Personalized User Model LLP v. Google Inc.

Filing 210

Official Transcript of Telephone Conference held on February 22, 2011 before Judge Stark. Court Reporter Brian Gaffigan, Telephone [phone]. Transcript may be viewed at the court public terminal or purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 3/28/2011. Redacted Transcript Deadline set for 4/7/2011. Release of Transcript Restriction set for 6/6/2011. (bpg)

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IN THE UNITED STATES DISTRICT COURT

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IN AND FOR THE DISTRICT OF DELAWARE

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- - PERSONALIZED USER MODEL, L.L.P.,
Plaintiff,

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v.
GOOGLE, INC.,
Defendant.

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CIVIL ACTION

NO. 09-525-LPS

- - -

Wilmington, Delaware
Tuesday, February 22, 2011
Telephone Conference

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:
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- - BEFORE:

HONORABLE LEONARD P. STARK, U.S.D.C.J.
- - -

APPEARANCES:

MORRIS NICHOLS ARSHT & TUNNELL, LLP
BY: KAREN JACOBS LOUDEN, ESQ.
and
SNR DENTON, LLP
BY: MARK C. NELSON, ESQ.
(Dallas, Texas)
and
SNR DENTON, LLP
BY: MARC S. FRIEDMAN, ESQ.
(New York, New York)
and
Brian P. Gaffigan
Registered Merit Reporter

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APPEARANCES:

(Continued)

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SNR DENTON, LLP
BY: JENNIFER D. BENNETT, ESQ.
(Palo Alto, California)

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Counsel for Plaintiff

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POTTER ANDERSON & CORROON, LLP
BY: RICHARD L. HORWITZ, ESQ.

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and

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QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP
BY: DAVID A. PERLSON, ESQ.
(San Francisco, California)

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and

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QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP
BY: ANDREA PALLIOS ROBERTS, ESQ.
(Redwood Shores, California)

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Counsel for Defendant

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- oOo -

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P R O C E E D I N G S

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(REPORTER'S NOTE:

conference was held in chambers, beginning at 10:03 a.m.)

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The following telephone

THE COURT:
Judge Stark.

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Good morning, everybody.

This is

Who is there, please?
MS. JACOBS LOUDEN:

Good morning, your Honor.

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For the plaintiff, this is Karen Jacobs Louden at Morris

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Nichols.

I have on the line with me from SNR Denton, Mark

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Nelson, Marc Friedman, and Jennifer Bennett.

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THE COURT:

Okay.

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MR. HORWITZ:

Good morning, your Honor.

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Rich Horwitz for the defendant.

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It's

and Andrea Roberts from Quinn Emanuel.
Okay.

With me are David Perlson

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THE COURT:

Good morning to you as well.

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I have a court reporter with me, of course.

And

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for the record, it is Personalized User Model LLP v Google

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Inc., our Civil Action No. 09-525-LPS, and we have discovery

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issues raised by both sides here.
I'm going to give you my ruling on Google's

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request to bifurcate the issue of ownership.

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give you my ruling on that, then we'll turn to the other

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issues that you all have put before the Court.

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And after I

Google is requesting that the Court bifurcate

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the issue of ownership of the patents in suit and stay

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discovery on all other issues pending resolution of the

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ownership issue.

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Having considered that request and the letters,

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I'm going to deny that request.

I think at this point in

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the case, staying and bifurcating would be an extreme

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response to a defense which, of course, is not adjudicated

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yet and which may or may not turn out to be meritorious.

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The parties as well the Court have invested extensive time

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and resources, including on discovery as well as the Markman

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briefing and the Markman hearing as well as formulating a

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schedule and keeping the case on a schedule.

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plaintiff would be unfairly prejudiced in the circumstances

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of this case if there was a further separation of issues

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particularly given that willfulness and other issues,

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including damages, have already been bifurcated.

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I also think the

I am willing to consider granting leave to file

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a case dispositive motion ahead of schedule on the ownership

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issue.

It appears to me that that is the subject of a

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separate motion that was filed I think yesterday, and I'll

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let the parties touch on that in their presentations on the

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remaining issues.

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So at this point, I do want to give the parties

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a chance to focus on the issues that have been raised by

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PUM; and in that context, if there is anything you want to

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say about the request for leave to file the early case

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dispositives, you can do that as well.

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But let me turn first to PUM at this point,
please.
MR. NELSON:

Thank you, your Honor.

This is

Mark Nelson on behalf of PUM.
May it please the Court, we're here today really

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on sort of three separate discovery motions:

one relating

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to source code and then the other two relating to 30(b)(6)

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topics of a deposition notice.

I'd like to address the

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source code issue first.
Google has produced a lot of source code in

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this case, some of it helpful, some of it not.

And what

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PUM seeks with its motion is really what the federal rules

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permit, and that is to also inspect the source code as it

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is kept in Google's perforce source code repository in the

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ordinary course of business to look at the code and all the

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respective links intact so that PUM can, instead of engaging

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in an ongoing series of letter writing for additional missing

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pieces of code so that PUM can trace, or as PUM's expert

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Pazzani says, chain through the code to figure out the

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include files and other files that are referenced by

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particularly relevant pieces of code to understand and fully

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understand the picture of what the code is.

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You might think of the code as sort of a giant

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three-dimensional jigsaw puzzle, and what PUM has been

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permitted to see so far is really only what Google has

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provided, and then what PUM has been able to derive might be

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relevant from what Google has provided.

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We respect source code as much as or more than

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anybody and certainly do not want to put the source code at

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any greater risk of inadvertent disclosure at all.

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is part of this remedy is we do not feel that we have the

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entirety of the source code at our disposal, and the way

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that it has happened with the letter writing is that we'll

And that

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identify missing pieces of code, we'll write letters.

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Sometimes, Google will produce the code right away.

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times, there is a back and forth asking us to justify it,

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to justify the additional code productions.

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results in sometimes months of delay.

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Other

All of this

And as the Jeh deposition, particularly pages

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127 and 130, shows, in that deposition, we went through one

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section of code for what is called a profiler for one

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particular aspect of one user model -- one user profile that

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is developed by the code.

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at least 10 in search alone.

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in that profiler code, there were 39 include files.

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the deposition that is attached to the letter, we went

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through those 39 include files and asked Mr. Jeh what they

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did and concluded based on his testimony that an additional,

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I think it was, six or seven at least were really necessary

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to understand the code at the level that we needed to

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understand it, not at a real high level but at a finely

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detailed level such that we could follow the calculations

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that are being done by the code, we could follow the

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algorithms, we could follow the threshold values that are

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set by the code, all of which goes into calculating these

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profiles which then are used by other things.

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There are multiple user profiles,
This is but one example.

And

And in

In the case, as Google's response letter pointed
out, in this case, Google had produced many of the relevant

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include files.

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where Google has not.

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Mr. Pazzani in some ways sort of summarizes it all.

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runs a tool called Understand on the code that has been

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produced, he gets 1,000 pages of error messages, and he gets

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upward of 26,000 individual messages, I think the declaration

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said.

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However, there are many, many other aspects
And I think the declaration of

THE COURT:
interrupt you.

All right.

When he

Mr. Nelson, let me

I've got a few questions for you.

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MR. NELSON:

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THE COURT:

Sure.
First, I want to make sure I

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precisely understand the relief you are seeking.

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you want to see the code in the way it's kept.

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be done, to your knowledge, on a stand-alone computer at

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outside counsel's office or, necessarily, are you asking for

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something other than that?

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MR. NELSON:

Yes.

You say

Could that

We're asking to see it really

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in the perforce database at Google where it's kept because

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with this three-dimensional puzzle, Google has not and, as

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far as I know, will not produce all of the relevant code

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that might be of interest to us.

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as the deponents have all said, if our expert wants to look

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at and determine what a particular include file does or does

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not do, if he is sitting in front of the perforce database

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with the entirety of the code with respect to personalization

And it's so much easier,

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and all of the other aspects that are necessary to run it at

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his fingertips.

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as opposed to having Google produce thousands more code

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files, many of which wouldn't be relevant.

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He can chain through the code very quickly

I mean what we're trying to do here, your Honor,

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is really sort of get to the heart of the matter, find out

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the missing code that we're really interested in, and we're

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fine with having it produced per the protective orders so

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that it can be done in the way that it has been done.

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The problem is that for us to actually know what

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code we need to see, we need to be able to see the whole of

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the puzzle.

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by piece and there is months delay in between each piece, it

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just is becoming unworkable.

And when we have to ask for it piece by piece

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THE COURT:

Mr. Nelson, let me stop you.

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So you mentioned the protective order.

I do

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want you to address that further because Google says they're

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complying with the protective order, and you agreed to this

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scheme.

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understanding exactly the relief you're asking for.

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long do you believe you would need access to what you are

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calling the perforce database in order to identify, once and

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for all, what additional parts of the source code you need

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put on a stand-alone so that we could get this issue behind us?

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But related to that, I'm still having a hard time

MR. NELSON:

How

I suspect, your Honor -- I would

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need to talk to my expert a little bit, but I suspect about

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two full days access would be sufficient to identify most

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of it.

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cleared expert who is really an academic.

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industry guy that is out there that is going to be working

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as a consultant somewhere else, to run the risk of any other

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disclosure.

And, again, we're talking about the currently

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He is not an

So to answer your specific question, I think if

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we could get access, Mr. Pazzani access for two full days;

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and by days, I mean 12-hour days; to the perforce database

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at Google, with somebody there to teach him the basics of

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how to navigate through it so he is not just shut in a dark

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room, and if there are little tricks to it, that he is

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permitted to know those so he can navigate effectively

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through it, I think that would be sufficient, your Honor.

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THE COURT:

All right.

And then just quickly,

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and I'm going to turn to Google on this in a moment.

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why isn't it adequate just to keep complying with the

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protective order as Google says they have been doing?

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MR. NELSON:

But

Your Honor, the protective order

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and the stand-alone computer is one discovery method.

Rule

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34 does not preclude the inspection simply because the

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parties have agreed that the source code will be produced

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in a certain way and treated in a certain way as part of

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production.

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The rule uses the word "and," first of all, as I

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noticed in the letter.

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the letter, your Honor, but the advisory committee notes to

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Rule 34, and I'm reading from O'Connor's 2011 edition, also

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clearly indicates that inspection isn't -- the production

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on a stand-alone computer and inspection are not mutually

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exclusive.

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directly about the protective order as well.

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And then if you go -- this isn't in

And I'll just read a Texas rule and I'll talk

THE COURT:

Mr. Nelson, that's all right.

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starting to run out of time.

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I'm

source code issue, please.

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MR. PERLSON:

Let me hear from Google on the

Thank you, Your Honor.

This is

David Perlson.

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First of all, just to kind of pick up on Rule 34

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real quick.

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electronically stored information.

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3, that a party need not produce the same electronically

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stored information in more than one form.

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precludes precisely what it is that PUM is asking for.

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Actually, Rule 34(e) concerns production of
And it says, in subsection

So it actually

We negotiated this protective order provision,

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and we've been following it at, frankly, great expense to

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Google.

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a great deal of engineering time, engineers picking out

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source code, and we made it available, and PUM seems to need

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to want to render that all useless.

We've made it available for several days.

We spent

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They are describing a situation where code calls

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other code, and there are include files and all this sort

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of thing.

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are complex.

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the protective order, PUM must have known that code calls

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other code because that is how source code works.

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sort of "problem" that they're describing is not anything

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that they couldn't have figured out beforehand, but, you

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know, probably recognizing how source code is typically dealt

Well, Google is complex.

The systems at Google

Certainly at the time they were negotiating

And the

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with in the sort of inspection of a stand-alone computer,

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they agreed to this procedure, and they followed it.

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they're suggesting they should be able to throw it away

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because they seem to be having a problem getting through it.

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But I think that a couple things that Mr. Nelson

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And

said are telling:

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First, he points to the fact that at the Jeh

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deposition, there are these include files that they said

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they didn't have or that were needed to understand the code.

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Well, five out of six of those files have been

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made available, and plaintiff has never asked for those

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files.

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to the files, not to access all code at Google, and the

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couple things regarding that.

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The solution to this is for them to ask for access

First.

It seemed like Mr. Nelson admitted that

much of the code they would look at would be irrelevant.

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Indeed, it's not just "personalization code" that they're

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seeking access to.

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code at Google, whether it relates to search, whether it

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relates to how Google searches ads, everything, YouTube.

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mean it's all on this perforce database.

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They are seeking access to all source

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This is the crown jewels of Google; and for

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them to be able to come in and be able to fish around all

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this stuff is an incredible brief of security, completely

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unwarranted under the circumstances, and contrary to what

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the parties have agreed.

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And you say it's not even that.

They just want

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open access.

Apparently, now we have to have someone there

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and walk their expert through this stuff.

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completely inappropriate, and it's like having their expert

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have his own little deposition of Google engineers and its

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further extension of resources.

That is also

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And this idea of back and forth of asking for

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documents and that sort of thing, well, that is really no

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different than how discovery works in other circumstances.

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I mean what they're asking for is really no different than

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them to be able to have their expert walk around at Google,

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look at people's computers, see what they have, talk to

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people.

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here, it's even worse because it's Google's most sensitive

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information.

I mean it really is no different than that.

And,

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THE COURT:

All right.

Mr. Perlson, assuming

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that you are right about all of that, tell me exactly how

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Google will be prejudiced if I allowed their expert to sit

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in a room for one 12-hour day with your perforce database.

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He is subject to the protective order that you all agreed to.

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Apparently, he is an academic, and there is no particular

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reason to think he is going to run out and breach the

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protections of the protective order.

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Why shouldn't I give him that sort of one last

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chance, and then they won't be able to bug you about this

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anymore?

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MR. PERLSON:

Well, your Honor --

well, first

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of all, just because there is a protective order in place

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doesn't mean that it is appropriate to allow this expert to

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come in and see everything.

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information, much of it that is not even allowed to be seen

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by most of the people at Google.

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is only like one or two percent of the company is even

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allowed to see.

I mean this is confidential

I mean much of this code

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It's ultra top-secret stuff, and much of it

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isn't relevant, and nearly all of it won't be relevant.

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there is a great prejudice, just by virtue of having someone

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see it.

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order or not.

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completely unjustified risk.

It doesn't matter whether there is a protective
It's a risk to the company, and it's a

So

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And it's also a burden.

Who knows what he could

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do with the source code.

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frankly, your Honor, I'm not even sure there is a way that

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we can provide it where it would be read only or something

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like that.

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I mean he can go in there; and,

I mean who knows what he can do.
Finally, he has signed on the protective order,

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but that doesn't eliminate all risk.

And if it did, then

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someone would be able to go in and inspect source code in

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every single case.

If this happened, your Honor, if this

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is allowed, every single plaintiff is going to ask for

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access to the source code database, at Google and at other

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companies.

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THE COURT:

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MR. PERLSON:

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THE COURT:

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interrupting you.

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All right.
It's completely unfair.

All right.

Mr. Perlson, I'm just

I've heard enough.

We only have a few

more minutes.

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MR. NELSON:

May I respond briefly, your Honor?

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THE COURT:

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At this point, I'm going to deny PUM's request

No.

I have heard enough.

Thank you.

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to get access to the full amount of the Google source code.

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I'm simply not persuaded at this time that that is necessary.

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The parties negotiated and agreed to the

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protective order, and it appears that Google is at least

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making a good faith effort to comply with its obligations

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under the protective order.

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34 would have given PUM additional rights had they not

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agreed to this protective order, but I think the protective

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order is, in this case, operative and governing the parties'

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obligations with respect to source code.

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I understand that perhaps Rule

Notwithstanding all that, what plaintiff is

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proposing, if there weren't any other background circumstances

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here, a little bit of time with access to the full source

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code might well be reasonable, but the defendant contends

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it's unreasonable and is worried about security risks, and

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I'm just not going to force them to do more at this time

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than they agreed to do under the protective order.

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If it turns out going forward that plaintiff

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believes it can make a greater showing that its case is

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being unfairly hindered, then I will listen to that at that

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time, but the request is denied at this point.

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I want to give each signed about two minutes to

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address the 30(b)(6), or -- I'm sorry, yes, the additional

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deposition topics request.

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Mr. Nelson, you go first.

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MR. NELSON:

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Just one quick point.

Thank you, your Honor.
Paragraphs 29 and 39 of

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the protective order do permit.

Paragraph 29 say nothing

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shall alter or change in any way the discovery provisions of

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the federal rules.

I realize you made your decision but the

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background of the protective order does not preclude this

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type of relief.

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Turning now to the 30(b)(6) topics.

There is

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two groups of topics.

Topics 3 through 6 relate to Google's

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early personalization efforts and the Kaltix transaction.

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Why we think that is relevant, your Honor, is

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really for secondary considerations.

To the extent that

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Google attempted to develop personalization and failed early

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on, acquired a company called Kaltix which developed

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personalization technology and then implemented pieces of

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the Kaltix technology into Google's system moving forward,

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that is all relevant, your Honor, from a failure of others

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long-felt need perspective for secondary considerations of

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nonobviousness.

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and that discovery should be permitted.

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And we think it is relevant for that reason

With respect to the other two topics, what

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basically they summarized is what Google did after receiving

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notice of infringement, our position is that, yes, damages

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is bifurcated and we don't want to go into the details of

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any opinions they may or may not have or things like that.

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But we certainly think that Google will tell some sort of a

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story as to why they're here in this lawsuit, and that it's

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relevant and permissible discovery to go forward with, at

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least on a limited basis, figuring out, getting their story

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of what they did.

Did they try to design around?

Did they

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do anything in response to receiving notice of infringement?

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And that is the subject of those other two topics, your

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Honor.

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THE COURT:

Okay.

Thank you.

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And, Google, if you wish to respond.

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MR. PERLSON:

Yes, your Honor.

First of all,

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on just the second point, topics 9 and 10.

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Mr. Nelson just described shows the problem here.

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looking for discovery on willfulness issues, what we did, in

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the design-around.

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willfulness discovery.

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Did we get an opinion letter?

Going back to Kaltix.

I mean

stuff is privileged in any event.

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I think what

That is

That has been bifurcated, and this

Kaltix has nothing

to

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do with this case.

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company that was acquired in 2003.

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personalization but PUM doesn't -- their patents don't claim

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personalization.

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relation to machine learning and such, as your Honor may

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recall, and any type of personalization is not necessarily

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relevant here.

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It was a company, three people at a
Yes, it did have

They claim some very specific things in

In fact, there is no evidence that anything

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Google acquired from Kaltix was even used at Google.

The

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patents themselves acknowledge that personalization existed

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in the prior art, and the fact that Google, a couple years

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before the patent even issued, bought a company has nothing

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to do with anything here.

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than some sort of thinly veiled damages discovery to try to

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get information about a dollar amount and other information

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regarding the acquisition that didn't have anything to do

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with the patent.

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THE COURT:

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MR. PERLSON:

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And it really seems to be more

All right.

Mr. Perlson.

Your Honor, if I could just touch

-- I'm sorry.

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THE COURT:

They accuse you of intending to

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tell some type of story at trial about why you're in this

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lawsuit.

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intent?

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Can you give PUM any comfort that that is not your

MR. PERLSON:

I don't know what that means.

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We're in this lawsuit because they sued us.

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what he is talking about, your Honor, frankly.

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THE COURT:

All right.

I'm not sure

Was there something else

you were trying to address real quick?
MR. PERLSON:

Oh, yes.

In relation to the

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motion for leave, I appreciate your Honor's order.

I'm not

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going to given additional argument for that, but it does

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seem to me that this would be a sensible situation for an

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early motion for summary judgment even if the issues aren't

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bifurcated or stayed.

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there shouldn't be any need to delay it until after claim

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construction and all these other things because ownership

It's still a threshold issue, and

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issues shouldn't have anything to do with that.

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filed --

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THE COURT:

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MR. PERLSON:

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THE COURT:

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We just

And that is the subject of the --- the motion for leave yesterday.

Right.

Okay.

All right.

Well, let

me give you my rulings on these 30(b)(6) depositions.
With respect to the Kaltix request, which I

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think are topics 3 through 6, I'm going to grant PUM's

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request here.

Relevance, of course, is a very broad concept

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in the context of discovery.

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correct that in the end, the reasons for acquiring Kaltix

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and whatever Kaltix was working on and whatever efforts

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Google may or may not have made to develop personalization

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in the 2003 time period may or may not help plaintiff to

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show secondary considerations of failures of others and

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long felt need or it may simply be broadly related to

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personalization and not to the more specific claimed

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invention here, but I can't tell at this point, and I'm

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persuaded that there is it a sufficient potential relevance

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here to allow PUM to go forward with that.

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It may be that Google is

However, on topics 9 and 10 related to Google's

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response to this lawsuit, I am denying the request there.

I

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don't imagine that I'm going to let either side talk much at

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all at a trial that doesn't involve willfulness about why

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they think this lawsuit was brought or why they're in it or

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why they did bring it.

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able to remind me, as we get closer to trial, that I'm

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making this discovery ruling with the strong disinclination

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to allow that type of evidence to come in at trial.

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think the response to the lawsuit is not relevant and might

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also raise privilege issues.

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And I trust that counsel will be

So you have my rulings on these issues.

So I do

We'll

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take a look at the motion for leave once it's fully briefed,

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and I need to leave you and get on to another call.

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you all very much for your time.

Thank

Good-bye.

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(The attorneys respond, "Thank you, your Honor.")

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(Telephone conference ends at 10:32 a.m.)

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