Personalized User Model LLP v. Google Inc.

Filing 469

REDACTED VERSION of 452 Answering Brief in Opposition, to Google's Motion for Summary Judgment Regarding SRI and in Support of PUM's Cross-Motion for Summary Judgment by Personalized User Model LLP. (Tigan, Jeremy)

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

)
)
Plaintiff,
)
)
v.
)
)
GOOGLE, INC.,
)
)
Defendant.
)
)
)
)
GOOGLE, INC.
)
)
Counterclaimant,
)
)
v.
)
PERSONALIZED USER MODEL, L.L.P. and )
)
YOCHAI KONIG,
)
Counterclaim-Defendants. )

C.A. No. 09-525 (LPS)
PUBLIC VERSION

PUM’S ANSWERING BRIEF IN OPPOSITION
TO GOOGLE’S MOTION FOR SUMMARY JUDGMENT REGARDING SRI AND IN
SUPPORT OF PUM’S CROSS-MOTION FOR SUMMARY JUDGMENT
OF COUNSEL:
Marc S. Friedman
SNR DENTON US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
SNR Denton US LLP
2000 McKinney Avenue, Ste. 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
SNR DENTON US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[phone]
Original Filing Date: January 14, 2013
Redacted Filing Date: January 23, 2013

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ..................................................................................................... iii
NATURE AND STAGE OF PROCEEDING .............................................................................. 1
SUMMARY OF ARGUMENT ................................................................................................... 1
STATEMENT OF FACTS .......................................................................................................... 1
A.

Inventors Konig And Twersky. ............................................................................ 1

B.

Dr. Konig’s Employment At SRI. ........................................................................ 2
1.
2.

The Invention Was Conceived After Dr. Konig’s
Employment at SRI. ................................................................................. 3

3.
C.

Dr. Konig’s Work. .................................................................................... 2

Dr. Konig Consistently Testified That Conception
Occurred After He Left SRI...................................................................... 4

The Inventions Were Developed Entirely On Dr. Konig’s Own
Time And Did Not Relate To His Employment At SRI Or SRI’s
Actual Or Anticipated Business. ........................................................................... 5
1.

The Inventions Did Not Result From Dr. Konig’s Speech
Recognition And Speaker Verification Work. ........................................... 5

2.

SRI Did Not Have Business Or Any Demonstrably
Anticipated Research Or Development In Personalized
User Search. ............................................................................................. 6

3.

Google “Rents” SRI’s Purported Rights For This
Litigation. ................................................................................................. 6

ARGUMENT .............................................................................................................................. 7
A.

SRI’s And, Thus, Google’s Claims Are Time-Barred, and PUM
Has Standing to Bring This Action. ...................................................................... 7

B.

Google Cannot Establish As A Matter Of Law That Conception
Occurred While Dr. Konig Was Employed At SRI. .............................................. 9

C.

Assuming Arguendo That Conception Occurred While Dr. Konig
Was At SRI, Summary Judgment Must Be Denied Because There
-i-

Are Genuine Factual Disputes Concerning Whether The Inventions
(1) Resulted From His Work At SRI Or (2) Related To SRI’s
Existing Business Or Anticipated Research And Development. .......................... 11
1.

The Inventions Did Not Result From Dr. Konig’s Work. ........................ 11

2.

The Inventions In The Patents-In-Suit Were Not Related To
SRI’s Business Or Actual Or Demonstrably Anticipated
Research And Development As Of August 6, 1999. ................................ 12

CONCLUSION ......................................................................................................................... 14

- ii -

TABLE OF AUTHORITIES
Page(s)
CASES
Andreaggi v. Relis,
171, N.J. Super. 203, 408 A.2d 455 (N.J. Super. Ct. Ch. Div. 1979) .................................... 10
AT&T v. Integrated Network,
972 F.2d 1321 (Fed. Cir. 1992)............................................................................................ 10
Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc.,
487 F. Supp. 2d 1099 (N.D. Cal 2007)................................................................................. 10
Bd. of Trs. v. Roche Diagnostics,
583 F. 3d 832 (Fed. Cir. 2009)........................................................................................... 8, 9
Cadence Design Sys., Inc. v. Bhandari,
2007 WL 3343085 (N.D. Cal. November 8, 2007)............................................................... 13
Coleman v. Dines,
754 F.2d 353, 224 USPQ 857 (Fed. Cir. 1985) .................................................................... 11
Cubic Corp. v. Marty,
229 Cal. Rptr. 828, 185 Cal. App. 3d 438 (Cal. Ct. App. 1986)............................................ 13
EBC, Inc. v. Clark Bldg. Sys.,
618 F. 3d 253 (3rd Cir. 2010) .............................................................................................. 10
Elec. Electronic Control, Inc. v. L.A. Unified Sch. Dist.,
126 Cal. App. 4th 601 (2d Dist. 2005) ................................................................................. 10
Enreach Tech., Inc. v. Embedded Internet Solutions,
403 F. Supp. 2d 968 (N.D. Cal. 2005).................................................................................... 7
Freedom Wireless, Inc. v. Boston Commc’ns Grp., Inc.,
220 F. Supp. 2d 16 (D. Mass. 2002) .................................................................................... 12
Grynberg v. Total Compagnie Francaise des Petroles,
--- F. Supp. 2d ----, 2012 WL 4095186 (D. Del. Sept. 18, 2012) ............................................ 8
Gunter v. Stream,
573 F.2d 77, 197 USPQ 482 (CCPA 1978) .......................................................................... 11
Hercules Glue Co. v. Littooy,
25 Cal. App. 2d 182, 76 P. 2d 700 (Ct. App. 1938) .............................................................. 11
- iii -

Hiatt v. Ziegler,
179 USPQ 757 (Bd. Pat. Inter. 1973) ................................................................................... 11
Hirshhorn v. Mine Safety Appliances Co.,
106 F. Supp. 594 (W.D. Pa. 1952) ....................................................................................... 12
Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc.,
2005 WL 46553 (D. Del. 2005) ............................................................................................ 8
Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc.,
No. Civ. 98-80-SLR, 2005 WL 388592 (D. Del. Feb. 2, 2005) .............................................. 8
Rite-Hite Corp. v. Kelley Co.,
56 F.3d 1538 (Fed. Cir. 1995)................................................................................................ 9
RULES AND STATUTES
10 Del. C. § 8106 ........................................................................................................................ 8
10 Del. C. § 8121 ........................................................................................................................ 8
Cal. Civ. Proc. Code § 337 .......................................................................................................... 8
Cal. Lab. Code § 2870................................................................................................. 2, 7, 12, 13

- iv -

NATURE AND STAGE OF PROCEEDING
This Court previously denied Google’s request for leave to file an early summary
judgment motion on the identical ownership issue (D.I. 196), in part because, as the Court stated,
“there is a dispute” on conception issues. (6/29/11 Tr. at 21:4-14.) These and other disputed
issues of fact remain. For the reasons that follow, Google’s motion for summary judgment
should be denied and PUM’s cross-motion for summary judgment, for which leave to file has
been sought (D.I. 444), should be granted.
SUMMARY OF ARGUMENT
Google fails to carry its burden of demonstrating the absence of material facts. As a
threshold issue, and as a matter of law, Counts VII-X of Google’s Counterclaims relating to
patent ownership are time-barred, warranting summary judgment in PUM’s favor.

But,

assuming arguendo these claims were timely filed, and with all reasonable inferences drawn in
PUM’s favor, the evidence establishes that Dr. Konig conceived of the inventions after he left
SRI. And, even if they were conceived while Dr. Konig was at SRI, the inventions relate to an
entirely different subject matter (personalized Internet services such as search) than the work Dr.
Konig performed at SRI (speech recognition and speaker verification), or any of SRI’s then
actual existing or demonstrably anticipated projects. Finally, because PUM holds the patent
rights of co-inventors Roy Twersky and Michael Berthold, there can be no doubt that it has
standing. At a minimum, there are genuine issues of material fact that preclude summary
judgment in Google’s favor.
STATEMENT OF FACTS
A.

Inventors Konig And Twersky.

Dr. Konig received two computer science degrees, including a Ph.D. from Cal-Berkeley

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in 1996 where he specialized in statistical machine learning. His Ph.D. thesis discussed the
application of machine learning techniques to speech recognition, and he authored several
articles on the topic.1 Dr. Konig was an expert in machine learning before he joined SRI.2
Mr. Twersky served in the Israeli Army between 1982 and 1985, where he worked in the
computer unit department, supervising the computerization of all HR Systems. (See Ex. C at
31:20-32:6). In 1986, Mr. Twersky received a degree in economics from Tel Aviv University
where he took several mathematics courses, including statistics and Bayesian statistics. (Id. at
28:22-24 and 29:3-15.) He then attended Stanford University’s Business School, during which
time he met Dr. Konig. (Id. at 32:11-33:5.)
B.

Dr. Konig’s Employment At SRI.
1.

Dr. Konig’s Work.

Rather, he worked on “various speech recognition
technology, including human-to-human speech recognition, [and] speaker verification” (Ex. A at
1

See Declaration of Jennifer Bennett (“Bennett Decl.”), Ex. A (at 48:18-49:5, 49:12-23, 51:13, and 51:19-22. All cited exhibits are to the Bennett Decl. unless otherwise noted.
2

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50:4-7), and over-the-telephone large vocabulary recognition. (Id, 50:3-7; see also Ex. E, 5-6.)
His research did not include search technologies, extracting features from documents or web
pages, modeling, information retrieval, or search personalization - essential features of the
patents-in-suit. (Ex. B at 57:1-3.)
2.

The Invention Was Conceived After Dr. Konig’s Employment at SRI.

Before UTOPY could begin its
research, it needed capital. Mr. Twersky, with Dr. Konig, created marketing slides and other
materials to present to potential investors. (Id. at 189:20-190:1-17.) For example, in May 1999,
they prepared a draft white paper entitled “Providing Your Personal Web” (Ex. F), which
discussed the problem of information overload and explained that the goal of UTOPY (not yet
formed) was “to develop the underlying technology for personalized services on the web.”3

Neither explained how the information
overload problem would be solved.

3

Although the white paper states that machine learning tools were developed for “such
applications as continuous speech recognition,” that was not their only application. As discussed
below at page 6, speech recognition is but one of many applications for which machine learning
was developed.

-3-

3.

Dr. Konig Consistently Testified That Conception Occurred After He
Left SRI

He never changed that testimony, either before or after learning of Google’s
proposed amended pleading.

4

5

6

-4-

Thus, at a minimum issues of fact
concerning conception continue to exist.
C.

The Inventions Were Developed Entirely On Dr. Konig’s Own Time And Did
Not Relate To His Employment At SRI Or SRI’s Actual Or Anticipated
Business.
1.

The Inventions Did Not Result From Dr. Konig’s Speech Recognition
And Speaker Verification Work.

There also is no dispute that Dr. Konig did no work on the development of personalized
user Internet search technology on SRI’s behalf. As explained above, Dr. Konig’s work at SRI
involved speech recognition and speaker verification.
Google contends that the invention “resulted from” Dr. Konig’s work at SRI essentially
because machine learning techniques can be applied to both speech recognition and personalized
Internet searches.7 (D.I. 413, at 5.) But, the patents do not claim the general concept of machine
learning; they claim personalized Internet applications, such as search.

7

Google also contends the patents resulted from Dr. Konig’s SRI work because the
specification mentions “speech recognition software.” However, reference to off-the-shelf
software to analyze properties of audio files is not part of the inventive features of the inventions
nor does it support the conclusion the patents “resulted from” Dr. Konig’s work at SRI. (Ex. G,
511:20-513:10.)

-5-

2.

SRI Did Not Have Business Or Any Demonstrably Anticipated
Research Or Development In Personalized User Search.

Google then contends that the patents-in-suit “related to” SRI’s business simply because
SRI used “computers and machine learning.” (D.I. 413 at 2-3.) However, Google fails to
identify any business then being conducted, or demonstrably anticipated research or
development, relating to personalized Internet applications. In fact, it is undisputed that no such
research or development was conducted or even anticipated before 2002.8
3.

Google “Rents” SRI’s Purported Rights For This Litigation.

8

-6-

Yet, Google asks the Court to dismiss the Amended Complaint on
the basis of rights that it expressly acknowledged were “speculative.”
ARGUMENT10
A.

SRI’s, And Thus Google’s, Claims Are Time-Barred, and PUM Has Standing
to Bring This Action.

Google’s ownership-based claims are time-barred and should be dismissed. The
applicable statute of limitations for SRI’s breach of contract and ownership claims expired long
before Google “purchased” those “speculative rights” from SRI in 2011. Google’s affirmative
defense of lack of standing also fails and should be dismissed because (1) it entirely depends on
SRI being able to enforce its stale claims, and (2) PUM has standing as successor to the patent
rights of co-inventors Twersky and Berthold that are undisputed.

9
10

Although Google points out that Dr. Konig would have the burden at trial of establishing that
the inventions are protected under section 2870 if conception occurred while Dr. Konig was at
SRI, on this motion for summary judgment, Google has the burden of establishing there are no
material facts and that it is entitled to judgment as a matter of law. Enreach Tech., Inc. v.
Embedded Internet Solutions, 403 F. Supp. 2d 968, 974-75 (N.D. Cal. 2005) (summary judgment
must be denied where an employee claiming the protection of California Code § 2870 raises
issues of fact concerning the date of conception or whether the invention related to the
employer’s business or resulted from the employee’s employment).

-7-

Any breach of contract claims SRI may have had against Dr. Konig (as well as claims for
conversion and imposition of constructive trust), are time-barred under Delaware’s three-year
statute of limitations. 10 Del. C. § 8106.11 Ordinarily this period begins to “run at the time of
the alleged wrongful act even if the plaintiff is ignorant of the cause of action.” Medtronic
Vascular, Inc. v. Advanced Cardiovascular Sys., Inc., 2005 WL 46553 (D. Del. 2005), aff’d, 182
Fed. Appx. 994 (Fed. Cir. May 26, 2006) (internal citations omitted) (“Medtronic I”). Thus,
under Google’s conception-occurred-in-July-1999 theory, SRI’s patent rights, if any, lapsed
three years later in July 2002.

If not then, SRI’s rights were extinguished no later than December 29, 2002
based on the December 28, 1999 filing date of the provisional patent application, and certainly
no later than December 2008, three years after the issuance of the ’040 patent issued naming Dr.
Konig as an inventor.13
Under any of these scenarios, Counts VII-X of the Counterclaims are time barred. See

11

The Delaware statute of limitations applies under the Delaware borrowing statute, 10 Del. C.
§ 8121, which provides that when an action arises outside of Delaware, the Court shall apply the
shorter limitations period of the law of this State or the State where the action arose. See also
Grynberg v. Total CompagnieFrancaise des Petroles, --- F. Supp. 2d ----, 2012 WL 4095186, at
*9-10 (D. Del. Sept. 18, 2012). For the reasons explained above, however, this action would still
be time-barred even if the California four-year statute of limitations applied. (Cal. Civ. Proc.
Code § 337.)
12

13

See Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc., No. Civ. 98-80-SLR,
2005 WL 388592, at *1 fn.4. (D. Del. Feb. 2, 2005), aff’d, 182 Fed. Appx. 994 (Fed. Cir.
May 26, 2006) (Medtronic II) (“Patents serve to ‘put the world on notice’ with respect to what
the patentee claims to own” and starts the limitations period running).

-8-

Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Sys., Inc., 583
F.3d 832, 846-47 (Fed. Cir. 2009), aff’d o.g., 131 S. Ct. 2188 (2011) (affirming that Roche’s
claim of patent ownership was time-barred).
Google’s standing defense likewise fails. First, it entirely depends upon SRI holding
rights to the patents-in-suit that it did not, and could not, convey.14 Second, regardless of any
purported defect in Dr. Konig’s patent rights, there can be no dispute that PUM has standing as
the owner of co-inventors Twersky’s and Berthold’s undivided patent rights.15 See Rite-Hite
Corp. v. Kelley Co., 56 F.3d 1538, 1551-52 (Fed. Cir. 1995) (“A conveyance of legal title by the
patentee can be made only of the entire patent, an undivided part or share of the entire patent,
or all rights under the patent in a specified geographical region of the United States… A transfer
of any of these is an assignment and vests the assignee with title in the patent, and a right to sue
infringers.) (emphasis added). Finally, Google cannot credibly argue that as an alleged coowner of the patents it is an absent indispensable party since it is present in this litigation.
As a result, judgment should be entered in favor of PUM dismissing these claims.
B.

Google Cannot Establish As A Matter Of Law That Conception Occurred
While Dr. Konig Was Employed At SRI.

Assuming Google’s ownership claims were timely-asserted, Google cannot establish as a
14

Unlike in Board of Trustees, where defendant’s predecessor, Cetus, by virtue of its
agreements, “immediately gained equitable title” to the inventions, leaving plaintiff with
defective title to assert (id. at 841, 847), here all SRI had at best was a future right to have Dr.
Konig take steps “to effect transfer of ownership.”

Because title remained at all relevant times with Dr. Konig and
his assignees, SRI’s affirmative defense of lack of standing likewise fails. As a result, it is
irrelevant whether the statute of limitations applies to Google’s affirmative defense of standing.
15
These assignments are attached as Ex. M.

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matter of law, drawing all reasonable inferences in PUM’s favor, that conception occurred while
Dr. Konig was employed at SRI. The central question regarding conception is whether the
inventions in the patents-in-suit were “conceived or made” by Dr. Konig while at SRI.

Google tries to avoid this conclusion by arguing that “conception”, as used in the
Employment Agreement, does not mean “conception” in the patent law sense. Google is wrong.
See, e.g., Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 487
F. Supp. 2d 1099, 1115 (N.D. Cal 2007), aff’d in part and rev’d in part o.g., 583 F.3d 832 (Fed.
Cir. 2009) (applying patent law definition of conception to an employment agreement and
holding that the invention was conceived in the patent sense while the professor worked there).17
16

Google argues that a supplemental interrogatory response asserting a September 1999
conception date is a “sham” and should be disregarded. (D.I. 413 at 7-8.) That assertion, of
course, is disputed and cannot be disposed of on summary judgment, as the Court already noted
in denying Google leave to file its motion. Moreover, the cases Google cites are not supportive.
They relate to affidavits or other sworn evidence manufactured after a summary judgment
motion is filed to create a question of fact. Not only does PUM’s response predate this motion
by almost two years, but PUM does not rely on it in contesting summary judgment. Finally, in
EBC, Inc. v. Clark Bldg. Sys., 618 F. 3d 253, 268-29 (3rd Cir. 2010), the Court held that even a
post-motion affidavit may be credited if there is an adequate explanation for a change in
testimony. This Court expressly permitted additional deposition testimony of Dr. Konig and
Twersky on the supplemental interrogatory response (see 6/29/2011 Tr. at 15:25-17:21) and they
testified that the prior response was based on Mr. Twersky’s misunderstanding of the term
conception. (See, e.g. Ex. J at 271:16-272:14.)
17
Accord Andreaggi v. Relis, 171, N.J. Super. 203, 408 A.2d 455, 464 (N.J. Super. Ct. Ch. Div.
1979) (“[T]his court concludes that where an inventor or inventors have conceived the basic
ideas, have drawn the schematics for the electrical circuitry, have assembled the hardware to do
the work, and have documented the means of executing the idea, there is invention.”). The cases
Google cites are not to the contrary. Elec. Electronic Control, Inc. v. L.A. Unified Sch. Dist., 126
Cal. App. 4th 601, 612 (2d Dist. 2005), simply holds that rules of contract interpretation apply to
surety bonds. Further, in AT&T v. Integrated Network, 972 F.2d 1321, 1325 (Fed. Cir. 1992),
(Continued . . .)
- 10 -

Conception, in the patent law sense, “is established when the invention is made sufficiently clear
to enable one skilled in the art to reduce it to practice without the exercise of extensive
experimentation or the exercise of inventive skill.” Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd.
Pat. Inter. 1973); see also Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978);
Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (“It is settled that in establishing
conception a party must show possession of every feature recited in the count, and that every
limitation of the count must have been known to the inventor at the time of the alleged
conception.”). A review of the record, and especially Dr. Konig’s deposition testimony, at page
10 above, demonstrates that conception of the inventions in the patents-in-suit did not occur until
after he left SRI. At a minimum, there are genuine issues of material fact regarding whether
conception occurred during or after Dr. Konig’s work at SRI.
C.

Assuming Arguendo That Conception Occurred While Dr. Konig Was
At SRI, Summary Judgment Must Be Denied Because There Are Genuine
Factual Disputes Concerning Whether The Inventions (1) Resulted From His
Work At SRI Or (2) Related To SRI’s Existing Business Or Anticipated
Research And Development.
1.

The Inventions Did Not Result From Dr. Konig’s Work.

(. . . continued)
the Court, in determining there was no federal jurisdiction for removal purposes, held only that
the word “invention” in an employment agreement did not necessarily mean a patented invention
where, for example, it could also refer to unpatented ideas, such as trade secrets. Hercules Glue
Co. v. Littooy, 25 Cal. App. 2d 182, 76 P. 2d 700 (Ct. App. 1938), provides no helpful guidance.
There, the court noted that the employee had discovered the “basic principle” of a neutral
spreader but there is no discussion concerning the definition of “conception” to be applied.
Google thus has presented no authority that the term “conceive” in the context of a provision in
an employment agreement requiring assignment of patents should be given anything other than
its patent law meaning.

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Rather, Dr. Konig worked only on speech recognition
and speaker verification. This is undisputed.
Instead, Google relies on the fact that because Dr. Konig used common machine learning
techniques and tools both in his speech recognition and speaker verification research and in
development of the patents-in-suit, the latter “resulted from” the former. The inventions did not
“result from” Dr. Konig’s work at SRI simply because he utilized the same standard machine
learning techniques and tools, well-known to him before he joined SRI.

As previously

explained, these common machine learning techniques and tools have many varied applications.
Drs. Somnez and Stolcke testified that these techniques and tools were standard techniques and
tools found in any machine learning professional’s toolkit. This too is undisputed.
2.

The Inventions In The Patents-In-Suit Were Not Related To SRI’s
Business Or Actual Or Demonstrably Anticipated Research And
Development18 As Of August 6, 1999.

Google argues that the patents relate to SRI’s business simply because SRI, during
Dr. Konig employment, used computers, the Internet and machine learning (D.I. 413 at 5-6.)
This is insufficient to remove the patents-in-suit from the protection of section 2870. See, e.g.,
Freedom Wireless, Inc. v. Boston Commc’ns Grp., Inc., 220 F. Supp. 2d 16, 18 (D. Mass. 2002)
(finding that the employee’s patent for “wireless telephone billing” was not related to the
employer’s “satellite-based and space-based services, including personal satellite navigation
services and guidance systems for rockets”); Hirshhorn v. Mine Safety Appliances Co., 106 F.
Supp. 594, 597, 601-602 (W.D. Pa. 1952) (finding that employee’s patent for rebreathers was not
related to employer’s treating of carbon monoxide from exhaust gases).
18

Google does not contend that the patents-in-suit related to SRI’s demonstrably anticipated
research and development, so this prong of section 2870 will not be discussed.

- 12 -

The invention must have a very close connection to the employer’s business to render
section 2870 inapplicable. For example, in Cubic Corp v. Marty, the court found that the
invention was “related to” the employer’s business because the employee: (1) presented it as
“something to enhance” the employer’s existing product line; (2) designed the warfare simulator
to function with the employer’s pilot training program; and (3) stated in his patent application
that the “preferred embodiment” of the invention was the employer’s pilot training program. 229
Cal. Rptr. 828, 185 Cal. App. 3d 438 (Cal. Ct. App. 1986). Thus, the employee, himself,
recognized that the invention was related to the employer’s business. Id. Similarly, in Cadence
Design Sys., Inc. v. Bhandari, the court found that the invention - covering electronic design
automation tools “integral” to his former employer’s business of producing complex integrated
semiconductor circuits - fell within the employer’s “actual or demonstrably anticipated research
and development.” 2007 WL 3343085, at *5-*6 (N.D. Cal. Nov. 8, 2007) (citing Cubic Corp. v.
Marty). Additionally, the inventor had presented his manuscript to the employer to enhance its
core business capabilities and there was evidence it was within the scope of his employment.
The inventor also stated that his invention addressed problems the employer had been looking to
add that capacity to its core business for several years. Id.
Here, it is undisputed that Dr. Konig did no work on personalized Internet user search
technology while at SRI; nor was SRI involved in any demonstrably anticipated research and
development in that field. Indeed, that SRI itself did not believe it held any such rights is
supported by the fact that it took no steps to assert ownership at any time notwithstanding its
knowledge of his work and refused to warrant that it had any patent rights. In any event, whether
the patents-in-suit relate to SRI’s business or demonstrably anticipated research and development
in August 1999 is an intensely factual inquiry that precludes summary judgment.
- 13 -

CONCLUSION
For the foregoing reasons, PUM’s cross-motion for summary judgment should be granted
and Google’s motion for summary judgment should be denied.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Jeremy A. Tigan
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
OF COUNSEL:
Marc S. Friedman
SNR Denton US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
SNR Denton US LLP
2000 McKinney Avenue, Ste. 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
SNR Denton US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[phone]
January 14, 2013
6946693

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CERTIFICATE OF SERVICE
I hereby certify that on January 14, 2013, I caused the foregoing to be electronically filed
with the Clerk of the Court using CM/ECF which will send electronic notification of such filing
to all registered participants.
Additionally, I hereby certify that true and correct copies of the foregoing were caused to
be served on January 14, 2013, upon the following individuals in the manner indicated:
BY E-MAIL

BY E-MAIL

Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
1313 N. Market St., 6th Floor
Wilmington, DE 19801

Brian C. Cannon
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, CA 94065
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Andrea Pallios Roberts
Joshua Lee Sohn
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111

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