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. 7

Exhibit 7

Dockets.Justia.com

MORRISON I FOE RSTE R

425 MARKT STREET
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March 27,2009

Writer's Direct Contact
[phone]

rhung~mofo.com

Via Electronic Mail
Victor G. Hardy DiNovo Price Ellwanger & Hardy LLP 7000 N. MoPac Expressway, Suite 350 Austin, Texas 78731
Re: Software Rights Archive, LLC v. Google Inc., et al., No. 07-CV-511 (E.D. Tex.)

Dear Victor:
I write on behalf of Defendants in response to your letter of

March 11,2009,

concerning Defendants' Invalidity Contentions.

At the outset, we disagree that Saffran holds that Defendants' Invalidity Contentions are somehow deficient because of their length or because of the number of attached claim charts. Saffran involved invalidity contentions that did not "specifically identify
combinations of references that the defendants anticipate( dJ using at trial (andJ include

( dJ

language purporting to make the contentions merely ilustrative." On those bases alone, the court struck the defendants' invalidity contentions. Here, by contrast, Defendants have provided more than a dozen claim charts specifically describing combinations that render the '352, '494, or '571 patents. As a result, Saffran is obvious one or more claims of inapplicable.
While Defendants' claim charts admittedly are quite long, they are necessarily so. In this case, SRA has alleged that five different defendants infringe 64 claims of three different patents. Explaining how even a single anticipatory reference (or combination of references the asserted patents the limitations of even a single claim of for obviousness) discloses all of requires several pages. SRA's own Infringement Contentions confirm this. They span more
than 660 pages (or almost 1,500 pages, accounting for the use ofmulti-colurn charts). The

length of Defendants' Invalidity Contentions also resulted from Defendants' attempt to assist SRA by providing the actual text of the invalidity references, and not just citations to them. Removing this text now to shorten the Invalidity Contentions would not help (and could only Defendants' positions. hinder) SRA's understanding of

MORRISON I FOE RSTE R
Victor G. Hardy March 27, 2009 Page Two Although Defendants do not agree with SRA's concerns regarding Defendants' Invalidity Contentions, in the interests of cooperation, Defendants are wiling to review them again and, if appropriate, amend them to provide greater specificity. If SRA believes that a particular claim chart or aspect of Defendants' Invalidity Contentions is deficient, we would appreciate your calling the specific chart or position to our attention.

While Defendants undertake this review, however, Defendants ask that SRA amend its own Infringement Contentions to specifically identify how each and every one of Defendants' accused products or services allegedly infringe immediately. Under the Patent Rules, SRA's Infringement Contentions are supposed to provide actual and adequate notice of the specific claims being asserted and how specifically the accused products or services allegedly infringe. See Linex Techs. Inc. v. Belkin Intl, Inc., No. 07-222, 2008 U.S. Dist.
LEXIS 70885, at *25 (E.D. Tex. Sept. 19,2008). SRA's Infringement Contentions fall far short of this requirement.

Looking only at SRA's Infringement Contentions with respect to Yahoo!, for example, SRA generally alleges that "Yahoo! Software" infringes 63 claims. SRA also provides, without further explanation, a list of 130 Yahoo!-related "products, services, software and features" that "perform or use an infringing link analysis," "upon information the items in this list appear to have been included simply because they and belief." Many of contain the word "Yahoo!" (e.g., Yahoo! Food, or Yahoo! Groups) or because they are Yahoo! companies (e.g., the photo-sharing site Flickr). SRA's Infringement Contentions for Yahoo! also attach another list of231 websites. SRA's apparent view, again "based on information and belief," is that Yahoo! infringes merely because these websites are "Powered by Yahoo!"
SRA's allegations of infringement by Yahoo! apparently arise from nothing more than SRA's assumption that "Yahoo! and Google are likely using similar algorithms." (Infringement Contentions at 4.) SRA's claim charts confirm this. For literally dozens of claim limitations, the sum total of SRA's substantive analysis on infringement is:
Yahoo's Softare employs an infringing link popularity Go ogle's Software algorithm substantially identical to that of and, accordingly, each and every contention asserted against Google's Software is incorporated herein and asserted against
Yahoo's Softare.

or

The precise processes and algorithms used in Google's and Yahoo's Search Engines are held secret and are not made publicly available. Analysis of Google's and Yahoo's source

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MORRISON I FOERSTER
Victor G. Hardy March 27,2009 Page Three

code and other programming schematics are necessary to fully and accurately describe all infringing features and functionality of Google's and Yahoo's Software(.J SRA's Infringement Contentions for the other defendants are deficient in similar
ways. For example, for Google, SRA also generally alleges that "Google's Software"

infringes 64 claims. SRA also accuses 124 Google features, products, and services, and 60 pages of "Powered by Google sites" of infringement -- without explaining how each of these accused instrumentalities specifically (and allegedly) infringes. Similarly, SRA accuses 53 of IAC' s features, products, and services of infringement, without providing any specificity as to how each of these instrumentalities allegedly infringes. Some of the instrumentalities are not even identifed adequately (for instance, SRA has accused such alleged IAC instrumentalities as "Blogs" and "City.")
In light of these deficiencies, in preparing their Invalidity Contentions, all of the Defendants struggled to understand the positions that SRA might be taking on infringement and how those positions might impact invalidity. As a result, if SRA believes that Defendants' Invalidity Contentions "fail to give any meaningful notice of Defendants' actual positions with respect to the invalidity of the asserted patents," SRA should seek leave to amend its own Infringement Contentions immediately. SRA's amendments to supply the requisite specificity in its Infringement Contentions would enable Defendants to provide additional clarity in their Invalidity Contentions. In particular, SRA should explain, for each of the 64 claims and approximately 2,000 allegedly implicated instrumentalities, exactly how Defendants allegedly infringe. As Defendants have provided SRA with more than 20,000 pages of production pursuant to Patent Rule 3-4 to explain their technologies, nothing
prevents SRA from doing so immediately.

their Invalidity Contentions, SRA also should respond to common Interrogatory NO.3 immediately. As you may recall, that interrogatory requested that SRA identify with specificity each passage in which each claim element for the patents-in-suit is described (i.e., to satisfy the written description requirement) and enabled in any earlier filed application. SRA's complete answer to this interrogatory may enable Defendants to revise their Invalidity Contentions, as SRA has contended that the '494 and '571 patents are entitled to a priority date earlier than May 17, 1996. Additionally, whether a particular reference qualifies as prior art (or not) for an asserted claim depends on Defendants' ability to completely understand SRA's contention. SRA, however, previously declined to answer this interrogatory.
To further assist Defendants' potential reconsideration of

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MORRISON I FOERSTER
Victor G. Hardy March 27, 2009 Page Four

Please let us know if SRA agrees to seek leave to amend its Infringement Contentions and to provide a full and complete response to Interrogatory NO.3. If it would be helpful to discuss these issues, please feel free to give me a call.
Sincerely,

lsi Richard SJ Hung
Richard S.L Hung

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