Personalized User Model LLP v. Google Inc.

Filing 686

REDACTED VERSION of 632 Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding Parties proposals for proposed jury instructions - re 627 Memorandum and Order by Personalized User Model LLP. (Tigan, Jeremy)

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

Original Filing Date: March 8, 2014
Redacted Filing Date: April 15, 2014

[phone]
[e-mail]

REDACTED - PUBLIC VERSION
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 March 6, 2014, Order (D.I. 627), the parties have conferred
and set forth below their proposals for the proposed instruction to be given to the jury regarding
recent changes to the accused technologies and their views as to when the instruction should be
given.
PUM’s Proposal:
Pursuant to the Court’s March 6, 2014 order, PUM proposes the following instruction be
read to the jury:
Ladies and gentlemen of the jury, the Google products and services accused by PUM of
infringement are those versions of the products and services as they existed in June
2011. There may or may not have been changes to these products after that date. You
will not be hearing evidence of any such changes that occurred after that date and I
instruct you to disregard and not consider whether there have been changes. The
attorneys will be asking questions addressed to the accused products and services as they
existed on June 10, 2011, and the witnesses will be giving answers as to how those
products and services existed as of that date to the best of their recollection.

The Honorable Leonard P. Stark
March 8, 2014
Page 2

PUM proposes certain changes to the Court’s proposed instruction that are consistent
with the Court’s Order:
PUM proposes that the relevant date for the instruction be June 2011, which is when fact
discovery closed. See Stipulation Regarding Extension of Fact Discovery Deadline, D.I. 272.
This is consistent with the Court’s order. D.I. 627 at 2-3 (“The Court is not persuaded that PUM
had a full and fair opportunity to take discovery into the changes in the Accused Technologies,
particularly as the changes occurred after the close of fact discovery (and PUM could have
reasonably believed that evidence of such changes would not be admissible at trial).”) (emphasis
added).1 This is not an “arbitrary date cutoff” as Google suggests, but rather is the date the Court
referenced in its Order and is the date as of which PUM had discovery on the accused products.
PUM proposes the instruction avoid inadvertently suggesting to the jury that any changes
have been made to the accused technologies by also including the phrase “or may not” in the
second sentence because some of the changes (e.g., the “proposed” removal of the ignored
domains from Search Ads) have yet to occur. Also, as the Court has ruled, the significance of
certain alleged changes is unknown because there has not been an adequate opportunity for
discovery.
PUM also proposes that the instruction make clear to the jury that it is not to give any
weight to, and should disregard, whether or not any changes have been made to the accused
technologies. Such an instruction is consistent with the Court’s order excluding evidence of such
changes.
Finally, PUM proposes that the final sentence of Google’s proposed instruction be
deleted and replaced by the addition of the phrase “to the best of their recollection” to the
preceding sentence. This change will avoid any connotations that may be associated with the
term “struggle”—such as that these changes occurred long ago when, in fact, they are relatively
recent (i.e., allegedly no later than January 2012) or in some instances have not yet occurred.
This will accomplish the purpose of excusing any difficulty witnesses may encounter recalling
facts without unnecessarily emphasizing or suggesting changes to the accused technologies.
PUM suggests the instruction be given in the Court’s preliminary instructions to the jury
because it relates to trial presentation. To repeat the same instruction later would give undue
emphasis to the alleged changes and would risk the very prejudice highlighted in PUM’s motion
and recognized by the Court.

1

.
products at issue for this trial in June 2011.

Discovery closed on all of the

The Honorable Leonard P. Stark
March 8, 2014
Page 3

PUM also requests that for the same reason that counsel shall be required to ask precise
questions focusing on the time frame as issue, Google’s witnesses should be instructed to so
confine their testimony and not testify about actual or planned changes.
In contrast, Google’s proposed instruction (set forth below) is an attempt to reargue
and/or circumvent the Court’s Order by disclosing to the jury the information that the Court
excluded.
First, Google’s proposal contradicts the Court’s Order by informing the jury that the
technology has changed. Specifically, Google’s proposed instruction unnecessarily indicates to
the jury that the Google Search product has changed. Indeed, Google admits this in its section
below, but argues that “[t]here is no harm in the jury knowing this,” purportedly because the jury
will not hear evidence of those alleged changes. This instruction makes no sense in light of the
Court’s Order that the jury is not to be told of post-discovery technology changes to any of the
products, and the Court’s finding that it would be prejudicial to PUM to do so. There also is no
proper reason to single out the Search product in this manner. 2 Nor is there any proper reason to
refer to the date of the alleged change, which again only serves to advise the jury that such
changes have in fact taken place, and when they allegedly took place, contrary to this Court’s
ruling.
Google also proposes that the date for the instruction be January 2012, which is six
months after fact discovery closed. Because the Court’s Order expressly excludes changes that
“occurred after the close of fact discovery,” Google’s date selection makes no sense unless it is
Google’s intent to nevertheless seek to introduce changes that occurred after discovery closed,
but before its strategically chosen date. Given that PUM has not had the opportunity to take
discovery on these changes, it is impossible for PUM or the Court to know which changes
Google’s proposed date would encompass.
Google’s Proposal:
Pursuant to the Court’s March 6, 2014 order, Google proposes that the following instruction be
read to the jury:
Ladies and gentlemen of the jury, the Google search products and services accused by PUM of
infringement are those versions of the products and services as they existed in or before January
2012. There may have been changes to these products and services after that date. You will not
be hearing evidence of any such changes that occurred after January 2012. Necessarily, then, the
attorneys will be asking questions addressed to the accused Google search products and services
as they existed in or before January 2012, and the witnesses will be giving answers as to how
2

Google argues that “to avoid juror confusion, the instruction should be limited to Google
Search.” But there is no reason for the jurors to be confused, because they are not going
to be hearing about any changes, actual or planned.

The Honorable Leonard P. Stark
March 8, 2014
Page 4

those products and services existed on that same date. You may see witnesses who are testifying
about the Google search products and services accused by PUM struggle to answer these
questions because they may need to put themselves back in the time frame at issue and may need
to put out of their mind any changes that occurred after January 2012.
Google’s proposal closely tracks the Court’s suggested jury instruction in the March 6, 2014
order. To illustrate this, below is a redline reflecting the changes Google made to the Court’s
suggested jury instruction.

The changes Google made to the Court’s suggested jury instruction were minimal. The only
accused product that is implicated by the March 6 order regarding discontinued products is
Google Search. The accused functionalities in Google’s Search Ads and Content Ads—the other
remaining accused products—have not been discontinued and thus are not implicated by this
instruction.3 Accordingly, to avoid juror confusion, the instruction should be limited to Google
Search.
But, it should be permitted to
present evidence or argument regarding how it operated while it was still in use, which Google
believes is consistent with the Court’s in limine order.
In contrast, PUM’s proposed instruction differs greatly from the Court’s suggested instruction.
Below is a redline comparison of PUM’s proposed instruction to the Court’s suggested
instruction:

3

The Honorable Leonard P. Stark
March 8, 2014
Page 5

In its March 6 order, the Court expressly recognized Google’s concern that the Court’s ruling
“may put certain witnesses in an awkward position, in which potentially they may have to testify
in a manner not fully truthful in order not to reveal to the jury recent changes in the Accused
Technologies.” The Court addressed that concern by including the language “You may see
witnesses struggle to answer these questions because they may need to put themselves back in
the time frame at issue and may need to put out of their mind any changes that occurred after that
[date]” in its suggested instruction to address this issue. PUM’s proposal, however, disregards
the Court’s finding and strikes the Court’s proposed language on this issue entirely. PUM argues
that the term “struggle” should be removed because it suggests that “these changes occurred long
ago when, in fact, they are recent or in some instances have not yet occurred.” But the only
product in which witnesses will need to struggle is Search, and these changes did occur long
ago.4

PUM’s addition that “I instruct you to disregard and not consider whether there have been
changes” is confusing given that the Court’s instruction indicates to the jurors there will be no
evidence of those changes. In other words, the jurors will be left wondering what it is they are
supposed to be disregarding and considering. There is no legal basis for such an instruction.
Indeed, the jurors might wonder whether changes even before the cut off date should be
considered or disregarded. The Court’s language on this point needs nothing more.
PUM justifies its proposal by pointing to the Court’s finding that it was “not persuaded that PUM
had a full and fair opportunity to take discovery into the changes in the Accused Technologies,
particularly as the changes occurred after the close of fact discovery.” The changes to the
Accused Technologies at issue were those that were the subject of PUM’s motion in limine:

Thus, Search is the only product to which the
Court’s order has relevance. Thus, in its proposed jury instruction, Google is not trying to
circumvent anything. It is merely focused on the Court’s ruling. There is no reason to apply an
4

Indeed, PUM has been aware of this change since August 2012.

The Honorable Leonard P. Stark
March 8, 2014
Page 6

arbitrary date cut off for the other accused products that remain in the case, and PUM does not
provide one.
PUM also raises the concern that Google’s proposal informs the jury that changes have been
made to Google Search. There is no harm in the jury knowing this, however, because the Court
will instruct the jury that it will not hear evidence of those changes. The point of the proposed
instruction is to cure potential prejudice to Google if the jury draws negative conclusions from a
Google witness’ “struggle” to recall how the system used to work. Google’s proposal is tailored
to addressing that concern. PUM’s is not.
Lastly, Google believes that the instruction should be read before the first witness to whom it is
pertinent takes the stand. Google has no objection to the instruction being read during the
preliminary jury instructions as well.

Respectfully,

/s/ Karen Jacobs
Karen Jacobs (#2881)
KJ/lm
cc:
Clerk of the Court (by hand)
All Counsel of Record (by e-mail)
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