Personalized User Model LLP v. Google Inc.

Filing 616

Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding parties' competing proposals for an Order - re 606 Memorandum and Order,,. (Attachments: # 1 Exhibits A-B)(Jacobs, Karen)

MORRIS, NICHOLS, ARSHT

&

TUNNELL

LLP

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

March 4, 2014
The Honorable Leonard P. Stark
United States District Court
for the District of Delaware
844 North King Street
Wilmington, DE 19801
Re:

VIA ELECTRONIC FILING

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

Dear Judge Stark,
As the Court directed in its February 26, 2014 Order (D.I. 606), we enclose herewith the
parties’ competing proposals for an Order implementing PUM’s Motion in limine to Preclude
Google from Presenting Argument that it is an Owner of the Patents-in-Suit. The parties’
proposed Orders are attached hereto as Exhibits A (PUM’s) and B (Google’s).
PUM’s Position:
PUM’s proposal properly reflects the Court’s rulings and the parties’ agreement. As
Google agrees, ownership issues are for the Court, not the jury, to decide. Therefore, the jury
should not hear evidence or argument that Google is or may become a rightful owner of the
patents-in-suit. The only exception discussed at the Pretrial Conference was that Google may be
permitted to argue on cross examination that the inventors had an incentive to change position as
to the conception date of the invention because of a concern that Google might attempt to assert
co-ownership rights in the patents. See Pretrial Tr. at 27-29, 31-32; Order, D.I. 606 at 5. PUM’s
proposal properly reflects this exception. Contrary to Google’s assertion below, Google does not
“need” to “explain to the jury that PUM may lose sole ownership of the patents-in-suit, or
Google might attempt to assert co-ownership rights in the patents.” Indeed, that is only an
attempt to improperly sway the jury on the breach of contract claim based on issues that are not
before it (and run around the Court’s rulings). As the Court held at the pretrial Conference (Tr.
27) and in its Order (D.I. 606), the only proper purpose (and the only limited exception the Court
drew) was to permit Google to explore on cross examination of the inventors whether they had a
motive to change the conception date, as set forth in paragraph 3 of PUM’s proposal. Google’s
argument about the significance of ownership on PUM’s standing on its infringement claim goes
far beyond this purpose.

The Honorable Leonard P. Stark
March 4, 2014
Page 2

Google’s proposal, in contrast, is contrary to law and inconsistent with the parties’
agreement and the Court’s ruling at the pretrial conference. Google does not limit its proposal to
cross examination of the inventors or explanation of the interrogatory responses. Instead, it
proposes only to refrain from stating with absoluteness that “title will necessarily transfer to
Google if the jury finds in Google’s favor on the breach of contract claim,” and proposes to
argue to the jury that if Dr. Konig “is found to have breached his employment agreement with
SRI, that PUM may lose ownership of the patents-in-suit.” (emphasis added). But this proposed
evidence is no more relevant to the jury issues whether the statements are “absolute” or less than
“absolute,” or “more qualified.” Contrary to Google’s statement, there was no agreement that
the motion in limine is limited to “absolute” statements (and Google cites only to its own
counsel’s commentary in support thereof).
Google also is wrong that PUM will ever lose ownership. First, Google has not asserted
any claim to the rights assigned to PUM by the other inventors. See, e.g., Ex. 12 to the Pretrial
Order, PUM Reply at 1 n.2. Thus, PUM will retain ownership of the patents regardless of what
Google proves at trial. Second, Google must do much more than establish breach of contract for
the Court ultimately to find Google might be declared a co-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, that PUM’s defense of laches
does not apply, and that the Court should impose a constructive trust. Just as the jury is not
apprised of other possible equitable relief the Court may enter post-trial, so Google should be
precluded from arguing to the jury any results of proving breach of contract at this trial. See,
e.g., Computer Assocs. Int’l v. Am. Fundware, Inc., 831 F. Supp. 1516, 1528 (D. Colo. 1993)
(barring data relating to claim for injunctive relief as matter for court not jury). That is because
the relief the Court may or may not grant post-trial is a separate question from Google exploring
on cross examination whether the inventors were concerned that Google might seek to assert coownership rights.
Finally, PUM does not dispute that either party can refer to the SRI/Google agreement for
the rights Google purports to purchase, as well as any other relevant purpose, but Google should
not be permitted to argue that it actually holds rights in the patents or will obtain them as a
consequence of a breach of contract.
Google’s Position:
Google proposes that the Court’s order on PUM’s motion in limine No. 1 be limited to what the
parties agreed at the Pretrial Conference and what the Court recognized in its written opinion.
Specifically, Google proposes the following (adopting PUM’s language when possible):
1.
Google shall not state at trial that a finding in Google’s favor on its breach of contract
claim will result in Google owning the patents-in-suit. (2/26/14 Hearing Tr., 28:13-15) In other
words, Google shall not state that title will necessarily transfer to Google if the jury finds in
Google’s favor on the breach of contract claim, and Google shall not argue that it presently holds
title to the patents.

The Honorable Leonard P. Stark
March 4, 2014
Page 3

2.
Notwithstanding the foregoing, Google is not precluded from arguing, or posing
questions on cross examination of the inventors, that PUM had an incentive to change position as
to the conception date of the invention because of an alleged concern that Google might attempt
to assert co-ownership rights in the patents, or that PUM may lose sole ownership of the patentsin-suit.1 (See D.I. No. 606, 5.)
3.
Nothing in this Order shall preclude either party from relying on the SRI/Google
Purchase Agreement for any relevant purpose, including but not limited to Google rebutting
evidence or argument by PUM that Google does not have standing to assert a breach of contract
claim against Konig.2
PUM’s proposed order on its motion in limine goes beyond what the parties agreed and
does not clearly delineate what evidence or argument will be precluded, and what evidence is
allowed. The parties agreed at the Pretrial Conference that Google could not make absolutist
statements stating that upon a finding of breach-of-contract, Google will own the patents.
(2/26/14 Hearing Tr. 28:19-21) (MR. SOHN: “And we’re fine not making absolute statements
that if you find a breach of contract, Google will own the patents, full stop.”) This addressed
PUM’s stated concern that there are certain non-jury issues that could affect whether a breach-ofcontract finding would actually lead to Google’s ownership of the patents. (Id., 26:23-25 (MR.
FRIEDMAN: “But in order to get to the ultimate issue of ownership, there are so many other
issues that are beyond the province of the jury.”) PUM’s proposed order, however, goes beyond
this. It seeks to prohibit Google from making less absolutist and more qualified statements
saying that PUM may lose sole ownership of the patents (or Google may gain co-ownership) if
the jury finds a breach of contract. (2. “Google shall not present evidence or argument to the
jury that PUM will or may lose ownership of the patents-in-suit.”) The Court’s in limine order
found that Google could make non-absolute statements about how PUM “may” lose sole
ownership of the patents. (D.I. 606 at 5 (“At the pretrial conference, PUM agreed that it is
appropriate for Google to elicit evidence and make arguments to the effect that PUM’s inventors
may have had an incentive to change their position as to the date of conception of the inventions
due to concern that PUM may otherwise lose ownership of the patents-in-suit.”) (emphasis
added).
Google raised its concern that PUM’s proposed order would swallow the very exception
that PUM agrees the Court provided. PUM argued that it did not agree that Google could make
such non-absolute statements and that the Court did not say that Google could do so.
Preliminarily, PUM’s motion was to preclude Google from referencing its ownership of the
patents-in-suit, and the Court denied this portion of the motion as moot. In doing so, the Court
1

This language is identical to PUM’s proposal except that it adds “or that PUM may lose sole
ownership of the patents-in-suit.”
2
This language is identical to PUM’s proposal except that PUM has added additional language
as to what is not allowed to be presented. Google submits PUM’s suggested addition is
unnecessary given what Google has agreed to in its first paragraph. Additionally, Google does
not concede or agree that there is any “standing” case, as PUM suggests, that would be
appropriate to send to the jury.

The Honorable Leonard P. Stark
March 4, 2014
Page 4

did not need to affirmatively state what Google can do. Further, PUM’s position is inconsistent
with the above-quoted language from the Court’s order and PUM’s own representations at the
Pretrial Conference. Indeed, PUM fails to cite to the Court’s opinion to support its overbroad
proposal—because it cannot. Google does not intend to make arguments as to why it is a rightful
co-owner of the patents if it wins on breach of contract. But, if Google cannot explain to the jury
that PUM may lose sole ownership of the patents-in-suit, or Google might attempt to assert coownership rights in the patents, then it will be impossible for the jury to understand the
incentives for PUM and its witnesses to change their position or testimony regarding the date of
conception of the patents-in-suit. In other words, Google would not be able to present the very
evidence and argument that the parties and the Court agreed it should be permitted to present.
Additionally, PUM objects to Google’s proposal on the grounds that it purportedly will
allow Google to argue to the jury that PUM will lose all ownership of the patents, including
lengthy argument about how this is not the case due to, for example, ownership rights that come
through inventors other than Konig. This supposed concern seems to have little relevance to the
issues in the case given that if Google eventually obtains an ownership right to the patents it will
not matter for the purposes of PUM’s infringement claim whether PUM also has rights. But in
any event, PUM’s concern is unfounded. PUM raised this concern in the parties’ meet and
confer, and Google addressed it in its proposal. Specifically, Google added the word “sole” to
item 2 above such that it reads “Notwithstanding the foregoing, Google is not precluded from
arguing, or posing questions on cross examination of the inventors, that PUM had an incentive to
change position as to the conception date of the invention because … PUM may lose sole
ownership of the patents-in-suit.” This therefore moots PUM’s concern.
Further, PUM asserts that Google does not have standing to assert a breach of contract
claim against Dr. Konig. (See Pretrial Order, Ex. 2, ¶ 13.) This is another reason why PUM’s
motion in limine should be denied in the first place. If PUM is going to contest Google’s
standing, Google should be permitted to rebut that argument, including but not limited to by
introducing evidence or argument regarding Google’s agreement with SRI. Accordingly, the
Court should not enter PUM’s proposed order, and instead should enter an order on PUM’s
motion in limine No. 1 as Google proposes above.
Respectfully,

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

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