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

Filing 224

RESPONSE to Motion re 192 MOTION Motion to Limit the Number of Asserted Claims filed by Function Media, L.L.C.. (Attachments: # 1 Exhibit Ex. A, # 2 Exhibit Ex. B, # 3 Exhibit Ex. C, # 4 Exhibit Ex. D, # 5 Exhibit Ex. E)(Grinstein, Joseph)

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

Doc. 224

IN THE UNITED STATES DISTRICT COURT FOR THE EASTER}{ DISTRICT OF TEXAS MARSHALL DIVISION
FUNCTION MEDIA. L.L.C.
$ $ $ $

Plaintiff.
vs.

Civil Action No. 2007-CV-279

s
$ $ $ $

GOOGLE INC. AND YAHOO!.INC.
Defendants.

JURY TRIAL DEMANDED

FUNCTION MEDIA, L.L.C.'S RESPONSE TO GOOGLE'S MOTION TO LIMIT THE NUMBER OF'ASSERTED CLAIMS
This Court should deny Google's Motion to Limit Claims. The parties can easily litigate

the eighteen claims (not thirty-two, as argued by Google)r that FM has asserted for trial.
Altematively,

if

this Court elects to limit FM's claims to five, then

it

should likewise limit

Google's asserted prior art references to four andlor permit FM multiple trials.

Google's motion is premised, in part, on a misstatement. FM has asserted eighteen
claims against Google. See Ex.

A (Grinstein 8/10/09 email). Google

contends, however, that

FM's eighteen claims are actually thirty-two, because certain of FM's dependent claims will
require FM to prove up the elements of other claims upon which they depend. But this is simply

semantics. A claim is a claim. There is no difference between asserting, on the one hand, a
dependent claim with one limitation that depends on an independent claim with five limitations, and, on the other, asserting an independent claim with six limitations. Yet Google would count the former as asserting two claims, and the latter as asserting one. For that matter, Google by its

This Court's Mqrkmqn ruling eliminated the two '045 patent claims from FM's asserted twenty claims, and presumably two claims as well from Google's recalculated number of ttrirry-four.

I

980683v l/08426-010020

Dockets.Justia.com

logic would have no problem with FM's asserting f,rve independent claims, with one hundred
limitations each, yet the assertion of eighteen claims with many fewer limitations vexes Google.
Indeed, Google identif,res nothing troublesome from atrial perspective in the specific claims FM

has selected for trial

-

.g., ã huge number

of limitations, vastly different claimed

subject

matters, etc. So it resorts to creative math to generate the appearance of a problem, where none
exists.

In any event, the number of claims that FM has asserted for trial fits comfortably within
the standards this Court has

set.

In Negotiated Data Solutions, LLC v. Dell, Inc., No. 2:06-CV-

528, this Court limited a plaintiff to forty claims prior to Marlcrnan. See Exhibit B (7130108

order). This Court did the same in Minerva Industries, Inc. v. Motorola,lnc., No. 2:07-CY-229CE.
See

Exhibit C (7130109 order). Granted, the parties are now close to trial. But the realities

of trial ought to compel both sides to limit their claims and asserted references to a number
reasonable for trial presentation. Thus, the better approach

-

as expressed recently by Judge

Davis in Accolqde Systems LLC v. Citrix Systems, Inc.

- is to leave it up the parties to agree to

naffow their contentions if they so choose, provided they are at a reasonable level to begin with.
See Exhibit D (5/11/09 Order, allowing fourteen claims and twenty-six references to proceed to

trial within one month, and noting that parties "naturally withdraw claims and references that
not viable for use at trial").

are

Here, FM has asserted eighteen claims and Google has asserted sixteen references
(consisting of twenty-five documents). See Exhibit E (DeFranco 9l22l09letter limiting prior art references).2

If FM's

eighteen claims pose a trial problem for Google, then Google's sixteen

t To be clear, FM has also moved for summary judgment that each reference asserted by Google does not anticipate or render obvious FM's asserted claims. FM has also moved in limine to preclude certain of the
kontinued...)

980683v 1 /08426-010020

references/twenty-five documents ought to do the same for
up to the parties to negotiate reductions, if need be.

FM.

This Court should thus leave it

Altematively,

if this Court

opts to order FM to reduce its number of asserted claims to

five, then

it

should likewise order Google to reduce its asserted references to

four. All of

Google's arguments against FM's number of claims apply with equal force to Google's number

of prior art references. And Google's assertion of sixteen references to FM's earlier assertion of twenty claims established
a

ratio of four to five. As such, a limitation of four Google references

to FM's five asserted claims would be fair. Moreover,

if this Court

does limit FM to just five claims for trial, due process prevents

FM from being summarily denied its legal rights as to its remaining claims. Accordingly, FM
requests that, following the first trial on

its initial five claims, FM be granted up to

three

additional trials to try its remaining thirteen asserted claims.3

Respectfully submitted,

/s/ Joseph S. Grinstein

Max L. Tribble, Jr. State Bar No. 20213950 Email : mtribble@susmangodfrey. com SUSMAN GODFREY LLP 1000 Louisiana, Suite 5100 Houston, Texas, 77002 Telephone: [phone] Facsimile: (7 13) 654-6666
Lead Attornev for Plaintiff
references/documents asserted by Google on the grounds they were not properly disclosed or charted. Thus, FM does not believe that Google will ultimately be able to assert some or all of its currently identified art.

' FM

reserves all rights as to additional trials for the other claims in its patents which it has not assefted, or which

it

originally asserted but has since withdrawn for trial purposes.

980683v l/08426-010020

OF COI.JNSEL: Joseph S. Grinstein State BarNo. 24002188 Aimée Robert State Bar No.24046729 SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77 002-5096 Telephone : [phone] Fax: [phone] j grinstein@ susmaneodfrey. com arob ert@ susman go dfre v. com

Jeremy Brandon State Bar No. 24040563 SUSMAN GODFREY L.L.P. Suite 5100 901 Main Street Dallas, Texas 7 5202-377 5 Telephone : Ql$ 7 54-1900 Fax: [phone] j brandon@susmangodfrey. com

Justin A. Nelson State BarNo.24034766 SUSMAN GODFREY L.L.P. Suite 3800 l20l Third Avenue Seattle, V/ashington 98 1 0 1 -3000 Telephone : [phone] Fax: [phone] j nelson@susmangodfrey. com

Robert Christopher Bunt State Bar No. 00787165 Charles Ainsworth PARKER, BUNT & AINSWORTH, P.C. 100 East Ferguson, Suite 1114 Tyler, TX 75702 Telephone: [phone] Fax: [phone] [e-mail] charlev (ò.ob atvl er. c o m

98 0683 v I /08426-0

10020

S. Calvin Capshaw State Bar No. 037839000

Elizabefh L. DeRieux State Bar No. 05770585 D. Jeffrey Rambin CAPSHAW DERIEUX. LLP Energy Centre I127 Judson Road, Suite 220 P.O. Box 3999 (75606-3999) Longview, TX 7 5601-51 57 Telephone: [phone] Fax: [phone] ccap shaw@ cap shawlaw. com ederieux@cap shawlaw. com j rambin@capshawlaw. com Otis Carroll State Bar No. 03895700 Collin Maloney State Bar No. 00794219 IRELAND, CARROLL & KELLEY, P.C. 6101 S. Broadway, Suite 500 Tyler, Texas 75703 Telephone: [phone] Fax: [phone] otiscarroll@icklaw. som [e-mail]

CERTIFICATE OF SERVICE

I hereby certify that on October 19,2009,I electronically filed the foregoing document the clerk of the court for the U.S. District Court, Eastern District of Texas, using the with electronic filing system of the court. The electronic case filing system sent a "Notice of Electronic Filing" to the following attorneys of record who have consented in writing to accept
this Notice as service of this document by electronic means: /s/ Joseph S. Grinstein Joseph S. Grinstein

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