Personalized User Model LLP v. Google Inc.

Filing 444

MOTION P.U.M.'s Motion For Leave To Cross-Move For Summary Judgment In Response To Googles Motion For Summary Judgment On Its Breach Of Contract And Declaration Of Ownership Counterclaims, And Affirmative Defense Of Lack Of Standing re 412 MOTION for Summary Judgment On Its Breach Of Contract Counterclaim, Its Declaration Of Ownership Counterclaim, And Its Affirmative Defense Of Lack Of Standing - filed by Personalized User Model LLP. (Attachments: # 1 Text of Proposed Order)(Tigan, Jeremy)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,

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Plaintiff,
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v.
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GOOGLE, INC.,
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Defendant.
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______________________________________ )
GOOGLE, INC.,
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Counterclaimant,
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v.
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PERSONALIZED USER MODEL, L.L.P.
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and YOCHAI KONIG,
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Counterclaim-Defendants.
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C.A. No. 09-525 (LPS)

P.U.M.’S MOTION FOR LEAVE TO CROSS-MOVE FOR SUMMARY JUDGMENT IN
RESPONSE TO GOOGLE’S MOTION FOR SUMMARY JUDGMENT ON ITS
BREACH OF CONTRACT AND DECLARATION OF OWNERSHIP
COUNTERCLAIMS, AND AFFIRMATIVE DEFENSE OF LACK OF STANDING
Personalized User Model, L.L.P. (“P.U.M.”) respectfully moves for entry of an
order granting it leave, to the extent leave is required, to cross-move for summary judgment in
response to Google, Inc.’s Motion for Summary Judgment on its Breach of Contract
Counterclaim, Declaration of Ownership Counterclaim, and Affirmative Defense of Lack of
Standing (D.I. 412; “Google’s Motion”). For the reasons that follow, P.U.M. seeks leave to
cross-move for summary judgment dismissing these Counterclaims and related Affirmative
Defense and proposes to include its arguments in its brief to be filed in opposition to Google’s
Motion on January 14, 2013 (see D.I. 443):

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1.

A year and a half ago, Google sought leave to file an early summary

judgment motion on these same issues relating to the alleged patent rights of SRI International,
Inc. (“SRI”). The Court denied Google’s request, among other reasons, because “there is a
dispute” on conception issues. (6/29/11 Tr. at 21:4-14.). The dispute on these conception issues
continues and thus warrants denial of Google’s pending Motion for Summary Judgment.
2.

Subsequently, Google moved to dismiss for lack of subject matter

jurisdiction because P.U.M. allegedly did not exist as a legal entity at the time it was assigned the
patents-in-suit. (D.I. 301.) The Court denied Google’s motion in a memorandum order dated
September 13, 2012. (D.I. 396.)
3.

Notwithstanding the Court’s rulings on these issues, Google has now filed

another Motion for Summary Judgment based on alleged patent ownership issues. (D.I. 412.)
4.

P.U.M. seeks leave to cross-move on narrow grounds. Regardless of the

factual issues that exist with respect to the merits of Google’s Motion (i.e., when conception
occurred and whether the invention resulted from Dr. Konig’s work at SRI or was related to
SRI’s business), there is no genuine dispute that Google’s Counterclaims for breach of contract
and request for a declaration of ownership are time-barred under the applicable statute of
limitations. The Court should also grant summary judgment dismissing Google’s affirmative
defense of lack of standing, first, because it entirely depends on Google prevailing on its failed
Counterclaims, and second, because, regardless of any disputes concerning the rights of
Dr. Konig, P.U.M., as a successor-in-interest to the patent rights of co-inventors Roy Twersky
and Michael Berthold, clearly has standing to bring this patent infringement action. The absence
of any factual dispute on these narrow issues and their amenability to summary judgment became
clear to P.U.M.’s counsel while preparing P.U.M.’s response to Google’s Motion.

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5.

P.U.M.’s cross-motion for summary judgment on these SRI ownership and

standing issues serves the interests of justice. If the cross-motion is granted and these claims and
this defense are dismissed, the issues for trial would be dramatically simplified. All that would
remain for the upcoming trial will be P.U.M.’s infringement claim and Google’s patent invalidity
defense. The jury would no longer be distracted by ownership issues.
6.

Google will not be unfairly prejudiced by a cross-motion. P.U.M. will be

well within the page limits allotted to it, given that it did not file any opening motions and
proposes to combine its opening brief on its cross-motion with its opposition to Google’s
Motion. Nor can Google complain of any delay given its repeated requests for extensions of
time and the fact that no trial date has been set. Indeed, with oral argument scheduled for May 8,
2013 (D.I. 442), there is ample time in the schedule to accommodate this cross-motion.
For the foregoing reasons, P.U.M. therefore requests that, to the extent leave is
required, the Court grant it leave to file a cross-motion for summary judgment in response to
Google’s Motion for Summary Judgment. A proposed form of order is attached.

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MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Jeremy A. Tigan
OF COUNSEL:
Marc S. Friedman
SNR Denton US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Jennifer D. Bennett
SNR Denton US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[phone]

Karen Jacobs Louden (#2881)
Jeremy A. Tigan (#5239)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P.
and Yochai Konig

Mark C. Nelson
SNR Denton US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201-1858
[phone]
January 2, 2013
6913344

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RULE 7.1.1. CERTIFICATE
I hereby certify that the subject of the foregoing motion has been discussed with
counsel for Google. Google opposes P.U.M.’s request.

/s/ Jeremy A. Tigan
Jeremy A. Tigan (#5239)

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