Overture Services, Inc. v. Google Inc.

Filing 25

First MOTION for Extension of Time to File Preliminary Invalidity Contentions filed by Google Inc.. (Attachments: # 1 Proposed Order Proposed Order Granting)(Kwun, Michael)

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Overture Services, Inc. v. Google Inc. Doc. 25 Case 3:02-cv-01991-JSW Document 25 Filed 10/07/2002 Page 1 of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 KEKER & VAN NEST, LLP JOHN W. KEKER - #49092 JON B. STREETER - #101970 DARALYN J. DURIE - #169825 MICHAEL S. KWUN - #198945 710 Sansome Street San Francisco, CA 94111-1704 Telephone: (415) 391-5400 Facsimile: (415) 397-7188 Attorneys for Defendant GOOGLE INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION OVERTURE SERVICES, INC., a Delaware corporation, Plaintiff, v. GOOGLE INC., a California corporation, Defendant. Case No. C 02-01991 CRB ADR DEFENDANT GOOGLE INC.'S MOTION FOR AN ORDER EXTENDING GOOGLE'S TIME TO SERVE INITIAL INVALIDITY CONTENTIONS; MEMORANDUM OF POINTS AND AUTHORITIES Date: Time: Courtroom: Judge: N/A (L.R. 6-3) N/A (L.R. 6-3) 8, 19th Floor Hon. Charles R. Breyer 299351.01 GOOGLE'S MO. FOR AN EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB ADR Dockets.Justia.com Case 3:02-cv-01991-JSW Document 25 Filed 10/07/2002 Page 2 of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 1 MOTION Defendant Google Inc. ("Google") hereby moves, pursuant to Civil L.R. 6-1 and 6-3, and paragraph 4 of the Honorable Charles R. Breyer's Standing Order, for an order extending its time to serve its Preliminary Invalidity Contentions. Pursuant to Civil L.R. 6-3(d), there will be no hearing on Google's motion unless the Court schedules a hearing. Paragraphs 5 through 13 of the concurrently filed Declaration of Michael S. Kwun ("Kwun Decl.") set forth the information required by Civil L.R. 6-3(a). Google seeks an order extending its time to serve its Preliminary Invalidity Contentions (Patent L.R. 3-3) to forty-five days after plaintiff Overture Services, Inc. ("Overture") serves a revised Disclosure of Asserted Claims and Preliminary Infringement Contentions (hereinafter, "Preliminary Infringement Contentions") that fully complies with Patent L.R. 3-1. Google brings this motion because the claim chart attached to Overture's Preliminary Infringement Contentions fails to "identify[] specifically where each element of each asserted claim is found within each Accused Instrumentality[.]" Patent L.R. 3-1(c). MEMORANDUM OF POINTS AND AUTHORITIES I. STATEMENT OF FACTS By its complaint, Overture accuses Google of infringing U.S. Patent No. 6,269,361 (hereinafter, the "361 patent"; a copy of the 361 patent is attached as Exh. 1 to the Kwun Decl.1). See generally Overture's Complaint (filed Apr. 23, 2002). By its answer and counterclaims, Google denies infringement, and asserts that the claims of the 361 patent are invalid and unenforceable. See generally Google's Answer and Counterclaims (filed June 7, 2002). This District's Patent Local Rules require certain disclosures in patent cases. See generally Patent L.R. 3-1 3-8. In their initial Joint Case Management Statement, the parties proposed that this Court adopt as part of its initial Case Management Order the standard deadlines for such disclosures. See Exh. 2 at 4-6. Patent L.R. 3-1 requires that, in its Preliminary Infringement Contentions, the patent All further citations herein to an "Exh." are to exhibits to the Kwun Decl. unless otherwise noted. 1 GOOGLE'S MO. FOR AN EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB ADR 28 299351.01 Case 3:02-cv-01991-JSW Document 25 Filed 10/07/2002 Page 3 of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 plaintiff (a) identify each claim of the patent in suit that is allegedly infringed (the "asserted claims"); (b) separately for each asserted claim, identify each apparatus, product, device, process, method, act, or other instrumentality of which the plaintiff is aware and contends infringes each asserted claim (the "accused instrumentalities"); (c) provide a chart identifying "specifically where each element of each asserted claim is found" within each accused instrumentality (the "claim chart"); (d) state whether each element of each claim is claimed to be literally present in the accused instrumentality, or under the doctrine of equivalents; (e) state the priority date that the plaintiff is claiming for the patent; and (f) identify, for each asserted claim, any instrumentality of its own that it intends to assert practices the invention claimed by the patent. See Patent L.R. 3-1. Overture served its Preliminary Infringement Contentions on September 16, 2002. See Exh. 3. In its Preliminary Infringement Contentions, Overture asserts that Google infringes 64 of the 67 claims of the 361 patent every claim except claims 3, 6, and 19. Id. at 2:4-6. It also identifies Google's "AdWords Select" program as the accused instrumentality. Id. at 2:8-11. Overture further purports to have provided a claim chart identifying where each claim element is found in AdWords Select. See id. at 6:11-15 & Exh. A to Overture's Preliminary Infringement Contentions (Overture's Claim Chart originally attached as Exhibit A to its Preliminary Infringement Contentions is attached as Exh. 4 to the Kwun Decl.). However, for almost every element of every asserted claim, Overture's claim chart does no more than state that the element is, in fact, present in AdWords Select, without identifying where or how that element is present. See, e.g., Exh. 4 at 1 (stating, with respect to the element of claim 1 of "receiving a search request from the searcher," that "AWS receives a search request from the searcher"); see generally Exh. 4 at 1-11. II. GOOGLE'S ATTEMPTS TO RESOLVE THIS DISPUTE INFORMALLY In a telephone conversation the day after Overture served its Preliminary Infringement Contentions, counsel for Google requested that Overture supplement its claim chart. See Kwun Decl. 5-6 & Exh 5. The parties discussed their respective positions in several letters, and in further telephone conversation on September 23 and 27, 2002, see Kwun Decl. 7-9 & Exhs. 62 299351.01 GOOGLE'S MO. FOR AN EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB ADR Case 3:02-cv-01991-JSW Document 25 Filed 10/07/2002 Page 4 of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8, but were unable to resolve their differences, see Kwun Decl. 10. This motion followed. III. A. ARGUMENT Overture's Claim Chart does not comply with Patent L.R. 3-1(c) For nearly every element of every asserted claim, Overture's Claim Chart does nothing other than state that the element at issue is found in Google's AdWords Select program. See, e.g., Exh. 4 at 1 (stating, with respect to the element of claim 1 of "receiving a search request from the searcher," that "AWS receives a search request from the searcher"). Upon even the most cursory review it is readily apparently that there is, practically speaking, almost no difference between the left-hand column of the chart (identifying elements of the asserted claims) and the right-hand column of the chart (purportedly identifying where those elements are found in AdWords Select). See generally Exh. 4 at 1-11. A conclusory statement that a given element is present in an accused instrumentality does not satisfy a patent plaintiff's obligations under Patent L.R. 3-1(c). With few exceptions, Overture's Claim Chart offers no information whatsoever beyond the fact that Overture contends that each element of each asserted claim is present in AdWords Select. But that contention that every element of every asserted claim can be found in the only accused instrumentality is already implicit in Overture's assertion that Google's AdWords Select program infringes the asserted claims; in order for an accused instrumentality to infringe a patent claim, it already must be true that every element of the claim be found in the accused instrumentality. See, e.g., Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1333 (Fed. Cir. 2001) ("The allelements rule is that an accused device must contain every claimed element of the invention or the equivalent of every claimed element.") (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997)). Patent L.R. 3-1(c) requires the patent plaintiff to identify specifically where each element of each asserted claim is found in the accused instrumentality. For almost every element of every asserted claim, Overture's Claim Chart does nothing more than dress in new clothing the information that Overture is required to disclose pursuant to subparts (a) and (b) of Patent L.R. 31 which claims it asserts are infringed, and the instrumentalities by which that purported 3 299351.01 GOOGLE'S MO. FOR AN EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB ADR Case 3:02-cv-01991-JSW Document 25 Filed 10/07/2002 Page 5 of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 infringement occurs. Were such a disclosure sufficient to satisfy the requirements of Patent L.R. 3-1(c), there would be no need for subpart (c) of Patent L.R. 3-1, because the information that patent plaintiff would be required to disclose pursuant to subpart (c) would be identical to the information already disclosed by the combination of the disclosures required under subparts (a) and (b). B. Overture should be required to serve a revised Claim Chart During the parties' attempt to resolve this dispute informally, counsel for Overture argued that "[i]t is difficult to point to a corresponding `structure' for each step in the claimed methods and system." Exh. 6 at 1. In response, counsel for Google offered two specific examples of how Overture could identify with the necessarily precision where the claim elements are supposedly found in AdWords Select. Exh. 7 at 1-2. For example, counsel for Google suggested that if its website's "search box" is the method by which Overture claims AdWords Select satisfies the "receiving a search request from the search" element, Overture's Claim Chart should so state. Id. at 1. As another example, if Overture contends that some portion of some web page at Google's website is a "search result list" (another element of many claims of the 361 patent), counsel for Google suggested that Overture print out that web page and circle or otherwise indicate where the "search result list" is. Indeed, in a portion of the specification describing a preferred embodiment of the 361 patent, this is exactly what the patent itself does. See Exh. 1 at col 18, ll. 4-8 (referring to "[s]earch result list entries 710a-710h") and Exh. 1, fig. 7 (illustrating items 710a-710h as parts of a web page). These are merely illustrative examples. The point is, simply, that Overture certainly can (and should) provide a more informative claim chart than it has. Merely restating its infringement conclusions does not satisfy Patent L.R. 3-1(c)'s requirement that Overture specifically identify where each element of each asserted claim is found in the accused instrumentality. 4 299351.01 GOOGLE'S MO. FOR AN EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB ADR Case 3:02-cv-01991-JSW Document 25 Filed 10/07/2002 Page 6 of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 C. Google's deadline for serving its Preliminary Invalidity Contentions should be extended Google's current deadline for serving its Preliminary Invalidity Contentions is October 31, 2002 forty-five days after Overture's September 16, 2002 deadline for serving its Preliminary Infringement Contentions. Exh. 2 at 4:14-17; Patent L.R. 3-3 (Preliminary Invalidity Contentions are due forty-five days after Preliminary Infringement Contentions). Google agreed to that that deadline based on the assumption that Overture's Preliminary Infringement Contentions would fully comply with Patent L.R. 3-1. Google will suffer substantial prejudice if its motion is not granted. Fairness dictates that the party that initiates a patent infringement action the plaintiff describe its affirmative case before the defendant is required to disclose its defenses. Just as a plaintiff must file a complaint that complies with the applicable rules before a defendant can be required to answer, so too should a patent infringement plaintiff be required to serve Preliminary Infringement Contentions that comply with the Patent Local Rules before a defendant is required to serve Preliminary Invalidity Contentions. Because Overture's Preliminary Infringement Contentions do not comply with Patent L.R. 3-1, Google is entitled to an extension of its deadline for serving its Preliminary Invalidity Contentions. IV. CONCLUSION For the foregoing reasons, Google respectfully requests that the Court extend its deadline for serving its Preliminary Invalidity Contentions to forty-five days after the date on which Overture serves revised Preliminary Infringement Contentions that fully comply with Patent L.R. 3-1. Dated: October 7, 2002 KEKER & VAN NEST, LLP By: s/Michael S. Kwun_______________ MICHAEL S. KWUN Attorneys for Defendant GOOGLE INC. 5 299351.01 GOOGLE'S MO. FOR AN EXT. OF TIME TO SERVE PRELIM. INVALIDITY CONTENTIONS CASE NO. C 02-01991 CRB ADR

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