Visual Interactive Phone Concepts, Inc. v. Google, Inc.

Filing 24

MEMORANDUM Joint Case Summary by Visual Interactive Phone Concepts, Inc. (Frey, Brendan)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

VISUAL INTERACTIVE PHONE
CONCEPTS, INC.,
Plaintiff,
Case No. 11-cv-12348
Hon. Lawrence P. Zatkoff

v.
GOOGLE, INC.

Maj. Judge Laurie J. Michelson

Defendant.
______________________________________________________________________________

JOINT CASE SUMMARY
1.

Statement of claim or claims of plaintiff(s), including legal theories, and basis of
federal jurisdiction.
Plaintiff’s statement:
This is an action seeking relief with respect to infringement of a United States Patent

under 35 U.S.C. §§ 271 and 281. This Court has subject matter jurisdiction under 28 U.S.C. §§
1331 and 1338(a) because this action arises under the Patent Laws of the United States, Title 35
of the United States Code. Venue is proper in the Judicial District under 28 U.S.C. §§ 1391 and
1400.
VIPC’s U.S. Patents Nos. 5,606,361 and 5,724,092 (the “patents-in-suit”) cover a
“videophone interactive mailbox facility system and method of processing information.” The
invention disclosed in the patents facilitates transactions carried out through the use of a system
that includes, to summarize, (1) a video-capable telephone handset for viewing information and

for inputting information related to transactions, (2) a data center that collects and stores
information relating to commercial transactions, and, in some cases, (3) a “vendor station”
capable of transmission and receipt of vendor information to or from the central data center.
VIPC is informed and believes, and thereon alleges, that Google makes, uses, and sells a
system that infringes the VIPC patents. To summarize, at least since 2009, Google has jointly
developed and/or overseen the development of several different video-capable wireless telephone
handsets, such as the Nexus One and Nexus S handsets, which are videophones as described in
the patents. Google develops and supports a mobile operating system known as Android that is
installed on the Nexus One, Nexus S, and many other video-capable wireless handsets. Google’s
Android Market sells various games and mobile handset applications, and also offers video
content such as feature films for rent or purchase by Android Market customers. Operators of
video-capable wireless handsets running variants of the Android operating system, including
Google’s agents, may initiate transactions from such handsets to make purchases of goods from
the Google Android Market. These transactions are routed through Google’s data center, which
collects and stores transaction information.
Furthermore, VIPC is informed and believes, and thereon alleges, that Google, through
its agents, employees and servants has induced infringement and/or engaged in acts of
contributory infringement.
2.
Statement of claim or claims and defense of defendant(s), and third-party
plaintiff(s), and defense of third-party defendant(s), including legal theories.
Defendant’s statement:

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VIPC appears to be accusing Android Market available on Nexus One and Nexus S
handsets of infringement of U.S. Patent Nos. 5,606,361 (“the ‘361 patent”) and 5,724,092 (‘the
‘092 patent”). See Am. Compl., Doc. # 16, ¶¶ 29-41, 47-56. Google denies that it has infringed,
either directly, indirectly, literally, or under the doctrine of equivalents, any valid claim of the
patents asserted by VIPC in this action.
Google further asserts that the claims of the ’361 and ‘092 patents are invalid because
they: (1) claim non-novel and/or obvious subject matter pursuant to 35 U.S.C. §§ 102 (a), 102
(b), 102 (e), and/or 103 (a), including, but not limited to being taught by, suggested by, and/or
obvious in view of, the prior art, see Am. Answer & Counterclaim, Doc. # 22, at 10-11
(preliminarily identifying relevant prior art), and/or (2) fail to satisfy one or more conditions of
patentability set forth in 35 U.S.C. § 112, including failure of written description, lack of
enablement, and claim indefiniteness with respect to at least one or more terms, see id. at 11-12
(preliminarily identifying terms that are indefinite and/or not enabled).
Google raises several other affirmative defenses in response to VIPC’s claims, including
defenses based on the statute of limitation, marking, laches, estoppel, and intervening rights. See
id. at 12-14.
In addition to its affirmative and other defenses, Google has filed a Counterclaim seeking
a declaratory judgment of non-infringement and/or invalidity for both patents at issue.
3.

Actual damages sought.
A. Plaintiff’s Actual Damages
VIPC is seeking damages in an amount no less than a reasonable royalty. VIPC also

requests reasonable attorneys’ fees, costs, pre-judgment interest, post-judgment interest, and any
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other relief to which it is entitled, including increased damages under 35 U.S.C. § 284.
Discovery is necessary in order to provide a specific calculation of VIPC’s damages.

B. Defendant’s Actual Damages
At this time, with the exception of its request for an award of reasonable costs and
expenses of litigation under 35 U.S.C. § 285, including attorneys’ fees and expert witness fees,
Google is not seeking damages in conjunction with its Counterclaims.

4.

Expected witnesses.
A. Plaintiff’s Expected Witnesses
John Davidsohn, Chairman of VIPC’s Board of Directors, President, and CEO of VIPC.
Anthony Cinotti, 40 Hillside Ave. # 0, Mahwah, NJ 07430.
Ezra Sutton, Esq., Plaza 9, 900 Route 9 North, Suite 201, Woodbridge, NJ 07095
Kenneth Kohn, Esq., see contact information above.
Ariel Reinitz, Esq., Leason Ellis, 81 Main St., Suite 503, White Plains, NY

Approximately ten or more corporate representatives of Google with knowledge of the
alleged infringing system and products.
B. Defendant’s Expected Witnesses
Google anticipates the following potential fact and/or third party witnesses:
1. The inventors, John Davidsohn and Anthony Cinotti.
2. VIPC’s prosecuting patent counsel, Ezra Sutton.
3. VIPC’s patent counsel during reexamination proceedings, Kenneth Kohn of Kohn

& Associates.
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4. Corporate designee of VIPC under FRCP 30(b)(6).
5. Google technical personnel knowledgeable about the accused products.
6. Google personnel knowledgeable about information pertinent to the relevant

Georgia Pacific factors or other economic factors relevant to any damages claim
presented by VIPC.
7. Third parties to which VIPC has offered, attempted, or actually, licensed the

patents at issue or similar patents/technology, including, but not limited to,
Infogear/Cisco, Handtrade.com, and Alcatel-Lucent.
8. Third parties knowledgeable about potential prior art.

5.

Whether any expert witnesses are anticipated and in what subject area.
A. Plaintiff’s Anticipated Experts

One or more expert witnesses are expected to testify for Plaintiff on technical issues
related to Google’s alleged infringement.
One or more expert witnesses are expected to testify for Plaintiff regarding the
calculation of a reasonable royalty.
One or more expert witnesses may testify for Plaintiff as to defenses and/or counterclaims that may be raised by Defendant.
B. Defendant’s Anticipated Experts
Google anticipates that it may present expert testimony on the following subject matters:
1. Claim Construction Issues
2. Noninfringement
3. Invalidity
4. Damages
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6.

Amount of time needed for discovery and summary of discovery conducted to date.
A. Plaintiff’s Proposal
Eight months for fact discovery. Initial reports from retained experts under Rule 26(a)(2)

shall be exchanged 21 days after the final close of fact discovery. Rebuttal expert reports shall
be exchanged 35 days after the exchange of the initial expert reports.

The deadline for

completion of expert discovery shall be 35 days after the exchange of rebuttal expert reports.
Initial interrogatories, requests to admit, and document requests will be served prior to
the scheduling conference.
B. Defendant’s Proposal
Google proposes that the following deadlines apply in this action in the event that it is not
transferred,1 unless modified for good cause shown:
Event

Proposed Due Date

Exchange Initial Disclosures pursuant to FRCP
26(a)

November 18, 2011

Disclosure of Asserted Claims and Preliminary
Infringement Contentions

December 7, 2011

Preliminary Invalidity Contentions

January 13, 2012

Parties exchange proposed claim terms to be
construed by the Court

March 1, 2012

Parties exchange proposed claim constructions
for all identified terms

March 20, 2012

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In the event that the matter is transferred, the parties submit that the schedule should be left for
ultimate determination by that Court.
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Initial claim construction briefs from both
parties due

April 20, 2012

Reply claim construction briefs from both
parties due

May 18, 2012

Joint claim construction charts due

June 1, 2012

Claim construction hearing

July 2012

Fact discovery cut-off

February 20, 2013
or 60 days after the Court issues its Claim
Construction Order, whichever is later

Initial expert reports due for party bearing
burden of proof

21 days after the close of discovery,

Rebuttal expert reports due

30 days after the exchange of initial expert
reports

Expert discovery cut-off

30 days after the exchange of rebuttal expert
reports

Dispositive motions due

14 days after the close of expert discovery

Hearing on dispositive motions

To be set by the Court

Pretrial conference

To be set by the Court, but no earlier than
October 11, 2013

Trial to commence

To be set by the court, but no earlier than
November 2013

1)

Disclosure of Asserted Claims and Preliminary Infringement
Contentions

The “Disclosure of Asserted Claims and Preliminary Infringement Contentions” will
contain the following information:
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a. Each claim of each patent in suit that is allegedly infringed;
b. Separately for each asserted claim, each accused apparatus, product, device,
process, method, act, or other instrumentality (“Accused Instrumentality”). This
identification shall be as specific as possible. Each product, device, and apparatus
must be identified by name or model number, if known. Each method or process
must be identified by name, if known, or by any product, device, or apparatus
which, when used, allegedly results in the practice of the claimed method or
process;
c. A chart identifying specifically where each element of each asserted claim is
found within each Accused Instrumentality, including for each element that VIPC
contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s),
or material(s) in the Accused Instrumentality that performs the claimed function;
d. For each claim which is alleged to have been indirectly infringed, an
identification of any direct infringement and a description of the acts of the
alleged indirect infringer that contribute to or are inducing that direct
infringement. Insofar as alleged direct infringement is based on joint acts of
multiple parties, the role of each such party in the direct infringement must be
described.
e. Whether each element of each asserted claim is claimed to be literally present or
present under the doctrine of equivalents in the Accused Instrumentality;
f. For any patent that claims priority to an earlier application, the priority date to
which each asserted claim allegedly is entitled;
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g. If VIPC wishes to preserve the right to rely, for any purpose, on the assertion that
its own apparatus, product, device, process, method, act, or other instrumentality
practices the claimed invention, VIPC must identify, separately for each asserted
claim, each such apparatus, product, device,

process, method, act, or other

instrumentality that incorporates or reflects that particular claim; and
h. If VIPC alleges willful infringement, the basis for such allegation.
2)

Preliminary Invalidity Contentions

The Preliminary Invalidity Contentions will contain the following information:
a. The identity of each item of prior art that allegedly anticipates each asserted claim
or renders it obvious. Each prior art patent shall be identified by its number,
country of origin, and date of issue. Each prior art publication must be identified
by its title, date of publication, and where feasible, author and publisher. Prior art
under 35 U.S.C. § 102(b) shall be identified by specifying the item offered for
sale or publicly used or known, the date the offer or use took place or the
information became known, and the identity of the person or entity which made
the use or which made and received the offer, or the person or entity which made
the information known or to whom it was made known. Prior art under 35 U.S.C.
§ 102(f) shall be identified by providing the name of the person(s) from whom
and the circumstances under which the invention or any part of it was derived.
Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identities of
the person(s) or entities involved in and the circumstances surrounding the
making of the invention before the patent applicant(s);
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b. Whether each item of prior art anticipates each asserted claim or renders it
obvious. If a combination of items of prior art makes a claim obvious, each such
combination, and the motivation to combine such items, must be identified;
c. A chart identifying where specifically in each alleged item of prior art each
element of each asserted claim is found, including for each element that
Defendants contend is governed by 35 U.S.C. § 112(6), the identity of the
structure(s), act(s), or material(s) in each item of prior art that performs the
claimed function; and
d. Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) or
enablement or written description under 35 U.S.C. § 112(1) of any of the asserted
claims.
3)

Exchange of Proposed Terms for Construction

Each party shall serve on each other party a list of claim terms which that party contends
should be construed by the Court, and identify any claim term which that party contends should
be governed by 35 U.S.C. § 112(6).
The parties shall thereafter meet and confer for the purposes of limiting the terms in
dispute by narrowing or resolving differences and facilitating the ultimate preparation of a Joint
Claim Construction and Prehearing Statement.
4)

Exchange of Preliminary Claim Constructions and Extrinsic
Evidence

The parties shall simultaneously exchange proposed constructions of each term identified
by either party for claim construction. Each such “Preliminary Claim Construction” shall also,

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for each term which any party contends is governed by 35 U.S.C. § 112(6), identify the
structure(s), act(s), or material(s) corresponding to that term’s function.
At the same time the parties exchange their respective “Preliminary Claim
Constructions,” each party shall also identify all references from the specification or prosecution
history that support its proposed construction and designate any supporting extrinsic evidence
including, without limitation, dictionary definitions, citations to learned treatises and prior art,
and testimony of any witnesses, including expert witnesses. Extrinsic evidence shall be identified
by production number or by producing a copy if not previously produced. With respect to any
supporting witness, including expert witnesses, the identifying party shall also provide a
description of the substance of that witness’ proposed testimony that includes a listing of any
opinions to be rendered in connection with claim construction.
The parties shall thereafter meet and confer for the purposes of narrowing the issues and
finalizing preparation of a Joint Claim Construction and Prehearing Statement.
5)

Joint Claim Construction and Prehearing Statement

The parties shall complete and file a Joint Claim Construction and Prehearing Statement,
which shall contain the following information:
a. The construction of those terms on which the parties agree; and
b. Each party’s proposed construction of each disputed term, together with an
identification of all references from the specification or prosecution history that
support that construction, and an identification of any extrinsic evidence known to
the party on which it intends to rely either to support its proposed construction or
to oppose any other party’s proposed construction, including, but not limited to,
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as permitted by law, dictionary definitions, citations to learned treatises and prior
art, and testimony of any witnesses, including expert witnesses.
6)

Discovery Plan

The parties will meet and confer regarding discovery, including limitations on discovery.
The parties expect to present a stipulated discovery order to the Court for its consideration.
7)

Discovery of Electronically Stored Information (“ESI”)

The parties agree to meet and confer regarding any issues or disputes that may arise
related to discovery of Electronically Stored Information (“ESI”). If, notwithstanding good faith
efforts, the parties are unable to resolve any issues relating to discovery of ESI, any disputes will
be brought to the Court for resolution in a joint submission with each side setting forth its
respective positions. The parties expect to present a stipulated ESI protocol to the Court for its
consideration.
8)

Protective Order

This action is likely to require disclosure of confidential or proprietary technical and
financial information. Accordingly, entry by the Court of an appropriate protective order will be
required.

The parties expect to present a stipulated protective order to the Court for its

consideration.
7.

Anticipated depositions.
A. Plaintiff’s Anticipated Depositions

Approximately ten or more corporate representatives of Google and related entities with
knowledge of the alleged infringing system and products.
Approximately 4 or more expert depositions.
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B. Defendant’s Anticipated Depositions
Google anticipates deposing the following potential fact and/or third party witnesses:
1. The inventors, John Davidsohn and Anthony Cinotti.
2. VIPC’s prosecuting patent counsel, Ezra Sutton.
3. VIPC’s patent counsel during reexamination proceedings, Kenneth Kohn of Kohn

& Associates.
4. Corporate designee(s) of VIPC under FRCP 30(b)(6).
5. Third parties to which VIPC has offered, attempted, or actually, licensed the

patents at issue or similar patents/technology, including, but not limited to,
Infogear/Cisco, Handtrade.com, and Alcatel-Lucent.
6. Third parties knowledgeable about potential prior art.
7. Any expert witnesses identified by VIPC.

8.

Relationship to other cases.
The following pending cases allege infringement of the two VIPC patents at issue in this

case:
Visual Interactive Phone Concepts, Inc. v. United States Cellular Corporation, Northern
District of Illinois Case No. 11-cv-05289;
Visual Interactive Phone Concepts, Inc. v. Cellco Partnership d/b/a Verizon Wireless,
Eastern District of Michigan Case No. 11-cv-12349;
Visual Interactive Phone Concepts, Inc. v. Google, Inc., Eastern District of Michigan
Case No. 11-cv-12348;
Visual Interactive Phone Concepts, Inc. v. AT&T Mobility, LLC, Eastern District of
Michigan Case No. 11-cv-13106;
Visual Interactive Phone Concepts, Inc. v. Apple, Inc., Eastern District of Michigan Case
No. 11-cv-12310.
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Visual Interactive Phone Concepts, Inc. v. Samsung Telecommunications America, LLC,
E.D. Mich. Case No. 11-12945.
The following previously resolved cases also alleged infringement of the two VIPC
patents at issue in this case:
Visual Interactive Phone Concepts, Inc. v. Big Planet, Inc., et al., Northern District of
California Case No. 99-cv-20936;
Visual Interactive Phone Concepts, Inc. v. Virgin Mobile USA, District of New Jersey
Case No. 05-cv-02661;
Visual Interactive Phone Concepts, Inc. v. Leap Wireless International, Inc., Southern
District of California Case No. 07-cv-01991.
The following additional prior cases are related to licensing of the two VIPC patents at
issue in this case:
Visual Interactive Phone Concepts, Inc. v. HandTrade.Com, Case No. 101847/2005
(Richmond County, NY);
Visual Interactive Phone Concepts, Inc. v. HandTrade.Com, Case No. 101122/2007
(Richmond County, NY);
Anthony Cinotti et al. v. Visual Interactive Phone Concepts, Inc. et al., Case No. 00-A425021 (Clark County, NV).
The following additional prior cases may be related to licensing of the two VIPC patents
at issue in this case:
Anthony Cinotti v. John Davidsohn, Case No. 108248/2000 (New York County, NY);
John Davidsohn v. Anthony Cinotti, Case No. 100982/2007 (Richmond County, NY).

Three of the other defendants have filed motions to transfer venue. Apple has moved to
transfer venue to the Northern District of California. Apple’s motion to transfer is set for hearing
on December 8, 2011.

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Verizon has moved to transfer venue to the District of New Jersey, or in the alternative,
to the Northern District of California.
AT&T Mobility has moved to transfer to the Northern District of Georgia, or in the
alternative, the District of New Jersey or the Northern District of California.
It is anticipated that these matters will involve substantially similar issues with respect to
claim construction and invalidity.

9.
etc.

Necessity of amendments to pleadings: additional parties, third-party complaints,

Plaintiff may amend its Complaint to add additional entities that may be facilitating or
taking part in the activities that Plaintiff believes to be infringement.
At this time, Google does not anticipate any further amendment of the pleadings or
addition of other parties, but reserves it right to seek leave to do so in the event that further
proceedings in this matter warrant amendment or the addition of other parties

10.

Anticipated motions, including whether dispositive motions are anticipated.
A. Plaintiff’s anticipated motions
Plaintiff may file motions for summary judgment.
Pre-trial motions in limine are also likely.
B. Defendant’s Anticipated Motions
1)

Motion to Transfer Venue

Google anticipates filing a motion to transfer venue to the Northern District of California
pursuant to 28 U.S.C. § 1404(a).

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2)

Motion for Summary Judgment

Google anticipates that it may file one or more motions for summary judgment depending
on the results of claim construction, discovery, and other proceedings in this matter.
3)

Motions-in-limine

Pre-trial motions-in-limine are also likely.

11.

Anticipated costs of litigation.
Unknown, but significant costs are likely.

12.

Whether case evaluation is desired.
At this time, case evaluation is not desired by the parties.

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Respectfully Submitted,

BY:

/s/ Brendan H. Frey__________
Gerard V. Mantese (P34424)
Ian M. Williamson (P65056)
Brendan H. Frey (P70893)
MANTESE HONIGMAN ROSSMAN
and WILLIAMSON, P.C.
1361 E. Big Beaver Road
Troy, MI 48083
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
KOHN & ASSOCIATES, PLLC
Kenneth I. Kohn (P35170)
Barbara Mandell (P36437)
30500 Northwestern Hwy, Suite 410
Farmington Hills, MI 48334
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

Attorneys for Plaintiff
Visual Interactive Phone Concepts, Inc.

Dated: October 14, 2011

BY:

/s/ Michelle L. Alamo________
DICKINSON WRIGHT PLLC
Michelle Alamo (P60684)
500 Woodward Ave, Suite 4000
Detroit, MI 48226
Telephone: [phone]
Facsimile: [phone]
[e-mail]

Attorneys for Defendant Google, Inc.

CERTIFICATE OF SERVICE
I, Sherri Sikorski, hereby certify that on October 14, 2011, I electronically filed Joint Case
Summary with the Clerk of the Court using the ECF system which will send notification of such
filing to counsel of record.
_____s/Sherri Sikorski________________
Sherri Sikorski
Dated: October 14, 2011

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