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. 6

Exhibit 6

Dockets.Justia.com

ATTORNEY'S EYES ONLY

. DiNovo PRICE . ELLWANGER Be HARDY LLP

7000 N. MoPae Expressway, Suite 350 Austin, TX 78731
512.539.2626 (0) 512.539.2627 (f)

www.dpehlaw.eom

July 8,2009
Vìa Email

Thomas Bernard Walsh, iv

Fish & Richardson PC
5000 Ban One Center

1717 Mai Street
Dallas, TX 75201

Richard S J Hung Morrson & Foerster LLP San Francisco 425 Market St 34th Floor San Francisco, CA 94105-2482

MarkDBaker
Quinn Emanuel Urquhar Oliver & Hedges, LLP NY 51 MadisonAve
22nd Floor
New

York, NY 10010

Re: Software Rights Archive, LLC v. Google Inc. et al.,Case No. 2:07-CV-511 (TJW; In the United States Distrct Cour for the Eastern District of Texas,
Marhall Division; Insufficient Disclosures of

Prior Ar in Defendants' Joint

Invalidity Contentions
Dear Counsel:

We write in reference to Defendants' joint Invalidity Contentions in ths matter under P.R.
3-3, which were produced on Januar 23,2009. i

We are concerned because the Invalidity Contentions state on page 4 that your invalidity
claim charts are merely ilustrative or representative of Defendants' complete invalidity

1 As you know, the 250 invalidity claim chars attached as exhibits (Exhibits A-Ol to 1-70) to the
contentions amount to over 13,000 pages of materiaL. Your Invalidity Contentions purort to
incorporate these claim chars by reference on

pages 2, 4,14-16, 19-20,34-37,41-42,59,62, and

67.

July 8, 2009
Page

2

ATTORNEY'S EYES ONLY

contentions for tral. 2 This position is inconsistent with the disclosure requirements of P.R. 3offered for sale or publicly used or

3(a). For example, prior ar under 35 U.S.C. § 102(b) "shall be identified by specifyng the item known, the date the offer or use took place or the information

became known, and the identity of the person or entity which made the use or which made and received the offer, or the person or entity which made the information known or to whom it was made known." (emphasis added). We note that although you have asserted prior ar publications
describing computer systems, you have not produced or designated the actual softare or code of

these systems as prior ar as required by the rules of ths cour. Indeed, the only code we could locate was the "Lycus4" code in your production. Based on your failure to specify, produce, and make the required disclosures under P.R. 3-3(a) for devices, softare source code, programs, and/or program suites, we presume that you are not asserting such code or programs as prior ar,
3 Please confrm whether you intend to assert any computer code or softare (rather than just a publication that describes the
but rather are relyig on the publications themselves as prior ar.

softare) as prior ar and whether such code or softare was produced.

Our second area of concern is regarding your failure to identify where specifically in each
alleged item of prior ar each element of

the asserted clais is found, including the strctures and

failure to produce a copy of each item of prior ar identified in your Invalidity Contentions which does not appear in the file history. P.R. 3-3( c) requires a "char identifyig where specifically in each alleged item of prior ar each element of
acts performing the claimed functions, and your each asserted claim is found, including... the identity of each item of

the strctue(s), act(s), or material(s) in

prior ar that performs the claimed function," and P.R. 3.4 requires the production of a "copy of each item of prior art identified pursuant to P. R. 3-3(a) which does not appear in the fie history.. .." (emphasis added). Your Invalidity Contentions state on page 4 that "Defendants may also rely on other documents and information, including cited references and prosecution

histories for the patents-in-suit, and expert testimony to provide context or to aid in
understandig the cited portions of the references." They add on page 42 that "it was well-

known to use information about the direct and indirect links between documents and data for
information retrievaL. The '494 Patent simply combines these and other known methods." Based

on your failure to specify where in each alleged item of softare source code, programs, and/or program suites each element of the asserted claims is found, including where in each such item the claimed fuctions are performed, we presume that you are not asserting that documents or
information not listed in your claim chars, including softare source code or programs,
constitute prior ar or § 103 materiaL.

2 The Invalidity Contentions state, on pages 4 and 14, that the "invalidity claim charts list specific examples of where prior ar references disclose, either expressly or inerently, each limtation of the asserted claim and/or
examples of disclosures in view of which a person of ordinar skill in the ar would have considered each limitation,
and therefore the claim as a whole, obvious. The references, however, may contain additional support upon which

Defendants may rely." (emphasis added).

3 As you are aware, the same name may be associated with several different versions of a softare program or system, including versions that contain little or no code in common. Multiple versions of a softare program or
system may have very different capabilities, and these capabilities do not always increase monotonically from earlier to later versions. As the Cour's discovery order clearly states, Defendants are not excused from the requirements of
the Patent Rules because they have not completed their investigation of the case, or because another part has not made its disclosures.

July 8,2009
Page 3 ATTORNEY'S EYES ONLY

Our third area of concern deals with combinations of prior ar alleged in your Invalidity Contentions to render the asserted claims obvious. Your Invalidity Contentions state, on page 17, that "Defendants identify the following additional exemplar prior ar references that either alone or in combination with other prior art (including any of the above anticipatory prior ar) renders the asserted claims invalid as obvious under 35 U.S.C. § 103." (emphasis added). On page 22, the Invalidity Contentions also declare that the combinations provided are merely ilustrative.4 Identifying exemplary or representative prior ar references is not consistent with P.R. 3-3(b),

which states that invalidity contentions must describe: "Whether each item of prior ar
anticipates each asserted claim or renders it obvious. If a combination of items of prior ar makes a claim obvious, each such combination, and the motivation to combine such items, must be

identified." (emphasis added). As stated in Saffran v. Johnson & Johnson, Civil Action No. 2:07-cv-00451 (TJW) (E.D. Tex. order compelling compliance with P.R. 3.3, Feb. 24, 2009),

invalidity contentions that "include language purorting to make the contentions merely
ilustrative" are in violation of

the letter ofP.R. 3-3(b) and are subject to being strcken.

Our fourh area of concern was previously identified in our March 11, 2009 letter to defense counsel, and related to the number of references and combinations specified in your
Invalidity Contentions. Your Invalidity Contentions regarding the '352 Patent, as set fort on

page 17, state that: "Each prior ar reference disclosed in the preceding sections (see § lILA),

either alone or in combination with other prior ar, also renders the asserted claims invalid as obvious." Given that the prior ar references disclosed in section lII.A amount to 63 references, the combinations of these 63 references could exceed hundreds of thousands, if not millons, in
number, not including the "combination( s) with other prior ar" suggested in your Invalidity
Contentions. As noted above, P.R. 3-3(b) requires that when a "combination of items of prior ar makes a claim obvious, each such combination, and the motivation to combine such items, must be identified.,,5 (emphasis added). Given your failure to identify each such combination, we

presume that you will not rely on such combinations at tral. In the Saffan case cited above, the

court held that because P.R. 3.3 requires paries to "crystallze their theories of the case early in the litigation" and provide notice of all information intended to be used at trial, hundreds of pages of references that do not specifically identify all combinations of prior ar to be used at tral are in violation ofP.R. 3-3(b).

4 Defendants state on page 22: "Examples of combintions of prior ar references relating to informtion retreval
include...... (emphasis added)
5 Furermore, P.R. 3-4(a) requires the production of a "copy of each item of prior ar identified pursuant to P. R. 3-

3(a) which does not appear in the fie history...... Defendants' Invalidity Contentions refer to several softare

programs by name, including Bell Laboratories'S Laguage, TIP, ENVSION, SMAT, Intermedia, Cyberpilot, "Lycos", all versions of Strctue though Strctue Version 4.2, all versions of UCINET though UCINET iv, GENVL, WW, gIBIS, and LEND Pattern Language Syntax Specification v. 1., but Defendants have failed to specifically assert such program as prior ar or produce a copy of the source code, executable code, or operational
softare systems for these programs, including the fies, databases, commnds, scripts, etc. that you intend to cite in ths case or refer to at tral, or any documents, published or unpublished, that you intend to refer to at tral as being

descriptive of each version of the these program.

July 8,2009 Page 4
ATTORNEY'S EYES ONLY

Finally, our fifth area of concern deals with prior ar cited in your claim chars, but not provided to us under P.R. 3-4(a). For example, EX A-40 Char cites Gelbar, D., Smith, LC., "Beyond Boolean Search: Flexicon, A Legal Text-Based Intellgent System." ACM, pp. 225-234 (199 i) ("Gelbar, 1991"). We have not been provided with a copy of this document. Given your failure to produce this document, we presume that you will not rely on it. Similarly, EX A-40
Char cites Turle, "Inference Networks for Document Retreval", SIGIR '90 (1990). Given your

failure to produce this document, we presume that you will not rely on it. If you have a different understanding of the things 1 have stated in this letter, please let me know.

Yours very truly,

DINOVO PRICE ELLWANGER & HARY LLP

t/~ If~(wp)
Victor Hardy
cc: Counsel for Plaintiff

Counsel for Defendants