Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 41

MOTION for Summary Judgment of Indefiniteness by GOOGLE, INC..(Manning, Susan)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,
Plaintiff,
CIVIL ACTION
NO. 10-cv-11571-RWZ

v.
GOOGLE INC.,
Defendant.

GOOGLE INC.’S MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS
Defendant and Counterclaim-Plaintiff Google Inc. (“Google”), by its undersigned
attorneys, hereby moves this Court for an order granting Summary Judgment of Indefiniteness in
Google’s favor. This Motion is made pursuant to Federal Rule of Civil Procedure 56 on the
ground that each of Plaintiff Skyhook Wireless Inc.’s (“Skyhook”) asserted patents fail to satisfy
the definiteness requirement of 35 U.S.C. § 112, ¶ 2, and are accordingly invalid.
Like claim construction, definiteness is an issue of law that can be resolved by the Court.
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998)
(“A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s
performance of its duty as the construer of patent claims.”). Accordingly, it is appropriate at this
stage in the litigation to resolve Google’s indefiniteness assertions. Should the Court agree with
Google that the asserted patents-in-suit are indefinite, and thus invalid, it need not construe the
claim terms in dispute. In the event, however, the Court concludes the terms of one or more
patent warrant construction, Google has proposed constructions in its brief, filed herewith, for
each of the claim terms in dispute.

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Google certifies counsel for the parties have conferred and attempted in good faith to
resolve or narrow the issues. Specifically, counsel for the parties have spoken on numerous
occasions, and at length, exchanged correspondence, and provided the disclosures set forth in the
Joint Statement (dkt. 18, filed December 7, 2010) concerning the construction of the disputed
claim terms. During those discussions, Google has repeatedly asserted its position that the
patents-in-suit are invalid, identified the particular limitations it believes are indefinite, and has
advised Skyhook of its general reasoning and supporting evidence. Skyhook has advised Google
of its position that each asserted claim is definite and valid.
The grounds in support of this Motion are set forth in Google’s Memorandum of Law in
Support of Motion for Summary Judgment of Indefiniteness and, in the Alternative, Opening
Claim Construction Brief, which is filed herewith and incorporated herein by reference.
REQUEST FOR ORAL ARGUMENT
Pursuant to Local Rule 7.1(d), Google respectfully submits that oral argument may assist
the Court in determining whether the patents-in-suit are invalid, and accordingly requests the
Court to consider Google’s Motion for Summary Judgment of Indefiniteness during the claim
construction hearing, scheduled for November 9, 2011 at 9:00 a.m.

Dated: September 14, 2011

Respectfully Submitted,
Google Inc.,
By its attorneys,
/s/ Susan Baker Manning
Jonathan M. Albano, BBO #013850
[e-mail]
BINGHAM McCUTCHEN LLP
One Federal Street
-2-

A/74514126.1/3005005-0000352152

Boston, MA 02110-1726, U.S.A.
617.951.8000
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
William F. Abrams (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
1900 University Avenue
East Palo Alto, CA 94303-2223
650.849.4400

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CERTIFICATE OF SERVICE
I hereby certify that this document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
on September 14, 2010.
/s/ Susan Baker Manning, Esq.
[e-mail]

A/74514126.1/