Personalized User Model LLP v. Google Inc.

Filing 508

NOTICE of Supplemental Authority For Defendant Google Inc.'s Summary Judgment Briefs Pursuant to Rule 7.1.2(b) by Google Inc. (Attachments: # 1 Exhibit 1)(Moore, David)

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, LLP and
YOCHAI KONIG
Counterdefendants.

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C.A. No. 09-525-LPS
JURY TRIAL DEMANDED

LOCAL RULE 7.1.2(b) NOTICE OF SUPPLEMENTAL AUTHORITY FOR
DEFENDANT GOOGLE INC.’S SUMMARY JUDGMENT BRIEFS
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Joshua Lee Sohn
Antonio R. Sistos
Margaret Pirnir Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]

Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
POTTER ANDERSON & CORROON LLP
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: April 23, 2013
1103509/ 34638

On April 16, 2013, after summary judgment briefing was complete, the United States Court
of Appeals for the Federal Circuit decided Bayer Healthcare Pharmaceuticals, Inc. v. Watson
Pharmaceuticals, Inc., Case Nos. 2012-1397, -1398, -1400. The Bayer Pharmaceuticals opinion is
attached hereto as Exhibit 1. See Local Rule 7.1.2(b) (permitting citation to subsequent authorities
after submission of reply briefs).
In Bayer Pharmaceuticals, the Federal Circuit reversed the judgment of the district court
finding that two claims of the patent-in-suit were not invalid for obviousness, and concluded that the
claims were invalid for obviousness as a matter of law in view of the cited references. (See Ex. 1, at
16.) The Federal Circuit held that there was no dispute that the cited prior art references disclosed
each of the limitations of the claims at issue. (Id., at 11.) The Federal Circuit explained
[w]ith every limitation of the asserted claims thus disclosed in the cited references,
the question, as the district court recognized, becomes whether a person of ordinary
skill in the art would have been motivated to combine those teachings to derive the
claimed subject matter with a reasonable expectation of success.
(Id., at 11-12.) The Federal Circuit held that the prior art provided the motivation to combine. (Id.,
at 12.) In addition to one of the prior art references expressly referencing another, several of the
references described the problem intended to be addressed by the patent-in-suit. (Id., at 12-13.)
And, in addition to demonstrating the recognized problem, the prior art references expressly
proposed the claimed solution, certain dosing regimens. (Id., at 13.) Accordingly, the Federal
Circuit held, the prior art’s direct recommendations to use certain dosing regimens to solve the
recognized problem would have motivated one of ordinary skill in the art to combine the elements in
the prior art as recited by the asserted claim. (Id.)
Similarly, as explained in detail in Google’s Motion for Summary Judgment of Invalidity and
Reply Brief in support thereof, the prior art references cite to each other. And these references
describe the problem intended to be addressed by the patents-in-suit: providing automatic,

personalized information services to a computer network user. (‘040 Patent, 7:4-6.) The prior art
references also expressly disclose the supposed “solution” to this problem claimed in the patents in
suit—i.e. transparent monitoring of the user’s interactions with data (see Dkt. No. 418, at 12-13
(citing Wasfi, Mladenic, and Montebello)), updating user-specific data files (see id., at 13 (citing
same)), using machine learning to develop a user model specific to the user (see id., at 13-14 (citing
same)), analyzing documents and identifying properties thereof (see id., at 14-15 (citing Montebello
and Wasfi)), and estimating probabilities of a user’s interest in a document (see id., at 16 (citing
Mladenic, Pazzani, Wasfi, and Montebello). In rebuttal, PUM points to no solutions in the patents
that did not already exist in the art. (See generally Dkt. No. 455.)1 Accordingly, as in Bayer
Pharmaceuticals, the prior art’s direct recommendations to use these elements to solve a known
problem would have motivated one of ordinary skill in the art to combine the elements of the prior
art as recited by the asserted claims of the ‘040 and ‘276 patents. The asserted claims are therefore
invalid as obvious as a matter of law.

1

Instead, PUM seeks to exclude Dr. Jordan’s opinions that the patents are obvious based on
the entirely false contention that Dr. Jordan’s opinions were not included in his report.
2

Respectfully submitted,
POTTER ANDERSON & CORROON LLP
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Joshua Lee Sohn
Antonio R. Sistos
Margaret Pirnir Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]

By: /s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

Dated: April 23, 2013
1103509 / 34638

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CERTIFICATE OF SERVICE
I, David E. Moore, hereby certify that on April 23, 2013, the attached document was
electronically filed with the Clerk of the Court using CM/ECF which will send notification to the
registered attorney(s) of record that the document has been filed and is available for viewing and
downloading.
I further certify that on April 23, 2013, the attached document was Electronically Mailed
to the following person(s):
Karen Jacobs Louden
Jeremy A. Tigan
Morris, Nichols, Arsht & Tunnell LLP
1201 North Market Street, 18th Fl.
P.O. Box 1347
Wilmington, DE 19899-1347
[e-mail]
[e-mail]

Marc S. Friedman
Dentons US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[e-mail]

Jennifer D. Bennett
Matthew P. Larson
Dentons US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[e-mail]
[e-mail]

Mark C. Nelson
Robert Needham
Dentons US LLP
2000 McKinney, Suite 1900
Dallas, TX 75201
[e-mail]
[e-mail]

Christian E. Samay
Dentons US LLP
101 JFK Parkway
Short Hills, NJ 07078
[e-mail]

/s/ David E. Moore
Richard L. Horwitz
David E. Moore
Bindu A. Palapura
POTTER ANDERSON & CORROON LLP
[phone]
[e-mail]
[e-mail]
[e-mail]
932168 / 34638

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