Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 26

NOTICE by GOOGLE, INC. of Preliminary Non-Infringement Contentions (REDACTED) (Manning, Susan)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,
Plaintiff,
v.

CIVIL ACTION
NO. 10-cv-11571-RWZ

GOOGLE INC.,
Defendant.

GOOGLE INC.’S PRELIMINARY NON-INFRINGEMENT CONTENTIONS

REDACTED

A/74155901.2

Pursuant to the Parties’ December 7, 2010 Discovery Plan and Local Rule 16.6, defendant
Google Inc. (“Google”) hereby serves its Preliminary Non-infringement Disclosures for U.S.
Patent Numbers 7,305,245 (the “‘245 patent”), 7,414,988 (the “‘988 patent”), 7,433,694 (the
“‘694 patent”), and 7,474,897 (the “‘897 patent”) (collectively, “the patents-in-suit”) on plaintiff
Skyhook Wireless, Inc. (“Skyhook”).
PRELIMINARY STATEMENT, RESERVATION OF RIGHTS,
AND GENERAL OBJECTIONS
1. This preliminary disclosure is directed to non-infringement issues only and does not
address invalidity, unenforceability, or claim construction issues. Google reserves all rights with
respect to such issues.
2. These non-infringement contentions are preliminary, and are based on Google’s current
knowledge, understanding, and belief as to the facts and information available as of the date of
these contentions. Discovery is ongoing and Google has not completed its investigation,
discovery, or analysis of information related to this action. Google reserves the right to amend,
modify and/or supplement its preliminary non-infringement disclosures.
3. Google is providing these preliminary non-infringement contentions prior to any claim
construction ruling by the Court. Any non-infringement analysis depends, ultimately, upon claim
construction, which is a question of law reserved for the Court. Google reserves the right to
amend, supplement, or materially modify its non-infringement contentions after the claims have
been construed by the Court. Google also reserves the right to amend, supplement, or materially
modify its non-infringement contentions based on any claim construction positions that Skyhook
may take in this case.
4. Google is providing these preliminary non-infringement contentions in response to
Skyhook’s Preliminary Infringement Contentions dated February 14, 2011. Google objects to

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Skyhook’s Preliminary Infringement Contentions on the ground that they fail to state a prima
facie case of infringement. Much of the “evidence” cited by Skyhook is in fact irrelevant and
does not purport to address the pertinent claim limitation. For example, Skyhook relies heavily—
and, as to many limitations, solely—on information related to StreetView. StreetView is not
accused of infringing, and in any case the evidence cited by Skyhook is irrelevant. As to
numerous claim limitations, Skyhook’s allegations are both conclusory and, to the extent
relevant, based solely on “information and belief.” See id. at clams 1(b), 1(d), 2 and 3 of the ‘988
patent, claim 1(b), 1(d), 1(e) and 2 of the ‘694 patent, and claim 3 of the ‘897 patent.
5. Google also objects to Skyhook’s Preliminary Infringement Contentions on the ground
that Skyhook did not fully identify, on a limitation by limitation basis, which claims of the
patents-in-suit are allegedly infringed by the respective components of the accused product. See
Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005), cert.
denied, 126 S. Ct. 1167 (2006) (“the ‘all limitations’ ‘rule holds that an accused product or
process is not infringing unless it contains each limitation of the claim, either literally or by an
equivalent.’”). In some cases, Skyhook did not identify any component as infringing a particular
limitation. For example, with respect to claim 1 of the ‘988 patent, claim 1 of the ‘694 patent,
and claim 1 of the ‘245 patent, Skyhook did not identify any component as implementing “a
database of [calculated locations of] Wi-Fi access points” for a “target area.” Google reserves the
right to amend, supplement, or materially modify its non-infringement contentions to the extent
that Skyhook modifies, clarifies, or changes its infringement allegations to make a prima facie
assertion of infringement on a limitation by limitation basis.
6. Skyhook did not set out its contentions as to infringement under the doctrine of
equivalents on a limitation by limitation basis. See, e.g., Biogen, Inc. v. Berlex Laboratories,

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Inc., 113 F. Supp. 2d 77, 107 (D. Mass. 2000) (“[T]he doctrine of equivalents must be applied
not only to each discrete claim, but also to the individual elements of each claim, rather than the
invention as a whole that each claim describes.”) (citing Warner Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 29 (1997)). Google reserves the right to amend, supplement, or
materially modify its non-infringement contentions to the extent that Skyhook modifies, clarifies,
or changes its infringement allegations to make a prima facie assertion of infringement under the
doctrine of equivalents on a limitation by limitation basis.
7. Skyhook has not accused Google of indirect infringement. Nor has it accused any third
party of direct infringement, a necessary predicate to any accusation of indirect infringement by
Google. Skyhook has thereby waived any claim that Google indirectly infringes under 35 U.S.C.
§ 271(b). Google’s preliminary non-infringement contentions are therefore limited to Skyhook’s
direct infringement allegations.
8. Additionally, in its Complaint Skyhook failed to allege any facts that would entitle it to
relief under 35 U.S.C. § 271(b). Google reserves its rights to move to dismiss the relevant
portions of the Complaint and/or to strike the relevant portions of Skyhook’s Infringement
Contentions as inadequately pled.
PRELIMINARY NON-INFRINGEMENT CONTENSIONS
I.

Google Does Not Directly Infringe the Asserted Patents.

Skyhook accuses Google of directly infringing three claims of U.S. Patent No. 7,414,988,
two claims of U.S. Patent No. 7,433,694, four claims of U.S. Patent No. 7,474,897, and six
claims of U.S. Patent No. 7,305,245. Skyhook states that the accused instrumentality is “Google
Location Services, including, but not limited to, Gears Geolocation API and its implementation
in Toolbar, Chrome browser and Mozilla Firefox browser; Client Location Library, and its
implementation in Mobile Search with My Location, Google Maps and Google Latitude; and
Network Location Provider, and its implementation in the Android Operating System”
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(collectively, the “accused products”). See Plaintiff Skyhook Wireless Inc.’s Preliminary
Infringement Disclosures at 2-5 (“Skyhook’s Infringement Contentions”). Skyhook contends that
claims 1-3 of the ‘988 patent, claims 1-2 of the ‘694 patent, claims 1-4 of the ‘897 patent, and
claims 1, 2, 4-6, and 8 of the ‘245 patent (collectively, “the asserted claims”) are literally
infringed or, alternatively, infringed under the doctrine of equivalents. Id.
For at least the reasons discussed herein Google does not infringe any asserted claim of
the patents-in-suit, either literally or under the doctrine of equivalents.
A.

Google Does Not Literally Infringe.

Google does not infringe the asserted claims of the patents-in-suit for at least the
following reasons:
1.

The ‘988 Patent.

a. The accused products do not implement
as required by
claim 1 of the ‘988 patent.
b. The accused products do not implement a database that includes
as required by
claim 1 of the ‘988 patent.
c. The accused products do not
as
claimed by claim 1 of the ‘988 patent.
d. The accused products do not have

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as required by claim 1 of the ‘988 patent.
e. The accused products do not have
as claimed by claim 1 of
the ‘988 patent;
f. The accused products do not have

as claimed by claim 1 of the ‘988 patent;
g. The accused products do not include
as claimed
by claim 2 of the ‘988 patent.
h. The accused products do not include
as claimed by
claim 3 of the ‘988 patent.
i. The accused products do not include

as claimed by
claim 3 of the ‘988 patent.

2.

The ‘694 Patent

a. The accused products do not implement
as required by
claim 1 of the ‘694 patent.

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b. The accused products do not implement a database that includes
as required by
claim 1 of the ‘694 patent.
c. The accused products do not
as
claimed by claim 1 of the ‘694 patent.
d. The accused products do not obtain

as claimed by claim 1
of the ‘694 patent.
e. The accused products do not have

as claimed by claim 1 of the ‘694 patent.
f. The accused products do not implement a
as claimed
by claim 2 of the ‘694 patent.

3.

The ‘897 Patent.

a. The accused products do not
as claimed by claim 1 of the ‘897 patent;
b. The accused products do not

as claimed by claim 1 of the ‘897 patent;

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c.

The accused products do not “

as claimed by claim 1 of the ‘897 patent;
d. The accused products do not
as claimed by claim 2 of the ‘897 patent;
e. The accused products do not

as claimed by claim 3 of the ‘897
patent; and
f. The accused products do not include

as claimed by
claim 4 of the ‘897 patent.
4.

The ‘245 Patent.

a. The accused products do not implement a

as claimed by claim 1 of the ‘245
patent.
b. The accused products do not
as claimed by claim 1 of the ‘245 patent.
c. The accused products do not
as claimed by claim 1
of the ‘245 patent.

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d. The accused products do not have
as claimed by claim 1 of the ‘245 patent.
e. The accused products do not use

as
claimed by claim 1 of the ‘245 patent.
f. The accused products do not do not
as claimed by claim 6 of the ‘245 patent.
g. The accused products do not

as claimed by

claim 8 of the ‘245 patent.

* * *
To elaborate on the above distinctions, first, the accused products do not have
The accused products do not implement a

.
Second, the accused products do not include
Skyhook has failed to put forth a prima facie case of
infringement with regard to this claim limitation. Specifically, Skyhook has failed to provide any
support for its allegation that

Therefore, the accused products do not
implement the
.
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Third, the accused products do not

The accused products do not
obtain

. Additionally, the accused products
. Skyhook has failed to put forth a
prima facie case of infringement with regard to these claim limitations. Specifically, Skyhook
has failed to provide any support for its allegation that the accused products
, and does not in fact even address the fact that the
accused products

Fourth, Skyhook has chosen to express numerous elements as a means or step for
performing a function without any recital in the claim of structure, material or acts. The accused
products do not
For example,
Google is informed and believes that accused products

. Google’s products therefore do not infringe that
patent.

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Fifth, Skyhook did not identify a component of an accused product that includes
“computer-implemented clustering logic to identify position information based on error prone
GPS information.” It is not clear from Skyhook’s contentions what it contends constitutes “error
prone GPS information” within the meaning of claim 2 of the ‘988 patent.
Sixth, the accused products do not “

. The accused products do not
Therefore, these elements are not
met.
Seventh, the accused products do not “

The accused products do not

Eighth, the accused products do not
. Skyhook has failed to put
forth a prima facie case of infringement with regard to this claim limitation. Skyhook did not
fully identify, on a limitation by limitation basis, which claims are allegedly infringed by the
respective components of the accused product. Specifically, Skyhook did not identify any
accused component that “calculat[es] the signal strength of the messages received by the Wi-Fi
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access points.” In contrast, the accused products do not

Ninth, the accused products do not have
as required by in the ‘245 patent. The accused products may not

Finally, the accused products do not infringe the asserted dependent claims of the patents
in suit for at least the reasons stated above with regard to the independent claims of the asserted
patents, and therefore cannot infringe any claim depending therefrom.
B.

Google Does Not Infringe Under the Doctrine of Equivalents.

Skyhook makes the conclusory assertion that Google infringes under the doctrine of
equivalents. Skyhook’s Infringement Contentions at 2-5. Skyhook fails, however, to identify
which particular limitations are present under the doctrine of equivalents, or state its contentions
as to how the differences between each limitation and the accused products are either
insubstantial or how the accused products perform substantially the same function as the claimed
limitation in substantially the same way to achieve substantially the same result. Google
therefore objects to Skyhook’s purported assertion of the doctrine of equivalents as facially
insufficient. Google reserves its rights to move to strike the relevant portions of Skyhook’s
Infringement Contentions.
Subject to its objections, and without waiving any objections, Google states that the
accused products do not infringe either literally or under the doctrine of equivalents because the
above noted differences between the accused products and the patents-in-suit are substantial, and
the accused products do not perform substantially the same function in substantially the same
way to achieve substantially the same result as the claimed limitations.
Moreover, the applicants specifically disclaimed

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See, e.g., GSHFED_0000183 and GSHFED_0000297. Skyhook is estopped from
trying to recapture through the doctrine of equivalents subject matter dedicated to the public
and/or surrendered during prosecution. Because Google

it does not infringe
literally or under the doctrine of equivalents for at least the reasons noted herein.

Dated: April 15, 2011

Google Inc.,
By its attorneys,
s/ Jonathan M. Albano
Jonathan M. Albano, BBO #013850
[e-mail]
BINGHAM McCUTCHEN LLP
One Federal Street
Boston, MA 02110-1726, U.S.A.
617.951.8000
William F. Abrams (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
1900 University Avenue
East Palo Alto, CA 94303-2223
650.849.4400
Susan Baker Manning (pro hac vice)
[e-mail]
Robert C. Bertin (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
2020 K Street, NW
Washington, DC 20006-1806
202.373.6000

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CERTIFICATE OF SERVICE
I hereby certify that on April 15, 2011, I served the forgoing Google, Inc.’s Preliminary
Non-Infringement Contentions via email to the following:

Thomas F. Maffei
Griesinger, Tighe & Maffei, LLP
Suite 400
176 Federal Street
Boston, MA 02110
Telephone: [phone]
Facsimile: 617-542-0900
[e-mail]

John C. Hueston
Irell & Manella
1800 Avenue of the Stars
Suite 900
Los Angeles, CA 90067-4276
Telephone: [phone]
[e-mail]

Douglas R. Tillberg
Griesinger, Tighe & Maffei, LLP
Suite 400
176 Federal Street
Boston, MA 02110
Telephone: [phone]
Facsimile: 617-542-0900
[e-mail]

Samuel K. Lu
Irell & Manella LLP
1800 Avenue of the Stars
Suite 900
Los Angeles, CA 90067
Telephone: [phone]
[e-mail]

Morgan Chu
Irell & Manella, LLP
1800 Avenue of the Stars
Suite 900
Los Angeles, CA 90067
Telephone: [phone]
[e-mail]

/s/ Susan B. Manning
[e-mail]