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 B

Joshua Sohn
From:
Sent:
To:
Cc:
Subject:
Attachments:

Bennett, Jennifer D. [[e-mail]]
Tuesday, September 24, 2013 10:31 PM
Andrea P Roberts
PUM; Google-PUM; Karen Jacobs; Regina Murphy; Horwitz, Richard L.; Moore, David E.
RE: Joint status report
joint status report(80950733_4).DOC

Andrea,
I write in response to your email below. PUM does not think it is appropriate and will not agree to include Google's
lengthy argument in the joint status report. In the attached, PUM has pared back its section and expects Google to do
so as well. Lastly, when will Google provide its section on trial availability? Please do so immediately.
Thanks,

Right-click here to download pictures. To help protect your privacy, Outlook prevented automatic download of this picture from the Internet.

Jennifer D. Bennett
Senior Managing Associate
D [phone]
Dentons US LLP
[e-mail]
dentons.com
SNR Denton is proud to join Salans and FMC as a founding member of Dentons

Dentons is an international legal practice providing client services worldwide through its member firms and affiliates. This email may be confidential and protected
by legal privilege. If you are not the intended recipient, disclosure, copying, distribution and use are prohibited; please notify us immediately and delete this copy
from your system. Please see dentons.com for Legal Notices, including IRS Circular 230.

From: Andrea P Roberts [mailto:[e-mail]]
Sent: Tuesday, September 24, 2013 2:35 PM
To: Bennett, Jennifer D.
Cc: PUM; Google-PUM; Karen Jacobs; Regina Murphy; Horwitz, Richard L.; Moore, David E.
Subject: RE: Joint status report

Jennifer, pasted below is a draft of Google’s response to PUM’s request for a separate trial on interpretation of
the word “conception” and the statute of limitations. Again, this is a draft and is subject to revision based on
comments internally and from our client, but we wanted to get you a draft with our current positions for review.

PUM’s Request for a Separate Trial on Contract Interpretation and Statute of Limitations Is
Without Merit: PUM’s suggested procedure for dealing with contract interpretation and the statute of
limitations is unnecessary and legally flawed. Google respectfully submits that these issues can and should be
resolved in the context of the summary judgment record already before the Court.
1

As detailed in Google’s Motion for Reconsideration (D.I. 523), Google respectfully submits that the
Court made a clear legal error in holding that the interpretation of the word “conception” in the Konig-SRI
Agreement presents a question of fact. Under California law, contract interpretation is generally a question of
law, even for ambiguous contracts, and presents a question of fact only when there is conflicting extrinsic
evidence. (Id., 1-4.) Here, even PUM admits that the parties did not present conflicting extrinsic evidence on
the meaning of “conception.” (Id., 4; Hearing Tr. 125:12-20 (“There is no evidence of any negotiation. There
is no evidence of any discussion . . . All we have at the moment is the agreement.”)) Thus, interpreting
“conception” is not a question of fact for the jury, nor is it a question of fact for the Court to resolve in a bench
trial. It is instead a question of law that the Court can and should resolve on the summary judgment record.
(D.I. 523, 3-4.)
PUM disputes none of this. Instead, PUM argues that Google’s Motion for Reconsideration should be
denied because, under the Delaware authority PUM cites, fact issues supposedly exist when a contract is
ambiguous. Initially, as Google consistently argued and PUM never disputed, California law governs this
contract. The Court’s summary judgment order recognizes this too, citing a California Supreme Court case on
the issue of contract interpretation. (D.I. 521 at 15.) PUM provides no reason for its apparent change in
position, and it is unclear how PUM in good faith could assert that Delaware law applies to the Konig-SRI
agreement.
But even if Delaware law did somehow apply, the very case cited by PUM acknowledges that Delaware
law is no different than California law on the key point—namely, that even ambiguous contracts may be
interpreted at summary judgment where there is no conflicting extrinsic evidence. See GMG, 36 A.3d at 783-84
(“when there is uncertainty in the meaning and application of contract language, the reviewing court must
consider the evidence offered in order to arrive at a proper interpretation of contractual terms. This task may be
accomplished by the summary judgment procedure in certain cases where the moving party's record is not
prima facie rebutted so as to create issues of material fact.) (quoting Eagle Indus., Inc. v. DeVilbiss Health
Care, Inc., 702 A.2d 1228, 1232-33 (Del. 1997) (emphasis added). Here, as PUM admits, it has submitted no
extrinsic evidence to rebut anything Google has already provided. Thus, a bench trial would be meaningless;
2

there are no issues on contract interpretation that could or should be “tried.” Indeed, PUM does not explain
what types of evidence would be presented at its hypothetical bench trial.[1]
PUM’s statute of limitations defense also does not require a bench trial, but can instead be decided on
the summary judgment record. When Google moved for summary judgment on its breach-of-contract claim,
PUM asserted the statute of limitations as a defense to this claim and also cross-moved for summary judgment
on this defense. The Court never reached the merits of this defense, as it denied Google’s summary judgment
motion due to alleged factual disputes on the meaning of “conception” and further denied PUM’s cross-motion
as untimely. If the Court grants Google’s Motion for Reconsideration and withdraws its holding that there are
fact disputes on the meaning of “conception,” it can decide PUM’s statute of limitations defense in deciding
whether to grant Google’s underlying summary judgment motion on the breach of contract claim in full.
As Google has detailed (D.I. 486 at 1-8), there are two reasons why PUM’s statute of limitations defense
fails as a matter of law, such that the Court can and should grant summary judgment on Google’s breach-ofcontract claim in full. First, the statute of limitations must be tolled under 10 Del. C. § 8117 until Dr. Konig
became subject to service of process in Delaware; and second, it must be tolled under the discovery rule until
discovery began in this lawsuit and Google/SRI were able to discover the July 1999 conception date that gives
rise to the breach-of-contract claim.[2] (Id.) The Court has never found a factual dispute regarding either of
these tolling doctrines, and Google respectfully submits that no factual dispute exists. PUM apparently agrees,
since PUM itself tried to seek summary judgment on the statute of limitations. Given the above, Google
respectfully suggests that all the issues that PUM wishes to relegate to a separate bench trial can and should
instead be decided on the summary judgment record in Google’s favor.
On the other hand, if the Court disagrees with Google’s Motion for Reconsideration and sends Google’s
breach-of-contract claim to the jury, then PUM can re-raise its statute of limitations defense in the usual course
of the main trial. But there is no valid reason to bifurcate the statute of limitations from every other claim and
defense in this case and subject it to a bench trial, entirely separate from the trial on the other issues, with its
own round of pre-trial filings, trial deposition and exhibit designations, etc. It seems that PUM is simply trying

3

an end-run around the Court’s denial of its untimely cross-motion for summary judgment on the statute of
limitations issue. (D.I. 527 at 16-17.)
Moreover, PUM’s request for a separate trial on the statute of limitations is grounded in either legal
error or a misapprehension of Google’s position. PUM suggests that this issue is qualitatively different from all
the other issues in this case because “equitable tolling” of the statute of limitations is solely an issue for the
Court. PUM’s argument is a non-sequitur because Google does not assert equitable tolling. It instead asserts
tolling based on Section 8117 and based on the discovery rule. Section 8117 tolling and discovery rule tolling
are entirely separate doctrines from equitable tolling, which mainly applies in fiduciary situations not present
here. See In re Tyson Foods, Inc., 919 A.2d 563, 584-85 (Del. Ch. 2007) (“Under the doctrine of inherently
unknowable injuries, the statute will not run where it would be practically impossible for a plaintiff to discover
the existence of a cause of action . . . Similarly, the statute of limitations may be disregarded when a defendant
has fraudulently concealed from a plaintiff the facts necessary to put him on notice of the truth . . . Finally, the
doctrine of equitable tolling stops the statute from running while a plaintiff has reasonably relied upon the
competence and good faith of a fiduciary.”) (emphasis added).
Under the tolling doctrines that Google does assert, factual disputes would go to the jury were the Court
to find that any factual disputes exist. See, e.g., David B. Lilly Co., Inc. v. Fisher, 810 F.Supp. 592, 594 (D.
Del. 1992) (granting summary judgment on statute of limitations because “no reasonable jury could conclude”
that plaintiff was blamelessly ignorant of its cause of action). In other words, while Google submits there are
no factual disputes to be decided at all, to the extent there were, Google would be entitled to have them heard
before a jury; they would not be decided by the Court.
For all these reasons, the Court should decline PUM’s request for a separate bench trial on the issues of
contract interpretation and statute of limitations.

Andrea Pallios Roberts
Of Counsel,
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065

4

[phone] Direct
650.801.5000 Main Office Number
650.801.5100 FAX
[e-mail]
www.quinnemanuel.com
NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
by e-mail, and delete the original message.

-----Original Message----From: Bennett, Jennifer D. [mailto:[e-mail]]
Sent: Tuesday, September 24, 2013 9:43 AM
To: Andrea P Roberts
Cc: PUM; Google-PUM; Karen Jacobs; Regina Murphy
Subject: Joint status report
Andrea,
I follow-up to our call yesterday regarding Google's trial availability. Can you please let
me know when today we will receive Google's write up on its availability and its response to
Plaintiff's bench trial request on the SOL and "conception" issue?
Thanks,
Jennifer D. Bennett
Senior Managing Associate
D [phone]
Dentons US LLP
[e-mail]
dentons.com
SNR Denton is proud to join Salans and FMC as a founding member of Dentons.
Dentons is an international legal practice providing client services worldwide through its
member firms and affiliates. This email may be confidential and protected by legal privilege.
If you are not the intended recipient, disclosure, copying, distribution and use are
prohibited; please notify us immediately and delete this copy from your system. Please see
dentons.com for Legal Notices, including IRS Circular 230.

5

[1]

As explained in Google’s summary judgment papers, there also is no factual dispute about whether the invention was
“conceived” in the ordinary lay sense by the time Dr. Konig left SRI or whether the invention is exempt under Section 2870 of the
California Labor Code. The Court has not decided whether either of these issues raises a factual dispute, and Google respectfully
stands on its papers.
[2]
While the Konig-SRI contract must be interpreted under California law, Google does not object to PUM’s position that Delaware
law provides the appropriate statute of limitations. (See D.I. 452 at 8 fn. 11). The result would be no different under California law,
as the discovery rule tolling doctrine is substantially identical in both jurisdictions. (D.I. 486 at 5.)

6