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)

EXHIBIT A

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

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Plaintiff,
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v.
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GOOGLE, INC.,
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Defendant.
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______________________________________ )
GOOGLE, INC.,
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Counterclaimant,
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v.
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PERSONALIZED USER MODEL, L.L.P.
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and YOCHAI KONIG,
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Counterclaim-Defendants.
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C.A. No. 09-525 (LPS)

PUM’S [PROPOSED] ORDER REGARDING
PUM’S MOTION IN LIMINE ON OWNERSHIP ISSUES
The Court having considered PUM’s motion in limine No. 1 concerning trial on
ownership issues (D.I. 588, Ex. 12), and in furtherance to the Court’s February 27, 2014 Order
ruling on the motions in limine (D.I. 606), IT IS HEREBY ORDERED THAT:
1)

Google shall not present evidence or argument to the jury that Google is a

rightful owner of the patents-in-suit or will become an owner of the patents-in-suit should the
jury find that Dr. Konig breached his employment agreement by failing to assign the invention to
SRI;
2)

Google shall not present evidence or argument to the jury that PUM will

or may lose ownership of the patents-in-suit;

3)

Notwithstanding the foregoing, Google is not precluded from posing

questions or arguing 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; and
4)

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, but Google shall not argue that it actually holds rights in the
patents or will obtain any rights as a consequence of its breach of contract claim.

SO ORDERED this ______ day of March 2014.

UNITED STATES DISTRICT JUDGE

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EXHIBIT B

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

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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

[PROPOSED] ORDER ON PUM’S MOTION IN LIMINE NO. 1
The Court having considered PUM’s motion in limine No. 1 concerning trial on
ownership issues (D.I. 588, Ex. 12), and in furtherance to the Court’s February 27, 2014 Order
ruling on the motions in limine (D.I. 606), IT IS HEREBY ORDERED THAT:
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.
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
01980.51575/5794682.1

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to assert co-ownership rights in the patents, or that PUM may lose sole ownership of the patentsin-suit. (See Dkt. 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.

DATED:__________
Leonard P. Stark
United States District Judge

01980.51575/5794682.1

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