Personalized User Model LLP v. Google Inc.

Filing 602

REDACTED VERSION of 588 Proposed Pretrial Order, by Personalized User Model LLP, Konig Yochai. (Attachments: # 1 Exhibits 1-20)(Tigan, Jeremy)

EXHIBIT 1

EXHIBIT 1
JOINT STATEMENT OF FACTS THAT ARE
ADMITTED AND REQUIRE NO PROOF AT TRIAL
1.

Plaintiff and Counterclaim-Defendant Personalized User Model, L.L.P. (“PUM”)

is a Texas limited liability partnership, with its principal place of business located in New York.
2.

Defendant, Counterclaimant, and Third Party Plaintiff Google, Inc. (“Google”) is

a Delaware corporation, with its principal place of business located at 1600 Amphitheatre
Parkway, Mountain View, CA 94043.
3.

Third Party Defendant Dr. Yochai Konig is an individual residing at 2312 Castro

Street, San Francisco, CA 94131.
4.

United States Patent No. 6,981,040 (“the ’040 Patent”), entitled “Automatic,

Personalized Online Information and Product Services,” was issued by the United States Patent
and Trademark Office (“PTO”) on December 27, 2005.
5.

The named inventors of the ’040 Patent are Yochai Konig, Roy Twersky, and

Michael Berthold.
6.

The ’040 Patent claims priority to provisional application No. 60/173,392, filed

on Dec. 28, 1999.
7.

United States Patent No. 7,685,276 (“the ’276 Patent”), entitled “Automatic,

Personalized Online Information and Product Services,” was issued by the PTO on March 23,
2010.
8.

The named inventors of the ’276 Patent are Yochai Konig, Roy Twersky, and

Michael Berthold.

9.

The ’276 Patent is a continuation of application No. 11/316,785, filed on Dec. 22,

2005, now U.S. Patent No. 7,320,031, which is a continuation of application No. 09/587,975,
filed on June 20, 2000, now the ’040 Patent.
10.

“Personal WebWatcher: design and implementation” is a paper by Dunja

Mladenic which was published in 1996.
11.

“Collecting User Access Patterns for Building User Profiles and Collaborative

Filtering” is a paper by Ahmad M. Ahmad Wasfi which was published in January 1999.
12.

“A Personal Evolvable Advisor for WWW Knowledge-Based Systems” is a paper

by M. Montebello, W.A. Gray, and S. Hurley, which was published in March 1998.
13.

United States Patent No. 7,631,032 (“the ’032 Patent”), entitled “Personalized

Internet Interaction by Adapting a Page Format to a User Record,” was issued by the PTO on
December 8, 2009.
14.

United States Patent No. 6,182,068 (“the ’068 Patent”), entitled “Personalized

Search Methods,” was issued January 30, 2001.

2

EXHIBIT 2

EXHIBIT 2
PLAINTIFFS’ STATEMENT OF CONTESTED FACTS
THAT REMAIN TO BE LITIGATED AND STATEMENT OF INTENDED PROOFS1
PUM’s identification of the contested facts that remain to be litigated is based on the
pleadings and discovery in the action to date and on PUM’s current understanding of Google’s
claims and defenses. To the extent that Google intends or attempts to introduce different or
additional facts, PUM reserves the right to supplement this statement and contest those facts and
to present any and all rebuttal evidence in response to those facts.
PUM contends that the issues of fact that remain to be litigated at trial are as follows:
I.

INFRINGEMENT
1.

Whether PUM proves by a preponderance of the evidence that Google Search

infringes claims 1, 11, 22, or 34 of the ’040 patent, literally or under the doctrine of equivalents,
pursuant to 35 U.S.C. § 271.
2.

Whether PUM proves by a preponderance of the evidence that Google Search

infringes, directly or indirectly, claims 1, 3, 6, 21, or 22 of the ’276 patent, literally or under the
doctrine of equivalents, pursuant to 35 U.S.C. § 271.
3.

Whether PUM proves by a preponderance of the evidence that Google’s Search

Ads System (Adwords) infringes, directly or indirectly, claims 1, 11, 22, or 34 of the ’040 patent,
literally or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.
4.

Whether PUM proves by a preponderance of the evidence that Google’s Search

Ads System (Adwords) infringes, directly or indirectly, claims 1, 3, 5, 6, 7, or 21 of the ’276
patent, literally or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.
1

To the extent that any issues of law set forth in Exhibit 4 of the Joint Pretrial Order may
be considered issues of fact, PUM incorporates those portions of Exhibit 4 herein by
reference.

5.

Whether PUM proves by a preponderance of the evidence that Google’s Content

Ads System (Adsense, including advertising on YouTube) infringes, directly or indirectly, claims
1, 11, 22, or 34 of the ’040 patent, literally or under the doctrine of equivalents, literally or under
the doctrine of equivalents, pursuant to 35 U.S.C. § 271.
6.

Whether PUM proves by a preponderance of the evidence that Google’s Content

Ads System (Adsense, including advertising on YouTube) infringes, directly or indirectly, claims
1, 3, 6, 7, or 22 of the ’276 patent, literally or under the doctrine of equivalents, pursuant to 35
U.S.C. § 271.
7.

Whether PUM proves by a preponderance of the evidence that Google’s YouTube

Video Recommendations literally infringes, directly or indirectly, claims 1, 22, or 34 of the ʼ040
Patent, pursuant to 35 U.S.C. § 271.
II.

VALIDITY
8.

Whether Google proves by clear and convincing evidence that claims 1, 11, 22,

and 34 of the ʼ040 Patent are anticipated under 35 U.S.C. § 102.
9.

Whether Google proves by clear and convincing evidence that claims 1, 3, 5, 6, 7,

21, and 22 of the ’276 patent are anticipated under 35 U.S.C. § 102.
10.

Whether Google proves by clear and convincing evidence that claims 1, 11, 22,

and 34 of the ʼ040 Patent are invalid as obvious to a person of ordinary skill in the art at the time
of the invention under 35 U.S.C. § 103(a).2

2

In Ex. 3 to the Joint Pretrial Order, Google states that it “believes that obviousness is a
question of law for the Court.” PUM disagrees. “Obviousness is a legal determination
that may be submitted to a jury with proper instruction.” In re Hayes Microcomputer
Prods., Inc. Patent Litig., 982 F2d 1527, 1539 (Fed. Cir. 1992); accord Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1547 (Fed. Cir. 1983); Wyers v. Master Lock Co., 616
F.3d 1231, 1247-48 (Fed. Cir. 2010) (Linn, J., concurring).

2

11.

Whether Google proves by clear and convincing evidence that claims 1, 3, 5, 6, 7,

21, and 22 of the ’276 patent are invalid as obvious to a person of ordinary skill in the art at the
time of the invention under 35 U.S.C. § 103(a).
III.

OWNERSHIP AND STANDING3
12.

Whether Google’s state law claims are time-barred and/or barred by laches.

13.

Whether Google has standing to assert a breach of contract claim against Dr.

14.

Whether Google proves by a preponderance of the evidence that Dr. Konig

Konig.

breached his employment agreement with SRI.
15.

Whether Dr. Konig conceived of the inventions while employed by SRI and, if so,

whether the inventions related to SRI’s then existing business or actual or demonstrably
anticipated research, or resulted from Dr. Konig’s work at SRI.
16.

Whether Google proves by a preponderance of the evidence its claims for

constructive trust and for conversion.
17.

Whether Google proves by a preponderance of the evidence that it is entitled to

co-ownership rights to the ’040 and '276 patents and whether those rights are retroactive such
that PUM lacks standing to bring this lawsuit.
18.

Whether PUM and its predecessors-in-interest purchased their ownership rights in

the patents-in-suit for valuable consideration and without notice of any prior assignment to SRI
or SRI's assignment of purported rights to Google.

3

As set forth in PUM’s Motion in limine (Ex. 12 to the pretrial order), PUM believes that
Google’s claims for a declaration of co-ownership of the patents-in-suit, lack of standing,
constructive trust and conversion are legal or equitable issues to be decided by the Court
following trial.

3

IV.

RELIEF
19.

PUM seeks damages and enhanced damages because this is an “exceptional case.”

This relief will be addressed in connection with the trial on damages and willfulness to be
scheduled after the completion of the March 10, 2014 trial.
V.

STATEMENT OF INTENDED PROOFS
20.

PUM intends to prove that Google Search infringes, directly or indirectly, claims

1, 11, 22, and 34 of the ’040 patent, and claims 1, 3, 6, 21, and 22 of the ’276 patent literally or
under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.
21.

PUM intends to prove that Google’s Search Ads System (Adwords) infringes,

directly or indirectly, claims 1, 11, 22, and 34 of the ’040 patent, and claims 1, 3, 5, 6, 7, and 21
of the ’276 patent, literally or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.
22.

PUM intends to prove that Google’s Content Ads System (Adsense including You

Tube Advertising System) infringes, directly or indirectly, claims 1, 11, 22, or 34 of the ’040
patent, and claims 1, 3, 6, 7, and 22 of the ’276 patent, literally or under the doctrine of
equivalents, pursuant to 35 U.S.C. § 271.
23.

PUM intends to prove that Google’s YouTube Video Recommendations literally

infringes, directly or indirectly, claims 1,22, and 34 of the ʼ040 Patent, pursuant to 35 U.S.C. §
271.
24.

To the extent Google introduces sufficient evidence of invalidity, PUM intends to

introduce evidence sufficient to rebut that claims 1, 11, 22, and 34 of the ʼ040 Patent are invalid
under 35 U.S.C. §§ 102 or 103.

4

25.

To the extent Google introduces sufficient evidence of invalidity, PUM intends to

introduce evidence sufficient to rebut that claims 1, 3, 5, 6, 7, 21, and 22 of the ’276 are invalid
under 35 U.S.C. §§ 102 or 103.
26.

To the extent Google’s state law claims are found not to be untimely, and to the

extent Google introduces sufficient evidence relating to these claims, PUM intends to introduce
evidence that the statute of limitations bars Google’s claims. In addition, PUM intends to prove
that Google unreasonably delayed in bringing its ownership and state law counterclaims to the
prejudice of PUM and Dr. Konig.
27.

To the extent Google’s ownership and related state law claims are found not to be

untimely, and to the extent Google introduces sufficient evidence relating to these claims, PUM
intends to introduce evidence sufficient to show that Google lacks standing to assert a breach of
contract claim.
28.

To the extent Google’s ownership and related state law claims are found not to be

untimely, and to the extent Google introduces sufficient evidence relating to these claims, PUM
also intends to introduce evidence sufficient to show that Dr. Konig did not breach his
employment agreement with SRI, did not conceive the inventions while employed at SRI, and,
that the inventions are covered by section 2870 of the California Labor Code.
29.

To the extent Google’s co-ownership and related state law claims are found not to

be untimely, and to the extent Google introduces sufficient evidence of lack of standing, PUM
intends to introduce evidence sufficient to show that that SRI did not have any ownership rights
to the ’040 and ’276 patents to convey to Google, that Dr. Konig does not have any rights to the
’040 and ’276 patents to convey to Google, that PUM and its predecessors-in-interest were good
faith purchasers of Dr. Konig’s rights in the patents-in-suit, that PUM is the lawful owner of the

5

’040 and ’276 Patents, and that PUM has standing to bring this lawsuit because Google cannot
establish that SRI or Google ever held legal title to the ’040 and ’276 Patents that could deprive
PUM of standing.

6

EXHIBIT 3

EXHIBIT 3 TO PRETRIAL ORDER
GOOGLE’S STATEMENT OF CONTESTED FACTS
THAT REMAIN TO BE LITIGATED AND STATEMENT OF INTENDED PROOFS
Google submits the following issues of fact that remain to be litigated. Further details of these
proofs have been explained at length in Google’s pleadings and discovery responses, including
its contentions, interrogatory responses, expert reports and by experts at their depositions, which
Google incorporates by reference. Should the Court determine that any issue identified in this
list is mort properly considered an issue of law, it shall be so considered and Google incorporates
it by reference into its Statement of Issues of Law to be Litigated at Trial. Google reserves the
right to revise, modify, supplement, or change the issues of fact to be litigated in light of any
pretrial rulings by the Court and/or in light of any further identification of issues of law and fact
by PUM and/or to address any additional issues, arguments, evidence or other developments in
the case, including pending and anticipated motions, and similar developments.

1.

Whether Google Search directly infringes1 claims 1, 11, 22, or 34 of the ‘040 Patent,
literally or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.

2.

Whether Google Search directly infringes claims 1, 3, 6, 21, and 22 of the ‘276 Patent,
literally or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.

3.

Whether Google’s Search Ads System (AdWords) directly infringes claims 1, 11, 22, or
34 of the ‘040 Patent, literally or under the doctrine of equivalents, pursuant to 35 U.S.C.
§ 271.

4.

Whether Google’s Search Ads System (AdWords) directly infringes claims 1, 3, 5, 6, 7,
or 21 of the ‘276 Patent, literally or under the doctrine of equivalents, pursuant to 35
U.S.C. § 271.

5.

Whether Google’s Content Ads System (AdSense, including advertising on YouTube)
directly infringes claims 1, 11, 22, or 34 of the ‘040 Patent, literally or under the doctrine
of equivalents, pursuant to 35 U.S.C. § 271.
1

PUM includes in Exhibit 2 allegations regarding indirect infringement. PUM did not
disclose in discovery that it contends Google indirectly infringes, or any facts to support such a
claim. Thus, it should be precluded from pursuing a claim of indirect infringement at trial.

01980.51575/5769746.4

6.

Whether Google’s Content Ads System (AdSense, including advertising on YouTube)
directly infringes claims 1, 3, 6, 7, or 22 of the ‘276 Patent, literally or under the doctrine
of equivalents, pursuant to 35 U.S.C. § 271.

7.

Whether Google’s YouTube Video Recommendations directly and literally infringes
claims 11, 22, or 34 of the ‘040 Patent pursuant to 35 U.S.C. § 271.

8.

Whether claims 1, 11, 22, and 34 of the ‘040 patent are anticipated under 35 U.S.C. § 102
in light of the prior art.

9.

Whether claims 1, 3, 5, 6, 7, 21 and 22 of the ‘276 patent are anticipated under 35 U.S.C.
§ 102 in light of the prior art.

10.

Whether claims 1, 11, 22, and 34 of the ‘040 Patent are invalid as obvious under 35
U.S.C. § 103(a). the prior art.2

11.

Whether claims 1, 3, 5, 6, 7, 21, and 22 of the ‘276 Patent are invalid as obvious under 35
U.S.C. § 103(a) ).3

12.

Whether Yochai Konig breached his employment agreement with SRI.

13.

Whether Yochai Konig conceived of the inventions disclosed in the patents-in-suit while
employed by SRI.

14.

Whether the inventions disclosed in the patents-in-suit resulted from Yochai Konig's
work for SRI.

2

The list of prior art references and "combinations" for obviousness ordered by the
Court is set forth in Exhibit 20.
3

Google believes that obviousness is a question of law for the Court (In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000) (Obviousness is a question of law, based on underlying
facts. )), but because PUM identified it as a contested fact that remains to be litigated in Exhibit
2, Google includes them herein. The list of prior art references and "combinations" for
obviousness ordered by the Court is set forth in Exhibit 20.

01980.51575/5769746.4

15.

Whether the inventions disclosed in the patents-in-suit related to SRI’s business and/or its
actual or demonstrably anticipated research or development.

16.

Whether PUM lacks ownership rights to the ‘040 and ‘276 Patents.

17.

Whether SRI could discover its cause of action against Yochai Konig before discovery
began in this lawsuit.

18.

Whether any delay in Google bringing its ownership and state law counterclaims was
unreasonable and whether such delay prejudiced PUM or Yochia Konig in any manner.
Whether PUM lacks standing to bring this lawsuit.

19.

Whether PUM and its predecessors-in-interest purchased its ownership rights in the
patents-in-suit for valuable consideration.

20.

Whether PUM and its predecessors-in-interest had notice of SRI’s ownership interest in
the patents-in-suit.

21.

Whether PUM and its predecessors-in-interest had notice of SRI’s assignment of rights to
Google of rights in the patents-in-suit.
RELIEF

22.

Google seeks declaratory judgment that Google has not infringed and does not infringe
any valid and enforceable claim the ‘040 patent or the ‘276 patent and that the ‘040 and
‘276 patents are invalid and/or unenforceable.

23.

Google seeks declaratory judgment that Google is a rightful co-owner of the Patents-inSuit, the return of all rights and interest in the patents-in-suit which Yochai Konig and
PUM wrongfully converted, and imposition of constructive trust against PUM and
Yochai Konig for Google with a duty to convey the same to Google.

01980.51575/5769746.4

STATEMENT OF INTENDED PROOFS
24.

Google intends to offer proof to rebut PUM’s allegations that Google Search directly
infringes claims 1, 11, 22, or 34 of the ‘040 Patent, literally or under the doctrine of
equivalents, pursuant to 35 U.S.C. § 271.

25.

Google intends to offer proof to rebut PUM’s allegations that Google Search directly
infringes claims 1, 3, 6, 21, and 22 of the ‘276 Patent, literally or under the doctrine of
equivalents, pursuant to 35 U.S.C. § 271.

26.

Google intends to offer proof to rebut PUM’s allegations that Google’s Search Ads
System (AdWords) directly infringes claims 1, 11, 22, or 34 of the ‘040 Patent, literally
or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.

27.

Google intends to offer proof to rebut PUM’s allegations that Google’s Search Ads
System (AdWords) directly infringes claims 1, 3, 5, 6, 7, or 21 of the ‘276 Patent,
literally or under the doctrine of equivalents, pursuant to 35 U.S.C. § 271.

28.

Google intends to offer proof to rebut PUM’s allegations that Google’s Content Ads
System (AdSense, including advertising on YouTube) directly infringes claims 1, 11, 22,
or 34 of the ‘040 Patent, literally or under the doctrine of equivalents, pursuant to 35
U.S.C. § 271.

29.

Google intends to offer proof to rebut PUM’s allegations that Google’s Content Ads
System (AdSense, including advertising on YouTube) directly infringes claims 1, 3, 6, 7,
or 22 of the ‘276 Patent, literally or under the doctrine of equivalents, pursuant to 35
U.S.C. § 271.

01980.51575/5769746.4

30.

Google intends to offer proof to rebut PUM’s allegations that Google’s YouTube Video
Recommendations literally and directly infringes claims 11, 22, or 34 of the ‘040 Patent
pursuant to 35 U.S.C. § 271.

31.

Google intends to prove that the prior art anticipates claims 1, 11, 22, and 34 of the ‘040
patent under 35 U.S.C. § 102.

32.

Google intends to prove that the prior art anticipates claims 1, 3, 5-7, 21 and 22 of the
‘276 patent under 35 U.S.C. § 102.

33.

Google intends to prove that claims 1, 11, 22, and 34 of the ‘040 Patent are invalid as
obvious under 35 U.S.C. § 103(a) in light the prior art.4

34.

Google intends to prove that claims 1, 3, 5, 6, 7, 21, and 22 of the ‘276 Patent are invalid
as obvious under 35 U.S.C. § 103(a) ) in light of the prior art.5

35.

Google intends to prove that PUM lacks the standing necessary to assert any claims of
the ‘040 Patent or ‘276 Patent against Google pursuant to 35 U.S.C. § 262.

36.

Google intends to offer proof to rebut PUM’s allegation that Google unreasonably
delayed bringing these claims or that any delay prejudiced PUM or Yochai Konig.

37.

Google intends to offer proof to rebut PUM’s allegations that PUM and its predecessorsin-interest purchased their ownership rights in the patents-in-suit for valuable
consideration and did not have actual or constructive notice of SRI’s ownership interest
or SRI’s assignment of rights to Google.

4

The list of prior art references and "combinations" for obviousness ordered by the
Court is set forth in Exhibit 20.
5

The list of prior art references and "combinations" for obviousness ordered by the
Court is set forth in Exhibit 20.

01980.51575/5769746.4

EXHIBIT 4

EXHIBIT 4
PUM’S STATEMENT OF ISSUES OF LAW TO BE LITIGATED AT TRIAL1
PUM asserts that Google infringes U.S. Patent No. 6,981,040 B1 (“the ʼ040 patent”) and
U.S. Patent No. 7,685,276 (“the ’276 Patent”), directly and indirectly, literally and/or under the
doctrine of equivalents.
PUM’s statement of the legal issues that remain to be litigated is based on the arguments
it expects to make to establish infringement as well as its understanding of the arguments that
Google is likely to make in an attempt to prove its claims and defenses. To the extent that
Google intends or attempts to introduce different or additional legal arguments, PUM reserves its
right to supplement this statement and contest those legal arguments and to present any and all
rebuttal evidence in response to those arguments.
Based on PUM’s infringement contentions and PUM’s current understanding of Google’s
claims, the following issues of law remain to be litigated:

1

To the extent any of the issues of fact set forth in Exhibit 2 may be considered issues of
law, PUM incorporates them herein by reference. To the extent any issues of law here
may be considered issues of fact PUM incorporates them in Exhibit 2.

I.

ISSUES ON WHICH PUM BEARS THE BURDEN OF PROOF
PUM must prove by a preponderance of the evidence that Google’s making, using,

offering to sell, selling, or importing the Accused Products directly or indirectly infringes,
literally and/or under the doctrine of equivalents, claims 1, 11, 22, or 34 of the ʼ040 Patent and
claims 1, 3, 5, 6, 7, 21, or 22 of the ’276 Patent.
A.

DIRECT INFRINGEMENT

PUM bears the burden of proving patent infringement by a preponderance of the
evidence. Advanced Cardiovascular Sys., Inc. v, Scimed Life Sys., Inc., 261 F.3d 1329, 1336
(Fed. Cir. 2001). PUM must show that it is more likely than not that Google infringes the ʼ040
and ’276 Patents. Warner-Lambert Co. v. Teva Pharm., USA, Inc., 418 F.3d 1326, 1341 (Fed.
Cir. 2005).
The infringement analysis involves two steps. Markman v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is to
define the disputed the terms of the patent consistent with how those terms would be understood
by a person of ordinary skill in the art. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc). This Court construed the disputed terms in a decision dated January 25,
2012. (D.I. 347.) The second step is to determine whether the accused product infringes the
patent, which is done by comparing the accused product with the properly construed claims.
Markman, 52 F.3d at 976.
“Infringement under the doctrine of equivalents is an equitable doctrine devised for
‘situations where there is no literal infringement but [where] liability is nevertheless appropriate
to prevent what is in essence a pirating of the patentee’s invention.’” Insta-Foam Prods., Inc. v.
Universal Foam Sys., Inc., 906 F.2d 698, 702 (Fed. Cir. 1990) (quoting Loctite Corp. v.
Ultraseal Ltd., 781 F.2d 861, 870 (Fed. Cir. 1985)). Under the doctrine of equivalents, an
2

accused product infringes if a person of ordinary skill in the art would consider the elements in
the accused product to be insubstantially different from the limitations of the asserted claims.
Overhead Door Corp. v. Chamberlain Grp., Inc., 194 F.3d 1261, 1269 (Fed. Cir. 1999); see also
Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1568 (Fed. Cir. 1996) (“Infringement under the
doctrine of equivalents may be found where those limitations of a claim not found exactly in the
accused device are met equivalently.”).
One way that infringement under the doctrine of equivalents can be demonstrated is by
the function-way-result test, which permits a finding of infringement if a claim limitation and the
corresponding element of the accused product (1) perform substantially the same function, (2) in
substantially the same way, (3) to produce substantially the same result. Atlas Powder Co. v. E.I.
DuPont de Nemours & Co., 750 F.2d 1569, 1579 (Fed. Cir. 1984) (citation omitted).2
Although the doctrine of equivalents is applied on a limitation-by-limitation basis, oneto-one correspondence is not required. Eagle Comtronics v. Arrow Commc’n Labs., 305 F.3d
1303, 1317 (Fed. Cir. 2002). For example, an accused product may infringe even if “separate
claim limitations are combined into a single element.” Id. at 1317.
B.

INDIRECT INFRINGEMENT
Inducement of Infringement

“Whoever actively induces infringement of a patent shall be liable as an infringer.”
35 U.S.C. § 271(b). A party is liable for inducement of infringement if it: (1) knew about the
patent; (2) intentionally encouraged acts that constitute direct infringement; and (3) knew or

2

Evidence that a person of ordinary skill in the art would consider the element of the
accused product to be interchangeable with the claim limitation is also evidence
supporting a finding of infringement under the doctrine of equivalents. WarnerJenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 36-37 (1997) (citing Graver
Tank, 339 U.S. at 857)).

3

should have known that its actions will cause direct infringement or is willfully blind to the fact;
and (4) another party directly infringes the claim. Id.; Global-Tech Appliances, Inc. v. SEB S.A.,
131 S. Ct. 2060, 2070-71 (2011).
Evidence of specific intent to induce infringement “may be inferred from circumstantial
evidence.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 134 2 (Fed. Cir. 2008)
(citation omitted). Evidence of active steps taken to induce infringement, such as advertising an
infringing use, or instructing how to engage in an infringing use, may support a finding of an
intention for the product to be used in an infringing manner. Id. at 1341 (citation omitted).
II.

ISSUES ON WHICH DEFENDANT BEARS THE BURDEN OF PROOF
A.

INVALIDITY

Google must prove by clear and convincing evidence that claims 1, 11, 22, and 34 of the
’040 patent and claims 1, 3, 5, 6, 7, 21, and 22 of the ’276 Patent are invalid under 35 U.S.C.
§§ 102 or 103. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir.
2002).
The ʼ040 and ’276 Patents are presumed to be valid. 35 U.S.C. § 282. To overcome this
presumption of validity, the party challenging a patent must prove facts supporting a
determination of invalidity by “clear and convincing evidence.” Microsoft Corp. v. i4i Ltd.
P’ship, 131 S. Ct. 2238, 2242 (2011); see also Kao Corp. v. Unilever United States, Inc., 441
F.3d 963, 968 (Fed. Cir. 2006) (citation omitted) (“Because patents are presumed to be valid, see
35 U.S.C. § 282, an alleged infringer seeking to invalidate a patent on obviousness grounds must
establish its obviousness by facts supported by clear and convincing evidence.”). “Clear and
convincing evidence has been described as evidence which proves in the mind of the trier of fact
‘an abiding conviction that the truth of [the] factual contentions are [sic] highly probable.’” Intel

4

Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 830 (Fed. Cir. 1991) (alterations in original)
(quoting Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).
“[T]he burden of persuasion is and remains always upon the party asserting invalidity.”
Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358 (Fed. Cir. 1984) (citation
and emphasis omitted). “It is not necessary that the court hold a patent valid; it is only necessary
that it hold that the patent challenger has failed to carry its burden.” Ajinomoto Co. v. ArcherDaniels-Midland Co., No. 95-218-SLR, 1996 WL 621830, at *5 (D. Del. Oct. 21, 1996) (citing
Jones v. Hardy, 727 F.2d 1524, 1529 n.3 (Fed. Cir. 1984)), aff’d, 228 F.3d 1338 (Fed. Cir. 2000).
“[W]here the challenger fails to identify any persuasive evidence of invalidity, the very existence
of the patent satisfies the patentee’s burden on the validity issue.” Canon Computer Sys., Inc. v.
Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998).
1.

Anticipation

Section 102 of Title 35 of the United States Code provides in relevant part, that:
A person shall be entitled to a patent unless - (a) the invention was
known or used by others in this country, or patented or described
in a printed publication in this or a foreign country, before the
invention thereof by the applicant for patent, or (b) the invention
was patented or described in a printed publication in this or a
foreign country or in public use or on sale in this country, more
than one year prior to the date of the application for patent in the
United States.
35 U.S.C. § 102. Invalidity for anticipation “requires that the four corners of a single, prior art
document describe every element of the claimed invention, either expressly or inherently, such
that a person of ordinary skill in the art could practice the invention without undue
experimentation.” Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
Cir. 2000) (citations omitted).

5

Anticipation requires that the reference must disclose the invention “without any need for
picking, choosing, and combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587-88 (C.C.P.A 1972) (“Such
picking and choosing may be entirely proper in the making of a 103, obviousness rejection,
where the applicant must be afforded an opportunity to rebut with objective evidence any
inference of obviousness which may arise from the similarity of the subject matter which he
claims to the prior art, but it has no place in the making of a 102, anticipation rejection.”).
2.

Obviousness3

Section 103 of Title 35 of the United States Code provides, in relevant part, that:
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this
title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said
subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.
35 U.S.C. § 103(a). See also Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010);
cert. denied 131 S. Ct. 1531 (2011).
“Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give

3

In Ex. 5 to the Joint Pretrial Order, Google contends that obviousness is an issue of law to
be “decided by the Court.” PUM disagrees. “Obviousness is a legal determination that
may be submitted to a jury with proper instruction.” In re Hayes Microcomputer Prods.,
Inc. Patent Litig., 982 F2d 1527, 1539 (Fed. Cir. 1992); accord Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1547 (Fed. Cir. 1983); Wyers v. Master Lock Co., 616
F.3d 1231, 1247-48 (Fed. Cir. 2010) (Linn, J., concurring).

6

light to the circumstances surrounding the origin of the subject
matter sought to be patented.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S. Ct. 1727, 1734 (2007) (quoting Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). Before finding a patent claim as
invalid for obviousness, a court must consider all of these factors. Ruiz v. A.B. Chance Co., 234
F.3d 654, 663 (Fed. Cir. 2000).
(a)

Obviousness Determinations Proceed In Two Stages

First, the patent challenger must establish by clear and convincing evidence that the
claimed invention would have been prima facie obvious. Kaufman Co. v. Lantech, Inc., 807
F.2d 970, 974-75 (Fed. Cir. 1986). Failure to show prima facie obviousness means the claims
are not invalid for obviousness, ending the inquiry. Yamanouchi, 231 F.3d at 1345.
Second, assuming the challenger sets forth clear and convincing evidence of prima facie
obviousness, the patentee may come forward with evidence to demonstrate that the invention
was not obvious. Prima facie obviousness may be rebutted with objective indicia of nonobviousness (“secondary considerations”) such as commercial success, failure of others to solve
the problem, copying or other attempts to patent the same invention, satisfaction of a long-felt
need by the invention, and acclaim for the invention. Sometimes, objective factors are the most
important evidence in evaluating obviousness, and “must” always be considered as part of the
original determination of obviousness. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1380, 1382-84 (Fed. Cir. 1986).
Once sufficient rebuttal evidence has been presented, “the prima facie case dissolves, and
the decision is made on the entirety of the evidence.” In re Kumar, 418 F.3d 1361, 1366 (Fed.
Cir. 2005).

Moreover, when the patentee comes forward with evidence of secondary

considerations, the burden of proof that the claims were obvious in light of all the evidence

7

remains on the defendant by clear and convincing evidence. See Hybritech Inc., 802 F.2d at
1375, 1383.
(b)

The Test For Prima Facie Obviousness

“[A] patent composed of several elements is not proved obvious merely by demonstrating
that each element was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). “Inventions in most, if not all, instances rely upon building blocks long
since uncovered, and claimed discoveries almost of necessity will be combinations of what, in
some sense, is already known.” Id. at 418-19.
Where a challenger seeks to invalidate a patent based on obviousness, it must
demonstrate “by clear and convincing evidence” that a “skilled artisan would have had reason to
combine the teaching of the prior art references to achieve the claimed invention, and that the
skilled artisan would have had a reasonable expectation of success from doing so.” In re
Cyclobenzapine Hydrochloride Extended Release Capsule Patent Litig., 676 F.3d 1063, 1068-69
(Fed. Cir. 2012) (citing Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994
(Fed. Cir. 2009)); PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed.
Cir. 2007).
(c)

Evidence of Non-Obviousness May Rebut a Case of Prima Facie
Obviousness

A court must also consider evidence of nonobviousness, or “secondary considerations,”
before ruling on the question of validity of a patent claim. Ruiz, 234 F.3d at 667. “[C]ommercial
success, long-felt but unresolved need, failure of others, copying and unexpected results” are
secondary considerations that may be evidence of nonobviousness. Ruiz, 234 F.3d at 662-63.

8

“[T]hroughout the obviousness determination, a patent retains its statutory presumption
of validity, see 35 U.S.C. § 282, and the movant retains the burden to show the invalidity of the
claims by clear and convincing evidence as to underlying facts.” McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1349 (Fed. Cir. 2001) (citation and internal quotation marks omitted); see
also Sanofi-Synthelabo, 550 F.3d at 1086 (a party challenging a patent claim as invalid for
obviousness must prove that the Graham factors establish obviousness by clear and convincing
evidence).
(d)

The Challenger Cannot Use Hindsight or Rely On the Path of the
Inventor

The obviousness analysis takes place at the time of the invention, and focuses on
evidence existing before the time of the invention. The use of hindsight is prohibited in the
obviousness analysis. KSR Int’l, 550 U.S. at 421 (“A factfinder should be aware, of course, of
the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.”); accord Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir.
2008) (hindsight should not be relied upon to post-hoc create a reason for combining references
when such reason would not have been known before the claimed invention); Yamanouchi, 231
F.3d at 1343 (using “the claimed invention itself as a blueprint for piecing together elements in
the prior art to defeat the patentability of the claimed invention” is impermissible hindsight
reasoning) (citation omitted); Janssen Pharmaceutica N.V. v. Mylan Pharm., Inc., 456 F. Supp.
2d at 663 (discrediting expert testimony that was clearly based on hindsight).
An obviousness determination is made “from the viewpoint of a person of ordinary skill
[not the inventor] in the field of the invention.” Arkie Lures, 119 F.3d at 956 . The obviousness
analysis must avoid using the teachings of the patent-in-suit because “[th]e invention must be
viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the

9

time.” Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985). Therefore,
“[i]t is critical that the question of obviousness not be viewed in the light of the accomplished
result.” BOC Health Care, Inc. v. Nellcor Inc., 892 F. Supp. 598, 603 (D. Del. 1995) (internal
quotation marks and citation omitted), appeal deactivated, No. 95-1494, 1995 WL 810959 (Fed.
Cir. Oct. 27, 1995), aff’d, No. 95-1494, 96-1072., 1996 WL 518067 (Fed. Cir. Sept. 13, 1996).
Evidence must be provided that a “skilled artisan, confronted with the same problems as the
inventor and with no knowledge of the claimed invention, would select the elements from the
cited prior art references for combination in the manner claimed.” In re Rouffet, 149 F.3d 1350,
1357 (Fed. Cir. 1998).
As Google bears the burden of proof on these issues, PUM reserves the right to amend its
statement of issues of law as further information becomes available.
B.

OWNERSHIP/STANDING COUNTERCLAIMS AND DEFENSES

Google must demonstrate that it has standing to assert its breach of contract claim. If so,
Google must prove by a preponderance of the evidence that Dr. Konig breached his employment
agreement with SRI, that Dr. Konig’s assignment of his rights in the patents-in-suit to Utopy did
not cut off Dr. Konig's ability to assign his rights to SRI, and that PUM lacks ownership rights to
the ’040 and ’276 Patents-in-suit or standing to bring this lawsuit.
A plaintiff must bring an action for breach of contract, recovery of monetary damages, or
recovery of property, within three years “from the accruing of the cause of such action.” 10 Del.
C. § 8106 Under 10 Del. C. § 8121, “[w]here a cause of action arises outside of this State, an
action cannot be brought in a court of this State to enforce such cause of action after the
expiration of whichever is shorter, the time limited by the law of this State, or the time limited by
the law of the state or country where the cause of action arose, for bringing an action upon such
cause of action.” See also Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc.,
10

No. Civ. 98-80-SLR, 2005 WL 46553, at *4 D. Del. 2005) (finding the borrowing statute
applicable to claims of breach of contract, actual fraud, unjust enrichment and unfair competition
in patent action). “Delaware’s borrowing statute is designed to prevent shopping for the most
favorable forum.” See Grynberg v. Total Compagnie Francaise des Petroles, 891 F. Supp. 2d
663, (D. Del. 2012) (internal quotation marks and citation omitted), overruled on other grounds
by, Civ. A. No. 10-1088-LPS, 2013 WL 5459913 (D. Del. Sept. 30, 2013); Saudi Basic Indus.
Corp. v. Mobil Yanbu Petrochemical Co., Inc., 866 A.2d 1, 16 (Del. 2005) (noting that
borrowing statutes “are typically designed to address a specific kind of forum shopping
scenario—cases where a plaintiff brings a claim in a Delaware court that (i) arises under the law
of a jurisdiction other than Delaware and (ii) is barred by that jurisdiction's statute of limitations
but would not be time-barred in Delaware, which has a longer statute of limitations”). The
purpose of § 8117 is to “allow reasonably diligent plaintiffs the statutory period within which to
obtain service upon an absent or once absent and later elusive defendant.” Hurwitch v. Adams,
151 A.2d 286, 288 (Del. Super. Ct.), aff’d, 155 A.2d 591 (Del. 1959); see also Hurwitch v.
Adams, 155 A.2d 591, 593-94 (Del. 1959) (“[I]t is said that 10 Del. C. § 8116 [now § 8117] is
plain on its face and that it applies in any action in which the defendant is a non-resident. We
think this argument, if accepted, would result in the abolition of the defense of statutes of
limitation in actions involving non-residents.”).
The statute of limitations begins to run at the time of the alleged wrongful act, even if the
Plaintiff is ignorant of the cause of action.

See Medtronic Vascular, Inc. v. Advanced

Cardiovascular Sys., Inc., No. Civ. 98-80-SLR, 2005 WL 46553, at *4 (D. Del. Jan. 5, 2005),
aff’d, 182 F. App’x 994 (Fed. Cir. May 26, 2006). There are only two exceptions to this rule
that may toll the statute:

11



when the injury is “inherently unknowable and the claimant is blamelessly ignorant of the
wrongful act and the injury complained of.” Wal-Mart Stores, Inc. v. AIG Life Inc. Co.,
860 A.2d 312, 319 (Del. 2004);
or



when a cause of action is fraudulently concealed. Wright v. Dumizio, No. 08-292, 2002
WL 31357891, at *3 (Del. Super. Ct. Oct. 31, 2002).
Neither of these exceptions is lightly invoked, because equitable exceptions to statutes of

limitations are narrow and designed to prevent injustice. Central Mortg. Co. v. Morgan Stanley
Mortg. Capital Holdings LLC, 2012 WL 3201139, at *23 (Del.Ch. August 07, 2012).
To prevail on its claim that its cause of action was inherently unknowable, Google must
show that there were no facts that would put a reasonably diligent plaintiff on inquiry notice, for
example, when a surgeon leaves an object in a person’s body but there are no symptoms for
years. Layton v. Allen, 246 A.2d 794 (Del. 1968). Similarly, facts are inherently unknowable
when an auto manufacturer issues a recall for a manufacturing defect but the recall is limited in
scope and not widely disseminated to the public, and the car owners themselves have
experienced no malfunction and could take no steps to determine whether one existed. Dalton v.
Ford Motor Co., 2002 WL 338081, at *3 (Del. Super. Ct. Feb. 28, 2002):
Facts are not inherently unknowable if the plaintiff could have obtained access to
information that would have alerted it the defendant’s alleged breach of contract, and just
because a review is laborious “does not make it practically impossible for purposes of the
inherently unknowable injury rule.” Central Mortg., 2012 WL 3201139, at *22-23 & n.185.
For fraudulent concealment to toll the statute of limitations, Google must show: “(1) the
defendant's knowledge of the alleged wrong, and (2) an affirmative act of concealment by the
defendant thereby preventing the nonbreaching party from discovering and pursuing a cause of
action.” Wright, 2002 WL 31357891, at *3 (citing Lecates v. Hertich Pontiac Buick Co., 515
A.2d 163, 176 (Del. Super. 1986); see also Medtronic, 2005 WL 46553, at * 4 (“exception

12

requires that a plaintiff show that a defendant actively concealed information with the intent to
‘prevent inquiry or knowledge of the injury’”).
Equity aids only the vigilant, Central Mortg., 2012 WL 3201139, at *23. The statute is
thus tolled only until the plaintiff’s rights are discovered by the exercise of reasonable diligence.
Wright, 2022 WL 31357891, at *2 (citing Giordano v. Czerwinski, 216 A.2d 874, 876 (Del.
1966)); Wal-Mart, 860 A. 2d at 319. The statute begins to run “upon discovery of facts
constituting the basis of the cause of action or the existence of facts sufficient to put a person of
ordinary intelligence on inquiry, which if pursued, would lead to discovery of such facts.” WalMart, 860 A.2d at 319; Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc., No. Civ.
98-80-SLR , 2005 WL 388592, at *1 n.4 (D. Del. Feb. 2, 2005), aff’d, 182 F. App’x 994 (Fed.
Cir. May 26, 2006); Raza v. Siemens Med. Solutions USA Inc., 607 F. Supp. 2d 689, 693 (D. Del.
2009). “Patents serve to put the world on notice with respect to what the patentee claims to
own,” and starts the limitations period running. Medtronic, 2005 WL 388592, at *1 n.4.
An assignee stands in shoes of assignor. Madison Fund, Inc. v. Midland Glass Co.,
No. 394-1974, 1980 WL 332958 (Del. Super. Ct. Aug. 11, 1980).
Contract language agreeing to assign effects no immediate transfer of interest. See Bd. Of
Trustees of Leland Stanford v. Roche, 583 F.3d 832, 841-42 (Fed. Cir. 2009); DDB Techs.,
L.L.C. v. MLB Advanced Media L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008) (same).

An

agreement calling for future assignment of intellectual property rights “must be implemented by
[subsequent] written assignment,” and the assignee acquires rights only on the date of the
subsequent conveyance. IpVenture, Inc. v. Prostar Computer, Inc., 503 F.3d 1324, 1327 (Fed.
Cir. 2007). An inventor’s first assignment of patent rights cuts off his ability to assign those
rights a second time, voiding any subsequent assignment. See Roche, 583 F.3d at 841-42.

13

Even if Google’s claims were not time-barred by the statute of limitation, the factfinder
must also consider whether Google unreasonably delayed in bringing its counterclaims, which
delay unfairly prejudiced PUM and Dr. Konig, and whether Section 2870 of the California Labor
Code applies if Dr. Konig conceived of the inventions, within the meaning of his employment
agreement, while at SRI.
The doctrine of laches is founded on “the principle that equity will not aid a plaintiff
whose unexcused delay, if the suit were allowed, would be prejudicial to the defendant.” Russell
v. Todd, 309 U.S. 280, 287 (1940); see also In re Marriage of Fogarty & Rasbeary, 93 Cal. Rptr.
2d 653, 657 (Cal. App. 2000) (“Laches is an equitable defense to the enforcement of stale
claims.”). “[W]here the question of laches is in issue, the plaintiff is chargeable with such
knowledge as he might have obtained upon inquiry, provided the facts already known by him
were such as to put upon a man of ordinary intelligence the duty of inquiry.” Johnston v.
Standard Mining Co., 148 U.S. 360, 370 (1893) (noting that “where property has been developed
by the courage and energy and at the expense of the defendants, courts will look with disfavor
upon the claims of those who have lain idle while awaiting the results of this development, and
will require, not only clear proof of fraud, but prompt assertion of plaintiff's rights”).
California Labor Code Ҥ 2870 does not confer any rights on employers Рit protects
employees by rendering assignment agreements unenforceable to the extent they exceed
permissible limits.” Applera Corp.-Applied Biosys. Grp., 375 F. App’x 12, 17 (Fed. Cir. 2010).
Provisions in an employment agreement are void and unenforceable as against the public policy
of the State of California if they “purport[] to require an employee to assign an invention” that an
inventor created on his own “time without using the employer’s equipment, supplies, facilities,
or trade secret information,” and the invention does not either:

14

(1) relate at the time of conception or reduction to practice of the
invention to the employer’s business, or actual or demonstrably
anticipated research or development of the employer; or
(2) result from any work performed by the employee for the
employer.
Cal. Labor Code § 2870. The terms “related to” and “result from” are “inherently
ambiguous,” and California law allows the introduction of extrinsic evidence on the meaning of
these terms, including evidence of the nature of the employer’s business, the employee’s work
for the employer, and “the conduct of the parties, i.e., evidence probative of whether or not they
regarded the invention as falling within the agreement.” SiRF Tech., Inc. v. U.S. Int’l trade
Comm’n, 601 F.3d 1318, 1326-27 (Fed. Cir. 2010).
Conception “is established when the invention is made sufficiently clear to enable one
skilled in the art to reduce it to practice without the exercise of extensive experimentation or the
exercise of inventive skill.” Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973).
“Conception is complete only when the [idea] is so clearly defined in the inventor’s mind that
only ordinary skill would be necessary to reduce the invention to practice, without extensive
research or experimentation.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F. 3d 1223, 1228
(Fed. Cir. 1994). The rules of patent law conception “ensure that patent rights attach only when
an idea is so far developed that the inventor can point to a definite, particular invention,” and
only when those rights attach can an inventor assign those rights to another. Id.; see also, e.g.,
Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 487 F. Supp.
2d 1099, 1115 (N.D. Cal 2007), aff’d in part and rev’d in part on other grounds, 583 F.3d 832
(Fed. Cir. 2009) (applying patent law definition of conception to an employment agreement and
holding that the invention was conceived in the patent sense while employee worked there);
Accord Andreaggi v. Relis, 171, N.J. Super. 203, 408 A.2d 455, 464 (N.J. Super. Ct. Ch. Div.

15

1979) (“[T]his court concludes that where an inventor or inventors have conceived the basic
ideas, have drawn the schematics for the electrical circuitry, have assembled the hardware to do
the work, and have documented the means of executing the idea, there is invention.”).
A contract must be interpreted to give effect to “the parties’ objective intent when they
entered into it.” People ex rel. Lockyer v. R.J. Reynolds Tobacco Co., 107 Cal. App. 4th 516,
524-25 (Cal. Ct. App. 2003). In determining the intent of the parties to a contract, the inquiry
under Cal. Civ. Code § 1649 “considers not the subjective belief of the promisor but, rather the
‘objectively reasonable’ expectation of the promisee.” Buckley v. Terhune, 441 F.3d 688, 695
(9th Cir. 2006). Under California law, “[u]ndisclosed communications and understandings are
not credible extrinsic evidence and may not be used by the Court to determine the parties’ mutual
intent.” SCC Alameda Point LLC v. City of Alameda, 897 F. Supp. 2d 886, 897 (N.D. Cal. 2012)
(internal quotation marks and citations omitted).
Rules of contract construction are only applied if a contract is ambiguous. Cal Civ. Code
§ 1637 (“For the purpose of ascertaining the intention of the parties to a contract, if otherwise
doubtful, the rules given in this Chapter are to be applied.”); Edwards v. Arthur Andersen,
44 Cal. 4th 937, 954 (Cal. 2008) (“Where the language of a contract is clear and not absurd,
it will be followed. But if the meaning is uncertain, the general rules of interpretation are to
be applied.”). The “interpretation of an ambiguous clause in a contract must be made in
reference to the entire contract.” Med. Ops. Mgmt., Inc. v. Nat’l Heath Labs., Inc., 176 Cal. App.
3d 886, 893 (Cal. Ct. App. 1986). Contractual ambiguity is strictly construed against the drafter,
particularly in employment contracts to assign intellectual property. See, e.g., Applera, 375 F.
App’x at 17 (holding that Cal. Civil Code § 1654 required construing contractual obligations in
an employee invention agreement “‘most strongly against the party who caused the uncertainty

16

to exist [i.e. the employer]’”)); Hercules Glue Co. v. Littooy, 25 Cal. App. 2d 182, 186 (Cal. Ct.
App. 1938) (noting that“[a]n employee’s agreement in the contract of employment to assign
patents to his employer is specifically enforceable as to patents, clearly within its terms, as
strictly construed against the employer”). Under California law, when parties use a contract
term in a technical sense, or when special meaning is given to a term by usage, then a court
interpreting the contract term must apply the technical or special meaning. California Civil
Code § 1644.
“An assignment, grant or conveyance shall be void as against any subsequent purchaser
or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and
Trademark Office within three months from its date or prior to the date of such subsequent
purchase or mortgage.” 35 U.S.C. § 261. “It is well established that when a legal title holder of
a patent transfers his or her title to a third party purchaser for value without notice of an
outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of
any prior equitable encumbrance.” Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1573
(Fed. Cir. 1991) (citation omitted). “This is an application of the common law bona fide
purchaser for value rule.” Id.
The sole issue in determining whether a plaintiff has standing to bring a patent
infringement suit is whether the plaintiff possesses legal title ownership of the patent. Arachnid,
Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991). The right to seek the equitable
relief of declaration of ownership cannot retroactively divest a legal title holder of title to the
patent. See id. at 1579. Where an employee does not assign patent right pursuant to an
employment agreement which does not automatically assign rights in an invention, the employer
has at most an equitable claim “not sufficient to make the employer an indispensable party to the

17

suit.” Filmtec, 939 F.2d at 1578; see also Sigma Eng’g. Svc., Inc. v. Halm Instrument Co., Inc.,
33 F.R.D. 129 (E.D.N.Y. 1963) (legal title of patent could institute suit without joining holder of
an equitable interest in patent); Dill Mfg. Co. v. Goff, 125 F.2d 676, 679 (6th Cir. 1942) (party
claiming equitable title cannot bring infringement suit until it acquires legal title).
To establish the elements of conversion, Google must first show that it is an owner.
Fremont Indem. Co. v. Fremont Gen. Corp., 148 Cal. App. 4th 97, 119 (Cal Ct. App. 2007)
(“basic elements of the tort are (1) the plaintiff's ownership or right to possession of personal
property; (2) the defendant's disposition of the property in a manner that is inconsistent with the
plaintiff's property rights; and (3) resulting damages”). To establish ownership, a party needs to
show either that it has legal title or was entitled to immediate possession at the time of the
alleged conversion; a mere right to payment under a contract is not sufficient. Plummer v.
Day/Eisenberg, LLP, 184 Cal. App. 4th 38, 45 (Cal. Ct. App. 2010); Farmers Ins. Exch. v.
Zerin, 53 Cal. App. 4th 445, 451-52, (Cal. Ct. App. 1997).
An agreement must actually “create an equitable assignment” of “a property interest” to
establish equitable ownership for conversion. See McCafferty v. Gilbank, 249 Cal. App. 2d 569,
574–76 (Cal. Ct. App. 1967); Clifford v. Concord Music Grp., Inc., 2012 WL 380744, at *3
(N.D. Cal. Feb. 6, 2012) (“mere contractual obligation” does not create property interest). A
“possessory interest [that is] dependent on future events” is insufficient for conversion claim.
United States v. Bailey, 288 F. Supp. 2d 1261, 1270 (M.D. Fla. 2003). “The tort of conversion
does not apply to ideas.” Melchior v. New Line Productions, Inc., 106 Cal. App. 4th 779, 793
(Cal. Ct. App. 2003) (Citation omitted).“A constructive trust . . . is an equitable remedy, not a
substantive claim for relief.” PCO, Inc. v. Christensen, Miller, Fink, Jacobs, Glaser, Weil &
Shapiro, LLP, 150 Cal. App. 4th 384, 398 (Cal. Ct. App. 2007). “A constructive trust is an

18

involuntary equitable trust created by operation of law as a remedy to compel the transfer of
property from the person wrongfully holding it to the rightful owner.” Id.

19

EXHIBIT 5

EXHIBIT 5 TO PRETRIAL ORDER
GOOGLE’S STATEMENT OF ISSUES OF LAW TO BE LITIGATED AT TRIAL
Google submits the issues of law that remain to be litigated based upon Google’s current
understanding of each parties’ claims and defenses. Google believes that some of these issues
are issues of law that must be resolved by the Court. Accordingly, below Google first lists issues
of law that must be resolved by the Court, then lists all other issues that remain to be litigated at
trial. Should the Court determine that any issue identified is more properly considered an issue
of fact, it shall be so considered and Google incorporates it be reference into its list of contested
facts to be litigated. Google reserves the right to revise, modify, supplement, or change the
issues of law to be litigated in light of any pretrial rulings by the Court and/or in light of any
further identification of issues of law and fact by PUM and/or to address any additional issues,
arguments, evidence or other developments in the case, including pending and anticipated
motions, and similar developments.
Issues of Law to Be Litigated at Trial and Decided by the Court
A.

Invalidity
Whether the Asserted Claims of the patents-in-suit are invalid as obvious.
(a)

B.

Authorities: 35 U.S.C. § 103 ; KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 (2007); Perfect Web Technologies, Inc. v. InfoUSA, Inc.,
587 F.3d 1324 (Fed. Cir. 2009). In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000) (Obviousness is a question of law, based on
underlying facts. ). Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966) (To determine obviousness, a court must
consider: (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the
level of ordinary skill in the art; and (4) any relevant secondary
considerations, such as commercial success, long felt but unsolved
needs, and the failure of others.)

Standing
Whether PUM lacks standing to sue because it failed to join as plaintiffs all co-owners of
the patents-in-suit, including Google.
(a)

Authorities: 35 U.S.C. § 262; Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456, 1467 (Fed. Cir. 1998) (“an action for [patent]
infringement must join as plaintiffs all co-owners.”).

1

C.

Contract Interpretation
Google understands that the Court has ruled that the issue of contract interpretation is an
issue of fact for the jury. (See D.I. 521; D.I. 537.) In particular, Google understands that
the Court has found that the issue of interpretation of the word “conceived” is an issue of
fact to be decided by the jury. Google does not agree that PUM has introduced any
conflicting extrinsic evidence or that the jury should decide this issue, but Google seeks
confirmation that the Court has ruled on this matter. (See also Exhibit 19.)
(a)

D.

Authorities: Winet v. Price, 4 Cal. App. 4th 1159, 1166 (4th Dist.
1992) (“[W]hen the competent parol evidence is not conflicting,
construction of the instrument is a question of law”); Scheenstra v.
Cal. Dairies, Inc., 213 Cal. App. 4th 370, 390 (5th Dist. 2013)
("Even where uncontroverted evidence allows for conflicting
inferences to be drawn, our Supreme Court treats the interpretation
of the written contract as solely a judicial function."); Tautges v.
Global Datacenter Mgmt., Inc., No. 09-785, 2010 WL 3384980, *3
(S.D. Cal. Aug. 26, 2010) (“If no parol evidence is introduced to
interpret the contract, or if the evidence is not contradictory, the
trial court's resolution of the ambiguity is a question of law.”); Cal.
Civ. Code §§ 1636, 1643, 1644, and 1649; Elec. Electronic
Control, Inc. v. L.A. Unified School Dist., 126 Cal. App. 4th 601,
612 (2d Dist. 2005) (construing contracts requires “examining the
words the parties have chosen [,] giving effect to the ordinary
meaning of those words.”); AT&T v. Integrated Network Corp.,
972 F.2d 1321, 1324 (Fed. Cir. 1992) (“We disagree with the
district court that conception of inventions, as used in the
employment agreement, is solely a technical question of patent law
. . . the contract may have used conception in its generic, broadest
sense.”).

Laches
Whether the relief Google seeks for its counterclaims for a declaration of Google’s rights
as co-owner, breach of contract, conversion, and constructive trust, is barred by the
doctrine of laches. Any factual or legal determinations relevant to laches should be
determined by the Court.

2

(a)

Authorities: Whittington v. Dragon Group, L.L.C., 991 A.2d 1, 8
(Del. 2009) (“laches generally requires proof of three elements:
first, knowledge by the claimant; second, unreasonable delay in
bringing the claim; and third, resulting prejudice to the
defendant.”) (internal quotation marks omitted).

E.

Remedies

1.

Whether Google is entitled to a declaration that it is a rightful co-owner of the '040 or
'276 patents.
(a)

2.

Authorities: 28 U.S.C. §§ 2201-2202.

Whether a constructive trust should be imposed against Yochai Konig and PUM, to
compel transfer of '040 and '276 patent title from its wrongful holder (PUM) to its
rightful holder (Google).
(a)

Authorities: Campbell v. Superior Court, 132 Cal. App. 4th 904,
920 (4th Dist. 2005) ("A constructive trust is an involuntary
equitable trust created by operation of law as a remedy to compel
the transfer of property from the person wrongfully holding it to
the rightful owner."); Grove v. Grove Valve & Regulator Co., 4
Cal. App. 3d 299 (1970); In re Bake-Line Group, LLC, 359 B.R.
566, 574 (Bkrtcy D. Del. 2007) ("Where a person holding title to
property is subject to an equitable duty to convey it to another on
the ground that he would be unjustly enriched if he were permitted
to retain it, a constructive trust arises."); U.S. v. Dubilier
Condenser Corp., 289 U.S. 178 (1933) ("A patent is property, and
title to it can pass only by assignment. If not yet issued, an
agreement to assign when issued, if valid as a contract, will be
specifically enforced.")

Additional Issues to be Litigated at Trial
A.

Infringement

1.

Whether Google’s Accused Products literally infringe any of the asserted claims of the
'040 or '276 patents.
3

(a)

2.

Authorities: 35 U.S.C. § 271; Broadcom Corp. v. Qualcomm Inc.,
543 F.3d 683, 696 (Fed. Cir. 2008) (jury must examine the
evidence to determine whether the accused product infringes the
properly construed claims); Warner-Lambert Co. v. Teva Pharms.
USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir. 2005)
(infringement must be proven by a preponderance of the evidence);
Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836,
842 (Fed. Cir. 1999) (a patentee must “prove that the accused
product or process contains, either literally or under the doctrine of
equivalents, every limitation of the properly construed claim”);
Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1468-69
(Fed. Cir. 1993) (upholding lower court’s finding of
noninfringement based on plaintiff’s failure to prove that the
accused product met all of the claimed requirements); Kim v.
ConAgra Foods, Inc., 465 F.3d 1312, 1316, n.1 (Fed. Cir. 2006)
(dependent claims not infringed when independent claim not
infringed); MicroStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344,
1352-53 (Fed. Cir. 2005) (no literal infringement where accused
product did not contain every element of the claim); Cross Med.
Prods. v. Medtronic Sofamor Danek, 424 F.3d 1293, 1309-11 (Fed.
Cir. 2005) (no direct infringement where accused product did not
include each claim limitation); Netword, LLC v. Centraal Corp.,
242 F.3d 1347, 1353-54 (Fed. Cir. 2001) (no literal infringement
where all of the elements of the claim not present in the accused
system); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1550
(Fed. Cir. 1983) (no infringement of an invalid patent).

Whether Google’s Accused Products infringe any of the asserted claims of the '040 or
'276 patents under the doctrine of equivalents.
(a)

Authorities: Equivalence to a claim limitation depends on
"whether the substitute element matches the function, way, and
result of the claimed element, or whether the substitute element
plays a role substantially different from the claimed element."
Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 40
(1997). Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir.
1998) ("If a theory of equivalence would vitiate a claim limitation,
however, then there can be no infringement under the doctrine of
equivalents as a matter of law."); Overhead Door Corp. v.
Chamberlain Group, Inc., 194 F.3d 1261 (Fed. Cir. 1999)
(infringement by equivalents is only appropriate where the accused
structure “performs substantially the same function in substantially
the same way to achieve substantially the same result as does the”
missing element); Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d
394, 398 (Fed. Cir. 1994) (doctrine of equivalents cannot be used
as a pretext to extend or enlarge claim scope or to ignore claim
4

limitations; “[i]n short, the concept of equivalency cannot embrace
a structure that is specifically excluded from the scope of the
claims.”); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314,
1331-34 (Fed. Cir. 2001) (“The question of insubstantiality of the
differences is inapplicable if a claim limitation is totally missing
from the accused device.”). Zygo Corp. v. Wyko Corp., 79 F.3d
1563, 1569 (Fed. Cir. 1996) (“A finding of equivalency just
because the same result is achieved is a flagrant abuse of the term
‘equivalent.’”); Zodiac Pool Care, Inc. v. Hoffinger Indus., 206
F.3d 1408, 1417 (Fed. Cir. 2000) (not proper to “reduce the claims
to nothing more than ‘functional abstracts, devoid of meaningful
structural limitations on which the public could rely.’”) (citations
omitted); Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d
1338, 1345 (Fed. Cir. 2006) (application of doctrine of equivalents
not appropriate “where the accused device contain[s] the antithesis
of the claimed structure.”); Freedman Seating Co. v. Am. Seating
Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005) (“[A]n element … is
not, as a matter of law, equivalent … if such a finding would
entirely vitiate [a] limitation.”); The Johns Hopkins Univ. v.
Datascope Corp., 543 F.3d 1342, 1348, n3 (Fed. Cir. 2008) (“FDA
equivalence is irrelevant to patent law because it involves
fundamentally different inquiries”); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc. (doctrine of equivalents cannot
recapture subject matter “specifically identified, criticized, and
disclaimed”); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd., 535 U.S. 722, 734 (2002) (presence of amendment
triggers presumption that application of the doctrine of equivalents
is precluded, because when patentee responds to “[a] rejection by
narrowing his claims, [the] prosecution history estops him from
later arguing that the subject matter covered by the original,
broader claim was nothing more than an equivalent.”); Southwall
Techs, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir.
1995) (whether application of the doctrine of equivalents is
restricted is a question of law).
3.

PUM includes in Exhibit 4 law regarding inducement of infringement. PUM did not
disclose in discovery that it contends Google induces infringement, or any facts to
support such a claim. Thus, it should be precluded from pursuing a claim of indirect
infringement at trial.

5

B.

Invalidity

1.

Whether the Asserted Claims of the patents-in-suit are invalid as anticipated under 35
U.S.C. § 102.
(a)

Authorities: 35 U.S.C. § 102; Verdegaal Bros., Inc. v. Union Oil
Co. of Cal., 814 F.2d 628 (Fed. Cir. 1987) ; In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994) (to be anticipating, a prior-art
reference must disclose “each and every limitation of the claimed
invention[,] ... must be enabling[,] and [must] describe ... [the]
claimed invention sufficiently to have placed it in possession of a
person of ordinary skill in the field of the invention.”); Helifix, Ltd.
v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000) (where a
reference “‘does not expressly disclose in words’ one or more
elements of a patent claim[, the reference can] nevertheless be
anticipating if one of ordinary skill in the art would understand the
[reference] as disclosing [the missing elements] and if such person
could have combined the [reference’s] description of the invention
with his own knowledge to make the claimed invention.”); In re
Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“[P]ossession is
effected if one of ordinary skill … could have combined the
publication’s description of the invention with his own knowledge
to make the claimed invention.”); Microsoft Corp. v. i4i Ltd.
P’ship, 564 U.S. ___, 131 S. Ct. 2238, 2245-46, 2249-50 (2011)
(“Nothing in § 282’s text suggests that Congress meant ... to enact
a standard of proof that would rise and fall with the facts of each
case”; fact that references were previously before the PTO goes
only to the weight the court or jury might assign them; “if the PTO
did not have all material facts before it, its considered judgment
may lose significant force … concomitantly, the challenger’s
burden to persuade the jury of its invalidity defense by clear and
convincing evidence may be easier to sustain.”); Sciele Pharma
Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012) (
“reasonable to give more weight to new arguments or references
… not explicitly considered by the PTO”).

C.

Issues Concerning Breach of Contract, Ownership, Conversion, and Constructive
Trust

1.

Whether Yochai Konig breached his Employment Agreement with SRI.
(a)

Authority: Abdelhamid v. Fire Ins. Exch., 182 Cal.App.4th 990,
999 (3d Dist. 2010) (“The standard elements of a claim for breach
of contract are (1) a contract, (2) plaintiff's performance or excuse
for nonperformance, (3) defendant's breach, and (4) damage to
plaintiff therefrom.”); Cal. Labor Code § 2870; Cadence Design
6

Sys., Inc. v. Bhandari, 2007 WL 3343085, *5 (N.D. Cal. Nov. 8,
2007) (“[T]here are three independent scenarios in which an
agreement assigning an invention to an employer is enforceable
under section 2870: (1) The invention was developed using the
employer's time or resources; or (2) The invention relates to the
employer's business or actual or demonstrably anticipated research
or development; or (3) The invention resulted from work
performed by the employee for the employer.”); Cubic Corp. v.
Marty, 185 Cal. App. 3d 438, 451 (4th App. Dist. 1986).
2.

Whether Yochai Konig and PUM unlawfully converted SRI’s and Google’s interest in
the '040 or '276 patents.
(a)

3.

Authorities: Spates v. Dameron Hosp. Assn., 114 Cal.App.4th 208,
221 (3d Dist. 2003) ("Conversion is the wrongful exercise of
dominion over the property of another. The elements of a
conversion are the plaintiff's ownership or right to possession of
the property at the time of the conversion; the defendant's
conversion by a wrongful act or disposition of property rights; and
damages.")

Whether PUM or its predecessors-in-interest are good faith purchasers under 35 U.S.C.
§ 261.
(a)

4.

Authorities: 35 U.S.C. § 261; Filmtec Corp. v. Allied-Signal Inc.,
939 F.2d 1568, 1573 (Fed. Cir. 1991); Rhone Poulenc Agro, S.A. v.
DeKalb Genetics Corp., 284 F.3d 1323 (Fed. Cir. 2002).

Whether the statute of limitations on Google’s breach-of-contract, ownership, conversion,
and/or constructive trust claims was tolled under Delaware Code Title 10, Section 8117.
(a)

Authorities: 10 Del. C. § 8117; Saudi Basic Indus. Corp. v. Mobil
Yanbu Petrochem. Co., Inc., 866 A.2d 1, 18 (Del. 2005) (“It is
settled law that the purpose and effect of Section 8117 is to toll the
statute of limitations as to defendants who, at the time the cause of
action accrues, are outside the state and are not otherwise subject
to service of process in the state. In those circumstances, the
statute of limitations is tolled until the defendant becomes
amenable to service of process.”)

7

5.

Whether the statute of limitations on Google’s breach-of-contract, ownership, conversion,
and/or constructive trust claims was tolled under the discovery rule.
(a)

Authorities: Wal-Mart Stores, Inc. v. AIG Life Ins. Co., 860 A.2d
312, 319 (Del. 2004) ("Under the ‘discovery rule’ the statute is
tolled where the injury is ‘inherently unknowable and the claimant
is blamelessly ignorant of the wrongful act and the injury
complained of.'")

8

EXHIBIT 6

EXHIBIT 6
WITNESSES PUM EXPECTS TO CALL AT TRIAL
PUM identifies the following witnesses whom it expects to call live or by deposition at
trial (both in their individual capacity, and as Rule 30(b)(6) designees if applicable).
Determinations as to which witnesses will be called, and whether they will be called live or by
deposition, will be made in accordance with the guidelines agreed to by the parties and those
implemented by the Court. This list is not a commitment that any of the witnesses listed are
available or will appear for trial. If any of these witnesses whom PUM intends to call live at trial
become unavailable, PUM may call them by deposition or call a substitute witness. If any of the
Google’s witnesses fail to appear for trial, PUM reserves the right to use their deposition
testimony. PUM also reserves the right to call any witness called by Google and any witness on
Google’s list of trial witnesses.
PUM reserves the right to call: (1) additional witnesses to provide foundation testimony
should Google contest the authenticity or admissibility of any materials to be proffered at trial;
(2) any witness identified by Google on its witness list; (3) substitute witnesses, to the extent that
the employment status of any witness changes or a witness otherwise becomes unavailable for
trial; (4) additional witnesses to respond to issues raised by the Court’s pretrial or trial rulings or
to issues raised after the submission of this list, such as testimony of witnesses who have not yet
been deposed; and (5) any witness live for impeachment purposes or for rebuttal for good cause
shown.
Plaintiffs may read the transcript or show videotapes (if applicable) of any designated
portions of deposition testimony.

EXPERT WITNESSES
PUM intends to call the following expert witnesses live at trial. PUM reserves the right
to call any expert witness identified in Google’s witness list. The subject matter of the testimony
of each of the following expert witnesses and their specialties are set forth in their respective
expert reports served in this case:
Name

Address

Michael Pazzani

2186 Ravencrest Court
Riverside, CA 92506
6501 Bartlett Street
Pittsburgh PA, 15217

Jaime Carbonell

OTHER WITNESSES PUM MAY CALL AT TRIAL
LIVE OR BY DEPOSITION
Name

Address

LIVE / BY DEPOSITION

Yochai Konig

Live

Michael Berthold

By deposition

Onn Brandman

By deposition

David Konig

By deposition

Jonathan Alferness*

Live/by deposition

Cedric Dupont*

Live/by deposition

Greg Friedman*

Live/by deposition

Karthik Gopalratnam*

Live/by deposition

Taher Haveliwala*

Live/by deposition

Bryan Horling*

Live/by deposition

Rebecca Illowsky*

Live/by deposition

Glen Jeh*

Live/by deposition

Andras Nemeth*

Live/by deposition

Bilgehan Oztekin*

Live/by deposition

Shankar Ponnekanti*

Live/by deposition

Max Ventilla*

Live/by deposition

Aitan Weinberg*

Live/by deposition

Oren Zamir*

Live/by deposition

Douglas Bercow

By deposition

Horacio Franco

By deposition

Frank Montes

By deposition

Ray Perrault

By deposition

Mustafa Somnez

By deposition

Andreas Stolcke

By deposition

*These witnesses will be called live to the extent he/she appears at trial, otherwise he/she will
appear by deposition.

EXHIBIT 7

EXHIBIT 7 TO PRETRIAL ORDER
WITNESSES GOOGLE EXPECTS TO CALL AT TRIAL
EXPERT WITNESSES
Google intends to call the following expert witnesses live at trial. Google reserves the right to
call any expert witness identified in PUM’s witness list. The subject matter of the testimony of
each of the following expert witnesses and their specialties are set forth in their respective expert
reports served in this case:
Name
Ed Fox

Address
203 Craig Drive
Blacksburg, VA 24060
Department of Electrical Engineering and
Computer Science
University of California
387 Soda Hall #1776
Berkeley, CA 94720-1776

Michael Jordan

OTHER WITNESSES GOOGLE MAY CALL AT TRIAL LIVE OR BY DEPOSITION
Name
Jonathan Alferness
Reuben Benquesus
Cedric Dupont
Greg Freidman
Karthik Gopalratnam
Bryan Horling
Rebecca Illkowsky
Matthew Montebello
Andras Nemeth
Bilgehan Uygar Oztekin
Shankar Ponnekanti
Max Ventilla
Aitan Weinberg
Oren Zamir
Jack Benquesus (a.k.a. Jack Banks)
Yochai Konig
Michael Pazzani
Roy Twersky
Horacio Franco

Live/By Deposition
Live
Live
Live
Live
Live
Live
Live
Live
Live
Live
Live
Live
Live
Live
Live or By Deposition
Live or By Deposition
Live or By Deposition
Live or By Deposition
Live or By Deposition
By Deposition
By Deposition
By Deposition

Doron Aspitz
Douglas Bercow
Michael Berthold

1

Phillip Black
Onn Brandman
Ari Gal
Ron Jacobs
Glen Jeh
David Konig
Frank Montes
Raymond Perrault
James Salter
Mustafa Kemal Sonmez
Andres Stolcke

By Deposition
By Deposition
By Deposition
By Deposition
By Deposition
By Deposition
By Deposition
By Deposition
By Deposition
By Deposition
By Deposition

2

EXHIBIT 8

EX. 8 - PUM’S DEPOSITION DESIGNATIONS
EXHIBIT 8
PUM’S DEPOSITION DESIGNATIONS
PUM hereby submits its deposition designations with Google’s counter designations, and PUM’s objections to such counter
designations.
The parties incorporate by reference designations of any errata pertinent to the excerpts of the deposition transcripts designated by
PUM, counter designated by Google, or counter-counter designated by PUM.
Google's objections are identified with the following abbreviations:
General Objections:

Form Objections:

R – Relevance, 402

L – Leading

P – Fed. R. Evid. 403: Prejudicial

ARG – Argumentative

H – Hearsay

A – Assuming Facts Not in Evidence

F – Lacks Foundation

C – Compound

I – Incomplete

N – Narratives

V – Vague and ambiguous

M – Misstates Testimony

S – Beyond the scope of Rule 30(b)(6) deposition topics

AA—Asked and Answered

LC – Legal Conclusion
ET – calls for expert testimony

MIS – misleading
IC – improper counter
NR – non-responsive
IH – incomplete hypothetical
SP – speculation
SN – Fed. R. Evid. 408, Settlement Negotiations

Google further notes that some of the designated testimony may be inadmissible based upon the Court's rulings on its motions in
limine, or by narrowing by PUM of the scope of its case. By way of example, certain testimony designated by PUM may be irrelevant if
PUM drops asserted claims or accused products and Google reserves the right to object to such designated testimony.

2

Alferness, Jonathan - 3/24/2011
Plaintiff's
Designations

6:15 to 6:16
7:17-19
11:25 to 12:24
17:18 to 18:11
22:20 to 23:6
24:20 to 25:10
25:23 to 28:19
33:10 to 34:8
34:11 to 34:21
35:10 to 37:25
38:2 to 38:7
55:21 to 56:9
56:25 to 57:24
58:6 to 58:25
60:16 to 60:18
62:15 to 62:19
62:25 to 64:10
73:1 to 75:20
75:23 to 76:20
77:4 to 77:7
77:11 to 78:11

Defendant's
Objections to
Plaintiff's
Designations

Defendant's
Counter
Designations to
Plaintiff's
Designations

I
R, P

18:12

F, I

Plaintiff's Objections to Defendant's
Counter-Designations

60:19-22

3

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

83:13 to 84:7
84:11 to 86:18
97:21 to 98:10
101:13 to 101:22
115:12 to 116:9
117:6 to 117:11

Defendant's
Objections to
Plaintiff's
Designations

Defendant's
Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections to Defendant's
Counter-Designations

R, I

4

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Bercow, Douglas 4/14/2011
Plaintiff's
Designations

8:1 to 8:3
8:8 to 8:10
15:4 to 19:1
19:21 to 20:18
23:10 to 25:21
26:15 to 28:11
34:4 to 34:18
38:9 to 39:12
55:2 to 55:17
55:21 to 56:15

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

R
F
28:12-18
R
R, SP, F
SP, F, R

5

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Berthold, Michael - 1/23/2011
Plaintiff's
Designations

6:8 to 6:13
9:8-11
9:16 to 10:4
12:20 to 12:24
13:23 to 14:4
14:16 to 15:5
19:5 to 19:8
19:12 to 20:13
31:13 to 31:16
31:19 to 31:21
31:24 to 32:21
36:9 to 36:11
39:20 to 39:23
40:1 to 40:11
41:13 to 41:14
41:17 to 41:24
49:15 to 50:22
50:25 to 52:11
56:8 to 56:11
63:11 to 63:15
65:7 to 66:2

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I

9:11

I

16:5-9

L, R, P, F, M, IC, MIS

I
I

32:22-33:14

S

I
ET, R, P

41:4-11

L, E, T, ARG, IC

P, I, ET, R
ET
ET, I
I
R, P

6

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

66:5 to 67:12
76:17-18
78:4
78:8 to 78:22
85:5 to 86:9
86:12 to 86:13
86:18 to 86:20
86:23 to 87:11
167:5 to 168:20
169:4 to 169:13
172:6 to 173:7
177:2 to 177:21
177:23 to 178:1
178:3 to 178:21
178:23 to 178:25

Defendant's
Objections to
Plaintiff's
Designations
I

Defendant's Counter
Designations to
Plaintiff's
Designations
69:6-9

I

Plaintiff's Objections
to Defendant's
Counter-Designations

77:3-18

L, ET, ARG, M, IC,
MIS

R
R
V, F
R, P
F, V, R, P

7

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Brandman, Onn - 3/16/2011
Plaintiff's
Designations

3:35 to 4:2
6:21 to 7:20
8:23 to 9:8
9:12 to 9:23
10:13 to 11:21
16:2-4
17:15 to 19:20
20:18 to 21:14
22:2-3
23:4 to 23:9
23:11 to 25:3
32:20 to 33:20

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

11:22-12:23, 21:1522:3

V/A, ET, L, ARG, S,
IC

19:21-24
20:5-17

S, R

35:23-36:12

S, M, R, I

8

Plaintiff’s Countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

37:8-16

P, R, I

Dupont, Cedric - 4/14/2011
Plaintiff's
Designations

6:24 to 7:4
8:17-19
11:3 to 12:16
14:3 to 15:8
17:7 to 17:13
18:18 to 19:5
22:9 to 23:6
24:1 to 24:17
25:10 to 26:2
28:7 to 28:22
29:12 to 31:18
35:18 to 36:17
37:18 to 38:6
38:15 to 39:5
39:9 to 40:12
41:24 to 42:19
44:9 to 45:5
45:9 to 45:13
45:22 to 46:5
48:24 to 50:10
51:10 to 55:2
64:22 to 65:2

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I
R, P
R, P

21:24-22:6

I

R, P
R, P
R, P
R, P
R, P
R, P
R, P
R, P
R, P
I
I, R, P

47:2-5, 50:11-23
51:5-9

9

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

66:12 to 67:12
67:18 to 67:25
68:3 to 68:8
70:7 to 71:1
74:13 to 74:24
76:1 to 76:8
84:12 to 85:8
85:18 to 86:12
106:11 to 107:21

I, R, P
R, P
R, P
R, P
R, P
R, P

68:12-25

10

Franco, Horacio 4/14/2011
Plaintiff's
Designations

6:7 to 6:9
6:11 to 6:18
16:11 to 16:21
43:10 to 46:10
54:24 to 55:21
61:17 to 62:5
66:6 to 66:13
74:17 to 75:1
102:23 to 103:23

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

66:14-21

R, UFP

R

ET
ET, SP

11

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Friedman, Greg - 3/7/2011
Plaintiff's
Designations

Defendant's
Objections to
Plaintiff's
Designations

9:12 to 9:16
12:7-9
18:2 to 18:15
19:10 to 19:20
19:22 to 19:23
24:25
25:1 to 25:2
25:4 to 26:9
26:13
26:15 to 27:19
30:18 to 31:8
37:22 to 38:15
49:19 to 51:3
52:9 to 55:23
55:25 to 59:6
60:14 to 60:22
69:13-18
69:25-70:13
72:14 to 74:23
75:2 to 75:12
77:1 to 77:24

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I

I

30:14-16

R
I

59:7-60:13

12

Defendant's
Objections to
Plaintiff's Countercounter-Designations

IC

18:16-17
19:25-20:9

Plaintiff’s Countercounter-designations

20:12-14, 20:16-22:1,
26:24-27:19

ARG
R, P, IC

Plaintiff's
Designations

78:1 to 78:20
79:16 to 80:7
80:14 to 81:10
84:24 to 85:3
85:11 to 86:22
87:9 to 87:11
88:10 to 88:14
88:22 to 89:9
89:11 to 90:2
124:8 to 126:13
126:24 to 127:8
127:17 to 128:23
129:25 to 132:23
138:17 to 139:7
140:8 to 141:6
146:13 to 148:25
149:2 to 149:11
176:12 to 178:7

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

85:4-10

88:16-20

127:9-13

S

I

13

Plaintiff’s Countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Gopalratnam, Karthik - 10/8/2010
Plaintiff's
Designations

11:11 to 11:19
11:24 to 12:5
12:20-21
13:2 to 13:4
13:12-15
14:21 to 16:1
16:20-18:7
19:10-16
20:3-10
20:17-21:5
21:18 to 22:14
22:16 to 22:25
23:3 to 23:20
23:22 to 24:10
24:12 to 24:14
26:15 to 26:19
27:16 to 28:5
28:17 to 30:5
30:14-16
30:23-31:1
32:2 to 33:3
33:5 to 33:12

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

19:19-21

R

31:2-8, 31:12-32:1

R

R

L, F
L, F

R, ARG
14

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

33:17 to 34:1
34:3 to 34:24
35:1 to 35:3
36:14 to 38:12
38:19 to 40:17
41:4 to 41:7
43:16 to 43:22
45:14 to 45:25
47:8 to 47:10
47:15 to 48:6
55:12 to 57:4
57:8 to 58:9
58:18 to 59:23
59:15 to 61:7
62:10 to 65:10
65:16 to 65:20
65:25 to 66:5
66:11 to 66:19
66:25 to 69:3
69:18 to 70:14
72:5 to 72:24
73:14 to 73:24
74:10 to 75:20
77:7 to 78:15

Defendant's
Objections to
Plaintiff's
Designations
C, ARG, V

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

48:7-15

R, S

58:10-17

78:16-22
15

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

79:6 to 79:15
80:7 to 81:7
81:10 to 82:12
83:2 to 83:14
83:21-24
84:6 to 87:10
87:19-21
87:24-25
88:1-24
90:1 to 90:19
91:14 to 92:3
92:12 to 93:20
93:21 to 94:14
94:18 to 96:1
96:2 to 96:4
96:6 to 96:14
96:16 to 96:20
97:2 to 97:15
99:16 to 99:18
99:24 to 100:21
102:10 to 103:8
106:4 to 107:19
113:1 to 114:5
116:10 to 117:25

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

R, P
I

87:17-18

97:16-21, 97:23-98:25

108:2-109:3
112:15-25

R

16

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

Defendant's
Objections to
Plaintiff's
Designations

122:6 to 122:16
124:13 to 125:1
126:21 to 127:16
129:18 to 130:4
130:12-18
131:10-24
136:6 to 138:9
144:25 to 145:18
163:14 to 164:16
164:20 to 165:7
168:2-10
170:9 to 171:15
185:9 to 185:20
186:12 to 186:14
193:22 to 194:14
198:6-15
203:1 to 210:25
214:12-21
215:13-17
217:7-16
218:4 to 220:25

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

126:11-20, 127:17-20

120:4 -23

Defendant's Counter
Designations to
Plaintiff's
Designations
119:23-120:3, 120:24121:1, 121:3-16,
121:18-122:5
122:17-124:12

S, ET, IC

127:21-24

R, P

I

R
R, I

170:6-8

195:12-14
197:12-198:5
I

217:3-6

17

Plaintiff's
Designations

227:8 to 232:1
246:1-16
248:25 to 249:6
249:12 to 250:8

Defendant's
Objections to
Plaintiff's
Designations
R

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

18

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Haveliwala, Taher - 4/19/2011
Plaintiff's
Designations

12:15 to 12:18
13:6 to 13:18
14:4 to 14:9
14:23-15:5
16:5 to 16:15
16:21 to 17:5
19:17 to 20:13
20:21 to 20:22
20:24 to 21:10
22:13 to 22:15
22:19 to 22:24
23:4 to 23:7
23:12 to 23:21
25:15 to 25:16
25:18 to 25:22
25:24 to 26:20
27:12 to 29:1
29:18 to 30:20
31:6 to 31:18
31:6 to 33:20
33:22 to 34:16
34:18 to 35:25

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

R, P
F, V, SP, R, P
R, P
R, P
R, P
N, V, F, R, D
N, V, R, P
R, P
V, ARG, R, P
R, P, V, R
R, P, ARG, V
R, V, IH, V, C
R, V, C
19

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

36:2 to 36:14
40:14 to 40:16
40:18 to 41:19
41:21 to 42:1
42:3 to :42:18
42:20 to 43:2
43:4 to 43:6
43:10 to 43:12
43:14 to 44:3
45:2 to 45:5
45:7 to 47:1
48:4 to 48:9
48:11 to 49:2
49:4 to 49:23
49:25 to 51:16
51:20 to 54:19
54:23 to 55:17
60:17 to 61:7
61:10 to 61:14
61:16 to 61:20
62:15 to 62:16
62:18 to 63:1
63:25 to 64:3
64:17 to 64:18

Defendant's
Objections to
Plaintiff's
Designations
R
I, V, F
I
V, F, I
V

Defendant's Counter
Designations to
Plaintiff's
Designations

I, V, P, R
P, R

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

44:5-45:1

58:13-60:4

V

40:20-41:1
41:17-20

P, R, V, MIS
V
P, R
P, R, V
P, R, I

I
55:18-56:23, 58:1-6

C, V
V, I
I

64:4-16

20

Plaintiff's
Designations

65:2 to 66:8
69:15 to 70:3
71:1 to 71:5
72:24 to 73:5
73:7 to 73:18
74:1 to 74:2
74:4 to 74:10
74:12 to 75:12
76:6 to 76:15
76:17
79:2 to 79:8
79:10 to 80:15
80:17 to 81:11
82:15 to 82:25
83:19 to 83:22
83:24 to 84:13
86:4 to 86:10
86:14 to 87:2
87:4 to 88:5
125:16 to 126:1

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

V
V

C, V

I

C
I

88:22-89:8

21

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Horling, Bryan C. 11/12/2010
Plaintiff's
Designations

11:10 to 11:13
12:17-19
13:8-11
13:20-14:9
14:24 to 15:2
16:11 to 16:21
16:24 to 17:15
19:22 to 20:10
21:23 to 22:24
23:5 to 23:12
24:4 to 24:25
25:3 to 25:19
25:22 to 26:7
27:19 to 28:9
30:13 to 32:20
32:25 to 34:1
34:7 to 34:9
35:11 to 35:14
35:20 to 35:25
36:17 to 36:21
37:2 to 38:1
38:12 to 39:9

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I
I

17:16-18:20
21:5-14

I

30:7-10

I

34:10-35:8

I

Plaintiff's Objections
to Defendant's
Counter-Designations

39:10-22
22

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

39:23 to 40:15
40:22 to 41:2
42:16 to 45:14
46:1 to 47:16
47:18
47:23 to 48:5
48:16 to 48:22
49:1 to 49:7
50:4 to 50:24
51:7 to 51:20
52:8 to 52:11
52:13 to 52:14
52:17 to 53:11
54:14 to 54:19
55:12 to 56:1
56:17 to 56:19
56:21 to 56:22
57:4 to 57:24
58:2 to 58:18
58:25 to 59:10
63:13 to 63:20
64:20 to 66:11
67:15 to 68:22
69:16 to 69:19
69:25 to 70:2
70:5 to 70:16
71:2 to 71:3

Defendant's
Objections to
Plaintiff's
Designations
I
I

Defendant's Counter
Designations to
Plaintiff's
Designations
40:16-21
41:3-23
45:15-25

V, A, M, I

47:19-22

I

51:21-52:7

I
I
I, R
V
I

53:20-23
54:10-13, 54:20-21
55:10-11

I

60:7-10, 62:4-8

I
I

Plaintiff's Objections
to Defendant's
Counter-Designations

70:3-4
70:17-6

56:23-25

23

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

74:14 to 74:21
75:7 to 75:13
75:16 to 75:17
75:21 to 76:2
76:9 to 76:15
76:23 to 77:21
78:20 to 79:7
79:15 to 81:6
81:25 to 82:20
83:5 to 83:25
84:7 to 84:9
84:13 to 84:20
85:20 to 86:4
86:17 to 86:25
87:6 to 87:9
99:2 to 99:17
102:3 to 103:15
109:6 to 109:17
115:1 to 115:7
119:4 to 119:12
119:24 to 120:25
121:8 to 121:12
121:16 to 121:18
122:2 to 122:7
122:25 to 123:10
123:19 to 123:23
127:12 to 127:18
127:22 to 128:5

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I

76:3-8

S

I

79:8-14

I

81:12-24

I
I

84:21-85:4
85:10-19

I

87:1-5

I

119:13-23
122:16-17, 122:20-24

I
I
I
I

123:11-15
123:24-124:2
127:19-21
128:6-15
24

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

128:16 to 129:1
129:25 to 130:9
132:9 to 133:12
135:14 to 135:22
136:4 to 136:7
136:13 to 136:19
141:16 to 141:18
141:24 to 142:1
142:16 to 142:19
143:9 to 143:14
143:17 to 144:7
144:18 to 146:7
147:5 to 148:7
148:21 to 149:4
149:13 to 149:20
149:24 to 150:3
150:14 to 152:12
152:16 to 153:18
154:16 to 154:22
155:21-23
171:13 to 171:20
172:12 to 173:3
173:8 to 173:20
195:25 to 196:2
212:6 to 212:7
212:11 to 212:22
239:1 to 239:6
241:9 to 241:18

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

R, P
R, I

Plaintiff's Objections
to Defendant's
Counter-Designations

133:13-24

144:8-17

I

149:5-12
149:21-23

I

154:23-155:7

I
R, P, I
I
R, P

212:23-213:7

I

25

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Source code
transcript
157:14 to 157:18
158:8 to 158:13
158:24 to 159:4
159:8 to 159:11
159:14 to 160:13

26

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Illowsky, Rebecca Maxine 3/22/2011
Plaintiff's
Designations

8:14 to 8:15
9:8-10
10:4 to 10:17
10:18 to 11:10
11:23 to 13:1
14:4 to 14:11
16:10 to 14:18
16:23 to 17:2
17:3 to 18:12
19:11 to 20:18
21:14 to 23:15
24:10 to 24:18
25:5 to 25:13
26:5 to 26:13
28:19 to 30:12
31:9 to 33:3
34:11 to 34:20
35:14 to 36:23
40:22 to 41:5
44:3 to 44:24
50:1 to 51:10
53:24 to 54:5

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I
14:12-14

I

18:13-19:10

I

23:16-18

R

I

53:8-23
27

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

56:23 to 57:11
61:7 to 61:9
61:11 to 62:8
65:6 to 66:14
66:22 to 67:12
67:17 to 68:5
68:15 to 68:17
69:2 to 71:3
71:13 to 71:15
71:22 to 72:1
77:24 to 78:15
86:9 to 87:19
87:23 to 88:11
88:13 to 89:5
89:11 to 91:7
91:9 to 91:25
92:15 to 92:19
93:4 to 93:12
94:10 to 94:12
96:14-15
96:19-21
99:7 to 99:25
101:15 to 101:23
102:1 to 102:3

Defendant's
Objections to
Plaintiff's
Designations
I

Defendant's Counter
Designations to
Plaintiff's
Designations
57:12-13

I
I

71:5-12
72:2-4

R, I

87:21

I
V
A, V

89:7-10

I

98:3-5

I

Plaintiff's Objections
to Defendant's
Counter-Designations

102:4-103:1

Defendant's
Objections to
Plaintiff's Countercounter-Designations

103:2-9
28

Plaintiff’s countercounter-designations

V, P, IC

Plaintiff's
Designations

114:20 to 115:18
115:20 to 115:24
116:1 to 116:15
116:21 to 116:22
116:24 to 117:7
117:9 to 117:14
117:16 to 117:25
118:1 to 120:8
130:25 to 131:7
135:17 to 136:20
147:7 to 147:21
156:1 to 156:21
157:1 to 157:17
157:20 to 157:22
157:24 to 159:24
165:2 to 165:23

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I

Plaintiff's Objections
to Defendant's
Counter-Designations

116:16-19

R, I, V, C
I
I, R
R

R, V, A

29

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Jeh, Glen 2/14/2011
Plaintiff's
Designations

12:14 to 12:17
13:16-22
16:9 to 17:2
17:11 to 18:22
18:25
19:5 to 19:20
19:25 to 20:20
22:9 to 22:25
23:6 to 23:20
23:24 to 24:23
25:4 to 25:23
26:25 to 27:20
27:25 to 28:12
28:15 to 29:9
29:23 to 30:19
31:9 to 31:12
31:14 to 31:20
32:4 to 32:6
32:8 to 32:24
33:5 to 33:8
33:10 to 33:18
33:20 to 34:15

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

R, P
R, P

Plaintiff's Objections
to Defendant's
Counter-Designations

19:1-4

M,K
V, F
R
I

26:20-24

C, V, I

32:25-33:4

V, ARG, R

30

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

34:17
36:11 to 37:9
37:11 to 37:14
38:1 to 38:8
41:4 to 41:13
41:15 to 42:12
42:14 to 42:20
42:22 to 44:18
45:7 to 45:23
47:17 to 48:10
53:12 to 53:18
58:6 to 59:23
60:10 to 60:13
61:3 to 61:18
62:16 to 64:2
64:9 to 64:13
64:15 to 65:4
65:6 to 67:15
68:6 to 72:8
72:14 to 74:15
76:23 to 77:10
78:18 to 81:8
82:4 to 82:19
84:21 to 85:8

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

ARG, V, I
I

37:15-25
39:4-21
40:5-17
41:14

I

Plaintiff's Objections
to Defendant's
Counter-Designations

IC

ARG, V, C
ARG, V, M

67:16-68:5

I

I
31

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

85:22 to 88:22
93:15 to 94:11
96:7 to 99:20
100:20 to 101:8
105:4 to 105:7
105:23 to 106:17
107:18 to 107:25
108:2 to 108:21
108:23 to 109:9
112:6 to 112:9
112:11 to 113:1
113:3 to 113:18
113:20 to 114:7
114:9 to 114:16
116:17 to 117:2
117:4 to 118:3
119:8 to 119:10
119:17 to 120:1
120:6 to 121:11
121:18 to 121:20
123:24 to 124:13
124:24 to 125:2
127:5 to 127:21

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

105:23-106:17

IC

I
I
105:8-20
ARG, V, IH, M
ARG, V, IH, M
C, ARG, IH, V
ARG, IH, V, M
ARG, V
IH, ARG, V
I, V
I, C
I

32

Plaintiff's
Designations

144:23 to 145:13
152:13 to 152:19
152:23 to 153:3
154:1 to 154:5
154:16-21
155:9 to 156:1
156:25 to 158:4
162:4 to 162:14
162:21 to 163:5
170:15 to 172:2
173:16 to 174:19
175:10-18
178:24 to 180:9
180:25 to 181:7
181:9 to 182:10
197:15 to 198:4
199:13 to 201:2
201:10 to 201:12
204:23 to 205:22
206:1 to 208:12
208:15 to 208:18
213:3
213:5 to 214:4

Defendant's
Objections to
Plaintiff's
Designations
I

Defendant's Counter
Designations to
Plaintiff's
Designations
146:14-147:2

I

Plaintiff's Objections
to Defendant's
Counter-Designations

152:20-22

I

H
H

I
I
R

V, IH
R
33

Plaintiff’s countercounter-designations

147:3-17, 147:22148:3

Defendant's
Objections to
Plaintiff's Countercounter-Designations
IC, I (should include
147:18-21)

Plaintiff's
Designations

214:9 to 214:18
241:9 to 241:23
242:25 to 243:6
243:8 to 243:9
244:16 to 244:25
245:2 to 245:14
245:22 to 246:2
246:5 to 246:8
246:10 to 246:15
267:6 to 267:7
267:10 to 268:12

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

V, R, I
V, R, I, P, F
I
SP, ET, R, P, F
F, ET, R, P
F, ET, R, P
F, ET, R, P
F, ET, R, P
F, ET, R, P

Plaintiff's Objections
to Defendant's
Counter-Designations

242:15-23

34

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Konig, David 7/8/2011
Plaintiff's
Designations

4:3 to 4:14
8:23 to 9:14
10:12 to 11:6
12:3 to 12:19
14:2 to 14:5
14:10 to 14:17
15:5 to 15:11
15:13 to 15:14
16:4 to 17:10
23:3 to 23:24
33:20 to 34:8
34:21 to 34:23
34:25 to 35:3
35:6 to 36:3
39:6-7
39:25 to 42:4

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

11:7-9

15:18-19, 15:21-23
20:16-18

I

31:21-22, 32:17-33:15
34:9-20

32:4-10

39:8-21
42:5-7

F

35

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Montes, Frank 3/17/2011
Plaintiff's
Designations

5:22 to 6:1
6:5 to 6:7
10:1 to 11:1
11:16 to 11:18
19:17 to 20:6
25:14 to 27:19

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

R, LC, F, SP, H

36

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Nemeth, Andras 7/14/2011
Plaintiff's
Designations

8:19 -20
11:6-9
11:16-23
11:25 to 13:18
15:19-22
16:9-18:7
22:14-19
22:25-23:2
23:15-25
24:13-23
28:14-21
29:15-30:6
30:8-32:5
32:7-14
33:2-12
34:20 to 35:17
39:6-9
36:11-17
52:4-6
52:8-24
53:1-7
53:9-19

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I

11:10-13

R

ET
I

22:20-24

I
R, P, I
I, R, P
R, P
R, P
R, P, I
I, R, P
R, P, I
I, V, C, R, P
R, P, I, V
R, P
R, P
R, P
R, P, I

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

55:9-56:25

R, P, IC, V, A

23:10-13
25:21-26:1
28:2-13

32:15-17
35:18-21
35:22-36:5
36:18-23

54:18-24

ET, IC
37

Plaintiff's
Designations

56:6-9
56:11-18
56:20-25
57:22-24
58:1-13
60:2-20
64:8 to 64:17
65:20 to 65:25
118:15-19
118:21 to 119:19
122:16-19
123:24 to 124:3
124:5-16
126:16 to 127:2
127:4-10
218:21-219:21
219:23-220:5
221:24-222:7
223:3-224:3
224:5-10

Defendant's
Objections to
Plaintiff's
Designations
V, A, R, P

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

V, A, R, P, I
R, P
R, P, I
R, P
I
I

54:18-24

ET, IC

55:9-56:25

R, P, IC, V, A

58:14-23

I

63:15-20
66:1-8

S

I

64:19-23

I
I, V

64:19-23
64:19-23

I

222:8-223:1

Oztekin, Bilgehan Uygar 3/8/2011
38

Plaintiff's
Designations

10:17 to 10:18
11:22 to 12:1
12:13-17
15:5 to 16:14
18:1 to 18:7
20:5 to 21:6
21:15 to 23:5
26:1 to 27:4
33:7 to 34:13
53:24 to 54:3
54:10 to 56:1
56:7 to 56:8
56:12 to 56:25
57:2 to 58:8
59:3 to 59:10
66:5 to 67:6
67:8 to 69:9
70:7 to 71:9
71:18 to 71:23
72:16 to 73:2
74:1 to 74:6
76:25 to 77:16
78:24 to 79:20

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

R, P

R, P
I, R, P
I
R, P

54:5-9

M, P

I
I
I

73:3-25
74:12-19
77:17-19

39

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

80:1 to 80:3
80:6 to 82:6
82:25 to 84:5
84:20 to 85:22
86:11 to 86:17
87:1 to 87:15
87:23 to 88:3
88:18 to 89:15
89:23 to 91:23
102:5 to 102:18
116:3 to 118:1
124:12 to 125:3
169:14 to 170:25
171:12 to 171:14
172:10 to 172:14
244:17 to 244:18
245:18 to 247:18

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I
I

82:7-9
84:6-19

V, I

87:17-20, 88:4-15

I
I

Plaintiff's Objections
to Defendant's
Counter-Designations

118:2-6
123:11-124:9, 131:17132:11

R, UP, S, IC

R, P

I

40

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Perrault, Raymond 8/17//2011
Plaintiff's
Designations

7:8 to 7:10
16:15 to 17:22
18:6 to 20:8
22:19 to 23:25
30:20 to 31:6
32:14 to 33:5
36:9 to 37:1

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

SP, F

37:2

41

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Ponnekanti, Shankar 10/7/2010
Plaintiff's
Designations

8:8 to 8:22
8:25-9:4
9:11-20
9:22-23
10:4 to 10:11
13:7 to 14:3
14:13 to 14:19
14:24 to 15:2
15:20 to 16:20
17:7 to 17:10
17:16-23
18:19 to 20
18:23 to 19:5
20:1 to 20:11
21:25 to 22:2
22:7 to 22:19
22:22 to 23:2
26:6 to 26:25
27:5 to 27:14
27:19 to 28:13
30:9 to 30:25
31:6-13

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

I
I

10:18-21
12:14-16

I
I

10:21

I
I

23:3-10
26:1-5

I

23:11-18

I

28:21-29:3

I

31:1-5
42

Defendant's
Objections to
Plaintiff's Countercounter-Designations

R, P

Plaintiff's
Designations

31:15-16
33:23 to 34:2
34:4-13
34:15 to 34:19
34:21 to 34:24
36:23 to 37:2
37:12 to 37:21
38:8 to 38:12
38:23 to 39:5
39:9-12
40:11-19
41:19 to 41:16
41:21 to 42:3
42:6 to 42:18
43:21 to 44:9
44:11 to 45:13
47:7 to 47:10
47:19 to 47:22
48:10-24
50:7-11
51:7-12
52:11 to 53:10
53:12 to 54:8

Defendant's
Objections to
Plaintiff's
Designations
I

Defendant's Counter
Designations to
Plaintiff's
Designations
31:17-20

Plaintiff's Objections
to Defendant's
Counter-Designations
I

R
V, ARG, R, P, M
I, R, P
I, R, P

47:11-18

R, P

43

Plaintiff’s countercounter-designations

31:24-32:11

Defendant's
Objections to
Plaintiff's Countercounter-Designations
ARG, I (should
include 32:12-17)

Plaintiff's
Designations

54:17 to 56:23
57:1 to 58:12
58:14 to 58:17
58:19 to 58:25
60:12 to 60:23
62:6 to 62:24
63:18 to 64:2
64:5 to 64:17
66:20 to 67:7
67:14 to 67:23
69:3 to 70:1
70:20 to 71:6
72:2 to 72:23
73:3 to 74:1
74:2 to 74:10
74:19 to 75:2
75:11 to 76:12
79:17 to 80:7
80:14 to 81:5
82:13 to 82:24
83:2 to 84:5
86:14 to 86:18
88:17 to 89:7
96:14 to 96:19

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

76:13-25

I, ET

77:1-9

R, P

R
V

I

R, P
44

Plaintiff's
Designations

97:2 to 97:6
97:11 to 97:21
99:3 to 100:2
100:7 to 100:11
100:17 to 101:5
101:9 to 101:13
102:12 to 103:12
108:6 to 108:21
108:25 to 109:4
112:9-12
113:5 to 113:8
114:20 to 115:4
115:23 to 116:22
117:8 to 117:10
117:12 to 118:9
118:17 to 119:8
120:7 to 120:14
120:21 to 120:22
121:2 to 121:9
121:15 to 121:18
121:20 to 121:23
122:18 to 123:1
123:14 to 123:15
123:17-19

Defendant's
Objections to
Plaintiff's
Designations
R, P

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I

109:5-110:7

ET

V, M
I

121:24-122:4

I

Plaintiff’s countercounter-designations

R, P
R, P
I, P, R

45

122:5-17

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

124:14 to 124:20
126:18 to 127:4
127:21 to 128:5
128:23 to 129:8
131:24 to 132:4
132:12 to 132:20
134:11 to 135:24
137:14 to 137:23
138:9 to 139:1
141:1 to 141:19
143:8 to 143:9
143:11 to 143:13
144:10 to 146:23
147:20 to 148:14
149:2 to 149:5
149:7 to 149:21
150:4-20
155:18 to 156:5
164:3 to 164:19
164:20 to 165:9
167:2 to 167:19
168:2 to 168:22
169:17 to 170:2
175:18 to 175:20

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I

132:21-133:3

I

Plaintiff's Objections
to Defendant's
Counter-Designations

137:24-138:8

R, P

R, I, P
R, P
R, P

R, P

46

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

175:22 to 176:12
179:11-12
180:21 to 182:13
183:16-20
192:15 to 193:8
193:10 to 193:19
194:10-22
203:4 to 204:11
204:13-14
206:1-17
208:5-17
237:13-21
246:11-23
253:13-25
256:17-23
256:25 to 259:7
262:1-14

Defendant's
Objections to
Plaintiff's
Designations
V, I, R
R, P

Defendant's Counter
Designations to
Plaintiff's
Designations

ARG, V
P, R, I
R, P

Defendant's
Objections to
Plaintiff's Countercounter-Designations

I

207:24-208:4
237:22-238:4

Plaintiff’s countercounter-designations

238:5-10

ARG, I, R, P

194:23-25

I
I
I
R, P

Plaintiff's Objections
to Defendant's
Counter-Designations

R, P

47

Rohe, Andre 2/4/2011
Plaintiff's
Designations

9:7 to 9:9
9:24 to 10:5
15:20 to 18:9
18:16 to 19:16
19:22 to 20:7
25:9 to 26:4
27:15 to 27:18
30:20 to 32:6
33:14-22
38:1 to 42:18
41:1 to 43:2
44:19 to 45:17
45:21 to 46:13
46:17 to 46:25
47:2 to 49:23
48:7 to 48:14
50:22 to 54:7
53:17 to 54:7
54:15 to 55:24
56:7 to 57:1

Defendant's
Objections to
Plaintiff's
Designations

I
I
I

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

21:20-22:1
24:14-25:8, 26:5-27:14
30:4-19
37:20-25

I

45:18-20
46:15-16

S, I
S

49:24-50:12

I
I

55:25-56:6
57:2-5, 57:18-24,
58:1-2

58:13 to 58:23
48

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

59:1 to 59:14
60:23 to 64:16
72:1 to 73:8
74:19 to 75:15
81:21 to 82:1

I

60:10-22

I
I

79:24-81:20

49

Sonmez, Mustafa Kemal 8/15/2011
Plaintiff's
Designations

4:1 to 4:3
4:9 to 4:11
7:21 to 9:16
11:15 to 12:21
13:12 to 13:23
18:17 to 21:8
27:5 to 27:16
29:21 to 30:17
34:4 to 34:11
35:13 to 37:1
55:8 to 60:11
62:1 to 64:6
65:24 to 66:5
92:9 to 94:12
100:17 to 102:10

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

65:20-23, 66:6-18

CMP, MIS, CNF, UFP

ET
ET, NR
ET, NR
ET, NR, SP, F
I, SP, F, NR,

NR, LC, ET, F,
ET,

50

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Stolcke, Andreas 7/6/2011
Plaintiff's
Designations

3:4 to 3:6
7:22 to 9:1
10:23 to 12:4
14:21 to 15:15
16:11 to 18:9
36:21 to 38:19
51:18 to 52:6
54:4 to 54:14
55:1 to 55:10
74:11 to 77:7
78:5 to 79:2
79:21 to 80:7
82:12 to 82:17
90:2 to 91:9

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

SP, R, ET

18:10-17, 18:19,
18:21-23, 18:25-19:25
38:20-39:25

MIS, R, CNF UFP
R, MIS, UFP, CNF

NR
LC, SP, F
LC, SP, F
R, SP, F, ET
ET
SP

51

Plaintiff’s Countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

40:22-41:2

IC, ET

Ventilla, Max 7/31/2012
Plaintiff's
Designations

9:24 to 9:25
10:21-23
12:11-13:6
15:10-17:8
18:12 to 18:16
18:18 to 18:22
19:9 to 19:17
23:14 to 23:19
39:3-4
39:15 to 40:1
40:24 to 41:6
41:8 to 41:9
41:11 to 41:25
42:9 to 42:14
43:10 to 43:11
44:15 to 44:20
45:5 to 46:10
46:16 to 47:4
47:6 to 48:10
48:19 to 49:15
50:20 to 50:22
51:10 to 51:11

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I

40:2-9

I

42:1-2

I
I

42:15-24
43:5-9

I
I
I

Plaintiff's Objections
to Defendant's
Counter-Designations

46:11-15
48:11-12
50:23-51:8

I

52

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

51:15 to 17
51:19 to 20
51:22
51:24
52:1
52:3
52:5
52:7
52:9
52:11
52:13 to 52:14
52:20
52:22 to 52:24
53:1 to 53:5
56:22 to 57:1
57:5 to 57:8
57:24 to 58:1
58:6 to 58:16
58:18 to 58:20
58:22 to 58:23
58:25 to 59:1
59:3 to 59:7
59:9 to 59:10
59:12

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I

53:6-54:3

I

Plaintiff's Objections
to Defendant's
Counter-Designations

57:10-23

53

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

73:21 to 74:13
74:20 to 75:23
75:25
76:2
76:4 to 76:6
76:8
76:10
76:12 to 76:14
110:16 to 111:19
111:23 to 112:4
114:21 to 115:19
119:6 to 119:23
120:12 to 121:6
122:4 to 123:22
124:5 to 124:13
128:11 to 128:23
135:12 to 135:18
141:10 to 141:16
144:1 to 145:2
148:12 to 149:1
152:9 to 152:12
152:14 to 152:16
152:19 to 152:20
152:22 to 152:25

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I
I

Plaintiff's Objections
to Defendant's
Counter-Designations

110:4-15
111:20-22

S
S

I
I

141:3-9, 141:17-19

V, I

54

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

153:2 to 154:25
170:15 to 171:20
183:1 to 186:18
186:24 to 187:10

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I
I

Plaintiff's Objections
to Defendant's
Counter-Designations

169:15-170:14
186:19-23

I

55

Plaintiff’s countercounter-designations

186:24-187:10

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Weinberg, Aitan 3/2/2011
Plaintiff's
Designations

5:18 to 5:19
6:13-15
7:8 to 7:17
9:17 to 10:15
11:15 to 12:25
13:12 to 14:13
17:22 to 18:11
18:18 to 18:23
19:2 to 19:7
28:13 to 29:7
30:5 to 31:17
32:8 to 33:4
33:8 to 33:18
33:25 to 36:22
37:9 to 39:25
40:12 to 41:3
41:8 to 41:12
41:21 to 41:24
42:15 to 42:23
43:5 to 46:10
46:16 to 47:8
51:2 to 51:21

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

R
R
I

18:12-17

I
I
I
I
I, V
M, ET

Plaintiff's Objections
to Defendant's
Counter-Designations

18:12-17
31:18-32:3
32:4-7
18:12-17
18:12-17
41:13-20

R, V
I
ARG, V, I

47:9-10, 47:12-13
52:8-20
56

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

52:21 to 54:8
54:25 to 55:11
55:21 to 56:14
57:6 to 60:8
69:23 to 70:12
76:14-22
77:8 to 78:13
83:5 to 84:5
86:17 to 87:14
87:22 to 88:2
90:17 to 91:14
93:16 to 95:17
99:16-100:8
106:20 to 107:9
109:24 to 110:23

Defendant's
Objections to
Plaintiff's
Designations

F, V
AA, I
R, I
R
R
I

I
R, P
I
I

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

18:12-17
70:13-71:3

R

84:6-10

107:10-12, 107:19-22
107:19-22

57

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Zamir, Oren E. 4/13/2011
Plaintiff's
Designations

9:13 to 9:14
10:3 to 10:16
10:22-25
11:18-20
12:10-14
13:16 to 13:18
14:23 to 15:20
16:12 to 16:20
17:1 to 18:2
18:8 to 18:10
18:17 to 18
19:3 to 19:8
21:18 to 22:14
23:6 to 23:10
24:7 to 24:12
29:23 to 30:7
35:21 to 36:14
36:16 to 36:21
36:22 to 38:19
38:21 to 40:8
41:10 to 41:21
45:5-6

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

I

14:13-22, 15:21-16:10

R

I

18:20-19:3

I

20:25-21:7, 21:11-17

I, R, P

28:23-29:22

V, M
I

41:22-42:17

58

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

45:9 to 45:11
46:17 to 47:9
47:11 to 47:15
47:17 to 47:19
47:21 to 49:16
50:5 to 50:7
50:9 to 50:15
50:17 to 51:20
51:23 to 52:11
52:19 to 52:23
53:6 to 54:13
54:20 to 55:2
55:4 to 55:24
57:6 to 57:9
62:19-23
63:4-15
65:2-3
65:5-9
65:12 to 66:1
70:1-4
70:11 to 71:13
73:5 to 73:16
82:3 to 82:6
83:25 to 85:8

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

I

Plaintiff's Objections
to Defendant's
Counter-Designations

49:23-50:4

V

V
70:5-10
I
I

83:14-24
59

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

85:10 to 86:1
86:10 to 87:16
88:11 to 89:4
90:14 to 90:23
91:13 to 91:18
91:23 to 93:12
93:18-23
93:25 to 94:3
94:13 to 95:5
97:13 to 97:25
98:3 to 98:18
98:25 to 99:8
99:13 to 99:17
99:20 to 100:10
100:17 to 100:25
101:2 to 101:8
101:11-17
103:6 to 103:21
104:22 to 104:24
105:1 to 105:17
105:24 to 106:1
106:3 to 106:6
106:13 to 106:21

Defendant's
Objections to
Plaintiff's
Designations
V, C

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

Plaintiff’s countercounter-designations

I

90:24-91:10, 91:19-21

ET, L, IC

91:13-21

93:14-17
V, A
94:5-12

V. C, A
V
V, A

I

106:9-12

60

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

107:4 to 107:13
108:4 to 108:5
109:4 to 109:17
109:21 to 110:1
110:18 to 110:20
110:22
111:4 to 111:7
111:14 to 111:22
111:24 to 112:3
112:14 to 113:8
113:10 to 113:13
113:16 to 114:7
114:9 to 115:11
115:7 to 115:21
116:7 to 117:14
117:16 to 118:17
119:3 to 119:9
119:11 to 119:12
122:6 to 122:16
124:5 to 124:16
124:18 to 124:23

Defendant's
Objections to
Plaintiff's
Designations
I
I
I

Defendant's Counter
Designations to
Plaintiff's
Designations
106:22-107:3, 107:1419,
107:23-108:3
108:7-109:3

Plaintiff's Objections
to Defendant's
Counter-Designations

I

115:23-116:3
V. A
I

118:18-119:2

I

122:17-123:1, 123:1720

I

124:24-125:5, 125:710
61

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

139:20-21
140:1-17
141:20 to 141:7
142:11 to 142:19
142:21 to 143:25
144:2 to 144:19
147: 22 to 148:8
148:10-21
148:23 to 149:8
151:17 to 152:4
152:6 to 153:1
163:4 to 164:7
164:10-14
165:2 to 165:7
171:4 to 171:23
172:9 to 172:19
173:5 to 173:8
173:10 to 173:25
174:2 to 174:3
174:9 to 174:17
174:19
178:14 to 178:24

Defendant's
Objections to
Plaintiff's
Designations
I
I

Defendant's Counter
Designations to
Plaintiff's
Designations

S

146:10-24

I
I

153:2-4
163:13-164:9, 164:16165:1, 165:8-14

I

Plaintiff's Objections
to Defendant's
Counter-Designations

171:24-172:8, 172:2324

V

62

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

179:1 to 180:8
180:10 to 180:22
186:7 to 186:17
186:20 to 187:17
189:6-9
189:10 to 189:18
190:4 to 190:19
190:21 to 190:25
191:2 to 191:9
191:11 to 193:17
194:11 to 194:13
194:15 to 195:18
196:3 to 197:13
197:15-16
197:18 to 199:6
201:2 to 201:9
201:11 to 201:25
202:1 to 205:4
209:20 to 209:24
210:4 to 210:5
210:7
210:9 to 210:14
225:17 to 226:1
226:3 to 227:10

Defendant's
Objections to
Plaintiff's
Designations

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

R, P
I, R, P

R, P
193:20-194:4
R, P
R, P
V, A, R, P, I
R, P
V, S, SP, R, P
R, P, V
R, P
V, C, R, P

199:7-200:5

63

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

Plaintiff's
Designations

227:14 to 228:10
228:16 to 228:25
229:2 to 229:6
230:2 to 230:8
230:10 to 230:11
230:13 to 230:22
230:24 to 231:16
232:3 to 232:4
232:6 to 233:2
236:5 to 236:18
239:3 to 239:12
242:2 to 242:6
248:15 to 249:10
250:18 to 251:6
254:11 to 254:14
254:16 to 254:24
264:20 to 265:2
265:4 to 265:17
269:19 to 269:25

Defendant's
Objections to
Plaintiff's
Designations
R, P
PRIV, R, P, V, C
V, C, R, P, I
R, P
V, R, P
V, C, R, P
R, P

V, R, P
I
V
I, SP, S

Defendant's Counter
Designations to
Plaintiff's
Designations

Plaintiff's Objections
to Defendant's
Counter-Designations

229:8-14

S, R

262:14-15, 264:17-19
269:9-16

01980.51575/5782829.2

64

Plaintiff’s countercounter-designations

Defendant's
Objections to
Plaintiff's Countercounter-Designations

EXHIBIT 9

EXHIBIT 9
GOOGLE’S DEPOSITION DESIGNATIONS
Google hereby submits its deposition designations with PUM’s objections and counter designations thereto, Google’s
objections to such counter designations and counter-counter designations thereto, and PUM’s objections to such counter-counter
designations.
The parties incorporate by reference designations of any errata pertinent to the excerpts of the deposition transcripts designated
by Google, or counter designated by PUM.
PUM’s objections are identified with the following abbreviations:
PUM Objections
R

Relevance: The exhibit/statement is objectionable because it is not relevant and/or any probative value it may have is
substantially outweighed by the danger of unfair prejudice, or confusion of the issues, or by considerations of undue
delay, waste of time, or needless presentation of cumulative evidence (see F.R.E. 401, 402, 403)

ND

Not disclosed: The exhibit is objectionable because it was not timely disclosed by Google

H

Hearsay: The exhibit/statement is objectionable as hearsay if offered to prove the truth of the matter asserted (see
F.R.E. 801, 802 )

A

Authentication: The exhibit may be objectionable if it is not properly authenticated (see F.R.E. 901(a))

IC

Improper Compilation: The exhibit is an improper compilation of documents that do not belong together

M

Mischaracterization: The description of this document on Google’s exhibit list mischaracterizes the document

D

Duplicate: The exhibit appears more than once on Google’s exhibit list

LF

Lack of Foundation: The exhibit/statement is objectionable as insufficient foundation or lack of personal knowledge has
been laid (see F.R.E. 602, 901)

UP

Unfair Prejudice

SW

No Sponsoring Witness (See FRE 602)

NC

Not Complete: The exhibit is objectionable because it is incomplete and the introduction of the remaining portions or
related documents ought, in fairness, to be considered contemporaneously with it (see F.R.E. 106) (exhibit appears to be
an incomplete document and/or missing pages)
DEPOSITION OBJECTIONS

ARG.

Argumentative

A&A

Asked and Answered

Att Col Attorney Colloquy or Objection
B/S

Beyond the Scope of the topics for which the corporate witness was designated

BE

Best Evidence

C

Outside the scope of the witness’ Competence or Expertise

2

C/S

Evidence of a Compromise or Settlement

CMP

Completeness

CNF

Confusion of Issues

FNE

Assumes Facts Not in Evidence

F

Form

L

Leading

LC

Calls for Legal Conclusion

MIS

Misleading

MPT

Mischaracterizes Prior Testimony

N

Narrative Question

OB

Overly Broad

P

Privilege

RPT

Repetitive

S

Speculative

UFP

Unfair Prejudice

V/A

Vague or Ambiguous

3

WP

Work Product

Google’s objections are identified with the following abbreviations:
General Objections:

Form Objections:

R – Relevance, 402

L – Leading

P – Fed. R. Evid. 403: Prejudicial

ARG – Argumentative

H – Hearsay

A – Assuming Facts Not in Evidence

F – Lacks Foundation

C – Compound

I – Incomplete

N – Narratives

V – Vague and ambiguous

M – Misstates Testimony

S – Beyond the scope of Rule 30(b)(6) deposition
topics

AA—Asked and Answered

LC – Legal Conclusion
ET – calls for expert testimony
MIS – misleading
IC – improper counter
NR – non-responsive
IH – incomplete hypothetical

4

SP – speculation
SN – Fed. R. Evid. 408, Settlement Negotiations

Witness

Date

Defendant's
Designations

Aspitz, Doron

06/10/2011

3:10-15
5:4-9
5:19-6:1
6:12-7:11
11:18-22
12:16-13:5
13:18-14:3
17:10-19
19:9-11
22:15-19
23:2-4

PUM's
Objections

PUM's
Counter
Designations

R; L
R; L
R; VA; CMP;
UFP

5:10-18
6:2-11
7:12-14

R; VA; CNF;
S
R; FNE; UFP;
N
R; CNF
R; CNF
R; CNF; FNE;
CMP
R; CNF; FNE;
CMP

13:6-12

5

22:20-23:1
22:20-23:1

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

26:3-19

R; CMP; LC;
UFP; N; F;
CNF; L; C;
OB; UFP
R; CMP; LC;
UFP; N; F;
CNF; L; C;
OB; UFP
R; CNF; OB;
UFP
R; UFP; CNF;
S; VA
R; CNF; L;
UFP
R; CMP; S;
CNF;
R
R; UFP
R; UFP; CNF
R; UFP; L;
CNF
R; UFP; CMP
R; UFP; CNF
R; UFP; VA
R; UFP; VA;
S

27:13-20

26:22-24

27:1-7
29:10-20
30:8-16
39:7-15
40:10-11
40:24-41:10
41:13-25
43:7-10
43:20-44:1
44:5-45:2
58:2-7
58:13-19

6

Defendant's
Objections to
PUM's
Counter
Designations

27:13-20

27:13-20
28:15-21

P

30:20-31:7

IC, R

43:11-44:4

58:22-59:3

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

60:18-61:7

R; UFP; CNF;
L

62:8-12
64:6-66:12
66:25-67:9
69:3-8
75:12-14
75:18-76:12
97:10-13
97:18-98:8
98:13-17
103:15-23
104:2-17

Benquessous
(Banks), Jack

06/07/2011

108:25-109:6
5:9-12
8:11-19
16:18-22
17:2-13

PUM's
Counter
Designations

R; S; CNF;
UFP
R; S; UFP;
CNF
R; L; CNF;
UFP

Defendant's
Objections to
PUM's
Counter
Designations

67:10-22
67:10-22

R; S; L; FNE;
UFP

76:13-22

IC, R

R; S; L; UFP
R; UFP; CNF
R; C; S; FNE;
CNF; VA
R; C; S; FNE;
CNF; VA;
UFP
R; L; UFP

98:9-12

IC, R

R; LF; S;
UFP; C
R; UFP; CNF
R; UFP

20:4-7

IC, R, P

7

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

18:2-10

R; UFP; S;
LF; C
R; S
R; S; FNE;
UFP; CNF; C
R; S; FNE;
UFP
R; S; UFP;
RPT
R; A; UFP;
CNF
R; RPT
R; UFP
R; UFP; CNF;
S
R; UNF

20:4-7

IC, R, P

20:8-24
23:12-24:10
30:3-25
31:4-11
35:1-13
35:23-25
39:19-25
40:23-41:12
48:1-2
53:22-54:2
54:8-18
54:20-21
54:24-25
58:3-7
58:10-11
58:18-19

31:1-3; 92:515

R; LF; A
R; UFP; V/A;
S
R; UFP; S
8

IC, R, P

55:1-55:12;
92:25-94:2
55:1-55:12;
92:25-94:2

R; UFP; F;
MPT
R; UFP; F;
MPT
R; UNF;

20:4-7

IC, R
IC, R

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

60:8-60:13
61:8-15

R; CNF
R; UFP; CNF;
S; C
R; UFP; CNF;
L; S; C
R; UFP; L
R; UFP; S; L
R; S; C; LF;
UFP
R; S; LF; C;
UFP
R; A; F; UFP;
S;
R; UFP

62:8-13
63:13-17
65:17-20
67:6-68:7
68:11-24
71:20-73:2
73:11-16
74:2-75:5
76:16-22
77:21-25
89:23-90:17

Bercow,
Douglas

04/14/2011

92:17-24
8:8-10
15:1-20

PUM's
Counter
Designations

R; UFP; S;
V/A
R; UFP; V/A
R; V/A; S; C;
UFP
R; UFP

Defendant's
Objections to
PUM's
Counter
Designations

61:16-21;
62:23-63:2
62:23-63:2;
92:25-94:2

IC, R, I, P

62:23-63:2

IC, R, I, P

73:8-10;
91:11-23
73:8-10;
91:11-23

89:20-22;
90:18-23;
91:2-4
92:5-15

R; UFP; CNF

9

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

63:3-8

R, UFP, C,
LF

90:24-91:1,

R, IC

IC, R

R

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

19:7-20

MIS, CMP,
CNF. UFP

22:9-15
26:5-9
52:25-53:9

CMP
CMP
MIS, CMP

26:20-27:10;
31:4-32:5;
35:14-36:18;
37:18-40:1;
38:2-8; 39:1340:1
22:21-25
25:22-27:10
31:4-32:5;
35:14-36:18;
37:18-40:1;
38:2-8; 39:1340:1; 53:1054:5

60:2-61:22
63:7-66:22

MIS, C, LF
R, UFP, MIS,
C, LF, CMP,
CNF
R, S, LF, UP,
CNF, MIS,
CMP, NC, C
C, LF, MIS,
UFP, CNF, R
R, CMP, NC,
UFP, C, LF, S
R, MIS, CMP,
NC, C, LF, S

67:15-75:5

75:18-76:8
76:20-77:24
78:15-23

10

Defendant's
Objections to
PUM's
Counter
Designations

IC
IC for 35:1436:18 and
53:10-54:5

63:2-6

75:6-18

77:25-78:11

IC

79:6-81:17

IC

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

80:19-81:5

C, LF, S,
CMP, NC,
MIS, CNF
R, UFP, C,
LF, S, CNF
CMP, LF, C,
CNF

81:18-82:11
83:7-11
Berthold,
Michael

01/23/2011

6:8-13
11:9-13
12:20-24
14:10-1515:3-16:4
16:10-18
21:25-22:15
23:3-5
28:1-29:19
32:5-21
33:2-14

42:9-12
48:15-49:12

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

83:12-84:5;
84:12-24

I, IC, F, R, P

84:6-11

R

14:16-15:5;
165:1-166:17
175:19176:14
16:19-17:13;
165:1-166:17

IC, I
IC, I
IC, R, I

15:6-16:4;
166:18-21

L, LC, S

I
IC, I

17:14-18;
166:18-21

R, UFP;
R, UFP

34:14-25;
35:21-23;
36:1-6

R;
R

81:6-83:5

R, S, CNF,
UP, FNE
L, LC, S,
R, S, CNF,
UP, FNE
LC
R, S, CNF,
UP, LC, CMP

22:16-23:2
29:20-30:22

R, S, CNF,

33:15-34:13;
I
35:7-23; 36:16
42:13-14

R, S

11

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

63:16-22

LC, OB, V/A,
CNF,
L, LC, F, OB,
V/A, CMP
LC, V/A, S

63:23- 64:15;
175:19-24
67:1-69:5

IC, I
IC, R

64:16-25

78:4-22

IC, R, I

76:17-18;
77:3-8;
77:15-18

V/A, CMP,
CNF, R

91:20-92:4
95:25-96:7

IC
IC

92:5-11

UFP

99:24-100:13
109:4-6;
109:9-16;
175:19-24.
109:21-22;
109:25-110:4

I

99:2-23

R
R, UFP

I

108:4-17

I

110:5-12

R, LC,CMP

I

132:17-24

R, UFP

69:6-9
74:2-17

86:6-24
92:13-16
95:2-24
97:10-24
98:1-99:1
108:22-109:3

109:17-20
114:4-11
122:25-123:14
131:2-18
132:6-16
136:12-137:25
138:4-8

S, LC, R,
CMP
R, LC
R, LC, L,
CNF, UP
R,
R, CNF, UP
L, LC, F, UP,
CNF,
L,LC, F, UP,
CNF
R
L, LC, F,
CNF, UP
R
R
R
R

86:24-87:11

131:19-22
132:25-133:4

12

PUM's
Objections to
Defendant's
CounterCounter
Designations
V/A, R, UFP

Witness

Date

Defendant's
Designations

PUM's
Objections

140:24-141:11

ARG, R, L,
UP,
ARG, R, L,
UP,

142:13-145:2

PUM's
Counter
Designations

145:3-10;
184:15185:15
184:15185:15
147:22-148:6;
184:15185:15
161:11-12

145:11-16

ARG, R, L,
UP,
146:22-147:21-t ARG, R, L,
UP,
161:8-10

ARG, R, L,
UP,

163:14-164:2

Black, Phillip

05/06/2011

4:7-11
6:18-7:21
13:4-17
17:4-17
21:25-22:7
26:11-27:15
29:6-9
29:13-30:6
34:14-25

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

ARG, R, UP;
R

I

185:16-20;
186:3-9

I

148:7-22

R, UFP

166:23-167:1;
167:3-4;
167:10-24
R; UFP
R; N; V/A; C;
S
R; V/A; C
R; UFP; S;
CMP
R; S; L; UFP
R; UFP; CNF;
S
R; UFP

13

10:10-19

IC, R

22:17-24

I, IC

22:25-23:1

CMP, R,

35:6-18

IC, I, R

35:1-7

R, UFP

Witness

Date

Defendant's
Designations

PUM's
Objections

36:24-37:10
45:10-15
45:21-47:19
48:15-17
52:23-54:13

R; S; V/A; LF
R; UFP
R; UFP; S

55:17-56:14
59:14-15
59:18-61:11
62:5-7
62:9-20
63:15-18
68:5-10
68:20-69:3
84:3-13
87:14-23
93:2-10
93:17-96:6
97:5-7
99:2-12
107:9-20
107:22

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

86:20-87:5

IC, R, P

99:13-100:2

P

R; S; UFP;
CNF
R; UFP; S
R; S; UFP;
CNF
R; S; F; V/A;
R; S; F; V/A;
L
R
R
R
R; UFP; C; S;
L
R; S; UFP
R; S; L; UFP
R; S; UFP; C;
CNF
R; S; C; CNF;
LF; F
R; S; F
14

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

Brandman, Onn

03/16/2011

3:25-4:2
7:8-13
8:23-9:8
9:12-14
10:13-23
11:17-12:4
12:6-11
12-13-17
15:19-16:4
17:15-18:2
19:21-24
20:5-22:3

25:8-26:4
26:6-7
26:18-27:13
28:4-5
28:12-32:14
34:2-11

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

R, OB, V/A,
UP, CNF
R, UP, CNF, S
R, UP, CNF
L, LC, C, UP,
CNF,
CMP

12:18-22

IC

12:18-23

R, IC

12:18-22
12:18-22

IC
IC

12:18-23
12:18-23

R, IC
R, IC

18:3-20,
18:14-19:20

P

20:5-17-R,
CNF, UP
21:15-22:1UP, R, S,
S, R, CNF,
R, CNF
R, CNF,
R, S, CNF, UP
R, S, CNF,
UP, FNE
R, S, CNF

15

Witness

04/14/2011

Defendant's
Designations

PUM's
Objections

35:23-36:12

Franco, Horacio

Date

R, S, UP,
37:8-23
CNF,
FNE,OB,
V/A, CMP
R, S, UP, CNF

38:14-20
6:15-18
11:6-19
16:11-21
17:5 -18:5

45:10-13
45:20 – 46:7
46:11 – 49:7

PUM's
Counter
Designations

02/10/2011

5:9-12
7:4 – 8:17
8:24 – 9:5
10:23 – 12:20

Defendant's
CounterCounter
Designations

I, R

37:8-16

12:14-13:9

IC, R, P

49:8-50:25;
61:17-63:8;
93:9-94:19
99:11-100:11

R, CMP

IC, R, P

18:6-19:13;
22:25-23:11;
24:22-:26:2

95:10 – 99:10
R, CMP, UP
100:11 – 102:10
102:23 – 103:13 CMP
Gal, Ari

Defendant's
Objections to
PUM's
Counter
Designations

F, IC,

104:11-25;
106:8-11

R, L, UFP,
CNF
R, L, LF, S,
8:18-23
UFP, CNF
R, LF, S, UFP,
CNF
16

PUM's
Objections to
Defendant's
CounterCounter
Designations
CMP

Witness

Date

Defendant's
Designations

PUM's
Objections

13:3 – 14:8

R, LF, S, UFP,
CNF, B/S, C
R
R, LF, L, S,
UFP, CNF,
B/S, C
R, L, S, UFP,
CNF
R, L, S, UFP,
CNF, B/S
R, L, S
17:16-19,
18:4-6
R, S, UFP,
17:16-19,
CNF, C
18:4-6
R, S, LF, UFP,
CNF, B/S, C
R, S, L, LF,
UFP, CNF,
B/S, C
R, S, L, LF,
UFP, CNF,
B/S, C
R, L, UPF,
CNF, A&A, C
R
R, UFP, CNF

16:3-7
18:7 – 21:5

21:10-24
22:3-8
23:10-19
24:18 – 25:4
37:20-22
38:11 – 39:9

39:16 – 40:21

45:24 – 48:11
48:19 – 49:9
49:21 – 49:23

PUM's
Counter
Designations

17

Defendant's
Objections to
PUM's
Counter
Designations

IC
IC

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

49:25-50:11

R, LF, C, S,
UFP, CNF
R, C, CNF,
UFP, S
R, C, CNF,
UFP, S
R, C, CNF,
UFP
R, CNF, UFP
R, CNF, UFP
R, CNF, UFP,
S
R, C, LF,
CNF, UFP, S
R, C, LF,
CNF, UFP, S,
OB
R, UFP, CNF,
A&A
R, UFP, CNF,
S,
R, CNF, UFP,
OB
R, CNF, UFP,
OB, B/S,
A&A, ARG

50:12-13

IC

51:13-14

IC

53:16-17

IC

51:4-12
53:7-13
53:18 – 54:15
56:9-23
63:15 – 64:8
65:19 – 66:16
67:4-18
68:6 – 69:18

70:15 – 73:14
73:22 – 74:4
75:9-18
76:1 – 79:12

18

75:1-8

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

87:7-8

IC

87:12-13

IC

84:7 – 85:24

Jacobs, Ron

08/25/2010

R, CNF, UFP,
S, L
87:4-6
R, CNF, UFP,
C, B/S
87:9-11
R, CNF, UFP,
C, B/S
87:14-19
R, CNF, UFP,
C, B/S
118:18 – 118:21 R
118:24-119:8
R, S
120:5 – 121:2
R, S, L, B/S,
C
123:13 – 124:21 R, L, B/S, C,
ARG., F,
CNF, UFP
170:4-19
R, L, B/S. C,
CNF, UFP
5:7-9
8:12-9:16
V/A, A&A
12:8-18
R
14:8-14
R
15:2-20
R, UFP, C

Defendant's
Objections to
PUM's
Counter
Designations

20:12-19

R, CNF

24:7-12

CMP, C, R

19

169:19-170:3

10:3-17
12:23-13:1
14:15-24
15:21-16:4;
17:2-8
20:20-23;
21:22-22:10
23:20-24:6;
24:13-17

IC, R

I
IC, R, ET
IC

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

02/14/2011

Defendant's
Designations

PUM's
Objections

24:18-20
32:1-3
34:12-15
Jeh, Glen

Date

PUM's
Counter
Designations

CMP, R,
CMP, R, CNF 32:20-33:8
CMP, R, CNF,
V/A

12:16-17
22:9-25

19:18-20;
20:21-22:20
24:6-9;
25:4-14
37:16-20

24:10-20
37:7-14
38:9-13
38:15-39:21
40:5-17

Konig, Yochai

12/02/2010

40:19-24;
41:4-13;
41:15-42:12;
42:14-16

5:14-17
5:22-25
8:12-14
9:6-17
10:6-21
14:1-15:15
16:25-18:23
21:1-10
22:23-23:2
23:4-12
23:19-22

15:16-19

20

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

R
I

37:21-38:8

R

I, IC, R, P
I

41:14-14

IC, I, R

R, P, IC
R, P, IC

R, CMP, IC

Witness

Date

Defendant's
Designations

23:24-24:10
24:12-25:20
26:21-28:6
30:6-13
37:13-16
39:16-22
43:7-44:5
44:10-45:5
45:10-21
47:6-8
49:22-50:7
57:14-58:12
62:24-64:20
66:19-23
67:4-13
70:2-71:2
72:4-12
72:16-73:7
73:11-20
75:12-16
79:4-22
84:5-85:15
105:11-21

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

28:7-14
30:14-17
37:17-20

IC

R
44:6-9
45:6-9
45:22-46:2

IC

R
58:13-25
R as to 64:920
67:14-25

IC

71:22-72:3

R as to 79:1422
Argumentative

21

78:9-14

IC

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

117:14-118:4

A&A as to
117:20-118:4

117:4-13

149:9-16
149:22-150:22
152:11-155:11
155:22-156:3

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

R
R
R,
Argumentative

178:1-9
181:9-13
182:10-14
186:23-22
189:20-190:2
190:8-191:6
202:13-203:17
206:8-207:1
207:7-9
207:14-208:25
220:16-221:24
223:3-224:2
233:14-22
240:7-10
240:15-16
242:24-243:22
244:12-17
258:2-12

Defendant's
Objections to
PUM's
Counter
Designations

181:14-182:9

190:3-7
190:3-7
202:7-12;
203:18-204:1
R
R
R
R
R
R
R

IC
I

233:18-22

R
R
R

259:2-12

22

IC

R, CMP
204:3-4

Witness

Date

Defendant's
Designations

Konig, Yochai

05/04/2011

282:22-283:11
283:23-285:11
285:25-286:5
286:25-287:8
288:18-289:4
290:8-292:6
293:1-294:23
296:11-18
299:1-299:14
303:10-20
304:15-25
306:4-307:4
308:10-17
311:3-16
312:9-25
316:20-318:7
323:10-326:1
327:21-24
328:1-24
329:5-23
332:4-21
333:8-15
343:12-1
350:18-351:3
353:11-23

PUM's
Objections

PUM's
Counter
Designations

283:12-18
286:6-8
289:5-11;
289:13-290:7
292:4-7
R

305:1-15

311:17-312:8

329:24-330:2
331:24-332:3

23

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

356:19-357:19
358:21-359:13
359:17-360:25
362:9-363:13
364:5-16
367:16-369:1
369:9-12
369:14-370:4
370:6-10
370:20-372:7
378:1-9
381:18-382:10
384:14-23
386:6-12
386:14-21
386:23-387:20
399:2-401:6
401:8-11
401:13-17
401:19
403:23-404:3

357:20358:19

363:14-364:4
369:2-8
370:12-19
372:9-16
R as to
381:18-23
R

R as to
387:8-15

R as to
403:23-24

404:5-404:11
408:17-22

408:10-15
24

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Konig, Yochai

Konig, David

Date

01/26/2012

07/08/2011

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

409:4-7
419:22-420:9
436:1-3
436:6-11
455:1-456:13
457:6-459:5
469:12-24
475:6-16
476:25-477:4
478:9-15
479:1-8
482:12-17
490:2-13
532:15-533:7
543:3-544:7
545:3-10
547:15-548:4
555:16-556:3
558:3-14
564:10-14
574:14-22
576:20-577:6
4:3-6
10:12-18
10:22 – 11-4

574:23575:10
R

25

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

11:7-9
12:3-10
12:23 – 13:3
15:18-19
15:21-23
16:4 – 17:7
20:16-18
24:14 – 25:13
25:15-21
31:21-22
32:17 – 33:4
33:6-15
33:20 – 34:23
34:25 – 36:3
39:6-22
40:21-24
45:16 – 46:15
48:7-23
55:15 – 56:17
56:20-21
56:25 – 57:22
58:8-10

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

25:22-25

IC

25:22-25

IC

31:23-25

IC

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

32:4-10
32:4-10

R, IC
R, IC

R
R, C, OB
R, C, OB
R, OB
R, P, CMP,
UFP
R, P, CMP,
UFP
S, CMP, C
R
R

R, CMP

39:23-42:4

R, CMP,

46:16-17,
46:19-47:2

R, CNF, OB,
V/A
R, CNF, UP
R, UP, CNF
R, UP, CNF
R, UP, CNF

26

42:5-7

Witness

Date

Defendant's
Designations

PUM's
Objections

58:14-25

71:25 – 73:25
6:4-7
10:12-24
11:2-4

R, UP, CNF,
S,
R, CNF, S
R, S, UP,
CNF, CMP
R, CNF, S
H
H
H

44:13-18

H

44:22-45:3
8:10-13
13:6-14:11

H
R
L, LC, CNF,
F, CMP
L, LC, CNF,
F, CMP
L, LC, CNF,
F, CMP
L, LC, CNF,
F, CMP
R
L, LC, F, R,
CNF
L, LC, F, R,
CNF

59:2-11
60:22 – 61:5

Montes, Frank

03/17/2011

Pazzani, Michael 11/17/2012
J.

14:21-23
14:25-15:2
15:4-8
17:11-22
18:6-10
18:12-21

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

61:6-7

11:19-12:5;
21:6-22:19
28:3-33:4;
42:11-43:10
46:24-47:8
14:12-19,
15:10-17:7
14:12-19,
15:10-17:7
14:12-19,
15:10-17:7
14:12-19,
15:10-17:7

27

IC, R, P
IC, R, P
IC, R, P

IC
IC
IC

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

18:23-19:23

L, LC, F, R,
CNF
L, LC, F, R,
CNF
L, LC, F, R,
CNF
L, LC, F, R,
CNF

19:24-30:6

IC

31:22-33:1

IC

CMP

17:18-24

31:2-21
33:7-10
33:12-34:12
Perrault,
Raymond C.

08/17/2011

7:15-23
16:15-17:21
18:6-8
22:1-13
26:11-22
27:13-17
36:9-13
39:10-40:14
41:5-43:2
52:1-16
52:24-56:3
56:9-19
56:21-23

Salter, James H.

9/10/2010

R, UP
R, CMP
R, CMO, UP
R, CNF, UP

30:20-31:6;
19:11-15
30:20-31:6;
19:11-15
51:24-52:2
55:6-16

R, CNF, UP

R, CNF, UP
R, CNF, UP
R, CNF, UP,
CMP

57:3-58:1

3:7-9

28

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

4:12-18

CMP, CNF

IC, R

13:17-21
15:4-16
21:3-23
22:14-8
24:3-11
34:3-35:9
35:17-25
38:1-9

CMP, CNF
CMP, R,CNF
CMP, R,CNF
CMP, R,CNF
R,CNF
CMP, R,CNF
CMP, R,CNF
R, UFP

5:2-10;
9:21-2;
12:24-13:3
14:15-19
15:17-21
22:8-13

IC

42:2-16
43:20-25
44:8-45:20
49:6-50:7
51:4-15
54:11-14

CMP, CNF, R

24:12-15
35:15-16
37:19-25
41:10-15;
41:19-42:1
42:17-21

IC

R, UFP
R, CNF
R, UFP
R, CMP, V/A

48:16-49:2

IC, R, P

57:6-8;
57:10-17;
57:24-58:6
58:24-59:21;
59:23
60:25-61:6;
61:11-62:1;
62:4

IC

62:11-19

R

62:20-24
29

IC

IC
IC, ET

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

08/15/2011

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

64:6-65:7
Sonmez,
Mustafa Kemal

Date

R, UP

65:13-15;
65:17-19

IC, P

43:7-44:15

IC, I

R, MIS, UFP,
CNF, CMP,
NC

47:11-49:3

IC

R, UFP, CNF,
MIS, CMP,
NC

65:1-15

4:9-11
4:18-19
12:18-13:23
18:17-25
19:9-20:1
29:21-24
30:13-17
34:4-11
35:3-36:7
41:22-42:16
42:18-21
43:1-8
45:22-46:4
46:9-47:10

55:8-21
64:23-25

R
CMP

R, MIS, UFP,
CNF, CMP
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF

30

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

71:21-72:18

R, UFP, CNF,
MIS, CMP,
NC
R, UFP, CNF,
MIS,

72:19-74:7

CMP, MIS

14:2-8

R, CMP
R
R

20:20-21:1

75:15-76:1

Stolcke, Andreas 07/06/2011

100:6-11
100:22-101:15
101:23-102:1
7:22-9:5
9:9-10:7
10:23-25
11:3-4
11:8-10
12:5-18
13:23-14:1
16:11-13
16:17-17:10
17:12-22
17:24
18:1-4
18:12-17
18:19-23
18:25-20:7
20:13-17
21:8-19
21:22-22:2

31

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

22:9-17
23:1-11
23:13-15
23:17-24:18
24:20-25:21
28:4-12

R
R, MIS
R, MIS
R, MIS
R, MIS
MIS, CMP,
NC, CNF,
UFP
MIS, CNF,
UFP, CMP,
NC
MIS, CNF,
UFP, CMP,
NC
MIS, CNF,
UFP, CMP,
NC
MIS, CNF,
UFP
MIS, CNF,
UFP, CMP,
NC

29:13-23

30:1-20

30:22-32:3

34:11-35:1
35:14-17

35:20-36:8
36:15-21
36:23-37:10
37:12-25

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

35:2-9

CMP

28:20-29:12

29:24-25

32:4-12;
33:25-34:10

R

35:9-13

I

36:9-14

R, MIS, UFP,
CNF
32

Witness

Date

Defendant's
Designations

PUM's
Objections

38:22-39:25

R, MIS, UFP,
CNF
R, MIS, UFP,
CNF

40:3-14
40:21-41:2
41:10-14
41:16-42:6
42:8-12
45:8-47:1
48:20-24
49:1-3
49:7-50:23
50:25-51:7
51:9-11
57:18-23
58:2-4
58:18-59:1

PUM's
Counter
Designations

R, MIS, UFP,
CNF
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF, S, CMP

R, MIS, UFP,
CNF, S
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF, CMP
MIS, CMP,
CNF
C, R, MIS,
UFP, CNF, S
C, R, MIS,
UFP, CNF, S
33

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

47:2-5

47:2-5

IC

65:2-5;
65:17-19

65:17-19

52:8-18

52:8-18

57:10-17

57:10-17

IC

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

60:1-3

C, R, MIS,
UFP, CNF, S
R, MIS, UFP,
CNF, S, C

60:5
73:13-74:7
74:11-22
74:25
75:2-4
75:6-9
75:12-13
75:16
75:18-24
76:1-8
76:10
76:12-14
76:16
78:18-22
78:24-79:16
79:18-80:7
96:17-20
96:22-24
100:8-16

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

80:8-10

IC

R, MIS, UFP,
CMP
R, MIS, UFP,
CNF
CMP
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF
R, CNF, S, C.
LF
34

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

100:19-101:8

R, CNF, S,
LF, C
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF
R, MIS, UFP,
CNF

103:15-19
104:16-20
105:17-19
105:21-106:23
Twersky, Roy

12/03/2010

5:13-15
7:10-22
7:25 – 8:5
8:13-15
8:24 – 9:3
10:16-18
12:16-20
18:4-9
18:12-17
20:14-20

PUM's
Counter
Designations

CMP, MIS
S, CNF, MIS,
UFP
S, MIS, CMP,
UFP
MIS, C, CMP,
CNF, S
MIS, C, CMP,
CNF, S
LF, C, MIS,
UFP, S
LF, C, MIS,
UFP, S
LF, C, MIS,
UFP, S
35

Defendant's
Objections to
PUM's
Counter
Designations

7:23-24

IC

9:9-15

IC, R

13:3-11; 15:5- IC, I, R, P
16:21

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

16:22-24,
17:2-12

R, MIS, CNF,
S

Witness

Date

Defendant's
Designations

PUM's
Objections

20:22 – 21:1

LF, C, MIS,
UFP, S
LF, C, MIS,
UFP, S, CMP

21:5 – 22:14

22:22 – 23:6
24:2-22
27:3-11
27:19-21

PUM's
Counter
Designations

LF, C, MIS,
UFP
R, UFP, MIS,
S
R, MIS, CNF,
C
MIS, CNF,
UFP

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

101:10102:11;
104:21-25
23:12-18

IC, R, P

101:4-9

Improper
counter, R,
MIS. CNF

P

23:19-20

27:22-28:2;
28:22-29:24;
30:7-11
34:10-14;
35:12-23;
36:15-18
87:14-88:2;
99:1-4

IC, R, P

34:22 – 35:11

CMP, S

37:14-19

R, UFP, CNF,
MIS
R, UFP, CNF,
MIS
UFP, CNF, C,
MIS LF
R, UFP, S, LF,
C, CNF, MIS
UFP, S, LF, C, 44:12-17
CNF, MIS

39:8-25
42:7 -18
43:2-10
45:17-25

36

IC, R, P, I

I, IC, R, P

IC, ET, P

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

50:14 – 51:2

MIS, UFP,
CNF, CMP

49:25-50:7;
51:3-52:8;
53:24-54:5;
54:10-14

IC, ET

54:6-9

92:6-13

R, S, LF, C,
UFP
R, S, LF, C,
UFP
MIS, CNF, C, 109:6-110:21
LF, CMP
MIS, CNF
R, MIS, C.
LF, CNF, UFP

96:21-25
107:16 – 109:5
110:22 – 111:4
111:15 – 113:4

114:1 – 115:5
115:14 – 116:12 R, MIS, CNF,
UFP, CMP
117:1-8
R, MIS, UFP,
CNF
119:6 – 125:22 R, UFP, CNF,
MIS
126:20 – 127:2 R, UFP, CNF,
MIS, CMP

130:15 – 134:4
134:21 – 135:7

R, UFP, MIS,
CMP
R, UFP, MIS

37

IC, R, P

116:17-25

I, IC

126:15-17;
127:3-128:12;
129:12-16;
129:17-130:4
134:10:20

IC, I, P, R

IC, P

PUM's
Objections to
Defendant's
CounterCounter
Designations
S, R, C, MIS,
UFP

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

173:15-23

IC

185:14186:14;
186:24 –
187:2

IC, R, P, I

220:13-16;
235:2-4;
238:7-17

IC

225:20-23

I, IC, P

226:11-17

MIS, CNF.
UFP, CMP
177:9 – 178:7
MIS, CNF.
UFP, CMP
178:21 – 180:25 R, MIS, CNF.
UFP
181:7 – 182:17 R, MIS, CNF.
UFP, CMP

Defendant's
Objections to
PUM's
Counter
Designations

IC

160:9 – 162:6

Twersky, Roy

05/05/2011

189:10-16
190:17 – 191:11
209:14 – 210:22
212:13-19
215:9-13
215:15-19
215:21 – 219:10
220:2-3
220:10-12

R, MIS, C. LF
R

R
R, UFP, MIS,
CNF
CMP, MIS

221:13 – 222:1 R, MIS, UFP
224:15 – 225:12 CNF, MIS,
UFP, CMP
226:8-10
MIS, CMP
228:18 – 232:21 R, MIS
38

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

236:19 – 237:7

R, MIS, UFP,
CNF
237:19-22
R, MIS. UFP,
CNF
238:7 – 239:16 R, UFP, MIS,
CNF, CMP
248:16 – 249:25 R, MIS, UFP,
CNF
250:25 – 251:12 S, R, UFP,
CNF, MIS
252:17-21
S, R, UFP,
CNF, MIs
254:13-15
S, R, UFP,
CNF, MIS
255:2 – 256:10 S, R, UFP,
CNF, MIS
256:23 – 257:2 S, R, UFP,
CNF, MIS
257:4-12
R, S, UFP,
CNF, MIS
257:14-19
R, S, UFP,
CNF, MIS
257:21-25
R, S, UFP,
CNF, MIS
261:5-12
R, S, UFP,
CNF, MIS

39

Defendant's
Objections to
PUM's
Counter
Designations
IC, I, P

239:17-20

I, IC, P

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

269:23-270:3;

I, IC, P

268:23269:22;
270:4-272:14

Improper
counter, R,
MIS, S, CNF

275:8-21

I, IC, P

301:4-7;
303:25304:11;
308:24-309:2
S

I, IC, P

311:24

CMP, R,
improper
counter

319:7 –
320:15

R, S, UFP,
CNF, MIS
272:15 – 273:11 R, S, UFP,
CNF, MIS,
CMP
273:13-16
273:18-24
R, S, UFP,
CNF, MIS,
CMP
278:2 – 280:8
R
280:10-15
280:17-23
R
296:17-25
MIS, CMP,
CNF, UFP

Defendant's
Objections to
PUM's
Counter
Designations

IC

320:16-22

improper
counter

263:17-22

311:2-23

R, MIS, C, LF

312:25 – 313:7
314:2 – 315:11
316:18-21
316:23 – 317:4
317:6-7
317:12 – 319:6

CMP

320:23 – 321:1
40

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

321:4-25

CMP

321:21-323:6

I, IC

324:16-326:4

328:1-16

R. MIS. CNF,
C, LC

332:3-25

R, UFP, MIS,
S
R
R, UFP, MIS,
S

334:14-21
335:12-21

335:23 – 338:10
339:6 – 340:7
340:9 – 341:3
342:4-19
350:6-7
350:11-20
LC, C

326:13327:25;
328:24-329:4

343:5-11

41

IC, P

PUM's
Objections to
Defendant's
CounterCounter
Designations
improper
counter, new
subject matter
and
documents, R,
CNF, MIS,
UFP, CMP
improper
counter, new
subject matter
and
documents, R,
CNF, MIS,
UFP, CMP

Witness

Date

Defendant's
Designations

PUM's
Objections

PUM's
Counter
Designations

S, LC, C,
CNF, MIS,
UFP
353:8-10
S, LC, C, CNF
MIS, UFP
353:12 – 355:14 S, LC, C,
CNF, MIS,
UFP
355:16 – 356:3 S, LC, C,
CNF, MIS,
UFP
356:18 – 357:1 S, LC, C,
CNF, MIS,
UFP, CMP
371:23 – 372:9 LC, CNF,
MIS, UFP
379:18 – 381:2 R, MIS. CNF
383:1-9
CMP, MIS
385:2-4
CMP, MIS.
CNF, UFP
395:10 – 396:22 CMP, MIS,
CNF
398:22-25
399:12-16
402:1 – 404:7
404:9-12
405:8 – 406:18

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

357:8-358:2

I, IC

357:2-7

392:10-17;
393:11-23
394:25-395:9

IC, P

352:21 – 353:6

42

IC, P

PUM's
Objections to
Defendant's
CounterCounter
Designations

Witness

Date

Defendant's
Designations

PUM's
Objections

411:22 – 413:1

UFP, MIS, R,
CNF
UFP, MIS, R,
CNF

413:3 – 414:2

Twersky, Roy

01/26/2012

PUM's
Counter
Designations

431:2-11
432:11-23
433:25 – 434:11 R, MIS, CNF
447:3 – 449:12 R, MIS, UFP,
CNF, LC
450:2 – 451:2
LC, MIS,
CNF, UFP
451:5 – 452:25 LC, MIS,
CNF, UFP
454:17-23
S, LC, UFP
456:4-25
S, LC, MIS,
UFP
482:3-22
486:12-22

43

Defendant's
Objections to
PUM's
Counter
Designations

Defendant's
CounterCounter
Designations

PUM's
Objections to
Defendant's
CounterCounter
Designations

EXHIBIT 10

REDACTED
IN ITS
ENTIRETY

EXHIBIT 11

REDACTED
IN ITS
ENTIRETY

EXHIBIT 12

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 MOTION IN LIMINE TO PRECLUDE GOOGLE FROM
PRESENTING ARGUMENT OR EVIDENCE THAT IT IS AN OWNER OF THE
PATENTS-IN-SUIT OR ON OTHER RELATED LEGAL AND EQUITABLE ISSUES

OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
Andrew M. Grodin
DENTONS US LLP
101 JFK Parkway
Short Hills, NJ 07078
[phone]
February 10, 2014

PUM moves in limine to preclude Google from presenting argument or evidence: (1) that
Google is an owner of the patents-in-suit; (2) that PUM lacks standing to bring this lawsuit;
(3) that Google is entitled to a constructive trust; or (4) on Google’s claims for conversion.
It is undisputed that Google has no legal title to the patents-in-suit; instead it has, at best,
an equitable claim to title. As set forth below, equitable title cannot defeat PUM’s standing.
There is thus no issue for the jury to decide. Google’s claims to equitable ownership and for
imposition of a constructive trust also are matters for the Court to decide in equity and not for the
jury. Google concedes these are not jury questions in its sections of the Pretrial Order, asserting
that these matters are “to be decided by the Court.” (Ex. A.)
Finally, because Google must first establish it had legal title or an immediate right to
possession to state a claim for conversion, this, too, is an issue for the Court to decide as a
predicate to any conversion claim. Because Google’s can only meet this threshold requirement if
the Court first grants equitable relief, there is nothing for the jury to decide on conversion either.
As a result, Google should be precluded from offering evidence or argument on these issues
before the jury.
ARGUMENT
A.

Google’s Standing, Ownership, and Constructive Trust Claims
Are Matters of Equity For the Court to Decide

Just as the Court determines whether a party is entitled to the equitable relief of an
injunction, here the Court must decide all issues of equitable relief related to standing and
ownership. Therefore, there is no reason to refer to the issues of standing, co-ownership, or
constructive trust to the jury. Google agrees that “[a]ny factual or legal determinations relevant
to” equitable issues such as laches “should be determined by the Court.” See Ex. A. It also

1

agrees that the equitable issues of ownership and constructive trust are to be decided by the
Court. Id.
The sole issue in determining whether a plaintiff has standing to bring a patent
infringement suit is whether the plaintiff possesses legal title ownership of the patent. Arachnid,
Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991). The only parties with legal title
ownership are the patentee, his assignee, his grantee, or his personal representatives. See id.
Google does not and cannot contend that it falls into any of these categories or that it otherwise
has legal title to the patents-in-suit. See D.I. 185 at 12 (alleging that Dr. Konig assigned his
rights in the patents “to Utopy – not SRI – on June 15, 2000”). Rather, Google asks the Court to
find that it is entitled to a declaration of ownership “by virtue of Konig’s [alleged] contractual
obligation” to assign his rights in the patents-in-suit to his former employer, SRI, pursuant to his
employment agreement. (D.I. 185 at 14.)1 As Google acknowledges in its sections of the
Pretrial Order, declaration of ownership is an equitable determination that only the Court may
make. (Ex. A). There is no reason for the jury to hear argument or evidence on that issue.
Google’s constructive trust claim is also not an issue for the jury. “A constructive trust . .
. is an equitable remedy, not a substantive claim for relief.” PCO, Inc. v. Christensen, Miller,
Fink, Jacobs, Glaser, Weil & Shapiro, LLP, 150 Cal. App. 4th 384, 398 (Cal. Ct. App. 2007).
Because these issues are indisputably legal and equitable issues that only the Court may
decide, argument and evidence on these issues should be precluded as not only irrelevant, but
also likely confusing to the jury and unduly prejudicial to PUM.
1

Google thus agrees the employment agreement itself effected no immediate transfer of
Dr. Konig’s rights. See Bd. Of Trustees of Leland Stanford v. Roche, 583 F.3d 832, 84142 (Fed. Cir. 2009) (contract language agreeing to assign effects no immediate transfer of
interest).

2

B.

Google Cannot Prove Conversion Until The Court Decides Its
Ownership Claim

Google cannot establish conversion without first proving that it is an owner. Fremont
Indem. Co. v. Fremont Gen. Corp., 148 Cal. App. 4th 97, 119 (Cal Ct. App. 2007) (listing “the
plaintiff's ownership or right to possession of personal property” as first element of tort). To
establish ownership, a party must show either that it has legal title or was entitled to immediate
possession at the time of the alleged conversion. Plummer v. Day/Eisenberg, LLP, 184 Cal.
App. 4th 38, 45 (Cal. Ct. App. 2010). As noted above, Google acknowledges that it has neither.
That is because SRI never held legal title to the patents, but at best had an equitable claim to
have legal title assigned to it in the future. See Roche, 583 F.3d at 841-42. Google further
acknowledges that it must first establish that Dr. Konig breached his employment agreement to
make any claim to the relief that it seeks. (D.I. 185 at 14.) As a result, Google cannot establish
the first element of its conversion claim – that it legally owned or had a right to immediate
possession of the patents-in-suit – until after the Court first determines whether Google is
entitled to be declared a co-owner of the patents-in-suit.
If the Court concludes that Google is entitled to the equitable relief of a declaration of
ownership, Google cannot go “back to the future” and prevail on a retroactive claim of legal
ownership. See Arachnid, 939 F.2d at 1579 (right to seek equitable relief of declaration of
ownership cannot retroactively divest legal title holder of title to the patent). Thus, all argument
and evidence of Google’s conversion claim should also be heard by the Court and not the jury.
CONCLUSION
Google should be barred from presenting arguments or evidence that it is a co-owner of
the patents-in-suit or that PUM lacks standing, or from otherwise presenting argument or
evidence relating to its claims of co-ownership, standing, constructive trust, and conversion.

3

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Regina Murphy

OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]

_________________________________________
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
Andrew M. Grodin
DENTONS US LLP
101 JFK Parkway
Short Hills, NJ 07078
[phone]
February 10, 2014
7991004.1

4

CERTIFICATE OF SERVICE
I hereby certify that on February 10, 2014, 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 February 10, 2014, 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/ Regina Murphy
___________________________
Regina Murphy (#5648)

EXHIBIT A

EXHIBIT 5 TO PRETRIAL ORDER
GOOGLE’S STATEMENT OF ISSUES OF LAW TO BE LITIGATED AT TRIAL
Google submits the issues of law that remain to be litigated based upon Google’s current
understanding of each parties’ claims and defenses. Google believes that some of these issues
are issues of law that must be resolved by the Court. Accordingly, below Google first lists issues
of law that must be resolved by the Court, then lists all other issues that remain to be litigated at
trial. Should the Court determine that any issue identified is more properly considered an issue
of fact, it shall be so considered and Google incorporates it be reference into its list of contested
facts to be litigated. Google reserves the right to revise, modify, supplement, or change the
issues of law to be litigated in light of any pretrial rulings by the Court and/or in light of any
further identification of issues of law and fact by PUM and/or to address any additional issues,
arguments, evidence or other developments in the case, including pending and anticipated
motions, and similar developments.
Issues of Law to Be Litigated at Trial and Decided by the Court
A.

Invalidity
Whether the Asserted Claims of the patents-in-suit are invalid as obvious.
(a)

B.

Authorities: 35 U.S.C. § 103 ; KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 (2007); Perfect Web Technologies, Inc. v. InfoUSA, Inc.,
587 F.3d 1324 (Fed. Cir. 2009). In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000) (Obviousness is a question of law, based on
underlying facts. ). Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966) (To determine obviousness, a court must
consider: (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the
level of ordinary skill in the art; and (4) any relevant secondary
considerations, such as commercial success, long felt but unsolved
needs, and the failure of others.)

Standing
Whether PUM lacks standing to sue because it failed to join as plaintiffs all co-owners of
the patents-in-suit, including Google.
(a)

Authorities: 35 U.S.C. § 262; Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456, 1467 (Fed. Cir. 1998) (“an action for [patent]
infringement must join as plaintiffs all co-owners.”).

1

C.

Contract Interpretation
Google understands that the Court has ruled that the issue of contract interpretation is an
issue of fact for the jury. (See D.I. 521; D.I. 537.) In particular, Google understands that
the Court has found that the issue of interpretation of the word “conceived” is an issue of
fact to be decided by the jury. Google does not agree that PUM has introduced any
conflicting extrinsic evidence or that the jury should decide this issue, but Google seeks
confirmation that the Court has ruled on this matter. (See also Exhibit 19.)
(a)

D.

Authorities: Winet v. Price, 4 Cal. App. 4th 1159, 1166 (4th Dist.
1992) (“[W]hen the competent parol evidence is not conflicting,
construction of the instrument is a question of law”); Scheenstra v.
Cal. Dairies, Inc., 213 Cal. App. 4th 370, 390 (5th Dist. 2013)
("Even where uncontroverted evidence allows for conflicting
inferences to be drawn, our Supreme Court treats the interpretation
of the written contract as solely a judicial function."); Tautges v.
Global Datacenter Mgmt., Inc., No. 09-785, 2010 WL 3384980, *3
(S.D. Cal. Aug. 26, 2010) (“If no parol evidence is introduced to
interpret the contract, or if the evidence is not contradictory, the
trial court's resolution of the ambiguity is a question of law.”); Cal.
Civ. Code §§ 1636, 1643, 1644, and 1649; Elec. Electronic
Control, Inc. v. L.A. Unified School Dist., 126 Cal. App. 4th 601,
612 (2d Dist. 2005) (construing contracts requires “examining the
words the parties have chosen [,] giving effect to the ordinary
meaning of those words.”); AT&T v. Integrated Network Corp.,
972 F.2d 1321, 1324 (Fed. Cir. 1992) (“We disagree with the
district court that conception of inventions, as used in the
employment agreement, is solely a technical question of patent law
. . . the contract may have used conception in its generic, broadest
sense.”).

Laches
Whether the relief Google seeks for its counterclaims for a declaration of Google’s rights
as co-owner, breach of contract, conversion, and constructive trust, is barred by the
doctrine of laches. Any factual or legal determinations relevant to laches should be
determined by the Court.

2

(a)

Authorities: Whittington v. Dragon Group, L.L.C., 991 A.2d 1, 8
(Del. 2009) (“laches generally requires proof of three elements:
first, knowledge by the claimant; second, unreasonable delay in
bringing the claim; and third, resulting prejudice to the
defendant.”) (internal quotation marks omitted).

E.

Remedies

1.

Whether Google is entitled to a declaration that it is a rightful co-owner of the '040 or
'276 patents.
(a)

2.

Authorities: 28 U.S.C. §§ 2201-2202.

Whether a constructive trust should be imposed against Yochai Konig and PUM, to
compel transfer of '040 and '276 patent title from its wrongful holder (PUM) to its
rightful holder (Google).
(a)

Authorities: Campbell v. Superior Court, 132 Cal. App. 4th 904,
920 (4th Dist. 2005) ("A constructive trust is an involuntary
equitable trust created by operation of law as a remedy to compel
the transfer of property from the person wrongfully holding it to
the rightful owner."); Grove v. Grove Valve & Regulator Co., 4
Cal. App. 3d 299 (1970); In re Bake-Line Group, LLC, 359 B.R.
566, 574 (Bkrtcy D. Del. 2007) ("Where a person holding title to
property is subject to an equitable duty to convey it to another on
the ground that he would be unjustly enriched if he were permitted
to retain it, a constructive trust arises."); U.S. v. Dubilier
Condenser Corp., 289 U.S. 178 (1933) ("A patent is property, and
title to it can pass only by assignment. If not yet issued, an
agreement to assign when issued, if valid as a contract, will be
specifically enforced.")

Additional Issues to be Litigated at Trial
A.

Infringement

1.

Whether Google’s Accused Products literally infringe any of the asserted claims of the
'040 or '276 patents.
3

(a)

2.

Authorities: 35 U.S.C. § 271; Broadcom Corp. v. Qualcomm Inc.,
543 F.3d 683, 696 (Fed. Cir. 2008) (jury must examine the
evidence to determine whether the accused product infringes the
properly construed claims); Warner-Lambert Co. v. Teva Pharms.
USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir. 2005)
(infringement must be proven by a preponderance of the evidence);
Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836,
842 (Fed. Cir. 1999) (a patentee must “prove that the accused
product or process contains, either literally or under the doctrine of
equivalents, every limitation of the properly construed claim”);
Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1468-69
(Fed. Cir. 1993) (upholding lower court’s finding of
noninfringement based on plaintiff’s failure to prove that the
accused product met all of the claimed requirements); Kim v.
ConAgra Foods, Inc., 465 F.3d 1312, 1316, n.1 (Fed. Cir. 2006)
(dependent claims not infringed when independent claim not
infringed); MicroStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344,
1352-53 (Fed. Cir. 2005) (no literal infringement where accused
product did not contain every element of the claim); Cross Med.
Prods. v. Medtronic Sofamor Danek, 424 F.3d 1293, 1309-11 (Fed.
Cir. 2005) (no direct infringement where accused product did not
include each claim limitation); Netword, LLC v. Centraal Corp.,
242 F.3d 1347, 1353-54 (Fed. Cir. 2001) (no literal infringement
where all of the elements of the claim not present in the accused
system); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1550
(Fed. Cir. 1983) (no infringement of an invalid patent).

Whether Google’s Accused Products infringe any of the asserted claims of the '040 or
'276 patents under the doctrine of equivalents.
(a)

Authorities: Equivalence to a claim limitation depends on
"whether the substitute element matches the function, way, and
result of the claimed element, or whether the substitute element
plays a role substantially different from the claimed element."
Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 40
(1997). Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir.
1998) ("If a theory of equivalence would vitiate a claim limitation,
however, then there can be no infringement under the doctrine of
equivalents as a matter of law."); Overhead Door Corp. v.
Chamberlain Group, Inc., 194 F.3d 1261 (Fed. Cir. 1999)
(infringement by equivalents is only appropriate where the accused
structure “performs substantially the same function in substantially
the same way to achieve substantially the same result as does the”
missing element); Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d
394, 398 (Fed. Cir. 1994) (doctrine of equivalents cannot be used
as a pretext to extend or enlarge claim scope or to ignore claim
4

limitations; “[i]n short, the concept of equivalency cannot embrace
a structure that is specifically excluded from the scope of the
claims.”); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314,
1331-34 (Fed. Cir. 2001) (“The question of insubstantiality of the
differences is inapplicable if a claim limitation is totally missing
from the accused device.”). Zygo Corp. v. Wyko Corp., 79 F.3d
1563, 1569 (Fed. Cir. 1996) (“A finding of equivalency just
because the same result is achieved is a flagrant abuse of the term
‘equivalent.’”); Zodiac Pool Care, Inc. v. Hoffinger Indus., 206
F.3d 1408, 1417 (Fed. Cir. 2000) (not proper to “reduce the claims
to nothing more than ‘functional abstracts, devoid of meaningful
structural limitations on which the public could rely.’”) (citations
omitted); Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d
1338, 1345 (Fed. Cir. 2006) (application of doctrine of equivalents
not appropriate “where the accused device contain[s] the antithesis
of the claimed structure.”); Freedman Seating Co. v. Am. Seating
Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005) (“[A]n element … is
not, as a matter of law, equivalent … if such a finding would
entirely vitiate [a] limitation.”); The Johns Hopkins Univ. v.
Datascope Corp., 543 F.3d 1342, 1348, n3 (Fed. Cir. 2008) (“FDA
equivalence is irrelevant to patent law because it involves
fundamentally different inquiries”); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc. (doctrine of equivalents cannot
recapture subject matter “specifically identified, criticized, and
disclaimed”); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd., 535 U.S. 722, 734 (2002) (presence of amendment
triggers presumption that application of the doctrine of equivalents
is precluded, because when patentee responds to “[a] rejection by
narrowing his claims, [the] prosecution history estops him from
later arguing that the subject matter covered by the original,
broader claim was nothing more than an equivalent.”); Southwall
Techs, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir.
1995) (whether application of the doctrine of equivalents is
restricted is a question of law).
3.

PUM includes in Exhibit 4 law regarding inducement of infringement. PUM did not
disclose in discovery that it contends Google induces infringement, or any facts to
support such a claim. Thus, it should be precluded from pursuing a claim of indirect
infringement at trial.

5

B.

Invalidity

1.

Whether the Asserted Claims of the patents-in-suit are invalid as anticipated under 35
U.S.C. § 102.
(a)

Authorities: 35 U.S.C. § 102; Verdegaal Bros., Inc. v. Union Oil
Co. of Cal., 814 F.2d 628 (Fed. Cir. 1987) ; In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994) (to be anticipating, a prior-art
reference must disclose “each and every limitation of the claimed
invention[,] ... must be enabling[,] and [must] describe ... [the]
claimed invention sufficiently to have placed it in possession of a
person of ordinary skill in the field of the invention.”); Helifix, Ltd.
v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000) (where a
reference “‘does not expressly disclose in words’ one or more
elements of a patent claim[, the reference can] nevertheless be
anticipating if one of ordinary skill in the art would understand the
[reference] as disclosing [the missing elements] and if such person
could have combined the [reference’s] description of the invention
with his own knowledge to make the claimed invention.”); In re
Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“[P]ossession is
effected if one of ordinary skill … could have combined the
publication’s description of the invention with his own knowledge
to make the claimed invention.”); Microsoft Corp. v. i4i Ltd.
P’ship, 564 U.S. ___, 131 S. Ct. 2238, 2245-46, 2249-50 (2011)
(“Nothing in § 282’s text suggests that Congress meant ... to enact
a standard of proof that would rise and fall with the facts of each
case”; fact that references were previously before the PTO goes
only to the weight the court or jury might assign them; “if the PTO
did not have all material facts before it, its considered judgment
may lose significant force … concomitantly, the challenger’s
burden to persuade the jury of its invalidity defense by clear and
convincing evidence may be easier to sustain.”); Sciele Pharma
Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012) (
“reasonable to give more weight to new arguments or references
… not explicitly considered by the PTO”).

C.

Issues Concerning Breach of Contract, Ownership, Conversion, and Constructive
Trust

1.

Whether Yochai Konig breached his Employment Agreement with SRI.
(a)

Authority: Abdelhamid v. Fire Ins. Exch., 182 Cal.App.4th 990,
999 (3d Dist. 2010) (“The standard elements of a claim for breach
of contract are (1) a contract, (2) plaintiff's performance or excuse
for nonperformance, (3) defendant's breach, and (4) damage to
plaintiff therefrom.”); Cal. Labor Code § 2870; Cadence Design
6

Sys., Inc. v. Bhandari, 2007 WL 3343085, *5 (N.D. Cal. Nov. 8,
2007) (“[T]here are three independent scenarios in which an
agreement assigning an invention to an employer is enforceable
under section 2870: (1) The invention was developed using the
employer's time or resources; or (2) The invention relates to the
employer's business or actual or demonstrably anticipated research
or development; or (3) The invention resulted from work
performed by the employee for the employer.”); Cubic Corp. v.
Marty, 185 Cal. App. 3d 438, 451 (4th App. Dist. 1986).
2.

Whether Yochai Konig and PUM unlawfully converted SRI’s and Google’s interest in
the '040 or '276 patents.
(a)

3.

Authorities: Spates v. Dameron Hosp. Assn., 114 Cal.App.4th 208,
221 (3d Dist. 2003) ("Conversion is the wrongful exercise of
dominion over the property of another. The elements of a
conversion are the plaintiff's ownership or right to possession of
the property at the time of the conversion; the defendant's
conversion by a wrongful act or disposition of property rights; and
damages.")

Whether PUM or its predecessors-in-interest are good faith purchasers under 35 U.S.C.
§ 261.
(a)

4.

Authorities: 35 U.S.C. § 261; Filmtec Corp. v. Allied-Signal Inc.,
939 F.2d 1568, 1573 (Fed. Cir. 1991); Rhone Poulenc Agro, S.A. v.
DeKalb Genetics Corp., 284 F.3d 1323 (Fed. Cir. 2002).

Whether the statute of limitations on Google’s breach-of-contract, ownership, conversion,
and/or constructive trust claims was tolled under Delaware Code Title 10, Section 8117.
(a)

Authorities: 10 Del. C. § 8117; Saudi Basic Indus. Corp. v. Mobil
Yanbu Petrochem. Co., Inc., 866 A.2d 1, 18 (Del. 2005) (“It is
settled law that the purpose and effect of Section 8117 is to toll the
statute of limitations as to defendants who, at the time the cause of
action accrues, are outside the state and are not otherwise subject
to service of process in the state. In those circumstances, the
statute of limitations is tolled until the defendant becomes
amenable to service of process.”)

7

5.

Whether the statute of limitations on Google’s breach-of-contract, ownership, conversion,
and/or constructive trust claims was tolled under the discovery rule.
(a)

Authorities: Wal-Mart Stores, Inc. v. AIG Life Ins. Co., 860 A.2d
312, 319 (Del. 2004) ("Under the ‘discovery rule’ the statute is
tolled where the injury is ‘inherently unknowable and the claimant
is blamelessly ignorant of the wrongful act and the injury
complained of.'")

8

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, LLP and
YOCHAI KONIG
Counterdefendants.

)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)

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

OPPOSITION TO PUM’S MOTION IN LIMINE TO PRECLUDE ARGUMENT OR
EVIDENCE THAT GOOGLE IS AN OWNER OF THE PATENTS-IN-SUIT OR OTHER
RELATED LEGAL AND EQUITABLE ISSUES
OF COUNSEL:
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Margaret Pirnie Kammerud
50 California St.
San Francisco, CA 94111
Andrea Pallios Roberts
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Joshua L. Sohn
777 6th St. NW, 11th Floor
Washington, D.C. 20001-3706

01980.51575/5758603.1

Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
POTTER ANDERSON & CORROON LLP
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

A.

PUM’s Motion Is Vague and Impractical in Terms of Requested Relief

PUM’s motion in limine regarding ownership and “other related legal and equitable
issues” is quite vague in terms of what evidence it actually wishes to preclude. The opening
sentence states: “PUM moves in limine to preclude Google from presenting argument or
evidence: (1) that Google is an owner of the patents-in-suit; (2) that PUM lacks standing to bring
this lawsuit; (3) that Google is entitled to a constructive trust; or (4) on Google’s claims for
conversion.” (MIL at 1.) But it is difficult to see what this request means in practice. For
example, the evidence supporting Google’s ownership claim, constructive trust request, and
standing defense is largely the same as the evidence supporting Google’s breach-of-contract
claim – namely, that Google is the rightful owner of the Asserted Patents because Konig
breached his Employment Agreement with SRI and Google has purchased SRI’s rights to the
Asserted Patents. PUM implicitly concedes that Google’s breach of contract claim should go to
the jury, as it does not list the breach-of-contract claim as one of the areas that it wishes to
preclude. But if evidence supporting the breach-of-contract claim goes before the jury, then
evidence supporting the ownership claim, constructive trust request, and standing defense will go
before the jury as well. It is largely the same evidence. As just one specific example, the
Google-SRI purchase agreement both gives Google standing to bring the breach-of-contract
claim as SRI’s assignee and also is necessary to establish Google’s ownership rights.
B.

Google Should Be Allowed to Raise Ownership Issues Before the Jury to
Show the Motive for PUM’s Changed Position on the Conception Date

As best Google can determine, what PUM is really arguing is that Google should be
forced to litigate the breach-of-contract claim in isolation, without mentioning to the jury the
likely consequences of a successful breach-of-contract claim – namely, that Google will be
declared a rightful owner of the Asserted Patents and PUM will be subjected to a constructive

01980.51575/5758603.1

trust ordering transfer of patent title from PUM to Google. While Google has no intention to
lecture the jury on the details of constructive trust law, it is both relevant and important for
Google to explain to the jury that a successful breach-of-contract claim will make Google a
rightful co-owner of the Patents. This will show the jury the great importance of the breach-ofcontract claim, and thus support Google’s trial story that PUM strategically flip-flopped on the
Asserted Patents’ conception date to try to defeat this important new claim.
Specifically, PUM served two interrogatory responses before the breach-of-contract
claim was raised stating that the patented inventions were conceived no later than July 1999 – a
time when Konig was employed by SRI and required by his Employment Agreement to assign
his inventions to SRI. But immediately after Google brought the breach-of-contract claim, PUM
served a new interrogatory response changing the conception date to September 1999, right after
Konig left SRI. (D.I. 413 at 2-3.) Google believes that PUM’s changed story on the conception
date was not sincere, but was a strategic attempt to avoid the breach-of-contract claim by taking
the patents outside the time period governed by Konig’s Employment Agreement. To convince
the jury that PUM’s changed story was insincere – i.e., to convince the jury that the initial July
1999 conception date is the correct one – it is important for Google to explain why PUM would
be so highly motivated to change its story on this issue. This requires telling the jury about the
severe consequences that could result if the July 1999 conception date remained – namely, that
Konig’s rights to the Asserted Patents could be held by Google and PUM would lose ownership
of the Patents. For this reason, raising the ownership issues before the jury is very important to
effectively litigate the breach-of-contract claim before the jury.

01980.51575/5758603.1

C.

PUM’s Argument to Preclude Google’s Conversion Claim Fails Because
Google’s Present Equitable Title is Sufficient to Establish Conversion

PUM also argues that Google’s conversion claim should be barred from the jury because
“Google cannot establish the first element of its conversion claim – that it legally owned or had a
right to immediate possession of the patents-in-suit – until after the Court first determines
whether Google is entitled to be declared a co-owner of the patents-in-suit.” (MIL at 3.)
This argument is wrong as a matter of law. Google concedes that it does not yet have
legal title to the patents – it instead has equitable title, based on its status as SRI’s assignee and
SRI’s contractual right to Konig’s inventions. See Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d
1574, 1581 (Fed. Cir. 1991) (“Although an agreement to assign in the future inventions not yet
developed may vest the promisee with equitable rights in those inventions once made, such an
agreement does not by itself vest legal title to patents on the inventions in the promisee.”)
(emphasis in original). Indeed, the whole point of Google’s constructive trust request is to
compel transfer of legal patent title from its wrongful holder (PUM) to its rightful holder
(Google). Yet even before Google wins legal title, its present equitable title is perfectly
sufficient for a conversion claim. This is hornbook law:
The right to possession may, of course, be based on ownership or title, but it need
not be. A merely possessory right is sufficient. In addition, a right of possession
is, for the purposes of an action for conversion, sufficiently based on “equitable”
ownership.
14A Cal. Jur. 3d Conversion § 54 (emphasis added). Thus, PUM’s argument that Google’s
conversion claim is unripe and should be precluded fails as a matter of law.1

1

PUM’s position is also illogical It states that “all argument and evidence of Google’s
conversion claim should also be heard by the Court and not the jury.” (MIL at 3.) But
“[c]onversion is a common law tort,” which carries a right to a jury trial. J&J Sports Prods., Inc.
v. Orellana, No. 08-5468, 2010 WL 1576447, *2 n.1 (N.D. Cal. April 19, 2010). It would thus
violate the Seventh Amendment for this claim to be heard by the Court, as PUM requests.

01980.51575/5758603.1

Respectfully submitted,
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Margaret Pirnie Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]
Joshua Lee Sohn
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
777 6th Street NW, 11th Floor
Washington, DC 20001-3706
Tel: [phone]
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: February 10, 2014
1139995/ 34638

01980.51575/5774628.1

POTTER ANDERSON & CORROON LLP

By: /s/ David A. Perlson
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

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 REPLY IN SUPPORT OF ITS MOTION IN LIMINE TO PRECLUDE GOOGLE
FROM PRESENTING ARGUMENT OR EVIDENCE THAT IT IS AN OWNER OF THE
PATENTS-IN-SUIT OR ON OTHER RELATED LEGAL AND EQUITABLE ISSUES
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, Suite 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
February 18, 2014

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P.
and Yochai Konig

Google agrees that its claims for a declaration of co-ownership, lack of standing, and
constructive trust are not jury issues. Although Google may present evidence on its breach of
contract claim, including Google’s attempt to acquire patent rights1 and evidence on conception,
it should be precluded from mentioning the relief it seeks in order to unfairly sway the jury on
the breach of contract claim. See, e.g., American Fundware, Inc., 831 F. Supp. 1516, 1528 (D.
Colo. 1993) (barring data relating to claim for injunctive relief as matter for court not jury).
Google also should not be permitted to wrongly mislead the jury that if its conception date is
accepted, it would own the patents, and PUM would lose ownership and lack standing.2
Google’s assertion that conversion must go to the jury also fails. See United States v.
Bailey, 288 F. Supp. 2d 1261, 1270 (M.D. Fla. 2003) (“possessory interest [that is] dependent on
future events” is insufficient for conversion claim).

Google agrees that the employment

agreement did not transfer ownership, and thus seeks a declaration of equitable ownership, which
is an issue for the Court. Google does not address PUM’s cited authority, but instead cites a
treatise that equitable ownership suffices for conversion. The treatise and case law make clear,
however, that an agreement must actually “create an equitable assignment” of “a property
interest” to find equitable ownership for conversion. See McCafferty v. Gilbank, 249 Cal. App.
2d 569, 574–76 (Cal. Ct. App. 1967); Clifford v. Concord Music Grp., Inc., 2012 WL 380744, at
*3 (N.D. Cal. Feb. 6, 2012) (“mere contractual obligation” does not create property interest).

1
    Contrary to Google’s assertion, the SRI purchase agreement (which purported to transfer

patent rights) makes no mention of assigning rights to assert a breach of contract claim against
Dr. Konig. (See Ex. B § 4.) PUM expects to establish at trial that Google has no such rights.
2

Google must do more than establish when conception occurred to be declared an owner. For
example, it must show its claims are not time-barred, that Section 2870 does not apply, that Dr.
Konig’s prior assignment did not cut off his ability to assign to Google, see Bd. of Trustees v.
Roche, 583 F.3d 832, 841-42 (Fed. Cir. 2009), that PUM is not a good faith purchaser for value,
and that the Court should impose a constructive trust. Further, Google is wrong that PUM, as
legal title holder, lacks standing or would lose ownership (Google has not asserted any claim to
the rights assigned by the other inventors).

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Regina Murphy

OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
February 18, 2014

_________________________________________
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

EXHIBIT B

REDACTED

EXHIBIT 13

REDACTED
IN ITS
ENTIRETY

EXHIBIT 14

REDACTED
IN ITS
ENTIRETY

EXHIBIT 15

REDACTED
IN ITS
ENTIRETY

EXHIBIT 16

REDACTED
IN ITS
ENTIRETY

EXHIBIT 17

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,

)
)
Plaintiff,
)
v.
) C.A. No. 09-525-LPS
GOOGLE INC.,
)
Defendant.
) JURY TRIAL DEMANDED
)
)
)
GOOGLE, INC.
)
)
)
Counterclaimant,
v.
)
)
PERSONALIZED USER MODEL, LLP and
)
YOCHAI KONIG
)
Counterdefendants.
)
)
GOOGLE’S MOTION IN LIMINE NO. 3 TO PRECLUDE EVIDENCE THAT
“CONCEIVED” SHOULD BE GIVEN A PATENT-LAW MEANING, DUE TO PUM’S
FAILURE TO DISCLOSE SUCH EVIDENCE IN ITS INTERROGATORY RESPONSES
OF COUNSEL:
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Margaret Pirnie Kammerud
50 California St.
San Francisco, CA 94111
Andrea Pallios Roberts
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Joshua L. Sohn
777 6th St. NW, 11th Floor
Washington, D.C. 20001-3706

Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Potter Anderson & Corroon LLP
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

An important issue for Google’s breach-of-contract claim is the interpretation of the word
“conceived” in the Konig-SRI Employment Agreement. PUM has indicated that it will present
evidence at trial for why “conceived” should be given a patent-law definition. (MSJ Hearing Tr.
126:13-15; 127:4-11.) However, PUM failed to disclose any such evidence in its interrogatory
response, after Google served an interrogatory specifically requesting that PUM disclose such
evidence.
Specifically, Google’s Interrogatory No. 5 to PUM and Konig requested the following:
If either PUM or KONIG, or both, contend that KONIG and SRI intended for the
term “conceived” in KONIG’S employment agreement with SRI, attached as
Exhibit A, to mean “conceived” as a matter of Federal patent law, state all facts
supporting that contention and IDENTIFY all DOCUMENTS that support that
position and all witnesses having knowledge of such facts.
PUM’s and Konig’s response to this interrogatory read, in its entirety:
In addition to the foregoing general objections, Counter-Defendants specifically
object to this interrogatory to the extent that it seeks a legal conclusion regarding
the term “conceived” which is a term with specific legal meaning. CounterDefendants further object to this interrogatory because it seeks information not in
Counter-Defendants’ possession, custody, or control regarding what “SRI”
intended “conceived” to mean in its employment agreement. The specific
information relating to what SRI intended “conceived” to mean is currently in the
possession, custody, and control of SRI and for this reason Google can receive
this information from SRI.
(Ex. A at 9.) Because PUM and Konig failed to disclose a single fact supporting their contention
that “conceived” should get a patent law meaning, in response to Google’s interrogatory
specifically requesting such information, they should be barred from introducing any evidence
on this point at trial. Fed. R. Civ. P. 37(c)(1); Woods v. DeAngelo Marine Exhaust, Inc., 692
F.3d 1272, 1282-83 (Fed. Cir. 2012) (affirming exclusion of evidence under Rule 37(c)(1) where
party failed to disclose this evidence in its contention interrogatory response).
PUM cannot demonstrate that its failure to provide this information in its interrogatory
response “was substantially justified or is harmless,” so as to avoid preclusion at trial. Fed. R.

01980.51575/5755678.1

1

Civ. P. 37(c)(1). PUM itself takes the position that the pivotal inquiry into the parties’
contractual intent is limited to “outward manifestations [] of the intent at the time of
contracting.” (MSJ Hearing Tr. 126:5-7 (“Under the objective theory of contract interpretation
which is followed in California and I suspect in Delaware as well, it is only what those outward
manifestations are of the intent at the time of contracting which are evidential.”)). Thus, there is
no justification for PUM’s failure to disclose whatever outward manifestations of intent that it
intends to rely on for interpreting the word “conceived.” And PUM’s silence on this issue is
certainly not harmless, as it prevents Google from ascertaining what evidence PUM intends to
rely on for its contract interpretation position. With trial barely a month away, this severely
prejudices Google’s own trial preparation.
It is no excuse for PUM to say that “[t]he specific information relating to what SRI
intended ‘conceived’ to mean is currently in the possession, custody, and control of SRI,”
because PUM again takes the position that only SRI’s outward conduct is relevant to determining
SRI’s intent. This outward conduct would, of course, be available to PUM and Konig.
Furthermore, PUM would have access to any facts regarding Konig’s intent, whether that intent
was expressed outwardly or kept internally. Yet PUM failed to disclose any facts about any
aspect of the parties’ intent – be it outward intent or inward intent, SRI’s intent or Konig’s intent.
Even though the parties’ intent is the dispositive question for contract interpretation, PUM’s
interrogatory response on this issue is a complete blank slate. Accordingly, PUM (and Konig)
should be barred at trial from introducing any evidence that “conceived” in the Konig-SRI
Agreement should be given a patent-law meaning.

01980.51575/5755678.1

2

Respectfully submitted,
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Margaret Pirnie Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]
Joshua Lee Sohn
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
777 6th Street NW, 11th Floor
Washington, DC 20001-3706
Tel: [phone]
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: February 10, 2014
1139995/ 34638

01980.51575/5774627.1

POTTER ANDERSON & CORROON LLP

By: /s/ David A. Perlson
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

EXHIBIT A

REDACTED

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 MOTION IN LIMINE NO. 3
TO PRECLUDE EVIDENCE THAT “CONCEIVED” SHOULD BE
GIVEN A PATENT LAW MEANING

OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
Andrew M. Grodin
DENTONS US LLP
101 JFK Parkway
Short Hills, NJ 07078
[phone]
February 14, 2014

2

Google’s Motion in Limine No. 3, which seeks to preclude PUM from offering evidence
that “conceived” should be given its patent law meaning, should be denied because it amounts to
nothing more than a fourth attempt for summary judgment on its ownership defense, following
the failure of its three prior attempts.1
As the Court is well aware, Google already argued in its summary judgment motion that
it should be declared a co-owner of the patents-in-suit based on its argument that the lay
definition, rather than the patent law definition, of conception should apply. (See D.I. 413 at 8.)
Further, the sole basis for Google’s motion for reconsideration (after the denial of its summary
judgment motion) was the alleged absence of conflicting evidence as to whether the lay or legal
definition of conception was intended in the employment agreement. (See, e.g., D.I. 523 at 1.)
Notwithstanding the centrality of this issue to its motions, in none of its many submissions did
Google ever argue that PUM had not offered or could not offer any evidence in support of the
patent law definition based on its interrogatory responses. (See, e.g., D.I. Nos. 413, 493, 523,
531). In fact, Google did not even mention in any of its submissions PUM’s response to
Google’s Interrogatory No. 5, on which Google now relies.
It is well established that, now after the denial of all of Google’s earlier motions, Google
cannot raise arguments that could and should have been raised in connection therewith. See, e.g.,
Cooper Notification Inc. v. Twitter Inc., C.A. No. 09-865-LPS, Order at 3-4 (D. Del. July 16,
2012) (denying motion for reconsideration, including because issues raised were “beyond the
scope of defendant’s summary judgment motions in the Court’s opinion”); Flashseats LLC v.
Paciolan Inc., C.A. No. 07-575-LPS, 2011 WL 4501320, at *2 (D. Del. Sept. 28, 2011) (quoting
1

Google previously moved for leave to file a motion for summary judgment based on lack
of standing when it first filed its third party complaint. (D.I. 196). It then moved for
summary judgment again after the conclusion of fact and expert discovery (D.I. 412), and
then moved for reconsideration. (D.I. 523). All of these motions were denied.
1

Karr v. Castle, 768 F.Supp. 1087, 1093 (D. Del. 1991) (“Reconsideration should not be granted
where it would merely accomplish repetition of arguments that were or should have been
presented to the Court previously.”). Having filed and lost multiple summary judgment motions,
it is too late now to seek another bite at the apple in the guise of preclusion.
Google next complains that in the particular interrogatory response on which Google now
focuses, PUM responded that “the specific information relating to what SRI intended conceive to
mean, is currently in the possession, custody and control of SRI.” Google ignores the fact,
however, that this response was provided on April 11, 2011, before any SRI-related depositions
were taken. Since that time, the evidence on which both parties will rely relating to the meaning
of the employment agreement not only has been well-known to and hotly disputed by the parties,
but was before the Court in connection with the summary judgment briefing. Further, Google
does not, and cannot, contend that it ever complained to PUM about this interrogatory response
or asked that it be supplemented.
Far from being unfairly surprised, in its prior summary judgment submissions over a year
ago, Google relied on PUM’s Fourth Supplemental Response to Interrogatory No. 1, which
Google expressly understood as asserting a patent law definition of “conception.” See, e.g., D.I.
413 at 8 (asserting that this response relied on the “standard used to determine conception under
federal patent law”) (emphasis in original). See also D.I. 523 at 2 (noting PUM’s argument that
Dr. Konig had not yet conceived the invention in the patent law sense). Further, the evidence on
which PUM relies was discussed in that briefing and was referenced by the Court in its Opinion.
(See, e.g., D.I. 530 at 4-5; D.I. 537 at 3.) At no point did Google argue that this evidence was not
properly disclosed.

2

Finally, Google cites the preclusion standard of Federal Rule of Civil Procedure 37(c)(1)
but fails to apply it. The decision whether to preclude evidence is based on consideration of the
Pennypack factors, which include: “(1) the importance of the information withheld; (2) the
prejudice or surprise to the party against whom the evidence is offered; (3) the likelihood of
disruption of the trial; (4) the possibility of curing the prejudice; (5) the explanation for the
failure to disclose; and (6) the presence of bad faith or willfulness in not disclosing the evidence
(the ‘Pennypack factors’).” Abbott Labs. v. Lupin Ltd., No. 09-152-LPS, 2011 WL 1897322, at
*3 (D. Del. May 19, 2011) (citing Meyers v. Pennypack Woods Home Ownership Ass’n, 559
F.2d 894, 905 (3d Cir. 1977)). Google does not even begin to satisfy these standards. Most
importantly, the evidence Google seeks to preclude is undeniably important. Google in essence
seeks to preclude PUM from asserting a later invention date based on the patent law definition.
Google also cannot establish that any information whatsoever was withheld; nor does it
demonstrate any prejudice or surprise. Indeed, the very fact that Google never even referred to
this interrogatory response in any of its many submissions confirms that it never relied on it.
Further, there is no unfair surprise, or any risk of disrupting the trial, because both parties will
rely on the factual record that is well known to both of them. Nor does Google even try to
demonstrate any bad faith or willfulness by PUM in failing to disclose any evidence.
At base, Google is simply seeking another backdoor attempt at summary judgment by
moving to preclude PUM from presenting evidence that conception should be given a patent law
meaning.2 Google’s motion in limine should be denied.
2

Of course, to prevail on its claims, Google must show more than just that Dr. Konig
conceived of the inventions while he was employed at SRI. Google must also show that
the inventions fell within the scope of the agreement, that its claims are not time-barred
and that Dr. Konig’s inventions were not protected under section 2870 of the California
Labor Code.
3

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Regina Murphy

OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]

Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]
Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
February 14, 2014

4

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, LLP and
YOCHAI KONIG
Counterdefendants.

)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)

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

REPLY IN SUPPORT OF GOOGLE’S MOTION IN LIMINE TO PRECLUDE
EVIDENCE THAT “CONCEIVED” SHOULD BE GIVEN A PATENT-LAW MEANING
OF COUNSEL:
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Margaret Pirnie Kammerud
50 California St.
San Francisco, CA 94111
Andrea Pallios Roberts
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Joshua L. Sohn
777 6th St. NW, 11th Floor
Washington, D.C. 20001-3706

01980.51575/5768499.1

Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
POTTER ANDERSON & CORROON LLP
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

PUM does not dispute that it disclosed no facts supporting its contention on the meaning
of “conceived,” in response to a Google interrogatory seeking “all facts” on this subject. PUM
just argues that this failure should have no consequences. PUM’s arguments are unpersuasive.
This is not another “attempt for summary judgment” on the contract claim or ownership
defense. (Opp., 1.) As PUM acknowledges, this motion does not address many issues relevant
to that claim and defense, including Section 2870 or the statute of limitations. (Opp., 3 n.2.) Nor
does this motion repeat arguments from MSJ. Google argued at MSJ that there is no conflicting
evidence on the meaning of “conceived.” (D.I. 523, 1.) The Court disagreed. (D.I. 537, 3.) But
the ultimate question of whether an evidentiary conflict exists is distinct from the in limine
question of whether the Court should preclude evidence not properly disclosed.1
PUM argues that Google served its interrogatory before the SRI depositions and never
asked PUM to supplement its response. (Opp., 2.) Yet PUM does not argue that evidence about
the parties’ outward intent depends on the SRI depositions. Anyway, if PUM believed that the
depositions provided new evidence, it was PUM’s duty to supplement its response accordingly.
Finally, PUM’s failure was not harmless. In the Abbott case cited by PUM, this Court found
harmlessness from a tardy expert disclosure because the opposing expert could and did rebut it.
Abbott, 2011 WL 1897322, *5. Yet PUM never supplemented its interrogatory response.
Failure to offer any substantive response to an important interrogatory is not harmless.

1

While PUM suggests that Google should have raised the preclusion issue at MSJ,
PUM did not even assert the existence of conflicting evidence until the MSJ briefing was
complete, in its Opp. to Google’s Motion for Reconsideration. (D.I. 530, 4-5.) Given that PUM
opposed Google replying to its Opp. at all, it is hardly surprising that Google’s Reconsideration
Reply did not raise preclusion in addition to addressing the facts PUM raised in its Opp. In any
event, PUM cites no case finding “waiver” in a situation remotely like here. Instead, PUM’s
cited cases stand for the unremarkable proposition that a party may not seek reconsideration of
an order based on issues not previously raised in briefing leading up to that order.

01980.51575/5768499.1

Respectfully submitted,
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Margaret Pirnie Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]
Joshua Lee Sohn
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
777 6th Street NW, 11th Floor
Washington, DC 20001-3706
Tel: [phone]
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: February 10, 2014
1139995/ 34638

01980.51575/5774629.1

POTTER ANDERSON & CORROON LLP

By: /s/ David A. Perlson
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

EXHIBIT 18

EXHIBIT 18
PUM’S LIST OF MISCELLANEOUS ISSUES
PUM submits the following list of issues it believes should be addressed at the Pretrial
Conference. PUM reserves the right to modify or supplement this list at any time before the
Conference, including in response to Google’s list of miscellaneous issues.
1.

Google should be prohibited from rearguing the Court’s ruling on Google’s

motion to dismiss for lack of standing. (D.I. 396.) The Court rejected as a legal matter Google’s
theory that title never passed to PUM because PUM allegedly did not exist as a legal entity at the
time Levino Ltd. assigned the patents-in-suit to PUM. (Id. at 2.) There are no additional factual
disputes to be resolved concerning this assignment. Google should not be permitted to reargue
that issue before the jury.
2.

Notwithstanding that Google has had almost five years to develop its invalidity

case, in its January 31, 2014 election of references, Google disclosed for the first time that it
would rely on two articles authored by PUM’s infringement expert, Dr. Pazzani, as part of its
obviousness case. On the same day, it included Dr. Pazzani on its witness list, despite having
never listed him in its disclosures.
There is no dispute that Google’s invalidity expert, Dr. Jordan, did not even mention the
Pazzani references in his 198-page expert report.

Therefore, PUM’s invalidity expert,

Dr. Carbonell, had no reason to address these references in his rebuttal expert report.1 Nor has

1

Although Google did identify the Pazzani references among many other references in an
interrogatory response, PUM reasonably assumed that Google had narrowed its case to
only those references discussed in Google’s expert report, particularly given that
Dr. Jordan cannot offer any opinions beyond the scope of his report. Google also asserts
that its examination of Dr. Pazzani on these references at his deposition, which was
entirely irrelevant to Dr. Pazzani’s infringement opinions, somehow sufficed to put PUM
on notice. Not so. It was not until Google served its sections of the Pretrial Order on

Dr. Carbonell formulated any opinions directed to the new obviousness combinations that
Google now seeks to assert.
Further, Google had never identified Dr. Pazzani as a fact witness on which it would rely,
notwithstanding having identified over 40 prior art witnesses in its disclosures. PUM therefore
had no reason to expect that Google would attempt to rely on Dr. Pazzani’s testimony to
introduce these references. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., C.A. No. 03-209 (JJF), 2005
WL 2296613 (D. Del. Sept. 20, 2005) (precluding Pfizer from relying on Ranbaxy’s experts
where Pfizer had failed to timely designate the experts as witnesses and the statements were not
authorized statements for a party pursuant to Fed. R. Evid. 801(d)(2)(C)).
3.

Google also should be precluded from calling Matthew Montebello, one of the

40 potential prior art witnesses Google had identified in its disclosures. Google only identified
Mr. Montebello as a witness it would call for trial on January 31, 2014, with its sections of the
Pretrial Order. Google continued to identify more than 20 prior art witnesses on which it may
rely as late as December 2013, when it served its fifth supplemental disclosure. Google then
refused to answer PUM’s question during the parties’ meet and confer as to whether Google
actually intended to bring any prior art witness to trial.
Mr. Montebello was never disclosed as an expert witness and was not previously
deposed. Further, it is black letter law that the testimony of a prior art witness may not be used
to expand the disclosure of a printed publication, which must be interpreted within the “four
corners” of the document. Cont’l Oil Co. v. Cole, 634 F.2d 188, 196 (5th Cir. 1981). See also
Valmet Paper Mach., Inc. v. Beloit Coro., 895 F. Supp. 1158, 1167 (W.D. Wis.1995), rev’d on
January 31 that Google provided any notice that it would actually rely on those references
as part of its obviousness case. Nor could that questioning alleviate any prejudice to
PUM because the experts had already rendered their opinions and served their reports
prior to that deposition.
2

other grounds, 105 F.3d 1409 (Fed. Cir. 1997) (excluding the testimony of a prior art witness,
holding that “to the extent the testimony was not cumulative, it tended to enlarge impermissibly
on the teachings of the patent”). This is particularly of concern here where Google seeks to read
Mr. Montebello’s “position paper” on the detailed scope of the claims at issue here. (See Ex. A).
Google also rejected PUM’s request for a live or video deposition of Mr. Montebello
before the Pretrial Conference, so that the parties and the Court would be able to assess the
permissible scope, if any, of Mr. Montebello’s testimony. Google asserted that PUM is not
entitled to a deposition simply because he was previously disclosed, somehow suggesting that
PUM should have taken the depositions of each of the hundreds of potential witnesses Google
identified during fact discovery. Google only offered to make Mr. Montebello available for
deposition in connection with the trial, but that comes too late because it does not provide PUM
an adequate opportunity to learn of Mr. Montebello’s proposed testimony or to prepare its case.
Further, PUM should not have its trial preparation disrupted with the taking of a deposition.
PUM respectfully requests an opportunity to present to the Court its objections to Mr.
Montebello’s testimony following his deposition.
4.

Google should be precluded from referring to any purported recent changes in its

technology, including changes to the use of Google Search and

, and Google Search Ads,

as to which Google only just provided notice to PUM. These changes were not disclosed during
fact discovery, or fact discovery on these changes was refused. There comes a time in each case,
and in particular this five-year-old case, that discovery must come to a close. It would be
prejudicial to PUM if Google were permitted to refer to documents that it hand selected for
production on the eve of trial, as to which PUM has had no discovery. Moreover, with damages
bifurcated, the degree of use of the accused products is not currently at issue and may be

3

addressed later, when the damages trial takes place. Contrary to Google’s assertions, such
changes would have marginal value at best to commercial success, coming nearly a decade after
the ’040 patent issued and five years after this lawsuit was filed.
5.

Google’s listing of over 21 live witnesses, including 14 Google witnesses, on its

witness list. Google has refused to identify the actual Google witnesses it may bring to trial,
unnecessarily requiring PUM to prepare for up to 21 cross examinations.
6.

As set forth in PUM’s motion in limine, Google’s attempts to introduce evidence

of the ongoing reexamination proceedings is improper.

Just prior to the filing of this Pretrial

Order, Google reaffirmed its intent to rely on such evidence. On February 14, 2014, Google
served a “supplemental” expert report of Dr. Jordan, without leave of Court, which purports to
rely on additional materials from the reexamination proceedings.
7.

Google’s attorneys and experts should be prohibited from rearguing claim

construction positions rejected by the Court in its Markman opinion, as set forth, for example, in
PUM’s Motion to exclude certain testimony of Dr. Fox under Daubert (D.I. 555).
8.

The order and sequence in which the Court wishes to try Google’s breach of

contract claims, and PUM’s defenses thereto.
9.

How the Court wishes to decide the equitable issues in this case, such Google’s

claims for a declaration of ownership, constructive trust, conversion, and PUM’s claim of laches.
PUM suggests that a hearing be set following the conclusion of the jury trial at which argument
can be presented.
10.

How the Court wishes to decide the legal issues relating to PUM’s statute of

limitations defense, such as whether 10 Del. C. § 8121 (Delaware’s borrowing statute) or § 8117
applies.

4

11.

Google requests guidance concerning witnesses on which both sides will rely.

Although Google proposes to examine Dr. Konig during PUM’s case, and thus exceed the scope
of direct, it does not address Google witnesses on which both sides will rely. PUM proposes that
to the extent PUM wishes to examine a Google witness live for its case-in-chief that the Google
witness be made available to PUM during Google’s case and that PUM be permitted to exceed
the scope of direct. PUM further proposes that its infringement case be left open pending
completion of this testimony.
12.

Google’s listing of Reuben Benquessous, PUM’s general partner, and Levy

Benaim, a PUM limited partner, on its witness list, notwithstanding that Google failed to identify
them as potential witnesses during fact or expert discovery, which closed 14 months ago.
Google has not provided any reason why their testimony would be relevant to any issue in this
case. Instead, Google has made clear that it has added them solely for purposes of harassment
because PUM indicated that its principals wish to attend the trial.

5

EXHIBIT 19

EXHIBIT 19 TO PRETRIAL ORDER
GOOGLE’S LIST OF MISCELLANEOUS ISSUES
Google submits the following list of issues it believes should be addressed at the Pretrial
Conference. Google reserves the right to modify or supplement this list at any time before the
Conference.
1.

By the very nature of this patent infringement suit, PUM has access to some of Google’s
most sensitive confidential information. Due to the strong protective order entered by
this Court, Google has produced hundred of thousands of pages of materials that include
highly sensitive engineering documents without troubling the Court with the concerns the
company would otherwise have. While Google respects the right of public access to
judicial proceedings, public dissemination of this information would cause considerable
harm to Google’s competitive standing; allowing companies to compete against Google
without the years of refinement and significant financial outlay Google has invested in
these trade secrets and other sensitive information. The strong public interest in
protecting this kind of sensitive commercial information from disclosure outweighs the
common law presumption of public access to judicial proceedings. Thus, testimony
related to the confidential operations of Google’s products and systems, particularly any
source code, should be shielded from public disclosure. Accordingly, Google asks the
Court to close the courtroom whenever testimony regarding Google’s confidential
commercial information is offered at trial, and to seal all documents and portions of
transcripts discussing Google’s sensitive commercial information. Google will work
with PUM and the Court to limit any such closings and ensure the least disruption to the
trial proceedings.

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2.

Google understands that in denying its motion to dismiss for lack of standing, the Court
rejected Google’s assertion that title never passed to PUM because PUM did not exist as
a legal entity at the time Levino Ltd. assigned the patents-in-suit to PUM. (D.I. 396.)
Accordingly, Google understands that this argument has been rejected as a matter of law
and that the Court has found no related factual issues remain to be tried before the jury on
this issue. However, if this incorrect , Google should be permitted to present evidence
and argument on the issue of standing to the jury. Google requests clarification of the
Court’s finding on this issue.

3.

Google’s “Smart Ad Selection System” is sometimes referred to within the company by
the acronym SmartASS. Google asked witnesses to refer to the system as SmartAds
during depositions, but on occasion they or counsel used the term SmartASS. In
addition, the term SmartASS appears in documents included on the parties’ exhibit lists.
Google requests that parties and witnesses refrain from using the term SmartASS in the
presence of the jury. Google also requests that the term SmartASS be replaced with
SmartAds in documents shown to the jury and in deposition designations played to the
jury. PUM has indicated that it does not oppose Google’s proposal herein.

4.

Google believes that the meaning of the word “conceived” in Yochai Konig’s
employment agreement with SRI is an issue of law to be decided by the Court and that
there is no conflicting extrinsic evidence such that this issue could be decided by the jury.
However, Google understands that in denying Google’s motion for summary judgment
on its counterclaim of breach of contract and Google’s motion for reconsideration, the
Court rejected Google’s position and will let the jury decide the meaning of the word

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“conceived.” (See D.I. 521; D.I. 537.) Google requests clarification if this understanding
is incorrect.
Google responds below to the issues PUM has indicated should be addressed at the Pretrial
Conference.
1.

In its portions of the Pretrial Order (see Exhibit 18), PUM requests that Google and its
experts be prohibited from rearguing claim construction positions. This, however, should
apply to both parties. Both parties and their experts should be prohibited from rearguing
claim construction positions rejected by the Court in its Markman opinion. The parties
should apply the Court’s claim constructions.

2.

PUM includes in Exhibit 2 allegations regarding indirect infringement. As detailed in
Google’s Reply in Support of Google’s Motion in Limine To Preclude Evidence or
Arguments on Copying or Pre-Suit Knowledge, PUM did not disclose in discovery
(including interrogatory responses and its infringement expert’s report on infringement)
that it contends Google indirectly infringes, or any facts to support such a claim. Thus,
there are no legal and factual issues to be addressed at trial on indirect infringement to the
jury on this issue and PUM, PUM should not be allowed to do so. As also explained in
Google’s Reply to MIL No. 1, PUM should not be allowed to use a claim of indirect
infringement never disclosed in discovery as a way to introduce the pre-suit letters that
are the subject of MIL No. 1.

3.

PUM requests that Google be precluded from relying on PUM’s infringement expert, Dr.
Pazzani’s articles as obviousness references. (See Exhibit 18.) Initially, this request is an
improper motion in limine that should be disregarded by the Court.
In any event, as PUM admits, Google identified Dr. Pazzani’s articles as prior art

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in an interrogatory response served on June 9, 2011. And Google questioned Dr. Pazzani
about those articles during his deposition. Thus, PUM has long been on notice that
Google considered his articles to be prior art. That Google's invalidity expert did not rely
on them does not mean they are inadmissible.
Indeed, PUM does not cite any case which indicates that Google can be precluded
from providing evidence of the state of the art separate and apart from what an expert
relies on. Nor could it. Obviousness is a question of law, and “precedent does not
require ‘expert’ opinions on matters of law.” Soverain Software LLC v. Newegg Inc., 705
F.3d 1333, 1336, 1341 (Fed. Cir. 2013); see also Friskit, Inc. v. RealNetworks, Inc., 499
F. Supp. 2d 1145 (N.D. Cal. 2007), aff'd per curiam, 306 Fed. Appx. 610 (Fed. Cir. 2009)
(granting summary judgment of obviousness without relying on expert testimony). PUM
also cannot demonstrate any prejudice here. The case cited by PUM, Pfizer, Inc. v.
Ranbaxy Labs., Ltd., 2005 WL 2296613 (D. Del. Sept. 20, 2005), does not support
PUM’s position. That case holds that an opposing party’s expert’s deposition testimony
does not fall within the hearsay exception for statements by a person who has been
authorized by a party to “make a statement concerning the subject,” under F.R.E.
801(d)(2)(C). Id. Dr. Pazzani is listed as one of PUM’s live witnesses, so Google should
be able to introduce his two prior art articles through his live testimony.
4.

PUM also asks that Google be precluded Matthew Montebello from testifying at trial.
Again, this request is an improper motion in limine that should be disregarded by the
Court.
Google disclosed Mr. Montebello in its Initial Disclosures on May 4, 2011, his
article was disclosed as prior art in an interrogatory response served on May 12, 2011,

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and Google's invalidity expert relied on his article as anticipatory prior art. And while
PUM suggests that Google should have disclosed Mr. Montebello earlier as a “trial
witness,” Google disclosed him as a trial witness the day such disclosures were due,
January 31, 2014. Here too, there is no prejudice. PUM made no effort to take any
discovery as to any prior witness throughout the case, and never even asked Google
which prior art witnesses it might rely on at trial during discovery.
Nevertheless, and notwithstanding the fact that it is well after the close of fact
discovery, Google told PUM it would not object to Mr. Montebello (who resides in Malta
and is not in Google's control) being deposed in the U.S. prior to trial. Google proposed
that Mr. Montebello travel to the U.S. early for trial and be deposed prior to the start of
trial when counsel will likely all be in Wilmington, which Mr. Montebello is willing to
do. PUM has indicated it intends to proceed with this deposition.
5.

PUM indicated in Exhibit 18 that it wishes to discuss the number of Google witnesses
included on Google’s witness list. As Google has explained to PUM and the Court (Dkt.
No. 574), the number of potential live witnesses on Google's witness list is a direct result
of PUM's own trial witness list and the unreasonable breadth of PUM's infringement
case. PUM initially designated deposition testimony from 15 Google witnesses (current
and former Google employees) and 24 witnesses total. It is unlikely that PUM intends to
play all of the deposition testimony it designated. PUM takes issue with the fact that
Google initially listed 13 of those Google witnesses as potential live witnesses. In other
words, PUM apparently believes that it will need to rely on these witnesses’ testimony to
prove its infringement claims, but is seeking to preclude Google from having the ability
to rely on those same witnesses’ testimony to rebut PUM's claims. This is patently

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unfair. In the course of preparing the Joint Pretrial Order, PUM has dropped two
accused products, which resulted in PUM removing one Google witness from PUM’s
witness list. Google has removed the same witness, Andre Rohe, from its own witness
list based on PUM’s representation that it is dropping Google News from its list of
accused products.
6.

In Exhibit 18, PUM proposes that PUM be permitted to examine Google’s live witnesses
during Google’s case and that PUM be permitted to exceed the scope of Google’s direct
examination. PUM further proposes that its case be left open pending completion of this
testimony. Google does not agree to this proposal.
PUM has taken 19 depositions in this case. It has designated nearly 34 hours of
deposition testimony. Rather than narrow its case, PUM suggests it wants to wait until
Google puts on its case and try its case through the witnesses Google calls in its case.
PUM is the plaintiff asserting that Google infringes its patents. The case that Google puts
on to rebut PUM’s case-in-chief on infringement, including which witnesses Google will
call live, necessarily depends on the case-in-chief that PUM presents, including which
witnesses or deposition testimony PUM presents, and which theories PUM presents.
What PUM proposes will effectively allow PUM to further delay settling and narrowing
PUM’s actual infringement case. It would also unfairly force Google to put on a defense
rebutting an infringement case that has not even been fully presented or that may change
or evolve even after PUM’s case in chief is done. PUM should to provide the evidence it
believes it needs in its case-in-chief using the depositions it has taken of Google’s
witnesses.

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Relatedly, PUM identifies Yochai Konig as a witness that it “may call” live. Rather than
put on its affirmative case during PUM’s case with Mr. Konig’s testimony, Google
intends to call Mr. Konig live during its case, but seeks guidance from the Court if its
preference is for Mr. Konig to take the stand only once.
7.

PUM requests that Google be precluded from referring to and presenting evidence of
recent changes in its technology, including changes to the use of Google Search and
(See Exhibit 18.) This request is yet another improper motion in limine that
should be disregarded by the Court. However, to the extent that the Court considers
PUM’s request, Google does not believe that it should be so precluded. Google could not
disclose these changes during fact discovery because they had not yet occurred or been
planned. For example, In August 2012, Google informed PUM that
that PUM accuses of infringing the patents-in-suit in connection with Google Search
would be phased out. Google offered to provide PUM discovery on this change, but
PUM chose not to pursue it. On January 16, 2014, Google produced documents from
October 2013 – January 2014 concerning the planned elimination of the
functionality before trial.
There is no reason why Google should be precluded from informing the jury that Google
does not use some of the accused functionality for some of the accused products
anymore, or is planning to discontinue using those products, as PUM will presumably
argue that its patents and their alleged use in Google’s products are of great importance.
Also, as purported evidence of secondary considerations of non-obviousness, PUM’s
invalidity expert points to purposed commercial success from Google’s accused products.
If PUM is permitted to introduce such evidence, and it should not as there is no nexus to

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the accused functionality, Google should be permitted to refute it by showing that the
accused functionalities did not even contribute to those revenues. Similarly, PUM’s
invalidity expert opined that Google’s “continued adoption of the patented technology,
for example, in

” is evidence of the patents’ non-obviousness. Again, Google

should be permitted to refute this argument by explaining that it is eliminating that
functionality.
8.

PUM notes in Exhibit 18 that Dr. Jordan served a supplemental report on February 14,
2014. This supplemental report is very limited; it only explains what has occurred in the
inter partes reexaminations of the patents-in-suit since his last report was served. That is,
the Examiner has issued Final Office Actions rejecting all asserted claims of both
patents-in-suit, and PUM has appealed those decisions to the PTAB. To the extent that
evidence or argument regarding the reexaminations is permitted (as it should be), Dr.
Jordan should be able to provide the very minimal additional information referenced in
his supplemental report so that the jury has current information.

9.

In Exhibit 18, PUM suggests a hearing set following the conclusion of the jury trial at
which argument can be presented. Google agrees with this approach, provided that such
hearing be scheduled at a mutually convenient time for the parties and the Court.

10.

In Exhibit 18, PUM indicates that it wishes to discuss Google’s listing of Reuben
Benquessos (Banks) and Levy Benaim, on its Fifth Supplemental Initial Disclosures.
Google has never stated that it listed these witnesses “solely for purposes of harassment”
as PUM states. Rather, Google has repeatedly explained to PUM that it is presently not
planning to call either witness, but reserves its right to do so based on PUM’s recent

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representation of their importance to PUM and the potential that either is implicated in
testimony and theories presented by PUM at trial. Both of these witnesses are
individuals that PUM represented would be present for trial, and that the trial needed to
be scheduled such that they could be available to attend.

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EXHIBIT 20

EXHIBIT 20 TO PRETRIAL ORDER
GOOGLE’S IDENTIFICATION OF OBVIOUSNESS PRIOR ART REFERENCES AND
"COMBINATIONS"

Pursuant to the Court’s oral order on January 27, 2013 and the Court’s January 30, 2014 Order
(D.N. 567), Google identifies herein the reduction of prior art references on which it will rely to
establish obviousness of the asserted claims of the patents-in-suit. Under that Order, the Court
held that Google may not rely on more than ten prior art references to make its obviousness case.
The Court further held that Google may rely on no more than 15 obviousness “combinations” of
no more than six references each. In light of the foregoing, Google intends to rely on the prior
art references and “combinations” of references listed below to establish obviousness of the
asserted claims.
Set forth below are the eight prior art references Google identified pursuant to the Court’s Order:
1. “Personal WebWatcher: design and implementation” by Dunja Mladenic (“Mladenic”);
2. “Collecting User Access Patterns for Building User Profiles and Collaborative Filtering”
by Ahmad M. Ahmad Wasfi (“Wasfi”); “
3. "A Personal Evolvable Advisor for WWW Knowledge-Based Systems” by M.
Montebello, W.A. Gray, and S. Hurley (“Montebello”);
4. Autonomy Agentware (“Autonomy”);
5. U.S. Patent No. 7,631,032 to Refuah (“Refuah”);
6. "WebWatcher: A Tour Guide for the World Wide Web" by Joachims, Freitag, and
Mitchell ("Joachims");
7. "Syskill & Webert: Identifying interesting web sites," by Michael Pazzani, Jack
Muramatsu & Daniel Billsus ("Pazzani 1"); and
8. "Learning and Revising User Profiles: The Identification of Interesting Web Sites," by
Michael Pazzani and Daniel Billsus ("Pazzani 2").
Set forth below are the fifteen groups of prior art references, the “combinations,” identified by
Google pursuant to the Court’s Order that Google may rely to show the obviousness of the
asserted claims:
1. Mladenic and Wasfi and Montebello
2. Mladenic and Wasfi and Montebello and Joachims
3. Mladenic and Wasfi and Montebello and Pazzani 1 and Pazzani 2
1

4. Mladenic and Wasfi and Montebello and Refuah
5. Mladenic and Wasfi and Montebello and Joachims and Refuah
6. Mladenic and Wasfi and Montebello and Autonomy
7. Mladenic and Wasfi and Montebello and Joachims and Autonomy
8. Mladenic and Refuah
9. Mladenic and Montebello
10. Mladenic and Autonomy
11. Montebello and Refuah
12. Montebello and Autonomy
13. Wasfi and Montebello
14. Wasfi and Refuah
15. Wasfi and Autonomy
In KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007), the Supreme Court noted “[t]o
determine whether there was an apparent reason to combine the known elements in the way a
patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to
the effects of demands known to the design community or present in the marketplace; and to the
background knowledge possessed by a person having ordinary skill in the art.” As in KSR,
Google may supplement the disclosures of the references identified above by experience and
background information and knowledge of one of skill in the relevant art, such as known
concepts, tools, and features used in machine learning, search engines, and information retrieval.
In relation to the state of the art and the knowledge of one skilled in art, Google may also rely on,
among other things, admissions and statements in the patents-at-issue, admissions and statements
from PUM, and its witnesses and experts, and testimony of other witnesses, including Google’s
experts.
Further, Google's "combinations" may change based on changes in PUM's allegations, asserted
claims, and stated positions and expert opinions and testimony on the state of the art, ordinary
skill in the art, or disclosures in the art, subsequent Court rulings, or as part of further narrowing
of the issues.

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