Google Inc. v. Rockstar Consortium US LP et al

Filing 67

MOTION to Transfer Case or, in the Alternative to Stay filed by MobileStar Technologies LLC, Rockstar Consortium US LP. Motion Hearing set for 6/26/2014 02:00 PM in Courtroom 2, 4th Floor, Oakland before Hon. Claudia Wilken. Responses due by 5/23/2014. Replies due by 5/30/2014. (Attachments: # 1 Declaration of Joshua Budwin, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20, # 22 Exhibit 21, # 23 Exhibit 22, # 24 Exhibit 23, # 25 Exhibit 24, # 26 Exhibit 25, # 27 Exhibit 26, # 28 Exhibit 27, # 29 Exhibit 28, # 30 Exhibit 29, # 31 Exhibit 30, # 32 Exhibit 31, # 33 Exhibit 32, # 34 Exhibit 33, # 35 Exhibit 34, # 36 Exhibit 35, # 37 Declaration of William Colvin, # 38 Declaration of Brian Egan, # 39 Declaration of Erik Fako, # 40 Declaration of Mark Hearn, # 41 Declaration of Gillian Mccolgan, # 42 Declaration of Matthew Poisson, # 43 Declaration of Donald Powers, # 44 Declaration of Marilyn French-St. George, # 45 Declaration of John Veschi, # 46 Declaration of Bruce Anthony Wootton, # 47 Proposed Order)(Budwin, Joshua) (Filed on 5/9/2014)

EXHIBIT 22

James J. Lukas, Jr.
Tel. [phone]
Fax [phone]
[e-mail]

April 17, 2014
VIA E-MAIL
David Sochia
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Email: [e-mail]
Re:

ALBANY
AMSTERDAM
ATLANTA
AUSTIN
BOSTON

Rockstar Consortium US LP, et al. v. LG Electronics Inc.,
Case No. 2:13-cv-898-JRG (Consolidated Lead Case No. 2:13-cv-894)

CHICAGO
DALLAS
DELAWARE
DENVER

Dear David:

FORT LAUDERDALE

We write on behalf of LG Electronics Inc., LG Electronics U.S.A., Inc., and LG
Electronics Mobilecomm USA, Inc. (collectively “LG”) concerning a number of issues
relating to the Disclosure of Asserted Claims and Infringement Contentions (“Infringement
Contentions”) served by Rockstar Consortium US LP, Inc. and MobileStar Technologies,
LLC (collectively “Rockstar”) pursuant to Patent Rule 3-1, on March 24, 2014, and
Rockstar’s amended infringement contentions, served on April 7, 2014. More specifically,
as discussed below, we have now had a chance to review Rockstar’s Infringement
Contentions and have determined that not only do they fail to comply with the Court’s
Local Patent Rules, they also fail as a matter of law.

HOUSTON
LAS VEGAS
LONDON*
LOS ANGELES
MEXICO CITY+
MIAMI
MILAN**
NEW JERSEY
NEW YORK
ORANGE COUNTY
ORLANDO

Rockstar Has Not Provided A Chart For Each Accused Instrumentality

PALM BEACH COUNTY
PHILADELPHIA

This Court’s “Patent Rules demonstrate high expectations as to [a] plaintiff’s
preparedness before bringing suit,” and require the early and complete disclosure of
plaintiff’s assertions of infringement. American Video Graphics, L.P. v. Electronic Arts,
Inc., Case No. 6:04-cv-398-LED (Mar. 11, 2005, E.D.Tex.). Specifically, P.R. 3-1(b)
requires Rockstar to identify “each accused . . . product . . . or other instrumentality
(‘Accused Instrumentality’) . . . of which [it] is aware” and further requires that this
identification “be as specific as possible.” P.R. 3-1(c) further requires Rockstar to provide
“[a] chart identifying specifically where each element of each asserted claim is found
within each Accused Instrumentality.” (emphases added).1

PHOENIX
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SHANGHAI
SILICON VALLEY
TALLAHASSEE
TAMPA
TEL AVIV^
TYSONS CORNER
WARSAW~
WASHINGTON, D.C.

1

P.R. 3-4(a) then requires LG to produce certain documents regarding each “Accused
Instrumentality identified by the patent claimant in its P.R. 3-1(c) chart.” (emphasis
added).

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STRATEGIC ALLIANCE

David Sochia
April 17, 2014
Page 2
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Instead of providing a chart for each accused instrumentality under P.R. 3-1(c),
Rockstar provided only a single claim chart identifying one LG product operating the
Android OS (“LG Accused Product”) for each of the ‘973, ‘572, ‘591, ‘131, and ‘298 patents.
Then, with respect to Rockstar’s contentions directed to a single LG Accused Product,
Rockstar states that “the accused products include LG’s phones and tablets as listed in
attachment A”—but Rockstar fails to provide specific claim charts for those listed products.
See, e.g., Infringement Contentions, ‘131 Patent Chart for LG Optimus Black at 1 n.1; See
also 3/24/14 Ltr. from J. Budwin to R. Harris at 2 (“Rockstar has identified each accused
instrumentality in the attached ‘Attachment A.’”). For the ‘937 patent, Rockstar provided
five claim charts each directed to different software applications (browser, email, gallery,
maps, and contacts) running on a single LG Accused Product.2 Accordingly, the only LG
products presently put at issue by Rockstar’s Infringement Contentions for the ‘973, ‘572,
‘591, ‘131, ‘298, ‘937 and ‘551 patents are those for which Rockstar has provided claim
charts.
Certain LG Accused Products Are Not Distributed In The United States
Rockstar’s Infringement Contentions provide charts for certain LG Accused Products
which are not distributed in the United States (“Foreign LG Accused Products”). For
example, the LG Optimus Black was launched in Canada, Mexico, and South America, and is
not offered for sale in the United States. Similarly, the Optimus Vu, Optimus L9, Optimus
Pad, and Optimus Pad LTE are not distributed in the United States. Because those products
are not available in the United States (and not made here) and extraterritorial application of
the United States patent laws is prohibited, such Foreign LG Accused Products cannot and do
not infringe the asserted claims of the Patents-in-Suit. See 35 U.S.C. § 154; 35 U.S.C. § 271
(providing that the Patent Laws are limited in application to conduct occurring within the
geographical boundaries of the United States); see also Microsoft Corp. v. AT&T Corp., 550
U.S. 437, 454-55 (2007) (“The presumption that United States law governs domestically but
does not rule the world applies with particular force in patent law”). Accordingly, we request
that Rockstar immediately withdraw its infringement claims that are premised on claim charts
of Foreign LG Accused Products.
Certain LG Accused Products Do Not Appear To Be Genuine, Authorized LG
Products
Rockstar’s infringement charts for U.S. Patent No. 5,838,551 (“the ‘551 patent”) rely
upon an analysis of products that LG does not believe are genuine. The charts for the LG
Escape and LG Lucid 2 include images of alleged products with label information that is
inconsistent with the original label format for genuine LG products. We request that Rockstar
2

For the ‘551 patent, Rockstar has provided claim charts for the following LG products:
Escape, G Flex Sprint, G Pad 8.3, G2 Verizon, Intuition, Lucid, Lucid 2, Motion 4G, Nexus 4,
Nexus 5, Nitro, Optimus Elite, Optimus G Pro, Optimus G, Optimus L9, Optimus Net,
Spectrum 2, Spectrum, Splendor, Venice, and Viper 4G LTE.
GREENBERG TRAURIG, LLP

David Sochia
April 17, 2014
Page 3
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provide us with information on the source of all products used for testing, analysis, and
preparation of Rockstar’s Infringement Contentions as they do not appear to be based on an
analysis of genuine LG products.
Rockstar Has Failed To Identify The Allegedly Infringing Features Of The LG
Accused Products
P.R. 3-1(c) requires that Rockstar disclose “[a] chart identifying specifically where
each element of each asserted claim is found within each Accused Instrumentality.”
Rockstar’s claim charts reveal several deficiencies in Rockstar’s infringement theories and
supporting evidence. While our discussion here does not identify all of the problems with
Rockstar’s infringement arguments, the deficiencies discussed below are representative and
require that Rockstar withdraw its current infringement contentions with respect to each of the
patents-in-suit. Furthermore, it is clear that Rockstar has samples of the LG Accused
Products and access to enough publicly available information about those products to
conclusively show that the accused products do not and cannot meet the limitations of the
asserted claims. See Raytheon Co. v. Brocade Comms. Sys., Inc., Case No. 2:03-cv-13-TJW
(July 29, 2003 E.D. Tex.) (The Court’s Patent Rules “contemplate that a party serving its
infringement contentions provide all of the facts then known to the party.”).
The ‘298 Patent
Rockstar’s infringement chart for U.S. Patent No. 6,238,298 (“the ‘298 patent”) relies
upon voluminous exemplary Android OS open source code citations yet Rockstar does not
disclose any basis for its belief that this source code is actually implemented in the LG
Accused Product. Please confirm that, to date, Rockstar has not conducted operational testing
of the LG Accused Product to determine whether it incorporates similar source code or
otherwise meets all of the limitations.
Even if the open source code identified in Rockstar’s charts is reflective of the code
implemented in the LG Accused Product, Rockstar fails to provide any explanation as to
where the various limitations of the claims are found within the source code. In general,
Rockstar appears to have cut and pasted large portions of source code into the charts without
any documentation or explanation as to what is going on, at even a high level, or where
particular elements of the limitations are found within the source code or the screenshots.
For example, limitation 11.2 requires “receiving at the filter node, from the private
network, a data packet having a destination address corresponding to a node in the public
network and a source address corresponding to a node in the private network.” Citation
11.2(1) is a wireshark capture when one or more source devices communicate with a
destination address. Citation 11.2(2) shows a trace of a destination address. Portions of these
screenshots are highlighted with a red box—notably without any explanation as to the
significance of these portions. No explanation is given for which parts of these screenshots
correspond to the various elements in the limitation. The remaining citations in this section
GREENBERG TRAURIG, LLP

David Sochia
April 17, 2014
Page 4
_____________________
merely copy and paste pages and pages of Open Source Code—again without explaining the
significance of the code. The chart fails to mention what the filter node is, what the private
network is, and what the public network is.
In similar fashion, limitation 11.3 requires “maintaining, by the filter node, the source
address taken from the data packet.” Various wireshark captures are cited showing a source
device communicating with a destination node, and large source code reproductions are also
provided. Portions of these screenshots are highlighted with a red box, again without any
explanation as to the significance of these portions. No explanation is given as to what the
filter node is or how the “maintaining” takes place.
Limitation 11.7 requires “waiting for a return packet from a public network,
responsive to the data packet having the replaced source information.” Citation 11.6(1) shows
a hotspot receiving a data packet from a server and citations 11.6(2) – 11.6(7) are voluminous
excerpts of source code. However, nowhere is it demonstrated how or where the waiting
takes place, or what the relevance of these citations is to the limitation.
These are only representative examples of Rockstar’s failure to provide any
explanation or discussion as to how the reproduced code purportedly meets the various claim
limitations. These charts simply fail to particularly point out where the limitations are found
in the volumes of source code and screenshots provided, leaving LG with the formidable task
of attempting to find and then speculate as to what portion of the pasted Google Android OS
corresponds to what Rockstar believes meets the particular limitation.
In light of these deficiencies, there appears no good faith basis for Rockstar’s
contention that the ‘298 patent has been infringed by the LG Accused Product. Please
confirm that Rockstar will withdraw its infringement contentions with respect to the ‘298
patent.
The ‘591 Patent
Rockstar’s claim charts for U.S. Patent No. 6,765,591 (“the ‘591 patent”) again rely
upon exemplary open source Android OS code, without confirmation that this source code is
actually implemented in LG Accused Product. Even if the open source Android OS code is
reflective of the code implemented in the accused product, Rockstar fails to provide any
discussion or explanation as to where or how the various claim limitations are met by the
reproduced source code. In general, Rockstar has merely cut and pasted portions of the open
source Android OS code—without any documentation or explanation as to what is going on at
a high level, and without any analysis of how particular claim elements are found within the
source code.
For example, limitation 1.4 requires “a collection of properties dialogs that receive
user input configuring the virtual private network elements and/or sub-elements, the
properties dialog displayed being controlled by user’s selection of an element from the display
GREENBERG TRAURIG, LLP

David Sochia
April 17, 2014
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of virtual private network elements.” The chart provides various screenshots of network
settings and voluminous citations of Open Source code. Portions of these screenshots are
highlighted with a red box without any explanation as to the significance of these portions.
The chart fails to show a properties dialog display being controlled by a user selection of an
element from the display of virtual private network elements. In fact, nowhere is there shown
a selection from a display of virtual private elements. Instead the screenshots all refer to
setting screens for adding a new VPN network. No explanation is given for how these
screenshots and citations match up to the limitation, leaving mere vague assumptions to the
reader.
As another example, section 1.5 requires “a wizard that enables the user to configure
one or more of the virtual private network elements by interacting with a preprogrammed
series of dialogs which query the user for different sets of virtual private network element
characteristics.” The chart provides a series of screenshots and open source code citations.
However, nowhere is it mentioned which portions of the screenshots or source code refer to a
wizard. In fact, the screenshots relate to various network settings screens, but fail to disclose
any sort of wizard. If Rockstar is making assumptions, such as equating a portion of the cited
materials with the wizard, it should articulate this explicitly. These are only representative
examples of Rockstar’s failure to provide any, let alone a detailed explanation, as required by
the Local Patent Rules.
In light of these deficiencies, there appears to be no good faith basis for Rockstar’s
contention that any of the asserted claims of the ‘591 patent have been infringed by LG’s
accused products. Please confirm that Rockstar will withdraw its infringement contentions
with respect to the ’591 patent.
The ‘131 Patent
Rockstar’s infringement contentions regarding U.S. Patent No. 6,463,131 (“the ’131
patent”) are also deficient. Rockstar again relies upon exemplary Android OS open source
code citations without any basis for its belief that this source code is actually implemented in
the LG Accused Product. Even if the open source code is reflective of the code implemented
in the LG Accused Product, Rockstar fails to provide any explanation as to where the various
claim limitations are found within the source code. In general, the source code is merely
reproduced without any documentation or explanation as to what is going on at a high level,
or how or where the particular claim elements are found within the source code.
For example, section 1.5 requires “means for receiving a selection from the user
indicating a format for delivery of further information regarding the communication event.”
Various screenshots of text message notifications are given, as well as incoming call
screenshots, and email screenshots. Portions of these screenshots are highlighted with a red
box, again, without explanation as to the significance of these portions. Nowhere do these
screenshots indicate where the “format for delivery of further information” or the

GREENBERG TRAURIG, LLP

David Sochia
April 17, 2014
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“communication event” is disclosed. Similarly, the open source code citations give no
explanation or guidance at all as to how they meet elements of the limitation.
As another example, section 1.6 requires “means for allowing the further information
regarding the communication event to be sent to the user in the specified format.” Various
screenshots of email and text message inbox notifications are given, together with incoming
call screenshots. Portions of these screenshots are highlighted with a red box without
explanation as to the significance of these portions. Nowhere do these screenshots indicate
what the “selected format” to which they purportedly refer to. Similarly, the open source code
citations give no explanation or guidance as to how they meet elements of the
limitation. These are not the only examples where Rockstar fails to provide any explanation
or discussion as to how the examples meet the limitation, this occurs throughout the claim
chart.
In light of these deficiencies, there appears to be no good faith basis for Rockstar’s
contention that any of the asserted claims of the ’131 patent have been infringed by the LG
Accused Product. Please confirm that Rockstar will withdraw its infringement contentions
with respect to the ‘131 patent.
The ‘572, ‘937, ‘973 Patents
Rockstar’s infringement contentions regarding U.S. Patent Nos. 6,937,572 (“the ‘572
patent”), 6,037.937 (“the ‘937 patent”), and 6,333,973 (the ‘973 patent) are also deficient. In
all of the charts associated with these patents, Rockstar again relies upon exemplary Android
OS open source code citations. Yet, Rockstar does not disclose any basis for its belief that
this source code is actually implemented in each of the LG Accused Products. Again, even if
the open source code is reflective of the code implemented in the LG Accused Products,
Rockstar fails to provide explanation as to where the various limitations are found within the
source code. In general, the source code is merely displayed without any documentation or
explanation as to what is going on at a high level, or where particular elements of the
limitations are purportedly found within the source code. Please confirm that Rockstar will
withdraw its infringement contentions with respect to the ‘572 patent, the ‘937 patent, and the
‘973 patent.
Given the upcoming case deadlines, please confirm by April 23, 2014, that Rockstar
will withdraw its infringement claims.
Very truly yours,

James J. Lukas, Jr.
GREENBERG TRAURIG, LLP