Personalized User Model LLP v. Google Inc.

Filing 505

OBJECTIONS by Personalized User Model LLP, Konig Yochai to 503 Notice (Other) Response to Google's Notice of Supplemental Authority. (Louden, Karen)

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

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

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

PERSONALIZED USER MODEL, L.L.P.’S RESPONSE TO
GOOGLE’S NOTICE OF SUPPLEMENTAL AUTHORITY
Plaintiff Personalized User Model L.L.P. (“PUM”) hereby submits this response to
Google, Inc.’s (“Google”) February 19, 2013 filing, titled “Notice of Supplemental Authority for
Defendant Google Inc.’s Summary Judgment Briefs.” (D.I. 503.) Contrary to its title, the Notice
does not serve to advise the Court of any such authority. Instead, it seeks to introduce untimely
arguments related to Google’s motions for summary judgment on noninfringement and invalidity
based on ongoing reexamination proceedings that are regularly excluded from evidence.

The

Local Rules do not permit such untimely arguments. See D. Del. LR 7.1.2(b) (“Except for the
citation of subsequent authorities, no additional papers shall be filed absent Court approval.”)

Even if the arguments contained in Google’s Notice were to be considered, the ongoing
reexamination proceedings have no bearing on the current motions. As previously noted in
P.U.M.’s Answering Brief in Opposition to Google’s Motion for Summary Judgment on
Invalidity (D.I. 455, fn. 1), ongoing reexamination proceedings are not relevant to the questions
of infringement or validity and are regularly excluded from evidence at trial. See Callaway Golf
Co. v. Acushnet Co., 691 F. Supp. 2d 566 (D. Del. 2010) (excluding reference to ongoing reexamination proceedings at trial); see also Cordis Corp. v. Medtronic, 2005 WL 885381 (D. Del.
Feb. 28, 2005), reversed in part on other grounds, 511 F.3d 1157 (Fed. Cir. 2008) (granting
motion in limine to preclude evidence and argument about reexamination of the patent-in-suit);
University of Pittsburgh v. Varian Medical Sys., 877 F. Supp. 2d 294 (W.D. Pa. June 29, 2012)
(holding reexamination history of the patent-in-suit was properly excluded from evidence). As
the Court recognized in denying Google’s recent Motion to Stay pending reexamination of the
patents-in-suit, “despite the issuance of a final office action, the reexamination proceedings are
far from over.” (See D.I. 407 at 2.)
As one district court explained in holding that evidence of ongoing reexamination
proceedings is inadmissible for purposes of proving invalidity at the summary judgment stage:
Unlike in reexaminations, those challenging the validity of a patent
in litigation must overcome a presumption of validity by proving
by clear and convincing evidence that a patent is valid. The
conclusions of examiners as to whether a claim should be
confirmed or rejected using a completely different standard have
no probative value in this context.
Tesco Corp. v. Weatherford Int’l, Inc., 750 F. Supp. 2d 780, 794 (S.D. Tex. 2010). See also
Transamerica Life Ins. Co. v. Lincoln Nat. Life Ins. Co., 597 F. Supp. 2d 897, 907 (N.D. Iowa

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2009) (“evidence of incomplete patent reexamination proceedings is not admissible to prove
invalidity of a patent, because it has no probative value on that issue.”)
Likewise, here, the ongoing reexamination proceedings have no probative value to the
summary judgment issues before the Court.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Karen Jacobs Louden
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]
Jennifer D. Bennett
SNR Denton US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[phone]
February 22, 2013
7015103

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CERTIFICATE OF SERVICE
I hereby certify that on February 22, 2013, copies of the foregoing were caused to
be served upon the following 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/ Karen Jacobs Louden
Karen Jacobs Louden (#2881)