IconFind, Inc. v. Google, Inc.

Filing 43

DECLARATION of JOHN LABARRE in SUPPORT OF 35 Motion to Dismiss, 29 Motion for Judgment on the pleadings of Invalidity of US Patent No. 7,181,459. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4)(Malecek, Michael)

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Michael J. Malecek (State Bar No. 171034)
Email address: [e-mail]
Kenneth Maikish (State Bar No. 267265)
Email address: [e-mail]
KAYE SCHOLER LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

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Case No. 2:11-CV-00319 GEB JFM

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Plaintiff,

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v.

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GOOGLE INC.,

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LABARRE DECLARATION IN SUPPORT
OF DEFENDANTS GOOGLE INC.’S
MEMORANDUM IN OPPOSITION TO
PLAINTIFF’S MOTION TO DISMISS
PURSUANT TO FRCP 12(B)(6) AND
MOTION TO STRIKE PURSUANT TO
FRCP 12(F).

Defendant.

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16023258.DOCXLABARRE

DECLARATION IN SUPPORT OF GOOGLE’S OPPOSITION TO MOTION
DIMISS/STRIKE
Case No. 2:11-CV-00319 GEB JFM

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I, John LaBarre, hereby declare as follows:
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I am an attorney admitted to practice in the State of New York (Bar No. 4396271)

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and the State of California (Bar No. 801166). I am an Associate Litigation Counsel for defendant

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Google Inc. (“Google”). I have personal knowledge of the material facts stated herein, and I

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submit this Declaration in support of Defendants Google Inc.’s Memorandum in Opposition to

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Plaintiff’s Motion to Dismiss Pursuant to FRCP 12(b)(6) and Motion to Strike Pursuant to FRCP

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12(f). If called to testify, I could and would testify to the facts as set forth herein.

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2.

I have reviewed the case docket in the matter Oracle America, Inc. v. Google Inc.

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pending in the federal district of the Northern District of California (Case No. 3:10-cv-03561-

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WHA). It is my understanding that Oracle America, Inc. (“Oracle”) filed a Motion to Dismiss

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Invalidity Counterclaims and Motion to Strike Certain Affirmative Defenses (Dkt. No. 35).

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Thereafter, Google filed an Answer and Counterclaims to Oracle’s Amended Complaint (Dkt.

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No. 51) in which Google plead invalidity as an affirmative defense: “Each of the Patents-in-Suit

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is invalid because it fails to meet the ‘conditions for patentability’ of 35 USC §§ 101, 102, 103,

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and/or 112 because the alleged invention thereof lacks utility; is taught by, suggested by, and/or,

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obvious in view of, the prior art; and/or is not adequately supported by the written description of

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the patented invention.” Google also included counterclaims of invalidity of the various patents-

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in-suit in that matter, with each counterclaim including language reciting that the respective

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patent was “invalid because it fails to meet the ‘conditions for patentability’ of 35 USC §§ 101,

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102, 103, and/or 112 because the alleged invention thereof lacks utility; is taught by, suggested

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by, and/or, obvious in view of, the prior art; and/or is not adequately supported by the written

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description of the patented invention. . . .” In its Reply Brief, Oracle declined to pursue its

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Motion to Dismiss and to Strike Google’s invalidity pleadings (Dkt. No. 54).

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3.

Exhibit 1 is a true and correct copy of Judge Alsup’s Order denying Oracle’s

Motion to Dismiss and Strike in Oracle America, Inc. v. Google Inc. (Dkt. No. 55).
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On Thursday, April 28, 2011, attorneys for the parties participated in a conference

pursuant to Fed. R. Civ. Pro. 26(f) and this Court’s February 3, 2011 Order. Among the matters
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LABARRE DECLARATION IN SUPPORT OF GOOGLE’S OPPOSITION TO MOTION DIMISS/STRIKE
Case No. 2:11-CV-00319 GEB JFM

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discussed at the conference was the case schedule. As part of the discussion, Plaintiff proposed

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formally including infringement and invalidity contentions as part of the discovery process and

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included the following language to the draft Joint Status Report circulated by Google:

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On or before June 20, 2011, IconFind will provide initial
infringement contentions containing the following information: 1)
each asserted patent claim; 2) each accused instrumentality; 3) a
chart identifying where each limitation of each asserted claim is
found within the accused instrumentality; 4) the priority date to
which each asserted claim is entitled; and 5) the bases for its
willful infringement allegation.
With its infringement
contentions, and to the extent not already provided in discovery,
IconFind will produce: 1) all documents evidencing conception
and reduction to practice of each claimed invention; 2) a copy of
the file history for the patent in suit; and 3) all documents
evidencing ownership of the patents by IconFind. The foregoing
contentions are to be deemed continuing, requiring prompt
supplementation whenever the conditions of Fed.R.Civ.P. 26(e)
are satisfied.
On or before August 1, 2011, Google will provide initial
invalidity contentions containing the following information: 1) the
identify of each item of prior art on which Google intends to rely;
2) whether each item of prior art anticipates each asserted claim
or renders it obvious, including an explanation of why the prior
art renders the asserted claim obvious and an identification of any
combinations of prior art; 3) a chart identifying where in each
item of prior art each limitation of each asserted claim is found; 4)
any grounds for invalidity under 35 U.S.C. §§ 101 and 112. With
its invalidity contentions, and to the extent not already provided in
discovery, Google will produce: 1) source code, specifications,
schematics, flow charts, artwork, formulas, or other
documentation sufficient to show the operation of any aspects or
elements of the accused instrumentality identified by IconFind;
and 2) a copy of each item of prior art identified in Google's
invalidity contentions. The foregoing contentions are to be
deemed continuing, requiring prompt supplementation whenever
the conditions of Fed.R.Civ.P. 26(e) are satisfied.

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5.

During the Rule 26(f) Conference, I, on behalf of Google, inquired whether, if

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Google agreed to the substance of Plaintiff’s proposal regarding the inclusion of formal
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infringement and invalidity contentions into the case schedule, Plaintiff would agree to withdraw
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Plaintiff’s Motion to Dismiss Pursuant to FRCP 12(b)(6) and Motion to Strike Pursuant to FRCP
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LABARRE DECLARATION IN SUPPORT OF GOOGLE’S OPPOSITION TO MOTION DIMISS/STRIKE
Case No. 2:11-CV-00319 GEB JFM

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12(f). Mr. Brian Haan, of Niro, Haller & Niro indicated that he would revert back to Google by

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the following day.

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On Friday, April 29, 2011, in a phone discussion between Mr. Haan and myself,

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Plaintiff indicated that it would withdraw its Motion if Google was also willing to withdraw its

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Motion for Judgment on the Pleadings of Invalidity of the U.S. Patent No. 7,181,459. On behalf

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of Google, I declined. Nevertheless, I informed Mr. Haan that Google agrees to the basic

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substance of Plaintiff’s proposal regarding the inclusion of formal infringement and invalidity

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contentions into the case schedule, and that in light of such agreement, urged Plaintiff to

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reconsider withdrawing its Motion. Plaintiff declined to withdraw.

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7.

Exhibit 2 to this Declaration is a true and correct copy of Yahoo!’s Answer in

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IconFind, Inc. v. Yahoo! Inc., Case No. 2:09-cv-00109 (E.D. Cal. 2009). My review of the case

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docket in that matter concludes that, in that matter, IconFind did not file a Motion to Dismiss

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Yahoo!’s counterclaims of invalidity nor did it file a Motion to Strike Yahoo!’s affirmative

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defense of invalidity.

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8.

Exhibit 3 to this Declaration is a true and correct copy of Recovery Database

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Network’s Answer in MVConnect, LLC v. Recovery Database Network, Inc., Case No. 10-cv-

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6247 (N.D. Ill. 2010). The signature page of this Answer indicates that the defendant was

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represented by attorneys from Niro, Haller & Niro, the same firm that is representing Plaintiff in

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this matter.

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9.

Exhibit 4 to this Declaration is a true and correct copy of The Black and Decker

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Corp.’s Answer in Byrne v. The Black and Decker Corp., Case No. 2:04-cv-262 (E.D. Ky. 2004).

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This Answer indicates the defendant in that matter was represented by attorneys from Niro,

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Scavone, Haller & Niro. It is my understanding that the Niro, Scavnone, Haller & Niro firm is

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the predecessor firm to Niro, Haller & Niro, the same firm that is representing Plaintiff in this

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matter.

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LABARRE DECLARATION IN SUPPORT OF GOOGLE’S OPPOSITION TO MOTION DIMISS/STRIKE
Case No. 2:11-CV-00319 GEB JFM

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I declare pursuant to 28 U.S.C. § 1746 and under penalty of perjury under the laws of the

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United States of America that the foregoing is true and correct. Executed this 2nd day of May,

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2011.

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/s/ John LaBarre (original signature retained by attorney Kenneth Maikish)
John LaBarre
IP Litigation Manager for Defendant, GOOGLE INC.

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LABARRE DECLARATION IN SUPPORT OF GOOGLE’S OPPOSITION TO MOTION DIMISS/STRIKE
Case No. 2:11-CV-00319 GEB JFM