Personalized User Model LLP v. Google Inc.

Filing 509

STATEMENT re 508 Notice (Other) -- PUMs Response to Google's Notice of Supplemental Authority for Summary Judgment Briefing -- by Personalized User Model LLP. (Louden, Karen)

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)

PUM’S RESPONSE TO GOOGLE'S NOTICE OF SUPPLEMENTAL
AUTHORITY FOR SUMMARY JUDGMENT BRIEFING
OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
DENTONS US LLP
2000 McKinney Avenue, Ste. 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[phone]
April 25, 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

Google’s so-called “Notice of Supplemental Authority” (D.I. 508, “Notice”) should be
stricken because it contains improper attorney argument in violation of D. Del. L.R. 7.1.2(b).
That rule sets forth the standard briefing structure, and then states that “[e]xcept for the citation
of subsequent authorities, no additional papers shall be filed absent Court approval.” Google’s
Notice goes far beyond a “citation” of authority and instead reargues its summary judgment
position. This is improper and should be rejected.
To the extent the Court is nonetheless inclined to consider the Notice, Bayer is inapposite to
this dispute. Bayer Healthcare Pharm., Inc. v. Watson Pharm., Inc., Case Nos. 2012-1397, 1398, -1400 (Fed. Cir. Apr. 16, 2013). The Bayer ruling was specific to the facts before the
Court; those facts have no application here. The Bayer Court held that because the references at
issue expressly disclosed the same solution to the same problem, they provided a motivation to
combine for obviousness purposes. Here, in contrast, Google’s prior art consists of references
that provide different solutions to different problems, for example, recommending hyperlinks
within a web site, or finding documents most unlike those the user has previously visited.
Google does not point to any express statement in the art, as existed in Bayer, that would provide
a motivation for a person of ordinary skill to combine the references.
The claims in Bayer concerned a dosing regimen for low-dose birth control. Id. at 3. At
the time, birth control dosing conventionally used a 21/7 dosing regimen (i.e., cycles of 21 days
of oral contraceptives followed by 7 days of placebos). Id. at 7. A problem with the 21/7 dosing
regimen was that a woman could become pregnant if she missed a dose. Id. at 5. Bayer patented
23/5 and 24/4 dosing regimens for low-dose birth control, which solved the missed-dose
problem. Id. at 5-6.

2

Bayer’s patent had three elements: (1) estrogen ethinylestradiol (“EE”); (2) progestin
drospirenone (“DSRP”); and (3) a 23/5 or 24/4 dosing regimen. Id. at 11. The Court noted that,
unlike here, it is not “disputed that the cited prior art references disclosed each of those
limitations.” Id. Specifically, the Court noted that an EP reference disclosed using EE on a 24/4
dosing regimen, and that an AU reference disclosed using DSRP with EE. Id. Moreover, the
AU reference “refer[red] expressly” to the EP reference, “stating that the disclosed EE/DRSP
preparations can be used ‘analogously’ to the [EP reference].”

The AU references also

“expressly incorporat[ed] the disclosed of [the EP reference] by reference.” Id. The only issue
before the Court was “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 Court held that the prior art expressly provided the motivation to combine the teachings.
Id. at 12. It noted that several of the references disclosed that “inadvertently extending the
traditional pill-free interval via one or more missed pills could lead to escape ovulation and
unintended pregnancy,” id. at 12, and that “the references in this case go beyond just illuminating
a known problem; they also expressly propose the claimed solution.” Id. at 13. Three additional
prior art references expressly disclosed using 23/5 or 24/4 dosing to solve the missed-dose
problem. Id. at 13.

Based on these facts, the Court held that “the prior art’s direct

recommendations to use 24/4 and 23/5 dosing regimens to minimize the risks of escape ovulation
would have motivated one of ordinary skill in the art to implement such a shortened pill-free
interval for use with known low-dose [birth control].” Id.; see also id. at 10 (holding that the
prior art “provide express motivation to combine those teachings to derive the claimed [birth
control]”).

3

The facts here have very little in common with Bayer. First, in Bayer, unlike here, there was
no dispute that every element of the claims was present in two prior art references. Id. at 11;
compare PUM Opposition, D.I. 455. Second, unlike in Bayer where the prior art addressed the
same problem and same solution, none of the cited art here contains an express statement
providing motivation to combine references.

Indeed, instead of identifying any express

statement, Google vaguely cites to five pages of its summary judgment brief. D.I. 508, at 2. In
none of those pages, however, did Google even identify any motivation to combine references.
On the contrary, even a cursory examination of the references show that they purport to solve
different problems in different ways.1
For these reasons, to the extent the Court is inclined to consider it, Bayer has no
relevance here.

1

For example, Wasfi sought to assist a website visitor by recommending pages from that
particular website most unlike those previously visited by the user, by using a non-standard
entropy calculation. Mladenic sought to aid the user in finding hyperlinks in a website based
only on the text of the hyperlink, and was a system that never actually worked. Montebello
sought to aid the user in web searching by sifting through search results based on a user
profile, but provided no solution for accomplishing such a task. D.I. 455, at 11-12. Google
attempts to oversimplify the situation by referring to all of the references as providing
“personalized information services,” but the references each address different issues and
solve them in different ways.
4

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]

OF COUNSEL:

Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
DENTONS US LLP
2000 McKinney Avenue, Ste. 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[phone]
April 25, 2013
7152297

5

CERTIFICATE OF SERVICE
I hereby certify that on April 25, 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 April 25, 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/ Karen Jacobs Louden
Karen Jacobs Louden (#2881)