Function Media, L.L.C. v. Google, Inc. et al

Filing 192

MOTION Motion to Limit the Number of Asserted Claims by Google, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(Salinas, Billie) (Additional attachment(s) added on 10/5/2009: # 5 Text of Proposed Order) (ehs, ).

Function Media, L.L.C. v. Google, Inc. et al

Doc. 192 Att. 1

EXHIBIT A

Dockets.Justia.com

GILLAM a#* SMITH, L.L.P.
TRIAL ]FIRM

ATTORNEYS AT LAW
HARRY L. " GIL" GILLAM, JR.

[e-mail]
MELISSA R. SMITH

[e-mail]

June 27, 2009
VIA ELECTRONIC MAIL

Max L. Tribble, Jr., Esq. Joseph S. Grinstein , Esq. Susman Godfrey LLP 1000 Louisiana, Suite 5100 Houston, TX 77002 Justin A. Nelson, Esq. Suite 3800 1201 Third Avenue Seattle, WA 98101-3000 Dear Jeremy, Justin , Joe and Max:

Jeremy J. Brandon, Esq. Susman Godfrey LLP 901 Main Street, Suite 5100 Dallas, TX 75202-3775

This letter follows up on the conversation that I had with Joe last week regarding limiting the number of claims to be construed for purposes of a Markman hearing and subsequently tried. Joe told me he would roundtable the issue and get back with me which I am sure he will. We hope to reach an agreement with you on this issue, but if we cannot , given the short time between now and the hearing, we will need to get a motion on file before Judge Everingham. Function Media asserts 84 claims from three patents . This amount of claims cannot be tried efficiently . Similarly, construing this large number of claims would place an unduly heavy burden on the Court. We suggest that you choose three representative claims per patent. Such a limitation would not only snake the Court's task for the purposes of a Markman hearing easier, but would ensure a manageable presentation of the parties ' claims and defenses at trial. Limits on the number of claims to be construed and/or tried are common in the Eastern District of Texas. For example, in Flearing Components, Inc. v. Shure, Inc., 2008 WL 2485426, at * 1 (E.D. Tex. 2008), Judge Clark limited the plaintiff who asserted three patents-in-suit to three representative claims per patent for both claim construction and trial. Similarly, in LG Elecs. Inc. v. .Petters Group YClorldwicle, Inc., Cause No. 5-08-cv-00163 (E.D. Tex. 2009) (Docket Entry # 59), the court limited plaintiff to ten claims. Also, in Sipco, LLC vs. Amazon. com, Inc., et al., Cause No. 2:08-CV-359 (Docket Entry # 33) (E.D. Tex 2008), Judge Folsom required the patentee to limit its asserted claims to ten claims roughly one month after the accused infringer

303 S. Washington Avenue

Marshall , Texas 7 5670 : Telephone 903,934 . 8450 ·:· Facsimile 903 . 934.9257 °:· ^rrrr .. gillamsmithlaw.com

BOARD OE;RTII·'ITti D PEIISOiNAL INJURYTRTAI., UAW BY T111, T[;XAS ROAM) O 1,2GA1. S1'T.·. CTA1.,1ZX1'K)N

serves its preliminary invalidity contentions, and approximately one year before the scheduled claim construction hearing.). As you likely know, Judge Folsom now does this as a matter of course. We would appreciate your response to this proposal by close of business today. As always, we remain open to discuss these issues further telephonically or otherwise.

1-Tarry L. Gillam, Jr.

GILLAM ·*** SMITH , L.L.P.
TRIAL FIRM

ATTORNEYS AT LAW
HARRY L. "GIL" GILLAM, JR.

[e-mail]
MELISSA R. SMITH

[e-mail]

June 27, 2009
VIA ELECTRONIC MAIL

Max L. Tribble, Jr., Esq. Joseph S. Grinstein, Esq. Susman Godfrey LLP 1000 Louisiana, Suite 5100 Houston, TX 77002 Justin A. Nielson, Esq. Suite 3800 1201 Third Avenue Seattle, WA 98101-3000 Dear Jeremy, Justin, Joe and Max:

Jeremy J. Brandon, Esq. Susman Godfrey LL,P 901 Main Street, Suite 5100 Dallas, TX 75202-3775

This letter follows up on the conversation that I had with Joe last week regarding limiting the number of claims to be construed for purposes of a Markman hearing and subsequently tried. Joe told me he would roundtable the issue and get back with me which I am sure he will. We hope to reach an agreement with you on this issue, but if we cannot, given the short time between now and the hearing, we will need to get a motion on file before Judge Everingham. Function Media asserts 84 claims from three patents. This amount of claims cannot be tried efficiently. Similarly, construing this large number of claims would place an unduly heavy burden on the Court. We suggest that you choose three representative claims per patent. Such a limitation would not only snake the Court's task for the purposes of a Markman hearing easier, but would ensure a manageable presentation of the parties' claims and defenses at trial. Limits on the number of claims to be construed and/or tried are common in the Eastern District of Texas. For example, in Flearing Components, Inc. v. Shure, Inc., 2008 WL 2485426, at * 1 (E.D. Tex. 2008), Judge Clark limited the plaintiff who asserted three patents-in-suit to three representative claims per patent for both claim construction and trial. Similarly, in LG Elecs. Inc. v. Petters Group Worldtivicle, Inc., Cause No. 5-08-cv-00163 (E.D. Tex. 2009) (Docket Entry # 59), the court limited plaintiff to ten claims. Also, in Sipco, LLC vs. Amazon. com, Inc., et at, Cause No. 2:08-CV-359 (Docket Entry 4 33) (E.D. Tex 2008), Judge Folsom required the patentee to limit its asserted claims to ten claims roughly one month after the accused infringer

303 S. Washington Avenue

Marshall, Texas 75670: Telephone 903,934.8450 ·:· Facsimile 903.934.9257

www.gillamsmithiaw.com

i3()AF2I) C:E^It:[`II''IEI) 7'T;i2S0\AT., 1N.IlJi`tY'1'I't:FA[.> L.A[ti 131 7'llb;'F'F^;Xe15 i3()A[2I) (.)P' 1.PGAL. SI':GCI[A:[.,I%A'1'l()N

serves its preliminary invalidity contentions, and approximately one year before the scheduled claim construction hearing.). As you likely know, Judge Folsom now does this as a matter of course. We would appreciate your response to this proposal by close of business today. As always, we remain open to discuss these issues further telephonically or otherwise.

Harry L. Gillam, Jr.