Personalized User Model LLP v. Google Inc.

Filing 644

Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding reply to Google's March 11 letter - re 643 Letter. (Attachments: # 1 Exhibit A)(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 13, 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:
We write in reply to Google’s March 11 letter (D.I. 643) concerning its final election of
anticipatory references and obviousness combinations for trial. Although PUM had thought that
the parties were in agreement on Google’s invalidity theories, it now appears that Google is
seeking to reserve on which obviousness combinations it will rely at trial. Indeed, PUM
attempted to confirm the scope of Google’s invalidity case again last night but Google did not
respond. This is improper.
During the January 27, 2014 teleconference, the Court ordered Google to provide a list of
no more than 10 prior art references and no more than 15 obviousness combinations that it
intended to assert at trial. (See D.I. 569 at 2.) Google provided that list to PUM on January 31,
and it was incorporated into the Joint Pretrial Order. (Ex. A.) The Court’s Order following the
January 27 teleconference also required the parties to “provide notice of any claims, products,
combinations, or other issues they will not pursue at trial” on March 3. (D.I. 569 at 2.) Google
received a one-day extension to that deadline at the pretrial conference. Further, Google
proposed, and the Court agreed, that “defendant has until March 4th to do any further reduction,
and then we’re locked in. You are going to have to use some trial time for whatever is still in the
case on March 4th.” (D.I. 619 at 122.)
On March 4, Google dropped two references but did not indicate which of the remaining
references were primary references or the obviousness combinations on which they would rely.
Only a day later did Google confirm which references were primary references. PUM asked
Google to confirm that it was still relying on all of the remaining obviousness combinations, but
Google did not respond, and refused to include this information in the March 8 submission to the

The Honorable Leonard P. Stark
March 13, 2014
Page 2

Court. It was not until Google filed its March 11 response disagreeing with PUM’s listing of
references that it became clear that Google was seeking to reserve on which obviousness
combinations it would rely at trial.
Google’s “reservation” is contrary to the Court’s orders, which first required Google to
identify its obviousness combinations (D.I. 569 at 2), and then required the parties to make
binding elections on the theories they would pursue at trial. (D.I. 619 at 122.) Having itself
proposed that the parties be bound by their elections, Google cannot reserve on which
combinations it will rely at trial.
PUM therefore requests that Google be required to present all of the obviousness
combinations that Google previously identified, other than those rendered moot by the
withdrawal of references, as set forth in PUM’s March 11 letter. (D.I. 640.)
Respectfully,

/s/ Karen Jacobs
Karen Jacobs (#2881)
KJ/dlw
Enclosure
cc:
Clerk of the Court (Via Hand Delivery; w/ encl.)
All Counsel of Record (Via Electronic Mail; w/ encl.)
8085484