Personalized User Model LLP v. Google Inc.

Filing 534

DECLARATION re 533 Reply Brief (DECLARATION OF JOSHUA L. SOHN IN SUPPORT OF REPLY TO GOOGLE'S MOTION FOR LEAVE) by Google Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Moore, David)

EXHIBIT A

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

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

JOINT STATUS REPORT
Pursuant to the Court's September 9, 2013 Order (D.I. 522), the parties believe
that the jury trial will require 10 calendar days (48 hours total) and request that it commence in
[insert date].
PUM’S POSITION ON “CONCEPTION” AND STATUTE OF LIMITATION ISSUES
It is PUM’s position that the issue of whether the statute of limitations bars
Google’s counterclaims and defenses of patent ownership, lack of standing, and breach of
contract should be tried to the Court in advance of the jury trial. The question of whether
equitable tolling of the statute of limitations applies is a legal issue for the Court. See, e.g.,
William A. Graham Co. v. Haughey, 646 F.3d 138, 150 (3d Cir. 2011) (finding that equitable
tolling is “legal precept”); Gregorovich v. E.I. du Pont de Nemours, 602 F. Supp. 2d 511, 519
(D. Del. 2009) (noting that “the court must determine whether the . . . statute of limitations is
subject to the principles of equitable tolling”). Equitable tolling is dispositive here because, if
Google cannot show that its breach of contract and ownership counterclaims and associated
defenses are subject to equitable tolling, then the statute of limitations clearly would bar them. If
Google’s ownership claims are time barred, then there would be no need to try any ownership
and breach of contract issues, which have nothing to do with the infringement and validity issues

01980.51575/4776722.2

before the jury on the patents-in-suit.
In addition, Google contends that the issue of whether the parties intended the
patent law or layman’s definition of “conception” is to be decided by the Court on summary
judgment. As will be explained in PUM’s response to Google’s Motion for Reconsideration,
PUM disagrees, because ambiguity about the contract’s meaning is an issue of fact to be resolved
by the jury. See, e.g., GMG Capital Investments, LLC v. Athenian Venture Partners I, L.P., 36
A.3d 776, 783 (Del. Supr. 2012) (“[W]here reasonable minds could differ as to the contract's
meaning, a factual dispute results and the fact-finder must consider admissible extrinsic
evidence.”). If , however, Google were correct that the meaning of “conception” is for the Court
to decide, that issue should be tried to the Court together with PUM’s statute of limitations
defense in advance of the jury trial.1
MORRIS, NICHOLS, ARSHT & TUNNELL
LLP

POTTER ANDERSON & CORROON LLP

By:

By:
Karen Jacobs Louden (#2881)
Jeremy A. Tigan (#5239)
Regina S.E. Murphy (#5648)
1201 N. Market Street
Wilmington, DE 19801
[phone]
[e-mail]
[e-mail]
[e-mail]

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

Attorneys for Plaintiff Personalized User
Model, L.L.P.

1

To the extent Google’s claims are not time barred, factual issues would remain for the
jury to decide concerning whether, in fact, the invention was “conceived” during Dr.
Konig’s employment, and whether it was “related to” SRI’s business or “resulted from”
work performed by Dr. Konig for SRI.

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