throbber
IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`The Honorable
`Richard G. Andrews
`
`Civil Action No. 13-cv-1608-RGA
`
`)))))))))))))
`
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC,
`
`Plaintiff,
`
`- vs.-
`
`AMAZON.COM, INC. and
`AMAZON WEB SERVICES, LLC,
`
`Defendants.
`
`INITIAL INVALIDITY CONTENTIONS OF DEFENDANTS
`AMAZON.COM, INC. AND AMAZON WEB SERVICES, LLC
`
`Pursuant to Paragraph 3(a)(iv) of the Scheduling Order (Doc. 21) and Paragraph
`
`4(d) of the Default Standard for Discovery, Defendants Amazon.com, Inc. and Amazon
`
`Web Services, LLC (collectively “Amazon”) hereby provide their initial invalidity con-
`
`tentions.
`
`GENERAL STATEMENTS
`
`A.
`
`Identification of Asserted Claims
`
`Plaintiff Personalized Media Communications, LLC (“Plaintiff” or “PMC”) has
`
`asserted that Amazon infringes certain claims (“the asserted claims”) of U.S. Patent
`
`Nos. 5,887,243 (“the ’243 Patent”); 7,801,304 (“the ’304 Patent”); 7,805,749 (“the ’749
`
`Patent”); 7,864,956 (“the ’956 Patent”); 7,827,587 (“the ’587 Patent”); 8,046,791 (“the
`
`’791 Patent”); and 7,783,252 (“the ’252 Patent”), as set forth in PMC’s infringement
`
`Amazon Ex. 1024
`Amazon v. PMC
`IPR2014-01530
`
`

`
`contentions, served on June 30, 2014. Amazon contends that each of the asserted
`
`claims is invalid for at least the reasons set forth herein.
`
`B.
`
`Claim Construction
`
`The Court has not yet construed the asserted claims. Amazon’s position on the
`
`invalidity of particular claims will necessarily depend on how the claims are construed
`
`by the Court. Amazon reserves the right to identify additional prior art or to amend or
`
`supplement its contentions in light of the Court’s claim constructions.
`
`The Parties have not yet provided their proposed constructions for the asserted
`
`claims. The instant preliminary invalidity contentions are based, in part, on the breadth
`
`of the claims that PMC implicitly asserts in its infringement contentions served on June
`
`30, 2014. Amazon reserves the right to identify additional prior art or to amend or sup-
`
`plement its invalidity contentions in light of PMC’s proposed claim constructions and
`
`those ultimately adopted by the Court.
`
`To the extent that these initial invalidity contentions reflect constructions of
`
`claim terms that may be consistent with, or implicit in, Plaintiff’s infringement conten-
`
`tions, no inference is intended, nor should any inference be drawn, that Amazon agrees
`
`with such claim constructions. Amazon’s use of claim terms in the asserted claims is
`
`not an admission that any term, as used in the asserted claims, is definite or otherwise
`
`complies with the conditions of patentability under 35 U.S.C. § 101 or 35 U.S.C. § 112.
`
`Nor is Amazon’s use of a claim term an admission that there is a common ordinary
`
`meaning for the term. Amazon takes no position herein on any matter of claim con-
`
`struction in these initial invalidity contentions. Any statement herein describing or
`
`- 2 -
`
`

`
`tending to describe any claim element is provided solely for the purpose of understand-
`
`ing the relevant prior art. Amazon expressly reserves the right to propose any claim
`
`construction it considers appropriate and/or contest any claim construction it considers
`
`inappropriate.
`
`In part because of the incompleteness of claim construction, these initial invalid-
`
`ity contentions may be made in the alternative and are not necessarily intended to be
`
`consistent with each other, and should be viewed accordingly. Furthermore, Amazon’s
`
`inclusion of prior art that would render a claim obvious based on a particular scope or
`
`construction of the claim, including that apparently applied by Plaintiff in its initial in-
`
`fringement contentions, is not, and should in no way be seen as, an adoption or admis-
`
`sion as to the accuracy of such scope or construction. Amazon reserves all rights to fur-
`
`ther supplement or modify the positions and information in these initial invalidity con-
`
`tentions, including without limitation, the prior art and grounds of invalidity set forth
`
`herein.
`
`C.
`
`Ongoing Discovery and Disclosures
`
`The initial invalidity contentions set forth herein are based on Amazon’s present
`
`understanding of the asserted claims. Discovery in this case is in its early stages and
`
`Amazon's investigation, including Amazon's search for prior art, is ongoing. Amazon
`
`reserves the right to further supplement or alter the positions taken and information dis-
`
`closed in these initial invalidity contentions including, without limitation, the prior art
`
`and grounds of invalidity set forth herein, to take into account information or defenses
`
`that may come to light as a result of these continuing efforts. For example, Amazon
`
`- 3 -
`
`

`
`has not yet taken the deposition of the inventors or prosecuting attorneys. Accordingly,
`
`Amazon reserves the right to assert other bases for invalidity, such as 35 U.S.C.
`
`§ 102(f), as has been alleged in other litigations in which PMC has asserted one or more
`
`of the patents-in-suit, after appropriate discovery is obtained from PMC. Amazon also
`
`reserves the right to amend or supplement these initial invalidity contentions as a result
`
`of new information disclosed through the Parties’ experts.
`
`D.
`
`Prior Art Identification and Citation
`
`In these initial invalidity contentions, Amazon has identified specific combina-
`
`tions of primary and secondary prior art references upon which it may rely to show in-
`
`validity. However, Amazon could not possibly provide written explanations of every
`
`possible combination that renders the asserted claims invalid, given the volume of high-
`
`ly relevant prior art. Accordingly, Amazon expressly reserves the right to rely on com-
`
`binations not expressly set forth herein.1
`
`Amazon has also attempted to identify the most relevant portions of each prior
`
`art reference upon which it presently intends to rely. Given the volume of prior art and
`
`the number of relevant passages within each prior art reference, Amazon could not pos-
`
`sibly identify every possible passage that may be relevant to the invalidity of the assert-
`
`ed patent claims. Accordingly, Amazon expressly reserves the right to rely upon addi-
`
`tional portions of the cited prior art references.
`
`1 By way of example only, while Amazon has provided detailed written descrip-
`tions of combinations of primary and secondary references, Amazon reserves the right
`to rely on alternative combinations of primary references.
`
`- 4 -
`
`

`
`Exemplary claim charts are provided as Exhibits 1-7 hereto.
`
`If a reference in-
`
`corporates another reference, the two disclosures and their respective disclosures should
`
`be read together. In addition, the claim charts provided include exemplary descriptions
`
`and citations of where a particular claim element may be found based on PMC’s in-
`
`fringement contentions. However, the citations do not necessarily represent every place
`
`where a particular claim element may be found in the prior art reference. Therefore,
`
`Amazon reserves the right to rely on additional, or different, portions of the prior art
`
`references and on other publications and expert testimony to provide context and as aids
`
`to understanding and interpreting the portions cited.
`
`E.
`
`Reservation of Rights
`
`Amazon reserves all rights to further supplement or modify these initial invalidi-
`
`ty contentions, including the prior art disclosed and the stated grounds of invalidity. In
`
`addition, Amazon reserves the right to prove the invalidity of the asserted claims on ba-
`
`ses other than those disclosed in these disclosures and contentions and/or amend these
`
`contentions as appropriate.
`
`These contentions are provided without prejudice to the rights of Amazon to in-
`
`troduce at trial any subsequently-discovered evidence or expert opinions relating to cur-
`
`rently known facts and to produce and introduce at trial all evidence, whenever discov-
`
`ered, relating to the proof of subsequently-discovered facts. Moreover, facts, docu-
`
`ments and things of which Amazon is presently aware may be imperfectly understood
`
`and, accordingly, such facts, documents and things may not be included in the following
`
`contentions. Amazon reserves the right to conduct discovery with reference to, or offer
`
`- 5 -
`
`

`
`into evidence at the time of trial, any and all facts, expert opinion testimony, documents
`
`and things notwithstanding the written statements herein.
`
`The information set forth herein is provided without in any manner waiving: (1)
`
`the right to object to the use of any statement for any purpose, in this action or any other
`
`actions, on the grounds of privilege, relevance, materiality or any other appropriate
`
`grounds; (2) the right to object to any request involving or relating to the subject matter
`
`of the statements herein; or (3) the right to revise, correct, supplement or clarify any of
`
`the statements provided below at any time. Amazon reserves the right to amend and/or
`
`supplement the written statements herein in accordance with the Federal Rules of Civil
`
`Procedure and the rules of this Court.
`
`The following contentions are based, in part, on PMC’s infringement conten-
`
`tions and the alleged scope of the claims as recited therein. Because Amazon believes
`
`that PMC’s infringement contentions are vague and deficient, Amazon has attempted to
`
`disclose the invalidating prior art of which it is currently aware based on its understand-
`
`ing of the scope of PMC’s claim construction positions as reflected in its contentions.
`
`Amazon’s reliance on those contentions for purposes of setting forth the instant inva-
`
`lidity contentions does not mean that Amazon agrees with PMC’s contentions or the
`
`alleged scope of the asserted claims set forth in PMC’s contentions. Amazon reserves
`
`the right to seek appropriate constructions for the asserted claims which, if adopted by
`
`the Court, may alter one or more of the bases for invalidity set forth herein.
`
`- 6 -
`
`

`
`F.
`
`Anticipation and Motivation to Combine Generally
`
`Throughout these contentions, where Amazon has listed a reference as rendering
`
`a claim invalid without an expressly-recited combination of other prior art references
`
`(or the common knowledge of one skilled in the art), Amazon contends that the cited
`
`reference both anticipates the subject claim and renders the claim obvious. In addition
`
`to the combinations specifically recited as demonstrating that a claim is invalid for ob-
`
`viousness, each item of prior art identified herein is combinable with other prior art ref-
`
`erences identified herein to render the claim obvious. Accordingly, the obviousness
`
`combinations set forth herein are exemplary and not limiting. To the extent a motiva-
`
`tion to combine is relevant to an obviousness inquiry, and not expressly discussed in the
`
`claim charts provided herein, the motivation to combine can be found in: (1) the nature
`
`of the problem being solved, (2) the teachings of the prior art including portions of the
`
`prior art disclosures cited in the attached claim charts, (3) the knowledge of persons of
`
`ordinary skill in the art, and (4) the fact that all of the prior art relied on is directed to-
`
`wards signal transmission systems and related applications, including but not limited to,
`
`the fields of broadcast and cable television. Thus, the prior art could have been com-
`
`bined according to methods known to those of ordinary skill within the field of media
`
`transmission and reception to yield predictable results. The substitution of one element
`
`in a media transmission could have been predictably achieved by one of ordinary skill at
`
`the time of the alleged invention. One of ordinary skill in the art would have been
`
`aware of these various applications and been able to select appropriate attributes of one
`
`for inclusion in another. Those of ordinary skill in the art could have employed known
`
`- 7 -
`
`

`
`techniques to improve similar prior art devices in the same way as claimed in the assert-
`
`ed patents.
`
`In addition, the prior art also provided sets of finite, identified, predictable solu-
`
`tions for known problems that would have been obvious to those of ordinary skill to try
`
`with a reasonable expectation of success. For example, work in one field of media
`
`transmission and reception such as broadcast television and teletext or encryption,
`
`would have prompted variations of it for use in either the same field or a different one
`
`based on design incentives or other market forces. Various expanded applications for,
`
`without limitation, encryption, television distribution, signal storage and transmission,
`
`teleshopping, and receptive systems were being explored and implemented in the art at
`
`the time of the alleged invention. In addition, the prior art provided multiple teachings,
`
`suggestions, and motivations that would have led one of ordinary skill to modify or to
`
`combine prior art teachings to arrive at systems and methods purportedly covered by the
`
`asserted claims, as can be found in the references themselves.
`
`Finally, Amazon is not aware of any secondary considerations of non-
`
`obviousness that would affect the analysis set forth herein. Amazon reserves the right
`
`to amend these contentions and to respond to any alleged secondary considerations of
`
`non-obviousness that PMC may allege.
`
`ADDITIONAL CONTENTIONS
`
`Amazon hereby identifies, as prior art upon which it may rely to show the inva-
`
`lidity of the asserted claims, the prior art references cited in the prosecution histories of
`
`the patents-in-suit, as well as any reference cited in any patent claiming priority to the
`
`- 8 -
`
`

`
`patents-in-suit or to which the patents-in-suit claim priority, and their prosecution histo-
`
`ries, as well as all of the references and arguments made by the examiners during the
`
`prosecution of those patents.
`
`Amazon also hereby identifies, as prior art upon which it may rely to show the
`
`invalidity of the asserted claims, the prior art references disclosed by defendants in any
`
`other litigation involving the patents-in-suit or any other PMC patent (collectively re-
`
`ferred to herein as “Other PMC Litigation”), including but not limited to:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`In re Certain Digital Satellite Sys. Receivers and Components Thereof,
`Inv. No. 337-TA-392 (filed Dec. 18, 1996).
`
`Pegasus Dev. Corp. v. DIRECTV, Inc., No. 1:00-cv-1020-GMS (D. Del.
`filed Dec. 4, 2000).
`
`Personalized Media Commc’ns, LLC v. Scientific-Atlanta, Inc., No. 1:02-
`cv-824-CAP (N.D. Ga. filed Mar. 28, 2002).
`
`Personalized Media Commc’ns, LLC v. Motorola, Inc., No. 2:08-cv-70-
`RSP (E.D. Tex. filed Feb. 19, 2008).
`
`Personalized Media Commc’ns, LLC v. Zynga, Inc., No. 2:12-cv-68-
`JRG-RSP (E.D. Tex. filed Feb. 10, 2012).
`
`Zynga, Inc. v. Personalized Media Commc’ns, LLC, No. IPR2013-00156
`(SCM) (P.T.A.B. filed Feb. 22, 2013).
`
`Zynga, Inc. v. Personalized Media Commc’ns, LLC, No. IPR2013-00162
`(SCM) (P.T.A.B. filed Feb. 26, 2013).
`
`Zynga, Inc. v. Personalized Media Commc’ns, LLC, No. IPR2013-00164
`(SCM) (P.T.A.B. filed Feb. 26, 2013).
`
`Zynga, Inc. v. Personalized Media Commc’ns, LLC, No. IPR2013-00171
`(SCM) (P.T.A.B. filed Feb. 27, 2013).
`
`- 9 -
`
`

`
`Amazon has requested the production of relevant documents from the Other PMC Liti-
`
`gations but has not yet received all such documents. Accordingly, Amazon expressly
`
`reserves its right to supplement these contentions based on the information contained
`
`therein, and Amazon hereby identifies as invalidating prior art any prior art identified in
`
`any defendant’s invalidity contentions or expert report on invalidity in any Other PMC
`
`Litigation.
`
`IDENTIFICATION OF THE PRIOR ART
`
`At this time Amazon contends that at least the following prior art references an-
`
`ticipate or render obvious, either alone or in combination, the Asserted Claims. Each of
`
`the following references constitute prior art to the asserted patents under 35 U.S.C. §
`
`102.
`
`A.
`
`The ’243 Patent
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Blatt, et al., The Promise of Teletext for Hearing-Impaired Audi-
`ences, IEEE Transactions on Consumer Electronics, Vol. 26, No.
`4 (Nov. 1980) (“Blatt”).
`
`CBS Petition for Rulemaking, In Re Amendment of Part 73, Sub-
`part E of the Rules governing Television Broadcast Stations to
`Authorize Teletext, before the F.C.C., Jul. 29, 1980 (“CBS”).
`
`Public use of the CBS Antiope system (1980).
`
`Chambers, Enhanced UK Teletext Moves Towards Still Pictures,
`BBC Research Department Report BBC RD 1980/4 (June 1980),
`reprinted in IEEE on Consumer Electronics, Vol. CE-26 (Aug.
`1980) (“Chambers”).
`
`Crowther, Teletext and Viewdata Systems and Their Possible Ex-
`tensions to Europe and USA, IEEE Transactions on Consumer
`Electronics, Vol. CE-25, No. 3 (July 1979) (“Crowther”).
`
`- 10 -
`
`

`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`Guillermin, Development & Applications of the Antiope-Didon
`Technology (1980) (“Guillermin”).
`
`Gunn & Harper, A Public Broadcaster’s View of Teletext in the
`United States (1980) (“Gunn”).
`
`Marti, The Antiope Videotex System, IEEE Transactions on Con-
`sumer Electronics, Vol. CE-25, No. 3 (July 1979) (“Marti”).
`
`Viewdata and Videotext 1980-81: A Worldwide Report (“View-
`data 1980”).
`
`The public use of the Viewdata system (1979-80).
`
`British Patent No. 1370535 (filed Feb. 9, 1972) (“Millar”).
`
`PCT Pub. No. WO81/02961 (PCT Published Oct. 15, 1981).
`
`U.S. Patent No. 4,233,628 (filed Jan. 11, 1979) (“Ciciora”).
`
`U.S. Patent No. 4,306,250 (filed Aug. 18, 1980) (“Summers”).
`
`U.S. Patent No. 4,339,798 (filed Dec. 17, 1979) (“Hedges”).
`
`U.S. Patent No. 4,413,281 (filed Jun. 26, 1981) (“Thonnart”).
`
`U.S. Patent No. 4,536,791 (filed Mar. 31, 1981) (“Campbell”).
`
`U.S. Patent No. 4,538,174 (filed May 16, 1983) (“Gargini”).
`
`U.S. Patent No. 4,751,578 (filed May 28, 1985) (“Reiter”).
`
`U.S. Patent No. 5,270,922 (filed Jun. 29, 1984) (“Higgins”).
`
`David Godfrey and Ernest Chang, The Telidon Book, Press
`Porcepic (1981) (“Telidon Book”).
`
`U.S. Patent No. 4,290,062 (filed Feb. 28, 1979) (“’062 patent”).
`
`Sedman, The Use of MicroCobol for Telesoftware, Viewdata
`1980 (“Sedman”).
`
`B.
`
`The ’304 Patent
`
`1.
`
`PCT Pub. No. WO81/02961 (PCT Published Oct. 15, 1981).
`
`- 11 -
`
`

`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`U.S. Patent No. 4,091,423 (filed Mar. 17, 1975) (“Branscome”).
`
`U.S. Patent No. 4,172,213 (filed Nov. 17, 1977) (“Barnes”).
`
`U.S. Patent No. 4,205,343 (filed Nov. 8, 1976) (“Barrett”).
`
`U.S. Patent No. 4,225,884 (filed Jun. 30, 1978) (“Block I”).
`
`U.S. Patent No. 4,270,139 (filed May 26, 1981) (“Flamm”).
`
`U.S. Patent No. 4,304,962 (filed Aug. 25, 1965) (“Fracassi”).
`
`U.S. Patent No. 4,323,921 (filed Jan. 23, 1980) (“Guillou ’921”).
`
`U.S. Patent No. 4,337,483 (filed Jan. 31, 1980) (“Guillou ’483”).
`
`U.S. Patent No. 4,352,011 (filed Jan. 23, 1980) (“Guillou ‘’011”).
`
`U.S. Patent No. 4,354,201 (filed Jun. 11, 1980) (“Sechet”).
`
`U.S. Patent No. 4,388,643 (filed Apr. 6, 1981) (“Aminetzah”).
`
`U.S. Patent No. 4,390,898 (filed Mar. 23, 1981) (“Bond”).
`
`U.S. Patent No. 4,392,021 (filed Jul. 28, 1980) (“Slate”).
`
`U.S. Patent No. 4,405,829 (filed Dec. 14, 1977) (“Rivest”).
`
`U.S. Patent No. 4,443,660 (filed Feb. 10, 1982) (“DeLong”).
`
`U.S. Patent No. 4,536,791 (filed Mar. 31, 1981)) (“Campbell”).
`
`U.S. Patent No. 5,553,141 (filed Jun. 24, 1983) (“Lowry”).
`
`U.S. Patent No. 5,719,937 (filed Sept. 12, 1996) (“Warren”).
`
`Popek, Gerald J., Encryption and Secure Computer Networks,
`Computer Surveys, Vol. 11, No. 4 (Dec. 1979) (“Popek”)
`
`21. Wechselberger, Anthony, Encryption: A Cable TV Primer, Oak
`Communications, Inc. (1983) (“Wechselberger”).
`
`C.
`
`The ’749 Patent
`
`1.
`
`U.S. Patent No. 4,484,217 (filed May 11, 1982) (“Block II”).
`
`- 12 -
`
`

`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`U.S. Patent No. 4,536,791 (filed Mar. 31, 1981) (“Campbell”).
`
`U.S. Patent No. 4,739,510 (filed May 1, 1985) (“Jeffers”).
`
`U.S. Patent No. 4,658,093 (filed April 14, 1987) (“Hellman”).
`
`U.S. Patent No. 4,439,784 (filed Sept. 26, 1980) (“Furukawa”).
`
`Powell, Prestel: The Opportunity for Advertising, Viewdata 1980
`(“Powell”).
`
`Pilnick, Cable Television: A Guide to the Technology (June,
`1973) (“Pilnick”).
`
`Courtney, Videotel, Viewdata 1980 (“Courtney”).
`
`Gunn, A Public Broadcaster’s View of Teletext in the United
`States, Viewdata 1980 (“Gunn”).
`
`Hughes, Teletext – Prestel’s Big Brother (September 1979)
`(“Hughes”)
`
`Baran, 30 Services that Two-Way Television Can Provide, The
`Futurist (October, 1973) (“Baran”).
`
`12. Micronet 800, Making the most of your micro, (“Micronet 800”).
`
`13.
`
`PCT Pub. No. WO 85002310 (filed November 14, 1983)
`(“Hansche”).
`
`14.
`
`Viewdata and videotext systems, including:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`Micronet 800
`
`Prestel
`
`Viewtron
`
`Captains
`
`Bildschirmtext
`
`Antiope
`
`Titan
`
`- 13 -
`
`

`
`(h)
`
`(i)
`
`(j)
`
`Telset
`
`Videotel
`
`Vista
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`Park, The Role of Viewdata in Electronic Funds Transfer, View-
`data 1980 (“Park”).
`
`Dew, An introduction to Prestel, The Institute of Physics 1980
`(“Dew”).
`
`David, Prestel and The Travel Industry, Baric Computing Ser-
`vices Ltd. Viewdata 1980 (“David”).
`
`Bochmann, Towards Videotext Standards, Viewdata 1980
`(“Bochmann”).
`
`Adams, The Place of Viewdata in Relation to Other Communica-
`tion Techniques in the Travel Industry: A Personal View, View-
`data 1980 (“Adams”).
`
`Troughton, Prestel Operational Strategy, Viewdata 1980
`(“Troughton”).
`
`Kumamoto, CAPTAIN System Features, Viewdata 1980 (“Ku-
`mamoto”).
`
`Jaakola, TELSET, the Finish Viewdata System, Viewdata 1980
`(“Jaakola”).
`
`23. Woolfe, The Emerging Markets for Videotext, Viewdata 1980
`(“Woolfe”).
`
`24.
`
`25.
`
`26.
`
`Zimmerman, Future Utilization of Interactive and Broadcast
`Videotext in Germany and its Effect on Standardization, Viewda-
`ta 1980 (“Zimmerman”).
`
`Castell, Prestel and the Law, Viewdata 1980 (“Castell”).
`
`Hayter, TOPIC: A Private Viewdata System for the London Stock
`Exchange, Videotex ’81 (1981) (“Hayter”).
`
`27. Waring, Cox’s INDAX System – Delivering Future Two-Way Ca-
`ble Services Today, Videotex ’81 (1981) (“Waring”).
`
`- 14 -
`
`

`
`28.
`
`29.
`
`30.
`
`Simon, Swing Door, Conveyor Belts and Cable T.V., Videotex
`’81 (1981) (“Simon”).
`
`Electronics (published August 14, 1980) (“Electronics 1980”).
`
`The Viewtron Handbook (1983) (“Viewtron Handbook”).
`
`D.
`
`The ’956 Patent
`
`1.
`
`2.
`
`3.
`
`U.S. Patent No. 3,810,096 (filed Sept. 14, 1972) (“Kabat”).
`
`U.S. Patent No. 4,404,589 (filed Oct. 21, 1980) (“Wright”).
`
`U.S. Patent No. 4,439,784 (filed Sept. 26, 1980) (“Furukawa”).
`
`E.
`
`The ’587 Patent
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`U.S. Patent No. 4,805,134 (filed January 9, 1986) (“Calo”).
`
`U.S. Patent No. 4,556,904 (filed March 4, 1983) (“Monat”).
`
`U.S. Patent No. 4,388,643 (filed April 6, 1981) (“Aminetzah”).
`
`U.S. Patent No. 4,510,594 (filed March 31, 1983) (“Johnson”).
`
`Bryan Dew, An introduction to Prestel, in Physics Education,
`Vol. 15 Issue 1 (January 1980) (“Dew”).
`
`The public use of the Prestel system (pre-1980).
`
`F.
`
`The ’791 Patent
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`U.S. Patent No. 4,071,697 (filed October 18, 1976) (“Bushnell”).
`
`U.S. Patent No. 4,359,631 (filed July 11, 1980) (“Lockwood”).
`
`U.S. Patent No. 4,538,174 (filed May 16, 1983) (“Gargini”).
`
`U.S. Patent No. 4,547,851 (filed March 14, 1983) (“Kurland”).
`
`U.S. Patent No. 4,703,423 (filed July 10, 1984) (“Bado”).
`
`U.S. Patent No. 4,645,873 (filed January 23, 1985) (“Chomet”).
`
`U.S. Patent No. 4,768,144 (filed October 20, 1986) (“Winter”).
`
`- 15 -
`
`

`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`U.S. Patent No. 4,343,042 (filed July 9, 1979) (“Schrock”).
`
`European Patent No. 0 103 438 (published March 21, 1984)
`(“Barnes”).
`
`The Viewtron System and Sceptre Terminal.
`
`The AT&T Viewtron Video ((http://techchannel.att.com/play-
`video.cfm/2012/2/29/AT&T-Archives-Viewtron-Introduction).
`
`The Viewtron Handbook (1983) (“Viewtron Handbook”).
`
`Sceptre Videotex Terminal Owner’s Manual (“Sceptre Owner’s
`Manual”).
`
`Viewtron, A Service of
`(“Viewtron Brochure”).
`
`the Future for American Homes
`
`Viewtron Magazine & Guide (1983) (“Viewtron Magazine”).
`
`The Telidon Book (1981) (“Telidon Book”).
`
`The Prestel Shopping Video
`(https://www.youtube.com/watch?v=wq53DO7zL_g#t=233)
`(1983).
`
`Bochmann, Towards Videotex Standards, Viewdata 1980
`(“Bochmann”).
`
`19. Woolfe, The emerging markets for videotext, Viewdata 1980
`(“Woolfe”).
`
`20.
`
`21.
`
`22.
`
`Sedman, The use of MicroCobol for Telesoftware, Viewdata 1980
`(“Sedman”).
`
`Parkhill, An Overview of the Canadian Scene, Viewdata 1980
`(“Parkhill”).
`
`International Business Applications of Viewdata,
`Shimpton,
`Viewdata 1980 (“Shimpton”).
`
`23.
`
`Berkman, A Videotex Trial, Viewdata 1980 (“Berkman”).
`
`24. Marti, Viewtext Standardization, Viewdata 1980 (“Marti II”).
`
`- 16 -
`
`

`
`25.
`
`26.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`Troughton, Prestel Operational Strategy, Viewdata 1980
`(“Troughton”).
`
`Clarke, What Kind of Pictures for Videotex?, Viewdata 1980
`(“Clarke”).
`
`Aldrich, The Role of Videotex as an Information Provider (1983)
`(“Aldrich”).
`
`The Mico Cookbook (software released at least as early as 1982)
`(“Micro Cookbook Software”).
`
`The Micro Cookbook User Guide (1984) (“Micro Cookbook Us-
`er Guide”).
`
`InfoWorld (May 30, 1983) (“InfoWorld”).
`
`Baran, 30 Services that Two-Way Television Can Provide, The
`Futurist (October, 1973) (“Baran”).
`
`Thomson, Designing for Consumer Electronics-Teletext and
`Viewdata, Electronic Engineering (January, 1980) (“Thomson”).
`
`Bown, Telidon Technology Developments, Videotex 1981
`(“Bown”).
`
`Hughes, Teletext – Prestel’s Big Brother (September 1979)
`(“Hughes”).
`
`Percelay, Strategic Planning for a Major Market Trial of Broad-
`cast Teletext, Videotex ‘81 (May 20, 1981) (“Percelay”).
`
`Champness, Social Uses of Videotex, Videotex ’81 (May 20,
`1981) (“Champness”).
`
`Shnaider, Taking Videotex to Market, Videotex ’83 (1983)
`(“Shnaider”).
`
`The shopping functionality of the systems listed below in the sec-
`tion relating to the ’791 patent.
`
`G.
`
`The ’252 Patent
`
`1.
`
`Bochmann, Towards Videotex Standards, Viewdata 1980
`(“Bochmann”).
`
`- 17 -
`
`

`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`Chorafas, Interactive Videotex (1981) (“Chorafas”).
`
`European Patent Application No. EP0166441 (published January
`2, 1986) (“Caine”).
`
`Finlayson, Bootstrap Loading via TFTP, RFC 906 (published
`June 1984) (“Finlayson”).
`
`Hedger, Telesoftware, Wireless World (published November
`1978) (“Hedger II”).
`
`Hsiao, Download Remote Node Using Ethernet Bootstrap (pub-
`lished 1984) (“Hsiao”).
`
`Hughes, The NABU Concept – Distributed Data Processing Via
`Cable Networks, CCTA 1982 Convention (published June 1982)
`(“Hughes II”)
`
`Nachbar, When Network Files Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX 1986 Summer Tech-
`nical Conference & Exhibition (published June 9, 1986)
`(“Nachbar”).
`
`Sedman, The Use of MicroCobol for Telesoftware, Viewdata
`1980 (“Sedman”).
`
`The NABU Network Specification 50-90020490 (published June
`8, 1984) (“NABU Specification”).
`
`The NABU Personal Computer System (1983)
`
`U.S. Patent No. 4,025,851 (filed November 28, 1975)
`(“Haselwood”).
`
`U.S. Patent No. 4,099,024 (filed February 16, 1977) (“Boggs”).
`
`U.S. Patent No. 4,138,718 (filed November 14, 1977) (“Toke”).
`
`U.S. Patent No. 4,245,245 (filed February 2, 1976) (“Matsumo-
`to”).
`
`U.S. Patent No. 4,359,631 (filed July 11, 1980) (“Lockwood”).
`
`U.S. Patent No. 4,425,618 (filed November 23, 1981) (“Bishop”).
`
`- 18 -
`
`

`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`U.S. Patent No. 4,542,453 (filed February 19, 1982) (“Patrick”).
`
`U.S. Patent No. 4,558,413 (filed November 21, 1983)
`(“Schmidt”).
`
`U.S. Patent No. 4,607,332 (filed January 14, 1983) (“Goldberg”).
`
`U.S. Patent No. 4,658,093 (filed April 14, 1987) (“Hellman”).
`
`U.S. Patent No. 4,660,170 (filed April 29, 1985) (“Hui”).
`
`U.S. Patent No. 4,685,055 (filed July 1, 1985) (“Thomas”).
`
`U.S. Patent No. 4,755,995 (filed December 20, 1985) (“Ander-
`son”).
`
`U.S. Patent No. 4,788,637 (filed September 30, 1985) (“Tama-
`ru”).
`
`U.S. Patent No. 4,982,430 (filed April 24, 1985) (“Frezza”).
`
`U.S. Patent No.
`(“Chernow”).
`
`4,999,806
`
`(filed September
`
`4,
`
`1987)
`
`Virtual Inventory: Electronic Distribution of Software, RELease
`1.0, September 12, 1983 (“Rosen”).
`
`GENERAL BASES FOR INVALIDITY
`APPLICABLE TO ALL ASSERTED PATENT CLAIMS
`
`A.
`
`The Asserted Claims Fail To Recite Patentable Subject
`Matter And Are Therefore Invalid Under 35 U.S.C. § 101.
`
`Section 101 of the Patent Act defines the subject matter eligible for patent pro-
`
`tection. 35 U.S.C. § 101. The Supreme Court has held that this provision excludes ab-
`
`stract ideas from patentability. See Alice Corp. v. CLS Bank Int’l, No. 13-298, __ U.S.
`
`__, 2014 WL 2765283 (U.S. June 19, 2014). To determine whether a claim is invalid
`
`under Section 101, the Court first determines whether a claim is directed to an abstract
`
`idea.
`
`Id. The Court then determines whether the additional elements transform the
`
`- 19 -
`
`

`
`claim into a patent-eligible application.
`
`Id. A method that merely requires generic
`
`computer implementation does not transform an abstract idea into a patent-eligible in-
`
`vention. Id. Similarly, claims which recite simply transmitting and/or receiving and/or
`
`processing various signals to and from indeterminate locations or devices are purely ab-
`
`stract ideas which cannot define patentable subject matter. As described in more detail
`
`below with respect to each patent, the asserted claims are invalid under Section 101 be-
`
`cause they are directed to abstract ideas that, at most, merely require generic computer
`
`implementation.
`
`B.
`
`All of the Asserted Claims Are Invalid Under
`35 U.S.C. § 112, ¶ 1 Because The Specification
`Does Not Enable The Full Scope of the Claim.
`
`A claim is invalid for lack of enablement if the specification does not contain a
`
`written description of the invention, and of the manner and process of making and using
`
`it, in such full, clear, concise, and exact terms as to enable any person skilled in the art
`
`to which it pertains, or with which it is most nearly connected, to make and use the in-
`
`vention. 35 U.S.C. § 112, ¶ 1. Each of the asserted claims is invalid for lack of ena-
`
`blement. The specification of the asserted patents, which is based on a continuation-in-
`
`part application that was filed in 1987 as U.S. Patent Application No. 07/096,096 (“the
`
`1987 specification”), describes specific uses of television and radio broadcasting tech-
`
`nology. The application to which the 1987 specification claims priority, U.S. Applica-
`
`tion No. 06/317,510 (“the 1981 specification”), is even more limited, containing far less
`
`disclosure.
`
`- 20 -
`
`

`
`Neither the 1987 nor the 1981 specification enable those of skill in the art to
`
`practice the scope of the claims. The specifications repeatedly represents that the inven-
`
`tion employs technologies and components that were “well known” in the art. To the
`
`extent that the asserted claims involve any new computing functionality at all, as Plain-
`
`tiffs allege, the claims are invalid for lack of enablement because the specification lacks
`
`any disclosure as to how any new computing functionality is performed. The specifica-
`
`tion describes no logic and no algorithms that would enable a person of skill in the art to
`
`make and use the purportedly novel processes without undue experimentation.
`
`The 1987 and 1981 specifications do not enable a person of ordinary skill in the
`
`art to use the processes described in the 1987 and 1981 specifications in any context
`
`other than the broadcast television and radio context. Plaintiff contends that the claims,
`
`however, literally cover Amazon’s processes which take place over the Internet. But
`
`Internet communications are fundamentally different from the conventional broadcast
`
`communications discussed in the asserted patents. By way of example only, the assert-
`
`ed patents are limited to communications in which point-to-multipoint transmissions are
`
`sent to all subscribers simultaneously. See ’243 Patent at 6:53-57; 7:1-7. The accused
`
`processes, however, are performed in a point-to-point network in which requested in-
`
`formation is transmitted individually and on-demand. Such features are nowhere dis-
`
`closed in, or enabled by, the asserted patents. In addition, the asserted patents disclose
`
`processes in which private information is stored locally by the user’s computer, such
`
`that “no private information is required at transmitting stations.” Id. 6:64-67.
`
`In the
`
`accused processes, however, customer information is stored on remote servers. In sum,
`
`- 21 -
`
`

`
`to the extent that the asserted claims could possibly cover processes performed over the
`
`Internet, the specification does not enable the full scope of such claims.
`
`More specifically, the accused processes differ so significantly, and so funda-
`
`mentally

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