Northeastern University et al v. Google, Inc.,

Filing 206

SUR-REPLY to Reply to Response to Motion re 153 SEALED MOTION For Summary Judgement That Any Alleged Infringement of U.S. Patent No. 5,694,593 Was Not Willful filed by Jarg Corporation, Northeastern University. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Shek, Bernard)

Northeastern University et al v. Google, Inc.,

Doc. 206

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION NORTHEASTERN UNIVERSITY and JARG CORPORATION Plaintiffs, Case No. 2:07-CV-486-CE v. JURY TRIAL DEMANDED GOOGLE INC. Defendant. PLAINTIFFS' SURREPLY TO DEFENDANT GOOGLE INC.'S MOTION FOR SUMMARY JUDGMENT THAT ANY ALLEGED INFRINGEMENT OF U.S. PATENT NO. 5,694,593 WAS NOT WILLFUL

Plaintiffs file this Surreply to Defendant Google Inc.'s Motion for Summary Judgment that Any Alleged Infringement of U.S. Patent No. 5,694,593 Was Not Willful ("Motion") [Dkt. No. 153] for the limited purpose of asking the Court to clarify what appears to be Defendant's misunderstanding of the Court's claim construction order.1 This misunderstanding centers on whether the term "hashed query fragment" is limited to just a single number as Google contends or whether, consistent with the Court's construction of "hashing" and the parties' claim construction positions, it may encompass "a value," which Plaintiffs' expert will testify may be composed of more than one number. In Defendant's Reply in support of its Motion, Google argues that during claim construction it proposed that the term "hashed query fragment" should be construed to be

1

While this issue is also set forth in the Parties' Joint Proposed Jury Instructions, filed on March 20, 2011, at 32-33 (Dkt. No. 188), the Court's claim construction will be presented to the jury in the trial on this matter beginning Monday, April 11, 2011.

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"a number" and that the Court adopted that construction in its Claim Construction order.2 This argument is not true. First, neither party asked the Court to construe the term "hashed query fragment." Instead, the parties asked the Court to construe the term "hash function," and the Court in its Markman Order construed that term to mean "a mathematical function that converts inputs into a value within a predetermined range."3 The Court's construction is consistent with the claim constructions previously proposed by both parties. In fact, in its original Local Patent Rule 4-2 disclosure, Google proposed that the term "hashed query fragment" should be construed to be "a data value resulting from hashing a query fragment."4 Nevertheless, Google now argues that the term "hashed query fragment" is limited to just a single number based on footnote 3 of the Court's claim construction opinion and order. That footnote states, "[a]s will be explained later, a `hashed query fragment' is a number."5 But neither that footnote nor the Court's subsequent

construction of "hashing" can be represented to the jury as the Court's construction of "hashed query fragment," which was simply not a term that the Court was asked to construe. Thus, Google should not be permitted to refer to footnote 3 in the jury's presence.6

2 3

Reply (Dkt. No. 203) at 3.

Memorandum Opinion and Order, dated November 9, 2010 (Dkt. No. 101) ["Markman Order"] at 15 (emphasis added).
4

Google's Patent Rule 4-2 Disclosure at 3 (emphasis added), attached hereto as Exhibit 1. The parties subsequently agreed that the term "hashed query fragment" did not need to be construed. Therefore, this term was not submitted to the Court as a disputed claim term in the Parties' Joint Claim Construction and Prehearing Statement. (Dkt. No. 62)
5 6

Markman Order at 12.

See id. at 25 ("[T]he parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the court, in the presence of the jury.").

2

Moreover, not even footnote 3 of the Court's Markman Order supports the argument that Google apparently intends to present to the jury in this case--that the Court's claim construction limits the term "hashed query fragment" to a single number.7 The asserted claims are directed to a system that hashes query fragments into "a plurality of hashed query fragments," and it is a well settled "rule" of claim construction that the use of the article "a" means "one or more."8 Google did not raise this argument during claim construction because it knew it was a battle it could not win. Google should not now be allowed to circumvent this rule by mischaracterizing the Court's claim construction to the jury based on its misreading of footnote 3 in the Court's opinion. Dated: April 7, 2011 Respectfully submitted, /s/ Bernard C. Shek

7

During voir dire, Google's counsel repeatedly urged that Plaintiffs' invention was limited to just a "single number." See Transcript Of Voir Dire Proceedings Before The Honorable Chad Everingham United States Magistrate Judge, dated April 4, 2011, at 54:13-15 & 20-22 ("The patent in this case, the patent that Mr. Carroll showed you is about a very particular way of organizing things where you use -- use a number. . . . You calculate a single number, and that number tells you not only where the information is stored, what computer, what haystack Mr. Carroll talked about, but where inside that computer the information is. You -- you come up with a single number, and that tells you where you have to go and then where you have to look once you get there."); 55:17-19 ("They've got to prove they're using that single-number approach to try to go out and find that information and find where it is."); 56:4-6 ("So that simple single-number approach that Dr. Baclawski's patent talks about just won't work."), relevant excerpts attached hereto as Exhibit 2. See, e.g., Baldwin Graphics Sys. Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) ("That `a' or `an' can mean "one or more" is best described as a rule, rather than merely as a presumption or even a convention.").
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3

Otis W. Carroll, Jr. (Tx Bar No. 03895700) Collin Maloney (Tx Bar No. 00794219) IRELAND CARROLL & KELLEY 6101 S Broadway, Suite 500 Tyler, Texas 75703 Tel: [phone] Fax: [phone] [e-mail]

David B. Weaver (Tx Bar No. 00798576) David P. Blanke (Tx Bar No. 02453600) David R. Woodcock, Jr. (Tx Bar No. 24028140) Christopher V. Ryan (Tx Bar No. 24037412) Michael Valek (Tx Bar No. 24044028) R. Floyd Walker (Tx Bar No. 24044751) Stephen C. Stout (Tx Bar No. 24060672) Constance S. Huttner James D. Shead (Tx Bar No. 24070609) VINSON & ELKINS LLP Nicole E. Glauser (Tx Bar No. 24050694) 666 Fifth Avenue, 26th Floor Zeke DeRose, III (Tx Bar No. 24057421) New York, New York 10103 VINSON & ELKINS LLP Tel: [phone] Via Fortuna, Suite 100 Fax: [phone] Austin, Texas 78746 [e-mail] Tel: [phone] Fax: [phone] Robert M. Schick (Tx Bar No. 17745715) [e-mail] VINSON & ELKINS LLP [e-mail] First City Tower [e-mail] 1001 Fannin Street, Suite 2500 [e-mail] Houston, Texas 77002-6760 [e-mail] Tel: [phone] [e-mail] Fax: [phone] [e-mail] [e-mail] [e-mail] [e-mail] William B. Dawson (Tx Bar No. 05603600) [e-mail] GIBSON, DUNN & CRUTCHER 2100 McKinney Avenue, Suite 1100 Bernard C. Shek (CA Bar No. 191365) Dallas, Texas 75201-6912 VINSON & ELKINS LLP Tel: [phone] University Avenue, Suite 410 Fax: [phone] Palo Alto, California 94301-1918 [e-mail] Tel: [phone] Fax: [phone] [e-mail]

ATTORNEYS FOR PLAINTIFFS NORTHEASTERN UNIVERSITY AND JARG CORPORATION

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CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). All other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by email and/or fax, on this the 7th day of April 2011.

/s/ Bernard C. Shek Bernard C. Shek

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