Personalized User Model LLP v. Google Inc.

Filing 558

Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding Google's prior art contentions and pretrial preparation disputes - re 550 Order,. (Attachments: # 1 Exhibits 1-4)(Jacobs, Karen)

MORRIS, NICHOLS, ARSHT

&

TUNNELL

LLP

1201 N ORTH M ARKET S TREET
P.O. B OX 1347
W ILMINGTON , D ELAWARE 19899-1347
[phone]
[phone] FAX
KAREN JACOBS
[phone]
[e-mail]

January 22, 2014
The Honorable Leonard P. Stark
United States District Court
844 North King Street
Wilmington, DE 19801
Re:

BY E-FILING

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

Dear Judge Stark:
Pursuant to the Court’s January 21, 2014 Order (D.I. 550), we write on behalf of PUM to
request the Court’s assistance with two disputes that are hindering PUM’s trial preparation and
impeding the preparation of the Pretrial Order: (1) Google’s refusal to meaningfully or timely
reduce its invalidity contentions, including the number of prior art references and obviousness
combinations on which it relies, and (2) Google’s insistence that PUM provide its position on all
issues in the case first, including on issues for which Google bears the burden of proof,
notwithstanding that Google has not even provided notice of the claims it intends to pursue or the
evidence on which it will rely.
Prior Art References and Invalidity Contentions
As the Court is aware from the briefing related to PUM’s motion to strike the latedisclosed invalidity opinions of Google’s expert, Dr. Jordan (D.I. 415), and oral argument at the
May 8, 2013 hearing, Google has asserted “600 or more” anticipatory references and
obviousness combinations during expert discovery (see 5/8/13 Tr. at 89). Whatever the exact
number, the total is clearly several orders of magnitude above the number of references that
could possibly be presented to a jury, something that Google’s counsel has admitted. See id.
(“Are we going to go to trial and assert every single one of these things? No, of course not.”)
As the Court noted in its Opinion, “Dr. Jordan's extensive opinion on obviousness theoretically
encompasses hundreds of combinations of prior art, and Google will have to reduce those
combinations prior to trial.” D.I. 521 at 18.
Notwithstanding the Court’s admonition, Google has been unwilling to timely or
meaningfully reduce the number of references or obviousness combinations on which it will rely.
Indeed, Google has refused to commit to identifying any of the prior art combinations. Despite
extensive meet and confers, Google has only offered to “include no more than six references for
obviousness for any asserted claim, and no more than ten references total for all claims.” (Ex. 1;
Jan. 9, 2014 ltr. from D. Perlson to J. Bennett at 2.) This is not a meaningful reduction because

The Honorable Leonard P. Stark
January 22, 2014

Page 2

Google has already identified the 7 references it intends to use in support of its anticipation
contentions. The real issue is the number of possible obviousness combinations Google has left
itself room to assert. Google has not agreed to identify any of the combinations on which it will
rely and instead purports to reserve the right to assert still hundreds of potential combinations.1
Moreover, Google has only offered to provide this “reduction” on February 5, when its sections
of the Pretrial Order are due, notwithstanding its (incorrect) assertion that PUM must submit its
sections of the Pretrial Order on all issues by January 20 (see below).
This Court has repeatedly required parties to limit their prior art contentions much earlier
in a case. See, e.g., Intellectual Ventures I, LLC v. Check Point Software Techs. Ltd., No. 1011067-LPS, tr. at 19 (D. Del. Feb. 22, 2012) (ordering a reduction of prior art references prior to
the Markman hearing) (Ex. 2). More recently, the Court has required defendants to reduce the
number of references shortly after the Markman opinion issues. See, e.g., Clouding IP, LLC v.
Google Inc., No. 12-639-LPS, tr. at 25 (D. Del. Dec. 20, 2013) (“75 days after receiving the
Court’s claim construction, at that point, on the 75th day, I want the language to read something
to the effect that the parties will submit their proposal or proposals for the defendants to reduce
the number of prior art references”) (Ex. 3). The Court’s Markman opinion in this case issued
almost two years ago. (D.I. 347.) Google’s refusal to reduce its prior art contentions until a
month before trial is unreasonable under the circumstances.
In meet and confers between the parties, Google has insisted that PUM must reduce the
number of claims asserted against accused products before it can pare down its invalidity case.
At Google’s insistence, however, PUM was already Ordered to reduce the number of asserted
claims from 68 to 15 more than three years ago. 9/8/10 Tr. at 26. It is only currently asserting 11
claims (only two of which are independent claims). Furthermore, not all claims are asserted
against all products.2 Therefore, there is no basis to condition Google’s election of prior art
references and obviousness combinations on a further reduction in the number of asserted claims.
PUM therefore requests that Google be required to immediately identify no more than 10
references and no more than 10 obviousness combinations on which it will rely at trial.
Pretrial Order Exchanges
PUM filed the original Complaint in this action, asserting infringement of the patents-insuit. For its part, Google filed counterclaims seeking declaratory judgments that the patents are
invalid and that it does not infringe. Google also filed a third-party complaint asserting breach of
contract by Dr. Konig and seeking a declaration as to ownership of the patents-in-suit (D.I. 180).
Notwithstanding that Google unquestionably bears the burden of proof on these issues, Google
has insisted that D. Del. LR 16.3 requires PUM provide its sections of the Pretrial Order
addressing these issues, before Google has even identified the claims it intends to pursue or the
evidence on which it relies. In this way, Google seeks to preview PUM’s rebuttal case before it
1

Assuming that Google selects potential combinations from any of 10 prior art references,
PUM calculates that Google is currently reserving the right to assert as many as 210 obviousness
combinations.
2
For example, only three claims from the ’040 patent (and none from the ’276 patent) are
being asserted against Google’s YouTube Video Recommendations service, Google+, and
Google’s Topic-Based Implicit News Personalization System, respectively.

The Honorable Leonard P. Stark
January 22, 2014

Page 3

presents any disclosure of its case in chief on these issues.3 It also seeks to delay any disclosure
of its case until February 5, barely a month before trial, and without leaving PUM a reasonable
opportunity to respond thereto, or the parties time to meet and confer, before the Pretrial Order is
due to be filed on February 19.4
Google’s position cannot be squared with D. Del. LR 16.3(d)(1) and (2), which provide
in relevant part (emphasis added):
(1) The plaintiff shall provide a draft pretrial order to all other parties … The
draft shall include proposed language for the sections of the pretrial order
submitted by all parties, as well as the sections relating to plaintiff’s case. . . .
(2) All other parties[’] … responses shall include the party’s response to the
plaintiff’s proposed language for sections of the pretrial order to be jointly
submitted by all parties, as well as the sections relating to the party’s case. . . .
Thus, the Local Rule makes clear that PUM need only provide “language for the sections
of the pretrial order submitted by all parties” [i.e., the joint pretrial order] and the sections [i.e.,
exhibits] of the Pretrial Order “relating to plaintiff’s case.” By its very terms, the Local Rule
does not require PUM to provide sections of the Pretrial Order on all issues, but only those
jointly submitted or “relating to plaintiff’s case.”5 Google ignores the fact that it is a “plaintiff”
on both its declaratory judgment claims and third party complaint.6 Google’s insistence that
PUM nonetheless go first on these issues that relate to Google’s, not plaintiff’s, case, makes no
sense, is contrary to the Local Rules, and is impeding PUM’s trial preparation.
Respectfully,

/s/ Karen Jacobs
Karen Jacobs (#2881)
cc:

All Counsel of Record (by e-mail)

7937801
3

Because PUM’s sections of the Pretrial Order were due on January 20, PUM has included
discussion of Google’s issues to the extent it was able without the benefit of having Google’s
portions of the Pretrial Order.
4
PUM had proposed a schedule by which the parties would exchange various portions of the
Pretrial Order simultaneously on issues for which they bear the burden of proof, followed by
simultaneous exchanges of rebuttal sections. (Ex. 4). Google refused even to discuss this
proposal.
5
Throughout the parties’ correspondence, as well as in Google’s January 17 letter to the Court
(D.I. 549), Google has repeatedly omitted the portion of the Local Rule that refers to sections of
the Pretrial Order “relating to plaintiff’s case.”
6
In a number of contexts, this Court has rejected distinctions between “plaintiffs” and
“defendants” that ignore which parties are asserting which claims in a case. For example, the
provision of the Court’s form patent scheduling order directed to deposition location states that
“[a] defendant who becomes a counterclaimant, cross-claimant, or third-party plaintiff shall be
considered as having filed an action in this Court for the purpose of this provision.” ¶ 3(e)(ii).