objects used in executing said functionality of said web site, each arbitrary object being separate from each other arbitrary object [ , said arbitrary objects being objects that can be created independently by individual preference, that are interchangeable, and that may be, but need not be, accessed solely by name, the object being an entity that can have form, content, or functionality or any combination of form, content and functionality] ;
a second set of executable instructions for managing said arbitrary objects in an arbitrary object library; and
a third set of executable instructions for deploying said arbitrary objects from said arbitrary object library to a container page to create said web site.
28. The system of claim 21, wherein the third set of exectable [ executable ] instructions include instructions to access and deploy arbitrary objects into said design framework using said corresponding arbitrary names.
31. The system of claim 30, wherein the executable instructions for caching objects further comprises exectable [ executable ] instructions for specifying some elements of an arbitrary object to be dynamic elements and specifying some elements of said arbitrary object to be static elements.
Raging #336636
Application Number: 90/009,983 Customer Number: -
Filing or 371 (c) Date: 03-05-2012 Status: Reexamination Certificate Issued
Application Type: Re-Examination Status Date: 10-11-2012
Examiner Name: NALVEN, ANDREW L Location: ELECTRONIC
Group Art Unit: 2496 Location Date: -
Confirmation Number: 9703 Earliest Publication No: -
Attorney Docket Number: 2556.206 Earliest Publication Date: -
Class / Subclass: 717/108 Patent Number: -
First Named Inventor: 7,716,629 Issue Date of Patent:
New pacer info from San Francisco, Courtesy of JonnyQwan:
Seems that Judge Spero wants to hear more....
CLERKS NOTICE SETTING HEARING as to [126] Joint Discovery Letter Brief re: Discovery Dispute re: Vertical's Amended Infringement Contentions. Motion Hearing set for 10/16/2012 02:30 PM in Courtroom G, 15th Floor, San Francisco before Magistrate Judge Joseph C. Spero. Counsel shall advise the Court by Friday, 10/12/12, if they plan to appear in person for the hearing or by phone. If appearing by phone, please provide direct land line phone numbers to the Clerk on 10/12/12. The Court will initiate the phone contact. This is a text only entry. There is no document associated with this Notice (klh, COURT STAFF) (Filed on 10/9/2012)
it's hard to post a large document. So you need to get a reliable person to read it and post the relevant sections. There is usually somebody on Raging bull that can do this with minimal Hype (not excessive opinion). That's what we are waiting for.
courtesy of Jonnyqwan Raging Bull: #335889
" VCSY's 744 proposed admendment....
Is 15 pages long, according to the image file wrapper. It is not available for public view yet, but hopefully will be tomorrow sometime.
I look forward to reading it. The stars are aligning!!!! "
this guy does all the heavy lifting.