Personalized User Model LLP v. Google Inc.

Filing 542

Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding the parties positions concerning trial. (Jacobs, Karen)

MORRIS, NICHOLS, ARSHT

&

TUNNELL

LLP

1201 N ORTH M ARKE T S T RE E T
P.O. B OX 1347
W ILMINGT ON , D E LAW ARE 19899-1347
[phone]
[phone] FAX
KAREN JACOBS
[phone]
[phone] FAX
[e-mail]

November 22, 2013
BY E-FILING
The Honorable Leonard P. Stark
United States District Court
for the District of Delaware
844 North King Street
Wilmington, DE 19801
Re:

Personalized User Model, L.L.P. v. Google, Inc.
C.A. No. 09-525 (LPS)

Dear Judge Stark:
We write this joint letter pursuant to the Court’s instructions at the November 20, 2013
teleconference to set forth the parties’ positions concerning trial in this matter. The parties have
met and conferred and submit their respective positions below.
PUM’s Position:
As we previously stated, when PUM received the Court’s ruling on October 28 on
Google’s motion for reconsideration setting a March 10, 2014 trial date, PUM asked that its
clients, fact witnesses and expert witnesses adjust their schedules, if necessary, to ensure their
attendance, and this was done. PUM is prepared to begin trial on March 10, 2014 as Your Honor
previously directed. Notwithstanding this, to accommodate Google, PUM would be prepared to
try both liability and damages during either the July or August dates that the Court offered.1 It
1

Google recently represented to this Court that if an earlier date were not available,
“Google is available for trial as of August 4, 2014.” (D.I. 538 at 2). Google also has not
advised of any conflicts that would preclude a trial during the July 7-18 dates the Court
has offered. Indeed, it is ironic that Google would now point to a trial that has not even
been scheduled (see fn. 7 below, discussing the SynQr case) as a reason not to schedule
trial in this case. PUM is not available during the September dates that the Court offered
because PUM’s lead counsel, Mark Nelson and Jennifer Bennett, are involved in a twoweek trial scheduled to begin on September 8.

The Honorable Leonard P. Stark
November 22, 2013
Page 2

would be unduly prejudicial to PUM, however, to further delay this almost five-year old case by
setting a liability-only trial any later than March 2014. PUM made clear in the Joint Status
Report that it only agreed to a May trial to accommodate Google, and that if the Court were
unavailable it requested that the case be tried in March. (D.I. 529 at 1). The Court likewise noted
in its ruling that it was unwilling to delay scheduling trial as Google had requested. (D.I. 537 at
4). Google’s proposal that the parties instead reopen fact and expert discovery that has already
been completed in order to accommodate a liability-only June trial is a waste of the parties’ and
the Court’s resources. There is no basis to hold a liability-only trial in June (nine months after
the Court’s summary judgment rulings), as Google proposes, rather than using that time to
complete damages discovery and proceed to trial on all issues in July or August, 2014.2
We note as an initial matter (as the Court did at the November 20 conference) that
Google’s asserted conflicts are of its making, having scheduled trial in its 2012 case after this
Court clearly stated it would set a trial date as soon as dispositive motions were decided. Nor
has Google made (or agreed to make) reasonable efforts to resolve those conflicts. As Google’s
November 7, 2013 letter (D.I. 538) indicates, and as Google confirmed during the parties’ meet
and confer, Google has not even attempted to request a different trial date in the TracBeam
matter. And although Google asserts that it brought this Court’s trial date to the attention of the
Viasat court, that court merely responded that it would “prefer” to keep the March 18, 2014 date.
(D.I. 538, Ex. A at 2). Google has not agreed to seek further guidance from either of these courts
in light of this Court’s maintenance of the March 10, 2014 trial date, even though, as Your Honor
correctly noted, both these case were filed well after this one.
Thus, PUM wishes to proceed with the infringement trial on March 10, 2014, unless the
Court will try the entire case in July or August, 2014. PUM will be ready to immediately begin
damages discovery so that the entire case is trial ready at that time.
PUM understands that Google continues to pursue an April 2014 trial date,
notwithstanding PUM’s stated unavailability during the Passover holiday. As PUM explained to
Google, it is impossible for any of PUM’s three client representatives to attend trial at that time
because all are Orthodox and observe the entirety of the Passover holiday (April 14-22) in Israel.
They have further advised that, in their view, it would violate Torah law to proceed with trial
during that period, even if they were not in attendance (which they wish to be).3 PUM’s two
inventors (who reside in California) also will be unavailable during the first three days of
Passover (April 14-16), and it would be a substantial hardship for them to travel to Delaware for
2

Contrary to Google’s argument, PUM does have conflicts in June. The Shavout holiday
is June 4-5, 2014. One of PUM’s client representatives is also unavailable during the
second half of June. PUM did not raise these conflicts, however, as a basis not to
schedule trial in June.

3

Two of these client representatives were also present at the Court’s summary judgment
motion hearing.

The Honorable Leonard P. Stark
November 22, 2013
Page 3

trial during this period. It would therefore be highly prejudicial for PUM to proceed to trial
during Passover when its client representatives cannot attend, when it will have limited access to
its witnesses, and when members of its trial team would be forced to choose between preparing
and/or attending trial and observing the holiday. As PUM has advised Google, should the Court
desire, PUM is prepared to submit declarations from each of its client representatives, its two
inventors and trial counsel explaining why it would be a personal hardship for them for trial to
proceed during this period.
Google’s Position:
Defendant Google appreciates the Court’s efforts to discuss potential options for trial
other than the current March 10, 2014 trial setting. Based on meet and confers with PUM,
Google believes that a liability trial in June 2014 provides the best solution. To accommodate
this date, Google would need to identify a new invalidity expert and replace one Google witness,
as they both have conflicts in June 2014, which Google is willing to do. PUM has identified no
conflicts that would preclude its availability for a trial on the June dates. Google is also available
in April 2014, but understands PUM objects to that time due to the Passover holiday. In all
events, Google objects to vacating the Court’s Order bifurcating liability and damages.
Google Is Available for a Trial on Liability Issues in April or June 2014.
As Google previously informed the Court and PUM, Google’s trial team is not available
on the March 10, 2014 trial date set by the Court. Virtually every member of the Quinn Emanuel
team representing Google in this case (Charles Verhoeven, David Perlson, Antonio Sistos,
Joshua Sohn, and Margaret Kammerud) is scheduled to be in trial in TracBeam v. Google Inc.,
No. 6:13-cv-93 (E.D. Tex.) beginning March 10, 2014. Each of these team members have been
working on this case for years. To replace the entire team in either case would be extremely
prejudicial to Google. Additionally, Mr. Verhoeven is scheduled to be lead trial counsel in
ViaSat v. Space Systems/Loral, No. 12-cv-0260 (S.D. Cal.) beginning March 18, 2014 and
lasting for two weeks.4

4

As detailed in Google’s November 7 letter to this Court, Mr. Verhoeven asked the ViaSat
Court to move the trial date to May 2014 to avoid the conflict, and that court declined to
move the date. In the TracBeam case, the parties in that case already jointly requested a
May 2014 trial date. On September 26, 2014, days before this Court set the trial date in
this matter, that request was rejected by the court and trial was set for March 10, 2014.
We have been informed by local counsel in the TracBeam matter, that the court in that
case would not likely move the trial date due to trial counsel conflicts before the pre-trial
conference on February 20, 2014. PUM’s suggestion that Google has acted improperly
in not approaching the ViaSat court or the TracBeam court in the two days since the
teleconference with this Court while Google has been working with PUM to resolve the
schedule in this case, is not well taken.

The Honorable Leonard P. Stark
November 22, 2013
Page 4

One of the potential dates the Court identified to the parties for a liability trial is April 1425, 2014. Google is available for trial on these days in April. PUM’s counsel, however, has
indicated PUM is unable to proceed on these dates due to the Passover holiday, which begins the
evening of April 14 and lasts through April 22. Specifically, PUM indicates it has two
witnesses, the named inventors of the patents-in-suit (also co-owners of PUM), that intend to
celebrate Passover in California with their families on the evening of April 14. Additionally,
PUM has indicated it has three client representatives who observe Passover in a manner that
precludes them from attending trial at any time during the holiday.
Google is also available for a liability trial on June 2-14, 2014, which is the closest in
time to the May 2014 trial timeframe that both PUM and Google indicated would be acceptable
for a liability only trial in their September 30, 2013 Joint Status Report. (D.I. 529.) For its part,
Google has conflicts of its own in June, but is willing to work around them.
First, Google’s expert witness on invalidity, Professor Michael Jordan, is contractually
committed to teaching and providing research guidance to doctoral students at Bocconi
University in Milan, Italy for the month of June 2014. His schedule and obligations do not leave
him with time to return to the United States for trial during that period. In order to resolve the
issue of the trial date, if permitted, Google would be willing to obtain a new invalidity expert to
testify on the subject matter Dr. Jordan would have testified to. There should be plenty of time
to accommodate any necessary expert discovery related to this new expert.
Second, one of Google’s witnesses who was deposed in this case, Karthik Gopalratnam,
has a trip to India scheduled for the month of June. Here too, Google would be willing to locate
a different Google engineer to testify on the subject matter that Mr. Gopalratnam would have
testified, and make the engineer available for deposition.5
For its part, PUM has identified no conflicts that would preclude its availability for a trial
in June 2014 on liability.6 Instead, PUM’s only apparent objection to this date is that it is too
late. Google submits this position is unreasonable. Indeed, just six weeks ago in the parties’
Joint Status Report, PUM indicated May 2014 would be acceptable for a trial on liability issues,
5

Google’s offer to replace these witnesses to resolve PUM’s stated unavailability in April
2014 (at significant additional expense to Google) does not require the extensive
“reopening” of fact and expert discovery as PUM suggests. And the significant prejudice
to Google with proceeding in March 2014 would far exceed any prejudice to PUM for
costs related to the limited, additional discovery that would be necessary in relation to
replacing these witnesses.

6

PUM does note that one client representative has an unidentified conflict “during the
second half of June,” the relevance of which is unclear given the proposed June trial dates
are in the first half of the month. PUM also references Shavuot on June 4-5, but states
that it is not raising it "as a basis not to schedule trial in June."

The Honorable Leonard P. Stark
November 22, 2013
Page 5

belying PUM's current claim that “setting a liability-only trial any later than March 2014” would
be “unduly prejudicial.” In actuality, it is proceeding with trial in March 2014 that would cause
undue prejudice to Google. And PUM’s refusal to proceed with trial on June 2 on liability issues
even though it does not base that refusal on a conflict with that date suggests that PUM is
pursuing trial in March 2014 for strategic leverage rather than any legitimate claim of prejudice.
PUM’s request for a trial on all issues in July or August is unnecessary contradicts this
Court’s prior rulings, and presents additional conflicts.
At the outset of this case, Judge Farnan bifurcated liability and damages over PUM’s
objection. (D.I. 32.) PUM later filed a motion for reconsideration of this bifurcation, which the
Court rejected. These rulings should not and need not be disturbed.
Initially, given that PUM has no conflicts that would preclude its availability for a trial in
June, there is no reason why the Court should set a trial on all issues after that.
Further, opening up damages discovery and adding damages to the trial is not a simple
matter. PUM accused seven Google products and services of infringing its patents. It took
thirteen depositions of current and former Google engineers on liability alone. For the damages
phase, the parties will need to produce new documents, serve and respond to written discovery,
take more depositions, possibly engage in motion practice, and prepare expert damages reports
and take damages depositions. It would be extremely burdensome, if not infeasible, to complete
this discovery and prepare for trial on all issues by July 2014 as PUM proposes. Google and its
witnesses also have conflicts in July and August.7 Nor should Google have to go to the expense
and burden of providing such discovery if PUM cannot prove liability, one of the obvious
benefits of the bifurcation ordered by the Court.

7

PUM’s statement that "Google also has not advised of any conflicts that would preclude a
trial during the July 7-18 dates the Court has offered" is incorrect. Just this morning
Google emailed PUM identifying conflicts, including that Mr. Verhoeven is scheduled to
be lead trial counsel in SynQor, Inc. v. Ericsson, Inc. et al., 2:11-cv-00054-MHS
sometime between June 25 and July 23, 2014. The Pretrial Conference is on June 25,
2014 and that court has advised the parties that trial will be set within four weeks of that
date. Further, in addition to having a family wedding to attend July 10-15, Google’s noninfringement expert, Dr. Edward Fox is chairing a board meeting and running a related
conference in the United Kingdom July 19-27. Mr. Verhoeven is lead trial counsel in
Motorola Mobility v. Apple, Case No. 1:10-cv-23580-SCOLA, 1:12-cv-20271-SCOLA
(SD Fla) with a trial calendar call of August 25, 2014, and David Perlson and Andrea
Roberts are also part of that team.

The Honorable Leonard P. Stark
November 22, 2013
Page 6

Respectfully,

/s/ Karen Jacobs
Karen Jacobs (#2881)

cc:

7801820

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