Personalized User Model LLP v. Google Inc.

Filing 497

REPLY BRIEF re 415 MOTION to Strike Dr. Jordans Late-Disclosed Opinions filed by Personalized User Model LLP, Konig Yochai. (Attachments: # 1 Exhibit A)(Tigan, Jeremy)

EXHIBIT A

Case 1:10-cv-01067-LPS Document 181 Filed 02/27/12 Page 1 of 36 PageID #: 1561
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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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INTELLECTUAL VENTURES I, LLC,

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Plaintiff,
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v.
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CHECK POINT SOFTWARE TECHNOLOGIES LTD., :
CHECK POINT SOFTWARE TECHNOLOGIES INC., :
McAFEE, INC., SYMANTEC CORP., TREND
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MICRO INCORPORATED, and TREND MICRO,
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INC. (USA),
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Defendants.
- - -

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CIVIL ACTION

NO. 10-1067-LPS

Wilmington, Delaware
Wednesday, February 22, 2012
TELEPHONE CONFERENCE

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- - -

- - BEFORE:

HONORABLE LEONARD P. STARK, U.S.D.C.J.
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APPEARANCES:

FARNAN, LLP
BY: BRIAN E. FARNAN, ESQ.
and
SUSMAN GODFREY L.L.P.
BY: BROOKE A.M. TAYLOR, ESQ.
(Seattle, Washington)
and
SUSMAN GODFREY L.L.P.
BY: RYAN C. KIRKPATRICK, ESQ.
(Los Angeles, California)
Counsel for Plaintiff
Brian P. Gaffigan
Registered Merit Reporter

Case 1:10-cv-01067-LPS Document 181 Filed 02/27/12 Page 18 of 36 PageID #: 1578
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potentially needing four or five references, well, there are

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only four patents in suit.

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per patent, you would be at 20.

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between 20 and 300, and so we do really believe it's

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appropriate and proper to ask the defendants to limit it to

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20.

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between those.

So if you needed five references
There is a very large gulf

They haven't proposed any number that is somewhere

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We think 20 is the appropriate number.

And if

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they, after they make their elections, say they need 22 or

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23, they can come to us and I'm confident we won't be back

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at the court over a dispute like that.

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We should have had complete invalidity charts

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from the defendants in September, and we are here now before

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the Court in late February not only attempting to get a read

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on what the invalidity contentions are of the defendants but

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to ask them to limit them to a reasonable number.

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And,

I think Stamps.com does address the issue of

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them working with us and then, if necessary, with the Court

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to come back to broaden that limit, if that is appropriate.

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THE COURT:

Okay.

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MR. ROBERTS:

Your Honor, if I could just

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correct one thing I said earlier?

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error.

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I apologize.

I made an

When you are talking about system prior art,
it's 102(e), not 102(b), so the one year limit doesn't apply

Case 1:10-cv-01067-LPS Document 181 Filed 02/27/12 Page 19 of 36 PageID #: 1579
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and yes, in fact, they can go more than a year.

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I apologize,

I gave you wrong information.

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THE COURT:

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With respect to plaintiff's request here, I'm

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Thank you for that clarification.

going to grant it in part and deny it in part.

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Specifically, I am hereby ordering that

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defendants reduce their prior art references to no more than

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30 and to do so within 21 days of the plaintiff's reduction

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of their asserted claims to the 20 as previously ordered by

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the Court.
I believe that is a fair accommodation and a

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proper exercise of discretion given the parties competing

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concerns as well as a schedule that has been in place for

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some time now and the Court's earlier ruling with respect

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to the plaintiff's election of asserted claims.

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Let me add, if defendants feel, after they see

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the plaintiff's 20 asserted claims, they have good cause to

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seek an increase from the 30 prior art references, then they

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certainly are free to ask that of the Court.

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they need to meet and confer with plaintiff first and see

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if you all can agree to raise it somewhat from 30, if that

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turns out to be the defendants' belief.

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Of course,

In addition to that, I encourage the parties to

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figure out if there is a way, given the Court's ruling, to

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work together to come up with a schedule or a schedule

Case 1:10-cv-01067-LPS Document 181 Filed 02/27/12 Page 20 of 36 PageID #: 1580
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revision, if need be, so that defendants can be held to

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their representation that they are willing to make their

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election and to complete their charting of those prior art

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references that they're going to rely on and to do so before

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May 4th.

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So that is the Court's ruling with to the first
dispute.

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Let's turn next to the plaintiff's second

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issue, which is their request for an order compelling Trend

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Micro to supplement its validity contentions and to provide

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noninfringement contentions.

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plaintiff on that on as well.

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MS. TAYLOR:

We'll hear first from the

Thank you, your Honor.

I think

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this issue is part and parcel with the issues we just

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discussed.

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As you can see in the samples attached to

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Exhibit A and sort of excerpts from the defendants'

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invalidity contentions, there are hundreds of exhibits

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uncharted and simply listed on which the defendants might

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reliably be heard that they are investigating these.

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What we don't want to have happen here is a

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situation of sandbagging.

At the outset of the case -- for

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a scheduling order, the defendants had asked directly to

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permit the defendants to delay invalidity contentions until

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after IV I's infringement contentions were served.

The