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

Filing 79

MOTION for Protective Order Barring Discovery of Non-Accused Products by Yahoo!, Inc.. (Attachments: # 1 Decl. of Jeffrey G. Homrig ISO Yahoo!'s Motion, # 2 Exhibit 1 to Homrig Decl., # 3 Exhibit 2 to Homrig Decl., # 4 Exhibit 3 to Homrig Decl., # 5 Exhibit 4 to Homrig Decl., # 6 Exhibit 5 to Homrig Decl., # 7 Exhibit 6 to Homrig Decl., # 8 Exhibit 7 to Homrig Decl., # 9 Exhibit 8 to Homrig Decl., # 10 Exhibit 9 to Homrig Decl., # 11 Exhibit 10 to Homrig Decl., # 12 Text of Proposed Order Granting Yahoo!'s Motion for a Protective Order)(Lumish, Douglas)

Exhibit 1

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

MASHALL DIVISION
FUNCTION MEDIA, L.L.C.
Plaintiffs,
vs.
§
§ §

Civil Action No. 2007-CV-279

§ § § § § §

GOOGLE, INC. AN Y AROO, INC.
Defendants.

JUy TRIL DEMANED

PLAINTIFF'S P.R. 3-1 DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS AND P.R. 3-2 DISCLOSURES
Pursuant to Patent Rule 3-1, Plaintiff

Function Media, L.L.C. ("Function Media") hereby

provides its Disclosure of Asserted Claims and Preliminar Infrngement Contentions. Function
Media's statements are based on publicly available materials regarding the accused infrnging
products or services of

Defendants Google, Inc. ("Google") and Yahoo, Inc. ("Yahoo") that

describe or discuss aspects of operation of these products or services. Function Media has not
had access to any discovery of Google or Yahoo materials at this point, and therefore certain
information is not yet available to Function Media that is fudamental to its infrngement claims.

Function Media reserves the right to supplement or alter its responses herein based on additional
information obtained through formal discovery or other means concerning Goo gle or Yahoo's

products or services.

Moreover, although Function Media hereby asserts infrngement of only certain claims in
U.S. Patent Nos. 6,446,045, 7,240,025, 6,829,587, and 7,249,059, Function Media believes that

Google and Yahoo infrnge a substantial number of additional claims of these patents. However,
local practice and jurisprudential resources place a practical

limit on the number of claims that

plaintiffs may assert at one time, and so Function Media has limited itself at this junctue to
asserting the claims made in this disclosure. By asserting infrngement of

these claims at this

time, Function Media in no way intends to waive its right to pursue additional claims from these patents in some later proceeding, and Function Media hereby reserves all rights to do so.

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I. Function Media's P.R. 3-l(a) Disclosures

Subj ect to ongoing discovery and investigation, Function Media hereby contends

(pursuant to P.R. 3-1a) that Google directly, contributorily and/or by inducement infrnges the following patent claims:
U.S. Patent No.

Infringed Claims
1,5

U.S. Patent No. 6,446,045 U.S. Patent No. 7,240,025

1, 7, 11-17,20,23,24,30,32,36,37-39,
45,51,52,62,63, 79, 81, 90, 91, 140, 141,
148, 179, 186, 190-196, 199,202,203,

209,211,215-218,224,230,231,241,

242,258,260,269,270,271,320,327
U.S. Patent No. 6,829,587
U.S. Patent No. 7,249,059
18, 19,22,30

1, 14,26,27,40,52

Subject to ongoing discovery and investigation, Function Media hereby contends

(pursuant to P.R. 3-1 a) that Yahoo directly, contributorily and/or by inducement infrnges the
following patent claims:
U.S. Patent No.

Infringed Claims
1,5
1,7, 15, 16, 2~ 23, 24, 32, 45, 51, 52, 62,

U.S. Patent No. 6,446,045 U.S. Patent No. 7,240,025

63, 79, 81, 90, 91, 140, 141, 148, 179, 186,
194, 195, 199,202,203,211,224,230,

231,241,242,258,260,269,270,271,
320,327

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II. Function Media's P.R. 3-l(b) Disclosures

Subject to ongoing discovery and investigation, Function Media hereby contends

(pursuant to P.R. 3-1 (b)) that the asserted patent claims are infrnged by the Accused
Instrentalities as identified for each claim as shown in the infrngement charts for Google and

Yahoo attached hereto as Exhibit A.
III. Function Media's P.R. 3-l(c) Disclosures

Subject to ongoing discovery and investigation, Function Media hereby contends

(pursuant to P.R. 3-1c) that each element of each infrnged claim is found within each Accused
Instruentality as shown in infrngement chars for Google and Yahoo attached hereto as

Exhibit A.
iv. Function Media's P.R. 3-l(d) Disclosures

Subject to ongoing discovery and investigation, Function Media hereby contends (pursuant to
P.R. 3-1 d) that each element of each asserted claim is literally present in each of the Accused
Instrmentalities as specifically shown in Exhibit A.
At this time, Function Media knows of no specific limitations of

the asserted claims where

infrngement depends on equivalents. However, as indicated above, more discovery is required

for Function Media's literal infrngement position, and the claims have yet to be constred.
Function Media expressly reserves the right to augment and supplement its position on whether

there is infrngement under the doctrine of equivalents of any elements of any asserted claims
after discovery from the Defendants and/or depending on this Cour's interpretation of

the

asserted claims.

v. Function Media's P.R. 3-l(e) Disclosures

Pursuant to P.R. 3-1e, Function Media notes that US. Patent No. 6,829,587 is a
continuation of U.S. Patent No. 6,446,045, and that U.S. Patent No.7,240,025 is a continuation
of US. Patent No. 6,829,587. Each of

the asserted claims in U.S. Patents Nos. 6,446,045,

7,240,025,6,829,587 is entitled to a priority date no later than the filing date of

US. Patent No.

6,446,045, i.e., January 10,2000.

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Function Media notes that U.S. Patent 7,249,059 is a continuation-in-part of US. Patent
No.

6,446,045. Each ofthe asserted claims in U.S. Patent No. 7,249,059 is entitled to a priority

date no later than the filing date of

U.S. Patent No. 7,249,059, i.e., July 11, 2002.

VI. Function Media's P.R. 3-1(0 Disclosures

Function Media hereby asserts (pursuant to P.R. 3-1 t) that it does not intend at this time

to rely on the assertion that its own apparatus, product, device, process, method, act, or other

instruentality practices the claimed invention. However, Function Media reserves all rights to
supplement or alter this position based on additional information as appropriate.
VII. Function Media's P.R. 3-2 Disclosures

In accordance with P.R. 3-2, Function Media hereby makes the following disclosures:

Pursuant to P.R. 3-2(a), Function Media believes that there are no documents that

evidence discussions with, disclosures to, or other manners of providing to a third pary, or sale

of or offer to sell, the claimed inventions in U.S. Patents Nos. 6,446,045, 7,240,025, or
6,829,587 prior to Januar 10,2000, the date on which Application No. 09/480,303 (now US.

Patent No. 6,446,045) was fied and the date to which U.S. Patents Nos. 6,446,045, 7,240,025,
or 6,829,587 claim priority. Function Media also believes that there are no documents that
evidence discussions with, disclosures to, or other manners of providing to a third pary, or sale
of or offer to sell, any new material disclosed in the claimed inventions in US. Patent No. 7,249,059 prior to July 11, 2002, the date on which Application No. 10/193,465 (now US.
Patent No. 7,249,059) was filed.

Pursuant to P.R. 3-2(b), the following documents (all with bates numbers commencing
with "D") evidence the conception, reduction to practice, design, and development of

the

claimed inventions, which were created on or before January 10, 2000, the date on which
Application No. 09/480,303 (now U.S. Patent No. 6,446,045) was fied: 000001-08,5115-5119,
16838-855, 16935-945, 17041-043, 17044-052, 17076-081, 17090-106, 17115, 17161, 17164-

65, 17170-71, 17183-84, 17290-298, 17496-744, 17775-18680,21690,23349-23357,2335823365,23375,32298-32830,32831-852, 32874-886, 32893-894, 39212-39214, 39241-39310,

39313-372, 39374-376, 39633-636, 39879, 39939-953,40003-05,40035-099,40124-40142,

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40168-197,40220-221,46925-987,47024-47049, 47051-077, 47162-194, 58656-689, 58691-

58696,58700-702,58827-828,59298,65935-42, 66016-023, 66720, and 66721.
The following document evidences the conception, reduction to practice, design, and
development of

new material related to the claimed inventions in US. Patent No. 7,249,059

which were created on or before July 11, 2002, the date on which Application No. 10/193,465
(now U.S. Patent No. 7,249,059) was filed: 17116-119.

There may be other documents relevant to conception, reduction to practice, design, and
development of

the claimed inventions pursuant to P.R. 3-2(b) that are protected by the attorney-

client privilege and/or the attorney work product doctrne. A privilege log identifying those
documents will be provided to Google and Yahoo at the appropriate time.
Pursuant to P.R. 3-2( c), the following documents are a copy of each of the file histories
for the Function Media Patents-in-Suit: 63598-64582,64583-64901,64902-66078,66079-

66719.

*****

Respectfully submitted,

Max L. Tribble, Jr. State Bar No. 20213950 Email: mtribble(ęsusmangodfrey.com SUSMAN GODFREY LLP 1000 Louisiana, Suite 5100 Houston, Texas, 77002 Telephone: [phone] Facsimile: [phone]

7~/Tfb

Lead Attorney for Plaintiffs
COUNSEL: Joseph S. Grinstein State Bar No. 24002188
OF

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Email: jgrnstein(ęsusmangodfrey.com

SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002-5096
Telephone: [phone]
Fax: [phone]

Nicholas F. Daum State Bar No. 236155 Email: ndaumGysusmangodfrey.com SUSMAN GODFREY L.L.P. 1901 Avenue ofthe Stars Suite 950 Los Angeles, CA 90067
Telephone: [phone]

Fax: [phone]

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CERTIFICATE OF SERVICE
This is to certify that a true and correst copy of the foregoing instruent has been served
on the following counsel of record, thi~ C- day of (h". r (, h. , 2008, as

indicated below:

Jason W. Wolff
FISH & RICHARDSON P.C.

12390 EI Camino Real San Diego, CA 92130 Attorneys for Google

Douglas Lumish Weil, Gotshal & Manges L.L.P. 201 Redwood Shores Pkwy. Redwood Shores, CA 94065 Attorneys for Yahoo!

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