Personalized User Model LLP v. Google Inc.

Filing 371

Letter to The Honorable Leonard P. Stark from David E. Moore regarding response to PUM's request for a trial date - re 369 Letter. (Moore, David)

1313 North Market Street
P.O. Box 951
Wilmington, DE 19899-0951
302 984 6000
www.potteranderson.com
David E. Moore
Partner
Attorney at Law
[e-mail]
302 984-6147 Direct Phone
302 658-1192 Fax

July 31, 2012
VIA ELECTRONIC FILING
The Honorable Leonard P. Stark
United States District Court
District of Delaware
844 North King Street
Wilmington, DE 19801
Re:

Personalized User Model LLP v. Google Inc., C.A. No. 09-00525-LPS

Dear Judge Stark:
I write of behalf of Defendant Google Inc. (“Google”) in response to Plaintiff’s recent
request for a trial date in the above-captioned case (D.I. 369). Google believes that it would be
wasteful and inefficient to set a trial date at the present time, for several reasons.
First, as explained in Google’s pending Motion to Dismiss (D.I. 301), Google
respectfully submits that the Court lacks subject-matter jurisdiction over this Action due to the
fact that the asserted patents were purportedly transferred to Plaintiff before Plaintiff came into
corporate existence. While Plaintiff unsurprisingly disputes this subject-matter defect and
opposes Google’s Motion to Dismiss, it would be inefficient and potentially wasteful for the
Court to set a trial date while the Court’s threshold jurisdiction over this Action remains
unresolved.
Second, Google has filed inter partes re-examination requests for both asserted patents in
the U.S. PTO. On February 10, 2012, the PTO issued an Action Closing Prosecution (ACP)
finding each asserted ‘276 claim invalid on seven separate grounds. On April 19, 2012, the PTO
issued an ACP finding each asserted ‘040 claim invalid on four separate grounds. The parties
have submitted their briefs in response to both ACPs, and the PTO’s website shows both reexaminations as “Ready for Examiner Action after ACP.” Thus, the Final Office Action in each
re-examination could come at any time.
Google submits that it would be inefficient and wasteful to set a trial date for this Action
while the validity of the asserted claims remains in such jeopardy before the PTO. Given that
each asserted claim stands rejected on 4-7 separate grounds at the ACP stage, there is a high
likelihood that the upcoming Final Office Actions will reject the asserted claims as well. Thus,

The Honorable Leonard P. Stark
July 31, 2012
Page 2
rather than setting a trial date, the more appropriate action would be to stay the litigation until the
completion of the re-examinations, for which Google intends to formally move upon receipt of
the expected Final Office Action(s). See, e.g., Belden Tech. Inc. v. Superior Essex Comm’ns LP,
No. 08-63-SLR, 2010 WL 3522327, *3 (D. Del. Sept. 2, 2010) (stating that the status of a reexamination weighs in favor of a litigation stay once a Final Office Action has issued and an
appeal docketed before the BPAI).
Moreover, while Plaintiff states that not setting a trial date would “benefit Google to the
detriment of P.U.M.,” it provides no support for this statement. Nor could it. Plaintiff is not a
competitor of Google, nor does it practice the asserted patents. Thus, at most, Plaintiff’s remedy
would be limited to money damages. And while Plaintiff states that it “is the spin-off of a small
company (Utopy) that developed this technology” as supposed support for its claim of prejudice,
this statement is simply untrue. Years before this litigation was filed, Utopy transferred the
asserted patents to a Cyprus entity, Levino, Ltd. Plaintiff then purported to acquire the asserted
patents from Levino on May 23, 2007 (though Plaintiff did not actually come into existence until
August 14, 2007). Plaintiff then waited almost two more years to bring suit.
Also, contrary to Plaintiff’s implication, several of the extensions to the case schedule
were granted at Plaintiff’s own request. For example, the February 2, 2012 Stipulation regarding
Expert Discovery (D.I. 353) – pushing back expert discovery and dispositive motions by roughly
one month – was suggested by Plaintiff. The July 16, 2012 Stipulation Regarding Expert
Discovery (D.I. 367) – pushing back expert discovery and dispositive motions by 5-6 weeks –
was occasioned by Plaintiff’s insistence that fact discovery be re-opened so that it could take
discovery into a new Google functionality. Even the extensions referred to in Plaintiff’s request
for a trial date (D.I. 364 and 366) were enacted not only to accommodate Google and its expert,
but also to facilitate Plaintiff’s discovery into the new Google functionality. Plaintiff’s own
efforts to re-open fact discovery and push back other case deadlines undercuts Plaintiff’s stated
concerns about the pace of this litigation.
Finally, setting trial for March 2013 (as Plaintiff requests) would be impractical.
Dispositive motions in this case are not due until November 7, 2012 and will not be fully briefed
until, at the earliest, November 28, 2012 – barely three months before Plaintiff’s proposed trial
date. Given that Plaintiff has accused five Google products of infringing 12 claims from two
different patents, it would be impractical to schedule trial for just three months after dispositive
motions are fully briefed. Under this schedule, the dispositive motions would likely not be
adjudicated until very soon before the trial date, meaning that counsel for both parties would
need to begin their final trial preparations without knowing which (if any) of the myriad claims
and accused products will survive dispositive motions and remain in the case for trial. Several of
Google’s counsel of record also have another trial currently set for March 2013 in the Eastern
District of Texas, which makes a March 2013 trial in this Action even more impractical from
Google’s perspective.
For the foregoing reasons, Google respectfully opposes Plaintiff’s request to set a trial
date at the present time.

The Honorable Leonard P. Stark
July 31, 2012
Page 3

Respectfully,
/s/ David E. Moore
David E. Moore
DEM/msb/1069107/34638
cc:

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