Software Rights Archive, LLC v. Google Inc. et al

Filing 213

RESPONSE to Motion re 198 Opposed MOTION Granting Defendants Leave to Amend and Supplement Invalidity Contentions filed by Software Rights Archive, LLC. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Affidavit, # 9 Text of Proposed Order)(Kaplan, Lee)

Software Rights Archive, LLC v. Google Inc. et al

Doc. 213 Att. 5

Exhibit 5

Dockets.Justia.com

. DiNovo PRICE
ELLWANGER Be HARDY LLP

700 N. MoPae Exressway, Suite 3S
Austin, rx 78731

512.539.2626 (0) 512.539.2627 (f)

www.dpehlaw.com

March 11. 2009
Via Email

Thomas Bernard Walsh. iv Fish & Richardson PC
5000 Ban One Center

1717 Main Street Dallas. TX 75201

Jason W. Wolff Fish & Richardson PC 12390 EI Camino Real San Diego, CA 92130

Ramon K. Tabtiang Fish & Richardson PC
225 Franlin St

Boston, MA 02110

Richard S J Hung Francis C. Ho Morrson & Foerster LLP 425 Maket St.. 34th Floor
San Fracisco, CA 94105-2482

Jennfer A. Kah
Qui Emauel Urquhar Oliver & Hedges LLP 50 Calforna Street, 22nd Floor
San Fracisco. CA 94111

Mark D. Baker
Qui Emanuel Urquhart Oliver & Hedges. LLP
New

5 i Madison Ave.. 22nd Floor York. NY 10010

Re: Softare Rights Archive, LLC v. Google Inc. et al., Case No. 2:07 -CV -5 i i

(TJW); In the United States Distrct Cour for the Eastern Distrct of Texas, Marshall Division

March 11. 2009 Page 2

Dear Counsel:

We are writing you because your invalidity contentions do not comply with P.R. 3-3 as interpreted by Judge War's Februar 24. 2009 Order in Saffan Yo Johnson &
Johnson et al. Copies of the Plaitiffs Brief and Order in the Saffan case are attached.

As in Saffran, Defendants' invalidity contentions fail to give any meanngful
notice of Defendants' actual positions with respect to the invalidity of the asserted

patents. Defendants have apparently bured their invalidity positions somewhere within

13.000-plus pages of claim chars. It should be noted that Judge Ward found that 800 pages of claim charts excessive in Saffran. Defendats have assered that 80 plus references are anticipatory of the Egger patents. A curory inspection of Defendants' claim chars reveals that the vast majority of these references could not be anticipatory under any view of the evidence, as many claim elements are completely missing on the

face of the references. Nevertheless, Defendants assert that all of the references are
anticipatory without regard to what is actually disclosed in the references. The lare volume of references in combination with specious interpretations of the references show that Defendants have hidden their tre positions for tral.

Defendants § 103 combinations also fail to comply with P.R. 3-3. The claim chars fail to identify specific portions of the references upon which Defendants rely for each claim element. leaving Plaintiff to guess as to what Defendants believe is disclosed in each reference and what Defendants assert is a motivation to combine the references. These claim chars are merely long lists of a multitude of combinations of references that
give no real guidance as to the actual combinations the Defendants are pursuing. Taken
at face value, these char disclose milions, if not bilions. of combinations of references.

This is precisely the type of limitless combinations that led Judge Ward to strke the Saffan defendants' claim chars. See Plaintiff's Brief at 3 ("The su of these alost
limitless combinations has the intended result of making it literally impossible for Saffan
to identify and study the references or combinations of references that defendants rely

upon as prior ar for obviousness").

Since the prior ar is a matter of public record, we see no reason why your
disclosures canot be immediately amended. Accordingly, we request that you seek

permission frm the Cour to amend your disclosures in accordance with the Saffan decision. We wil not oppose the amendment provide that you: (1) imediately seek leave to amend. and (2) do not add additional references to the asserted prior ar or
otherwise expand the scope of your invalidity defenses. We are open to discussing these issues with you to find a workable solution. If action is not taken promptly, however, we will seek to preclude Defendants from asserting some or possibly all of their invalidity defenses.

March 11. 2009
Page

3

Yours very trly,

DINOVO PRICE ELLWANGER & HAY LLP

By:
Enclosures

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cc: Andrew DiNovo Lee Kaplan