Personalized User Model LLP v. Google Inc.

Filing 681

REDACTED VERSION of 670 Opening Brief in Support, of Personalized User Model, L.L.P. and Yochai Konig's Motion for Judgment as a Matter of Law on the Infringement and Validity of the Patents-in-Suit and on Google's Breach of Contract Counterclaim by Personalized User Model LLP, Konig Yochai. (Murphy, Regina) (Main Document 681 replaced on 4/16/2014) (ntl).

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

)
)
Plaintiff,
)
)
v.
)
)
GOOGLE, INC.,
)
)
Defendant.
)
______________________________________ ) C.A. No. 09-525 (LPS)
GOOGLE, INC.,
)
)
Counterclaimant,
)
v.
)
) PUBLIC VERSION PERSONALIZED USER MODEL, L.L.P.
) REDACTED
and YOCHAI KONIG,
)
)
Counterclaim-Defendants.
)
OPENING BRIEF IN SUPPORT OF PERSONALIZED USER MODEL, L.L.P. AND
YOCHAI KONIG’S MOTION FOR JUDGMENT AS A MATTER OF LAW ON THE
INFRINGEMENT AND VALIDITY OF THE PATENTS-IN-SUIT AND ON
GOOGLE’S BREACH OF CONTRACT COUNTERCLAIM
OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
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]

Original Filing Date: March 21, 2014
Redacted Filing Date: April 8, 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]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

TABLE OF CONTENTS
Page
I. 

PUM AND DR. KONIG ARE ENTITLED TO JMOL ON
GOOGLE’S BREACH OF CONTRACT COUNTERCLAIM. ........................................1 
A.  

Google Did Not Present Sufficient Evidence To Prove
That The Statute Of Limitations Was Tolled. .......................................................1 

B. 

Google Did Not Acquire SRI’s Right To Bring A Breach
Of Contract Claim. ...............................................................................................5 
1. 

The Plain Language Of The Purchase Agreement
Did Not Convey SRI’s Breach Of Contract Cause
Of Action To Google. ...............................................................................5 

2. 

The Assignment Of A Cause Of Action Must Be Express. ........................6 

C. 

Google Failed To Prove That Dr. Konig “Conceived”
Of The Invention While Working At SRI. ............................................................8 

D. 

PUM Met Its Burden Of Proving That The Patented
Inventions Did Not Result From The Work Dr. Konig
Did At SRI And Was Not Related To Work Being Done
By or Contemplated By SRI At That Time. ........................................................ 10 
1. 

The Invention Was Not Related To The Work
Being Done By Or Contemplated By SRI. .............................................. 10 

2. 

The Invention Did Not Result From the Work
Dr. Konig Did at SRI. ............................................................................. 12 

II. 

PUM IS ENTITLED TO JMOL THAT THE ACCUSED
PRODUCTS INFRINGE. .............................................................................................. 13 

III. 

PUM IS ENTITLED TO JMOL ON GOOGLE’S CLAIMS
OF INVALIDITY. ......................................................................................................... 15 
A.  

A Reasonable Jury Would Not Have A Legally Sufficient
Evidentiary Basis To Determine The Asserted Claims
Are Anticipated. ................................................................................................. 16 
1. 

Google Presented Insufficient Evidence that the
Mladenic Prior Art Reference Discloses Every
Claim Limitation of Claim 1 of the ’040 Patent
And Presented Insufficient Evidence Mladenic
Renders Obvious Claim 1 of the '276 Patent. .......................................... 16 

i

2. 

3. 

Google Presented Insufficient Evidence that the
Montebello Prior Art Reference Discloses Every
Claim Limitation of Claim 1 of the ’040 Patent
or Claim 1 of the '276 Patent................................................................... 17 

4. 

Google Presented Insufficient Evidence that the
Wasfi Prior Art Reference Discloses Every Claim
Limitation of Claim 1 of the ’040 Patent. ................................................ 18 

5. 
B. 

Google presented insufficient evidence that the
Mladenic prior art reference renders obvious
Claim 1 the ’276 patent........................................................................... 17 

Google Presented Insufficient Evidence that the
Dependent Claims are Obvious. .............................................................. 18 

A Reasonable Jury Would Not Have a Legally Sufficient
Evidentiary Basis to Determine Invalidity as to Obviousness. ............................ 19 

CONCLUSION ......................................................................................................................... 20 

ii

TABLE OF AUTHORITIES
Page(s)
CASES
Arachnid, Inc. v. Merit Indus., Inc.,
939 F.2d 1574 (Fed. Cir. 1991).............................................................................................. 7
Brandwein v. Butler,
218 Cal. App. 4th 1485 (Cal. App. 4th Dist. 2013) ............................................................ 5, 6
Britton v. Co-op Banking Grp.,
4 F.3d 742 (9th Cir. 1993) ..................................................................................................... 5
Burrage v. U.S.,
No. 12-7515, 571 U.S. ___, 134 S. Ct. 881 (Jan. 27, 2014) .................................................. 12
Cent. Mortg. Co. v. Morgan Stanley Mortg. Capital Holdings LLC,
No. 5140-CS, 2012 WL 3201139 (Del. Ch. Aug. 7, 2012) ..................................................... 2
Co-opportunities, Inc. v. Nat’l Broad. Co., Inc.,
510 F. Supp. 43 (N.D. Cal. 1981) .......................................................................................... 7
Dyna–Med, Inc. v. Fair Employment & Housing Comm’n
43 Cal. 3d 1379 (Cal. App. 1987) .......................................................................................... 7
Graham v. John Deere Co. of Kansas City,
383 U.S. 1 (1966) ................................................................................................................ 19
Hopp v. City of Pittsburgh,
194 F.3d 434 (3d Cir. 1999) .................................................................................................. 1
In re Jeannette Corp.,
130 B.R. 460 (Bankr. W.D. Pa. 1991).................................................................................... 7
Jones v. Cooper Indus., Inc.,
938 S.W.2d 118 (Tex. App. 1996) ......................................................................................... 7
Mangini v. Aerojet–Gen. Corp.,
230 Cal. App. 3d 1125 (1991) ............................................................................................... 3
Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc.,
No. 98-80-SLR, 2005 WL 388592 (D. Del Feb. 2, 2005) ................................................... 2, 3
Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc.,
No. 98-80-SLR, 2005 WL 46553 (D. Del. 2005) ................................................................... 2

iii

Norman v. Elkin,
726 F. Supp. 2d 464 (D. Del. 2010) ....................................................................................... 2
Pomeranz v. Museum Partners, L.P.,
No. 20211, 2005 WL 217039 (Del. Ch. Jan. 24, 2005) ...................................................... 3, 4
Rapoport v. Dement,
254 F.3d 1053 (Fed. Cir. 2001)............................................................................................ 16
Robotic Vision Sys., Inc. v. View Eng’g. Inc.,
189 F.3d 1370 (Fed. Cir. 1999)............................................................................................ 15
Rockwell Int’l Corp. v. U.S.,
147 F.3d 1358 (Fed. Cir. 1998)............................................................................................ 16
Univ. of W. Va., Bd. of Trs. v. VanVoorhies,
342 F.3d 1290 (Fed. Cir. 2003).............................................................................................. 7
OTHER AUTHORITIES
11 Williston on Contracts (4th ed.1999) § 30.2............................................................................ 5
RULES AND STATUTES
10 Del. C. § 8106 ........................................................................................................................ 1
10 Del. C. § 8117 ........................................................................................................................ 2
10 Del. C. § 8121 ........................................................................................................................ 1
35 U.S.C. § 102................................................................................................................... 15, 16
35 U.S.C. § 103......................................................................................................................... 15
35 U.S.C. § 282......................................................................................................................... 15
California Labor Code § 2870 ......................................................................................... 1, 10, 13
Federal Rule of Civil Procedure 50(a) ......................................................................................... 1

iv

Pursuant to Rule 50(a) of the Federal Rules of Civil Procedure, Personalized User Model,
L.L.P. (“PUM”) and Dr. Yochai Konig move the Court to grant judgment as a matter of law
(“JMOL”) in their favor in furtherance of the stipulation that the parties may amplify their oral
JMOLs in writing within three days. (D.I. 645.) This is PUM’s brief in support of that motion.
LEGAL STANDARD
Under Federal Rule of Civil Procedure 50(a), this Court should grant JMOL against the
non-moving party when “it has been fully heard on an issue and there is no legally sufficient
evidentiary basis for a reasonable jury to find for that party on that issue.” JMOL is appropriate
where “the record is critically deficient of the minimum quantity of evidence from which a jury
might reasonably afford relief.” Hopp v. City of Pittsburgh, 194 F.3d 434, 439 (3d Cir. 1999).
ARGUMENT
I.

PUM AND DR. KONIG ARE ENTITLED TO JMOL ON GOOGLE’S BREACH
OF CONTRACT COUNTERCLAIM.
Google failed to put forth sufficient evidence on which a reasonable jury could conclude

that Dr. Konig breached his employment contract with SRI by assigning the patents to Utopy.
Google’s claim is that Dr. Konig’s Employment Agreement required him to assign to SRI all
inventions that he conceived during his employment that are related to SRI’s business or research
as of 1999. JMOL is proper because: (1) Google’s claim is time-barred; (2) Google failed to
prove it obtained the right to bring SRI’s breach of contract claim; (3) Google failed to prove that
Dr. Konig conceived of the invention in the patent law sense while employed at SRI; and (4)
PUM proved that the invention is protected by § 2870 of the California Labor Code.
A.

Google Did Not Present Sufficient Evidence To Prove That The Statute Of
Limitations Was Tolled.

It is undisputed that Delaware’s borrowing statute applies such that the breach of contract
claim is subject to Delaware’s three-year statute of limitations. 10 Del. C. §§ 8121, 8106.
1

Unless tolled, the breach of contract claim expired long ago, because Google contends that Dr.
Konig breached the contract fourteen years ago when he assigned the patent to his invention to
Utopy. Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc., No. 98-80-SLR, 2005
WL 46553, at *4 (D. Del. 2005) (“Medtronic I”) (period typically begins to “run at the time of
the alleged wrongful act even if the plaintiff is ignorant of the cause of action”). The burden to
prove tolling falls on Google. See Norman v. Elkin, 726 F. Supp. 2d 464, 470 (D. Del. 2010)
(“Plaintiff maintains the burden of proving that the statute of limitations is tolled.”). Further, 10
Del. C. §8117 does not apply for the reasons set forth in PUM’s separate submission on this
issue, which PUM incorporates by reference herein. (D.I. 610, 626).
Google did not put forth sufficient evidence to prove that SRI’s alleged injury was
“inherently unknowable.” The inherently unknowable injury doctrine is a “narrowly confined
exception” that tolls the statute of limitations only “where it would be practically impossible for
a plaintiff to discover the existence of a cause of action.” Cent. Mortg. Co. v. Morgan Stanley
Mortg. Capital Holdings LLC, No. 5140-CS, 2012 WL 3201139, at *22 (Del. Ch. Aug. 7, 2012).
To toll the statute of limitations, Google must

prove that it would have been practically

impossible for SRI to discover the alleged wrongful assignment of the ’040 patent to Utopy.
Even where “this ‘narrowly confined’ exception applies,” the statute, begins to run again when
the plaintiff “becomes aware of facts sufficient to put [the plaintiff] on inquiry which, if pursued,
would lead to the discovery [of the injury].”

Id. at *22 (emphasis added).

Patents are

constructive notice of such facts because they put “the world on notice with respect to what the
patentee claims to own and starts the limitations period running.” Medtronic Vascular, Inc. v.
Advanced Cardiovascular Sys., Inc., No. 98-80-SLR, 2005 WL 388592, at *2 n.4 (D. Del Feb. 2,
2005).

2

At trial, Google argued that the injury to SRI was inherently unknowable because SRI
had no means of knowing the conception date. See, e.g., Tr. 1987:11-14 (“there’s no way that
SRI or Google or anyone else had any idea about when he actually conceived of his invention.”).
But that is not the correct test. Google confuses what SRI’s alleged injury was and focuses on
only part of the inquiry. SRI’s alleged injury was not the conception of the patented invention,
but rather the purportedly wrongful assignment of the patent to Utopy.
SRI was on actual notice of Dr. Konig’s invention at least as of the date that Dr. Sonmez,
an SRI engineer, conducted a beta test of the patented product in 2000-2001, and knew that Dr.
Konig had left to start Utopy. Tr. 1079:21-1084:4; 1657:22-1658:12; PTX 275. Further, SRI
was on constructive inquiry notice when the ’040 patent issued in 2005, listing Dr. Konig as
inventor and Utopy as its assignee, and listing on its face a December 1999 filing date, only a
few months after Dr. Konig left SRI. PTX 1; Medtronic, 2005 WL 388592, at *2 n.4.

Google

presented no evidence to support that the actual notice of the invention in 2001, and the
constructive notice of the invention, application date, and assignment in 2005 would not have at
least put SRI on inquiry notice to determine if it had a claim. The application date and subject
matter claimed in the ’040 patent, and the assignment to Utopy, were not practically impossible
to discover as a matter of law. Medtronic, 2005 WL 388592, at *2 n.4.
In addition, to have “inquiry notice,” SRI need not have known when Dr. Konig
conceived the invention, but merely needed to have enough information to warrant investigation.
Pomeranz v. Museum Partners, L.P., No. 20211, 2005 WL 217039, *13 (Del. Ch. Jan. 24, 2005)
(“Once a plaintiff is on notice of facts that ought to make her suspect wrongdoing, she is obliged
to diligently investigate and to file within the limitations period as measured from that time.”).1
1

See also Mangini v. Aerojet–Gen. Corp., 230 Cal. App. 3d 1125, 1130 (1991) (Under
analogous California law, “[s]ubjective suspicion is not required. If a person becomes aware of
3

Google offered no evidence that SRI did not know or could not have known sufficient facts to
prompt further investigation. And indeed, the only evidence presented showed that SRI had
notice of Dr. Konig’s invention and could have pursued additional information had it wanted to
do so. Google offered no evidence to suggest that SRI investigated at all. The only evidence
came from Mr. Montes, who testified that even after Google advised SRI of the purported claim
in 2011, SRI refused to warrant that it had any rights. Tr. at 1669: 2-21.
In addition, Google’s argument that “conception” was inherently unknowable
presupposes that conception occurred prior to Dr. Konig leaving SRI and could only be
determined by reviewing the confidential July 1999 Utopy slides. Tr. at 1987:11-14. Yet,
Google does not contest what all the evidence supports (see § C infra): that conception according
to the Court’s definition did not occur until after Dr. Konig left SRI. 5/8/2013 Tr. 111:15-16;
111:20-23 (“[W]e acknowledge in our briefs we are not asserting that all the strictures of a patent
law conception date were achieved by July ’99 . . .”). Thus, the confidential slides and the fact
that Dr. Konig did not disclose his invention prior to leaving SRI are red herrings.
SRI knew or easily could have known that Dr. Konig filed his patent application on
December 28, 1999, a few months after he left SRI, PTX 1, and that an SRI engineer beta tested
the invention a year after Dr. Konig left SRI. PTX 275. Thus, no reasonable jury could find that
SRI did not have knowledge of facts that would lead a reasonable plaintiff “to diligently
investigate and to file within the limitations period as measured from that time.” Pomeranz,
2005 WL 217039, at *13. Once SRI had actual notice of invention by 2001 and constructive
notice by 2005, SRI had a duty to inquire whether it had any claim. No reasonable jury could

facts which would make a reasonably prudent person suspicious, he or she has a duty to
investigate further and is charged with knowledge of matters which would have been revealed by
such an investigation.”).
4

find that it was “practically impossible” for SRI to learn of the alleged injury after these dates. 2
As a result, JMOL should be entered that Google did not provide sufficient evidence to establish
that the inherently unknowable exception was met.
B.

Google Did Not Acquire SRI’s Right To Bring A Breach Of Contract Claim.

There is no record evidence to support Google’s claim that the Purchase Agreement
conveyed a right to bring a breach of contract claim against Dr. Konig. Google has the burden to
prove that it has standing to bring this claim. See Britton v. Co-op Banking Grp., 4 F.3d 742,
746 (9th Cir. 1993) (“An assignee of a contractual right must prove the validity of his ownership
claims.”). The Purchase Agreement must be interpreted under California law. DTX 412 § 9.6.
“Whenever possible,” courts “attempt to discern the parties’ intent first from the plain language
of the contract.” Brandwein v. Butler, 218 Cal. App. 4th 1485, 1505 (Cal. App. 4th Dist. 2013)
(quoting 11 Williston on Contracts (4th ed.1999) § 30.2, p. 16).
Two years after PUM filed this lawsuit, Google paid SRI $40,000 to buy certain
purported patent rights. DTX 412. Google now claims that these rights included any breach of
contract claim that SRI may have had against Dr. Konig. But the plain language of the Purchase
Agreement, Federal Circuit precedent, and canons of contractual interpretation refute this
assertion as a matter of law. Further, Google failed to provide any evidence at all to meet its
burden of proving that it acquired a breach of contract claim (and not just speculative patent
rights). Indeed, other than enter the Purchase Agreement into evidence, Google offered no proof
and did not bring a single witness to trial to testify about the Purchase Agreement.
1.

2

The Plain Language Of The Purchase Agreement Did Not Convey
SRI’s Breach Of Contract Cause Of Action To Google.

It is thus irrelevant that Dr. Konig did not disclose his invention before he left SRI.
5

The plain language of the Purchase Agreement conveyed to Google only “speculative”
patent rights and causes of actions pertaining to those patents, and specifically called out that SRI
made “no representations or warranties with respect to Google’s ability to perfect such rights and
interests.” DTX 412 § 8.5. The Agreement conveyed “any perfected or unperfected claims of
ownership that [SRI] may have in the Patents,” DTX 412 at § 4.1 (emphasis added), and
causes of action . . . and other enforcement rights under, or on account of, any of
the Patents . . . including, without limitation, all causes of action and other
enforcement rights for (1) damages, (ii) injunctive relief, and (iii) any other
remedies of any kind for past, current, and future infringement; and (iv) rights to
collect royalties or other payments under or on account of the Patents . . .
Id. at § 4.2(c) (emphasis added). As these provisions show, the agreement conveyed patents, and
causes of action and enforcement rights for infringement and royalties relating to the patents, and
nothing more. There is no mention of a breach of contract claim.
Reading the entire Purchase Agreement “as a whole,” Brandwein, 218 Cal. App. 4th at
1505, confirms this. Section 1.2 of the Agreement states in full what SRI believed it was selling
to Google (“Seller wishes to sell to Google any rights it has in the Patents”). DTX 412 at § 1.2.
Likewise, § 1.3 states what Google believed it was buying: “Google wishes to purchase the
Patent Rights.” Id. at § 1.3. Accordingly, there is no plausible reading that would encompass the
conveyance of more than “Patent Rights.”
2.

The Assignment Of A Cause Of Action Must Be Express.

Google cannot sidestep the plain language of the Purchase Agreement by arguing that it
implicitly includes a breach of contract claim.3 The law is clear that a conveyance of a cause of
action must be express and cannot be implied, because a cause of action is an independent asset

3

Nor can Google claim that a breach of contract claim was necessary to perfect such
rights, because Dr. Konig no longer held any patent rights that could be returned to SRI. Rather
any action to perfect such rights had to be brought against the owner of such rights.
6

with its own monetary value. In re Jeannette Corp., 130 B.R. 460, 463 (Bankr. W.D. Pa. 1991)
(holding that party was not entitled to debtor’s settlement proceeds where Asset Purchase
Agreement did not specifically include causes of action); Co-opportunities, Inc. v. Nat’l Broad.
Co., Inc., 510 F. Supp. 43, 46-47 (N.D. Cal. 1981) (“Although Mr. McGee arguably assigned his
copyrights and ‘all’ the assets of BMC to plaintiff, there is no specific assignment of accrued
causes of action.”).
The Federal Circuit has also made clear that the assignment of a patent does not include
accrued causes of action, even if the causes of action relate to the patent, unless the assignment
expressly states that it does. See Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed.
Cir. 1991) (“assignment [of right to damages for an infringement committed before such
assignment] must be express, and cannot be inferred from an assignment of the patent itself.”)
(emphasis added); see also Univ. of W. Va., Bd. of Trs. v. VanVoorhies, 342 F.3d 1290, 1295
(Fed. Cir. 2003) (determining that scope of patent assignment agreement is limited by its plain
language); Jones v. Cooper Indus., Inc., 938 S.W.2d 118 (Tex. App. 1996) (assignor did not lose
cause of action for breach of agreement concerning patents after patents were transferred).
Because Google cannot point to any language that expressly conveys a breach of contract
claim, that asset was not conveyed. The doctrine of expressio unius est exclusio alterius dictates
“that ‘the expression of certain things in a contract necessarily involves exclusion of other things
not expressed.” Dyna–Med, Inc. v. Fair Employment & Housing Comm’n 43 Cal. 3d 1379,
1391, n.13 (Cal. App. 1987). Applying that doctrine here, SRI conveyed only those causes of
action relating to “enforcement rights under, or on account of, any of the Patents . . .” Any other
causes of action, including any breach of contract claim, were thus excluded.

7

It was Google’s burden to prove that SRI sold a breach of contract claim against Dr.
Konig in addition to its alleged patent rights. Yet Google offered no evidence on this point.
When a party with the burden of proof fails to offer any evidence, that failure is dispositive of its
claim.
C.

Google Failed To Prove That Dr. Konig “Conceived” Of The Invention
While Working At SRI.

Google also had the burden to prove that Dr. Konig breached his contract by failing to
assign an invention he “conceived . . . during the period of [his] employment” with SRI, which
ended on August 5, 1999. Tr. 1028:6-8; 1090:7-12; DTX 163. As construed by the Court,
conception is given its patent law definition: “the formation in the mind of the inventor of a
definite and permanent idea of the complete and operative invention, such that, if the idea were
communicated to a person having ordinary skill in the field of the technology, he or she would be
able to make the invention without undue research or experimentation or the exercise of
inventive skill.” Jury Instruction 5.3 (D.I. 663).
Yet, in response to the Court’s question, Google conceded at the summary judgment
hearing that it was not asserting that conception occurred under the patent law definition while
Dr. Konig was working for SRI. 5/8/2013 Tr. 111:15-16 (“We are not making that assertion”);
see also 111:20-23. Consistent with that, Google did not prove at trial that Dr. Konig conceived
of the invention under the patent law definition while employed at SRI.

Google’s focus

throughout the trial was on proving merely that Dr. Konig had “the idea” for the invention while
at SRI, and on arguing that, contrary to the Court's construction, this was sufficient for
conception. Tr. 1075:15-20; Tr. 1962:12-14 (arguing that “as early as ’98, early ’99, way, way
before he left SRI, [Konig] was already talking about this idea with Mr. Twersky,”); Tr.
1967:16-17. But merely having an “idea” for an invention is not the test. As the Court

8

explained, “someone with just an abstract idea cannot transfer ownership of that idea because no
ownership rights exist in ideas.” Tr. 1859:10-12.
Google relied on two marketing documents Dr. Konig and Mr. Twersky used to attract
investors, which described their general goal and framework in the summer of 1999. See, e.g.,
DTX 0151, DTX 161. Google offered no evidence whatsoever, however, that one skilled in the
art could “make the invention without undue research or experimentation or the exercise of
inventive skill” based on the information contained in those documents.
The only scientific evidence presented at trial demonstrated that Dr. Konig conceived of
the invention after leaving SRI. 4 Dr. Konig did not begin to find a solution that could be
implemented until after he left SRI in August 1999. Tr. 1028:6-8; 1090:7-12. This is consistent
with every other statement Dr. Konig has made regarding the conception date in this case.

E.g.

Tr. 1090:5-12 (the first “initial solution, something that engineer can implement and get the basic
idea was this September 21st document”).

4

Google relied heavily on the testimony of Mr. Twersky and erroneous interrogatory responses
served earlier in the case. Dr. Konig never stated that he conceived his invention prior to
September 1999, but Mr. Twersky stated during deposition that the inventions were conceived in
July 1999. Tr. 1127:1-11. Mr. Twersky later testified this was a mistake, that he did not
understand the legal definition of conception, that the relevant events took place more than ten
years before, making it impossible for him to put a definitive date on when the invention was
actually “conceived.” He also testified that Dr. Konig was the better person to ask. Tr. 1129:1011; 1137:10-13. In other words, Mr. Twersky made clear that he was not using the Court’s
definition of conception when he was first deposed and that Dr. Konig was the authority on the
topic. Accordingly, Mr. Twersky’s testimony was not probative of “conception” under the
Court’s definition. Dr. Konig testified, the interim responses conflicted with PUM’s first
response and were later corrected and superseded, and that no engineer could make his invention
based on those slides. Tr. 1090:5-1091:3; 1095:20-1101:9; DTX 370. Google cannot rely on
conflicting testimony or conflicting interrogatory responses to overcome its burden of proof,
where Google offered no evidence at all to establish that one skilled in the art could have made
the invention without undue experimentation based on the July slides. Because there was a
complete absence of any such evidence, and the only testimony (e.g., Tr. 1099:2-14) and the
actual scientific documents demonstrate that the invention could not be made prior to the
September 21, 1999 document (PTX 532), JMOL should be granted.

9

Corroborating Dr. Konig’s testimony, the first draft of a written document stating a
concrete solution to implement Dr. Konig and Mr. Twersky’s ideas was created on September
21, 1999. PTX 532; Tr. 1090:5-12; 1091:13-1095:15: Google presented no competent evidence
of any disclosure of an actual user model before Dr. Konig left SRI. Accordingly, Google failed
to show that Dr. Konig conceived his invention while at SRI or that he had any obligation to
assign the patents to SRI . Thus no breach occurred as a matter of law.
D.

PUM Met Its Burden Of Proving That The Patented Inventions Did Not
Result From The Work Dr. Konig Did At SRI And Was Not Related To
Work Being Done By or Contemplated By SRI At That Time.

Dr. Konig’s employment agreement with SRI specifically exempted the assignment of
inventions to SRI if such inventions qualify for an exclusion under § 2870 of the California
Labor Code. DTX 0163. It is undisputed that Dr. Konig developed his invention on his own
time and without using SRI resources. Tr. 1083: 15-16; Tr. 1083:23-1084:6; 1942; 1978:11-25;
1979:1-10 (“We don't have any evidence to contradict [this].”) Because neither exception of
§ 2870 applies, the inventions are protected from assignment under § 2870.
1.

The Invention Was Not Related To The Work Being Done By Or
Contemplated By SRI.

The patents-in-suit do not “relate to” SRI’s business simply because Dr. Konig used
computers and machine learning.

There was no evidence whatsoever that SRI was in the

business of developing computers or machine learning.

As SRI business person, Douglas

Bercow, testified, SRI’s business consisted of four research labs: Artificial Intelligence (AI),
speech technology, computer science and vision technology. TR. 1673-74. The only evidence
was that SRI applied long-existing machine learning tools to various areas of research. See, e.g.,
Tr. 1655:19-1656:12; 1664:4-1666:7. Two former SRI engineers, Drs. Sonmez and Stolcke,
testified that the same machine learning techniques Dr. Konig used at SRI were standard tools in

10

any machine learning professional’s tool kit. Dr. Stolcke testified that it would be “ludicrous”
for SRI to claim ownership of these standard learning tools because “these are standard
techniques in the field.” Tr. 1665:18-20. He explained: “It’s like a toolbox from a mechanic
with mathematical tools that we use to perform an array--to solve an array of different problems
that involved statistical modeling.”

Tr. 1666:13-16.

These tools are applied to model

probabilities in the oil industry, music, home mortgages, finance, genetics, and many other areas.
Tr. 1659:16-1660:10; 1665:21-1666:7. These are not tools that could be “returned” after leaving
SRI. Tr. 1666:24-1667:2. See also Dr Konig’s testimony. Tr. 1085:26-1086:14; 1089:23-1090:4
(machine learning tools have “existed for hundreds of years”).
Drs. Sonmez and Stolcke also testified that no one in the Star Lab or anywhere at SRI to
their knowledge was doing research on personalizing internet results or contemplating such work
during Dr. Konig’s tenure at SRI. Tr. 1667:6-12; Tr. 1656:17-21 (“That's certainly not within
STAR Lab. There was nothing like that.”); Tr. 1656:22-1657:21(“I don’t know anybody who
did Internet search at SRI. . . . I know that STAR Lab was not doing anything related to Internet
search.”); Tr. 1658:16-1659:1 (“[the patents-in-suit] do not relate to anything that STAR Lab did
at that point in time”). Dr. Franco also testified that the STAR Lab “extracts[s] information from
speech,” and that there were no projects at the STAR Lab during 1996-99 relating to personal
internet search. Tr. 1154:1-7; 1157:15-18.
The only witness on whom Google relied was Mr. Bercow, but Mr. Bercow was a
business person, and he explicitly deferred to the head of the Artificial Intelligence Center, which
was Dr. Perrault, as the proper person to consult about project details. Tr. 1680: 8-24. Dr.
Perrault testified that there was no such work in internet personalization at SRI prior to 2000. Tr.
1683: 14-1684:1. Finally, SRI itself insisted on including the “Rights Are Speculative” clause in

11

the Google/SRI Purchase Agreement, Tr. at 1669: 5-21, and Google offered no evidence that SRI
– the entity in the best position to know -- ever expressed a belief that Dr. Konig’s invention
related to any SRI business or research and development during the relevant time frame.
2.

The Invention Did Not Result From the Work Dr. Konig Did at SRI.

Personalized internet searches or ads do not “result from” Dr. Konig’s speech recognition
work. The California Labor Code does not define what “results from” means. But the Supreme
Court recently explained that the statutory language “results from” must be interpreted narrowly,
such that the patented invention would not have been created “but for” the work Dr. Konig
performed for SRI. Burrage v. U.S., No. 12-7515, 571 U.S. ___ at *10, 134 S. Ct. 881, 889 (Jan.
27, 2014) (“It is one of the traditional background principles against which Congress legislates
that a phrase such as ‘results from’ imposes a requirement of but-for causation.”) (internal
citations omitted).
Dr. Konig testified that his work at SRI involved statistical models relating to speech and
speech recognition technologies. Tr. 446:23-447:9; 1084:14-16. Dr. Stolcke confirmed that Dr.
Konig’s work was confined to speech recognition and speaker verification. Tr. 1667:3-6.
Personalized search information is completely different because “you are working with different
materials, if you will, and you have to provide a different output.” Tr. 1085:4-6. Drs. Sonmez
and Stolcke each testified that the subject matter of the patents had nothing to do with what Dr.
Konig worked on at SRI. Tr. 1663:15-22 (“I don’t recall any of these applications being
specifically proposed or thought about by the people that I knew at SRI.”); Tr. 1658:16-1659:1
(“these patents to not seem, to me, in any way linked to what he was doing at SRI”). Dr. Franco
confirmed that the STAR Lab “extracts[s] information from speech,” and that there were no
projects at the STAR Lab during 1996-99 relating to personal internet search. Tr. 1154:1-7;
1157:15-18.
12

There was no evidence that Dr. Konig’s invention would not have been created “but for”
his speech recognition work at SRI. Dr. Konig confirmed that the technology behind the patentsin-suit was developed at Utopy, not SRI, and that the statistical models he used were completely
different from those applied to speech.

Tr. 1074:11-14; 1084:7-1085:6; 1086:15-1087:14.

Moreover, Dr. Konig testified regarding his extensive background in machine learning and
speech recognition prior to his employment at SRI. Tr. 432:21-443:25; see also Tr. 1665:10-15
(Dr. Stolcke: “[Dr. Konig’s] experience is in evidence in his thesis, so therefore, it must have
predated his work at SRI.”); Tr. 1658:16-1659:1(Dr. Sonmez: “These actually -- in terms of topic,
[the patents-in-suit] do not relate to anything that STAR Lab did at that point in time. . . .
[T]hese patents do not seem, to me, in any way linked what he was doing at SRI.”). As a result,
no reasonable jury could find that the patented inventions were not exempt from assignment
under Section 2870 of the California Labor Code.
II.

PUM IS ENTITLED TO JMOL THAT THE ACCUSED PRODUCTS INFRINGE.
PUM demonstrated that each of Google's Search, Search Ads, Content Ads, and

YouTube products infringe the asserted claims as a matter of law.

Google did not even

challenge that its products practiced: (i) the preambles of both the ’040 and ’276 patents,
(ii) element 1(a) of the ’040 patent and the “transparently monitoring …” element of the ’276
patent, and (iii) the receiving a search query and retrieving documents based on a search query
elements of the ’276 patent (for Search and Search Ads). Because PUM presented sufficient
evidence to demonstrate that each of these elements is met, they cannot be disputed.
See Testimony of Google engineers (Horling (Tr. 517:12-534:25, 1364:8-1383:22), Jeh
(Tr. 535:10-538:1), Oztekin (Tr. 538:3-542:20), Havieliwala (Tr. 543:3-544:4), Golpalratnam
(Tr. 544:14-552:17), Zamir (565:23-582:13), Ponnekanti (582:19-589:11), Weinberg (Tr. 591:2-

13

592:13), Illowsky (Tr. 592:19-596:15), Nemeth (Tr. 597:6-601:1), Testimony of Michael
Pazzani (Tr. 601:24-608:2, 638:15-906:3, 929:1-936:10, 1002:10-1006:6), Testimony of
Google’s expert (Fox) (Tr. 1459:13-1480:21, 1604:20-1623:10), PTX 0011, PTX 0017,
PTX 0022, PTX 0024, PTX 0115, PTX 0370, PTX 0395, PTX 0404. PUM also demonstrated
that Google’s Accused Products practiced each of the dependent claims.

(Claim 22 –

Tr. 867:14-873:10, PTX 0373, PTX 0375, PTX 0035, PTX 0378, PTX 0403, PTX 0404,
PTX 0406, PTX 1268); (Claim 3 – Tr. 929:3-932:7, PTX 373, PTX 375); (Claim 7 – Tr. 932:9934:6, PTX 436, PTX 407, PTX 1268, Zamir Tr. 565:23-582:13); (Claim 21 – Tr. 934:9-936:10,
PTX 372, PTX 0386, PTX 0399, PTX 437).
PUM also demonstrated that each Accused Product performed each of the disputed claim
elements. See PUM’s Response to Opposition to Google's Motion for Judgment as a Matter of
Law on Non-Infringement (D.I. 665) and the evidence cited therein, all of which is incorporated
by reference. To summarize, PUM demonstrated that each accused Google Product performs:


element 1(b) of the ’040 patent, including that ads are documents or the equivalent of
documents (Tr. 744:14-769:20, 1471:11-1478:14, 1479:2-1480:21, PTX 0576,
PTX 0012, PTX 0013, PTX 0014, PTX 0015, PTX 0022, PTX 0140, PTX 0220,
PTX 0356, PTX 0357, PTX 0365,PTX 0372, PTX 0373, PTX 0375, PTX 0376,
PTX 0395, PTX 0399, PTX 0401, PTX 0403, PTX 406, PTX 0407, PTX0408,
PTX 0409, PTX 1113, PTX 1312, previously cited Google engineer testimony) and the
“analyzing the monitored data to determine documents of interest to the user” step of the
’276 patent (Tr. 876:10-881:4, PTX 0015, PTX 0373, PTX 0375, PTX 0403);



element 1(c) of the ’040 patent (Tr. 772:9-813:5, and the “estimating parameters of a
user-specific learning machine …” element of the ’276 patent (Tr. 881:5-886:5,
PTX 0022, PTX 0025, PTX 0095, PTX 0030, PTX 0112, PTX 0113, PTX 0213,
PTX 0033, PTX 0034, PTX 0037, PTX 0038, PTX 0069, PTX 0076, PTX 0098,
PTX 0223, 0373,PTX 0375, PTX 0376, PTX 0379, PTX 0397, PTX 0398, PTX 0404,
PTX 0869, PTX 0770;



element 1(d) of the ’040 patent (Tr. 813:6-820:1) and the “identifying properties of
retrieved documents …” portion of the ’276 patent (Tr. 895:13-900:13, 898:8-899:18,
1479:2-1480:7 (Fox), PTX 0016, 0403, PTX 0017, 0024, 0025, 0030, 0037, 0115, 018,
0222, 0397, 0399, 0400, 0401, 0402, 0407, 0408, 0411, 0413, 0443, 0876, 0942, 1457,

14

1458, 1462), and the previously cited Google engineer testimony);


element 1(e) of the ’040 patent (Tr. 820:2-859:11) and the “applying the identified
properties … to the user-specific learning machine …” step of the ’276 patent (Tr. 897:8899:18, PTX 0017, 0022, 0024, 0030, 0097, 0115, 0180, 0200, 0222, 0382, 0385, 0397,
0400, 0401, 0402, 0408, 0413, 0433, 0729, 0730, 0942, 1457, 1458, 1462, previously
cited testimony of Google engineers);



element 1(f) of the ’040 patent (Tr. 859:14-866:25) and the “using the estimated
probabilities …” element of the ’276 patent (Tr. 900:25-905:3, PTX 0039, PTX 0041,
0044, 0110, 0200, 0223, 0403), including on the "presenting" portion of that element
(Tr. 900:25-902:14, 903:25-906:3, 1621:23-1622:19, PTX 0017, PTX 0110).
In addition, PUM demonstrated that the receiving a search query and retrieving a

plurality of documents5 based on that query elements of the ’276 patent was performed by each
of Google’s Accused Products. Google did not dispute these elements for Google Search and
Search Ads, but in any event the elements are performed. (Tr. 889:17-890:19 PTX 0017, 0024,
0115).

The elements are also performed for Content Ads/YouTube.

(Tr. 890:16-895:10,

PTX 0407, 0416, Illowsky (Tr. 594:12-595:13), Zamir (Tr. 571:10-18)).
III.

PUM IS ENTITLED TO JMOL ON GOOGLE’S CLAIMS OF INVALIDITY.
Google asserts that the patents-in-suit are invalid as anticipated under 35 U.S.C. § 102

and invalid as obvious under 35 U.S.C. § 103. Google has a heavy burden because the patents
are presumed valid. 35 U.S.C. § 282. Google had to prove invalidity by clear and convincing
evidence. Robotic Vision Sys., Inc. v. View Eng’g. Inc., 189 F.3d 1370, 1377 (Fed. Cir. 1999)..
Google failed to prove by clear and convincing evidence that any of the references anticipated

5

The term “document” should not have been construed to include an “electronic file”
requirement, but even with that requirement, PUM showed that the Accused Products met the
“documents associated with a user” limitation. In addition, PUM showed that the Accused
Products learn over time, and the Court never determined that there was a minimum period of
time required for infringement as Google argued. Finally, Google erroneously argued that its
products do not meet the “estimating parameters” limitation because Google’s estimates are too
precise, but Dr. Fox agreed that a precise number can still be an estimate.
15

any claims of the two patents-in-suit. Throughout his testimony, Dr. Jordan failed to apply the
claim language of the elements to his analysis, and for this reason alone, Google failed to provide
clear and convincing evidence of anticipation. Also, Google failed to bring forth clear and
convincing evidence that any of the combinations of the references rendered obvious any claims
of the two patents-in-suit. Accordingly, JMOL is appropriate and necessary in this case.
A.

A Reasonable Jury Would Not Have A Legally Sufficient Evidentiary Basis
To Determine The Asserted Claims Are Anticipated.

To anticipate a claim under 35 U.S.C. §102, a single prior art reference must disclose
every limitation of the claim. Rockwell Int’l Corp. v. U.S., 147 F.3d 1358, 1363 (Fed. Cir. 1998).
Anticipation is a question of fact that is shown only by rigorous proof. See Rapoport v. Dement,
254 F.3d 1053, 1057–58 (Fed. Cir. 2001).
1.

Google Presented Insufficient Evidence that the Mladenic Prior Art
Reference Discloses Every Claim Limitation of Claim 1 of the ’040
Patent And Presented Insufficient Evidence Mladenic Renders
Obvious Claim 1 of the '276 Patent.

Mladenic fails to teach at least claim limitations 1(c)-(f) of the ’040 patent. DTX 264.
Dr. Jordan presented insufficient evidence Mladenic anticipates these limitations. With respect
to limitation 1(c), Dr. Jordan failed to identify the learning machine and the parameters that
would be estimated by the learning machine. Tr. 1229:19-1230:13. Dr. Carbonell testified
Mladenic teaches that the k-nearest neighbor approach is a non-parametric method and contains
no parameters. Tr. 1702:3-20. This is undisputed.
With respect to claim limitation 1(d), Dr. Jordan testified that hyperlinks are not
documents. Tr. 1296:24-25. Dr. Jordan’s testimony corroborates Dr. Carbonell’s testimony
regarding claim 1(d). Dr. Carbonell also testified that Mladenic “does not operate documents.
It operated on hyperlinks.” Tr. 1703:8-18. Hyperlinks and documents are very different. Id.

16

Because Mladenic recommended only hyperlinks not actual documents, Mladenic never analyzes
or considers the file to which the hyperlink points.
With respect to claim limitations 1(e) or 1(f), Mladenic teaches mapping to Boolean
categories not actually mapping to probabilities. Tr. 1704:15-1705:10. Dr. Jordan testified that
Boolean categories are not probabilities. Tr. 1297:14-15. Boolean categories are two-valued
logic and, therefore, Boolean categories cannot be probabilities. Tr. 1704:15-1705:10. The
Court’s construction is also constructive as defining “probability” to mean “a numerical degree
of belief or likelihood.” Tr. 1615:11-12.
Google presented insufficient evidence that the Mladenic prior art
reference renders obvious Claim 1 the ’276 patent.

2.

By Dr. Jordan's own admission, the Personal WebWatcher System did not teach
combining search with this system. Tr. 1298:8-16. Moreover, Mladenic could not be combined
with any search system since Mladenic was a navigation system. Tr. 170:18-1707:8. Joachims
WebWatcher was also a navigation system, it too did not receive any queries and therefore,
could not cure the missing “query” elements from claim 1 of the ’276 patent and render the claim
obvious. Moreover, Joachims indisputably an aggregate model, not a personalized model. Id.
3.

Google Presented Insufficient Evidence that the Montebello Prior Art
Reference Discloses Every Claim Limitation of Claim 1 of the ’040
Patent or Claim 1 of the '276 Patent.

Montebello fails to teach (and Dr. Jordan presented insufficient evidence) claim
limitations 1(c), 1(e), and 1(f) of the ’040 patent, and the related limitations of the ’276 patent,
namely claim limitations 1(c), 1(f) and 1(g). With respect to claim limitation 1(c) of both
patents. Dr. Jordan incorrectly testified that a “bag of words” was sufficient to meet the Court’s
construction to “parameters” that the court defined as weights or coefficients used in forming a
similarity or match score. Tr. 1230:4-1231:7. These values are not learned. Dr. Carbonell

17

testified that this limitation 1(c) also fails because Montebello does not disclose any learning
machine. Tr. 1713:6-10; 1714:2-17. For at least the same reason, Montebello does not teach
limitations 1(e) and 1(f) of the ’040 patent and 1(f) and 1(g) of the ’276 patent. Moreover, each
of these limitations requires “a probability.”

Dr. Jordan testified that Montebello did not

explicitly teach generating a match score and did not teach logistic regression. Tr. 1282:161283:12. Dr. Carbonell testified that Montebello provides no support to claim that match scores
are inherent nor does Montebello disclose match scores or any synonyms of “match score.”
Tr. 1715:10-12, 1714:18-1715:21.
4.

Google Presented Insufficient Evidence that the Wasfi Prior Art
Reference Discloses Every Claim Limitation of Claim 1 of the ’040
Patent.

Wasfi fails to teach claim limitations 1(c), (e), and (f) of the ’040 patent.

Claims

limitation 1(c) requires “parameters” and limitations 1(e) and 1(f) require “a probability.”
Dr. Jordan testified that the similarity score in Wasfi, defined by the stochastic entropy, ranges
from minus infinity to infinity. Tr. 1294:5-9. Dr. Carbonell testified that Dr. Jordan was
incorrect in evaluating Wasfi’s entropy equation. Tr. 1717:21-17:19:9. By teaching the wrong
equation, Wasfi actually teaches away from or the opposite of the intention of the patents, does
not estimate any “parameters” or “probabilities.” Tr. 1717:17-1720:12. The entropy equation
was not only incorrect, but Wasfi returns websites that are most different from the user interests.
Tr. 1719:2-9.
5.

Google Presented Insufficient Evidence that the Dependent Claims
are Obvious.

Dr. Jordan presented insufficient evidence from which a reasonable jury could conclude
that Claim 22 is obvious. Tr. 1283:20-1284:24. Contrary to Dr. Jordan’s testimony, Refuah
does not disclose a sequence of interaction times or provide any motivation to combine the two.

18

Tr. 1722:1-15. Refuah focuses on improving the user experience through the look and feel of the
web site whereas the ’040 patent focuses on getting the right information to the user to provide a
personalized search. Tr. 1723:9-1724:6. Moreover, because Mladenic operated on hyperlinks,
the Personal WebWatcher system could not even use a sequence of interaction times.
Google also presented insufficient evidence that the Montebello prior art reference in
view of Refuah discloses Claims 3, 7, and 21 the ’276 patent. Refuah does not teach the
additional limitations of the dependent claims. For example, Refuah does not disclose search,
therefore, claim 21, requiring the relevance of the document to the query fails. Tr. 1723:21-22.
Moreover, there would be no motivation to combine Montebello and Refuah. Tr. 1723:13-14,
Tr. 1724:3-6. Montebello was just a position paper and one of ordinary skill in the art would not
look to Montebello. And Refuah does not address the information overload problem but rather
the look and feel of the browser. Tr. 1723:23-1724:2.
B.

A Reasonable Jury Would Not Have a Legally Sufficient Evidentiary Basis to
Determine Invalidity as to Obviousness.

Google’s expert, Dr. Jordan, only offered conclusory testimony that the prior art was all
addressing the same problem of information overload therefore the “combinations are
predictable.” Tr. 1268:4-7. Dr. Jordan provided no analysis of how the combinations interacted
except that the conclusion was drawn that the combinations are predictable. 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. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
Google failed to meet its heavy evidentiary burden for any of these factors for the prior art..

19

Google failed to set forth sufficient proof that the prior art contains core limitations of the
patents-in-suit, much less have similar scope and content. As an example, the prior art focused
primarily on navigation within a single website. Tr. 1729:14-18. Since the prior art references
do not disclose all limitations of the patents-in-suit there are critical differences in the claims and
prior art. With such disparate references, no one skilled in the art would have known how to
arrive at the patents-in-suit. Tr. 1729:24-1730:4.
The jury heard evidence at trial further demonstrating the non-obviousness of the asserted
claims. Dr. Carbonell explained that secondary factors such as commercial success, long-felt but
unresolved need, and failure of others all support a conclusion that the patents-in-suit are nonobvious. Tr. 1730:8-24. The jury was presented with evidence supporting many of these factors.
Google’s own blog announcement admitted that personalized services were necessary and as a
result Google extended personalized search to all Goggle users, signed-in and signed-out in
December 2009. Tr. 1731:17-1732:5, PTX 0331. Dr. Carbonell testified that Google reported
increased revenue of twenty-six percent from the fourth quarter of 2009 to the fourth quarter of
2010 (year-over-year) after the launch of personalized search to all users in December 2009.
In addition, the jury heard evidence that there was a long-felt and unresolved need for
personalized search in the industry dating back to at least 2003. PTX 0342. After Google’s own
failed attempts at personalization, Google eventually acquired Kaltix for $17M, and was willing
to pay up to $40M, in an effort to gain traction in the area of personalized search,. Tr. 1736:191737:7, PTX 0334. After the acquisition of Kaltix in 2003, Google and Kaltix spent another six
years before fully implementing personalized search in 2009. See PTX 0043. Moreover, there
was significant evidence that others failed. Tr. 1740:18-1741:2.
CONCLUSION
For the foregoing reasons, the Court should enter JMOL for PUM and Dr. Konig.
20

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Karen Jacobs
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina S.E. Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
OF COUNSEL:

Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

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]
March 21, 2014
8107472.3

21

CERTIFICATE OF SERVICE
I hereby certify that on April 8, 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 April 8, 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)