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

Filing 284

MOTION to Compel Google to Disclose Function Media Discovery and Transcript by Software Rights Archive, LLC. (Attachments: # 1 Affidavit of Raj Duvvuri, # 2 Text of Proposed Order)(Kaplan, Lee)

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION SOFTWARE RIGHTS ARCHIVE, LLC § v. § PLAINTIFF'S MOTION TO COMPEL GO Plaintiff, § § § § Civil Action No. 2:07-cv-511 (CE) GOOGLE INC., YAHOO! INC., § lAC SEARCH & MEDIA, INC., AOL LLC, § and L YCOS, INC. § § Defendants. § JURY TRIAL DEMANDED DECLARATION OF RAJ DUVVURI IN SUPPORT OF OGLE TO DISCLOSE FUNCTION MEDIA DISCOVERY AND TRANSCRIPT I, Raj Duvvuri, declare as follows: 1. I am an attorney licensed to practice in the State of Texas. I am an associate with the law firm of Smyser Kaplan & Veselka, L.L.P., counsel for Software Rights Archive, LLC in this matter. The following facts are within my personal knowledge, and, if called upon to do so, I could and would testify competently thereto. 2. Exhibit 1 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of Function Media, L.L.C.'s First Amended Complaint for Patent Infringement dated July 24, 2007. 3. Exhibit 2 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of a Function Media Order, dated December 4, 2009, granting depositions of Sergey Brin and Susan Wojcicki. 4. Exhibit 3 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of excerpts from Google's Website. 5. Exhibit 4 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of copy of a March 31, 2010 letter from Lee L. Kaplan to Thomas B. Walsh. 6. Exhibit 5 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of copy of a May i 1, 2010 letter from Thomas B. Walsh to Lee L. Kaplan. 7. Exhibit 6 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of Google Inc.'s Answer, Defenses and Counterclaims in Response to Plaintiff's First Amended Complaint in the Function Media lawsuit dated September 24,2007. 8. Exhibit 7 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of excerpts from Plaintiff's Initial Disclosures dated November 24,2008. 9. Exhibit 8 to this Motion to Compel Google to Disclose Function Media Discovery and Transcript is a true and correct copy of a Function Media Order granting the production of deposition testimony and exhibits from the Viacom case dated December 22, 2009. I declare under penalty of perjury under the laws of the United States and Texas that the foregoing is true and correct. Date: May 24,2010 SMYSER KAPLAN & VESELKA, L.L.P. 8" J) Raj D1.vvuri Attorney for Plaintiff Software Rights Archive, LLC 2 EXHIBIT 1 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 1 of 9 IN THE UNITED STATČS DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FUNCTION MEDIA, L.L.C. Plaintiff, vs. § § § § Civil Action No. 2-007"-CV-279 § § Honorable John T. Ward GOOGLE, INC. AN YAHOO!, INC. Defendants. § § § ruY TRIAL DEMAED FIRST AMENDČD COMPLAINT FŲRPATENTINFRIGEMENT I. NATUREOFl'lÎE ACTION Plaintiff Function Media, L.L.C. ("Function Media") brings this action against defendants Google, Inc. ("Google") and Yahoo!, Inc. ("Yahoo") for patent infringement under the patent laws of the United States, Title 35, United States Code. ll. JURISDICTION AND VENUE 1. This is an action under the patent laws of the United States, 35 U.S.C. § 101 et seq. This Court has subject matter jurisdiction of this action under 28 U.S.C. §§ 1331, 1337 and 1338(a). 2. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and (c) and (d) and 1400(b) because plaintiff Function Media is a Texas limited liabilty company whose principal place of business is in Tyler, Texas. The inventors of the three patents at issue in this lawsuit, Michael Dean and Lucinda Stone, are residents of Tyler, Texas. Moreover, both Google and Yahoo do business in this District and have committed acts of infringe1Ient in this District.. ID. PARTIES 3. All facts herein are alleged on information and belief except those facts concerning the activities of Function Media, Michael Dean and Lucinda Stone. 764131v1/010020 3982588.1 1.815 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 2 of 9 4. Function Media is the assignee and owner of three patents at issue in this action, u.s. Patent Nos. 6,446,045, 7,240,025, and 6,829,587, and 7,249,059. It was assigned the three patents at issue by the co-inventors of each of those patents, tiaIïely Michael Dean and Lucinda Stone. 5. On infor1Iation and belief, Google is a Delaware corporation with its principal place ofbusitiess at 1600 Amphitheatre Parkway, Mountain View, CA 94043. 6. On infor1Iation and belief, Yahoo is a Delaware corporation with its priticipal place of business at 701 First Avenue Sunnyvale, CA 94089. INFRIGEMENT OF U.S. PATENT NO. 6,446,045 7. On September 3, 2002 United States Patent No. 6,446,045 (the "045 patetit) was duly and legally issued for an invention entitled 'Method for Using Computers to Facilitate and Control the Creating of a Plurality of Functions.' Function Media was assigned the '045 patent and continues to hold all rights and interest in the '045 patetit. A true and correct copy of the '045 patent is attached hereto as Exhibit A. 8. Google has itifringed and continues to infritige the '045 patent by its manufacture, use, sale, importation, and/or offer for sale of products and services utilizing Google's AdSense and AdWords technologies, Google Print Ads, and other products and services related to internet and print advertising, and its contributing to and inducement of others to manufacture, use, sell, i1Iport, and/or offer for sale of infritiging products. Google is liable for its infringe1Ient of the '045 patent pursuant to 35 U.S.c. § 271. 9. Google's acts of infringement have caused damage to Function Media, and Function Media is entitled to recover from Google the damages sustained by Function Media as a result of Google's wrongful acts in an amount subject to proof at triaL. Google's infringement of Function Media's exclusive rights under the '045 patent wil continue to damage Function Media, causing irreparable harm for which there is no adequate remedy at law, unless enjoined by this Court. 3982588.1 1.815 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 3 of 9 10. Upon information a.nd belief, Goōgle's infringement of the '045 patent is willful and deliberate, entitling Function Media to increased damages under 35 U.S.C. § 284 and to attorneys' fees and costs incurred in prosecuting this action under 35 U.S.C. § 285. 11. Yahoo has infringed and continues to infringe the '045 patent by its manufacture, use, sale, importation, and/or offer for sale of products and services utilizing Yahoo's Publisher, Contetit Match, Sponsored Search, SmartAds and Advertising technologies and other products and services related to ititernet atid pritit a.dvertising, atid its contributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale of infringing products. Yahoo is liable for its infringement of the '045 patent pursuant tö 35 U.S.C. § 271. 12. Yahoo's acts of infringement have caused damage to Function Media, and Function Media is entitled to recover fro1I Yahoo the damages sustained by Function Media as a result of Yahoo's wrongful acts in an ämount subject to proof at triaL. Yahoo's infringetnetit of Function Media's exclusive rights under the '045 patent will continue to da1Iage Function Media, causing irreparable harm for which there is no adequate remedy at law, unless enjoined by this Court. 13. Upon information and belief, Yahoo's infringe1Ient of the '045 patent is willful atid deliberate, etititling Function Media to increased da1Iages under 35 U.S.C. § 284 and to attorneys' fees and costs incurred in prosecuting this action under 35 U.S.C. § 285. INRIGEMENT OF U.Só PATENT NO. 7,240,025 14. On July 3, 2007, United States Patent No. 7,240,025 (the "025 patent') was duly and legally issued for an inventioti entitled 'An Internet Advertising System and Method..' Function Media was assigned the '025 patent and cotitinues to hold all rights and interest in the the '025 patetit is attached hereto as Exhibit B. '025 patent. A true and correct copy of 15. Google has infringed and continues to infringe the '025 patent by its manufacture, use, sale, importation, and/or offer for sale of products and services utilizing Google's AdSense and AdWords technologies and other products and services related to ititernet advertising, and its 3982588.1 1.15 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 4 of 9 contributing to and induce1Ient of others to manufacture, use, sell, import, and/or offer for sale of infringing products. CJoogle is liable for its infringe1Ient of the '025 patent pursuant to 35 U.S.C. § 271. 16. Google's acts Of iiifritige1Ient have caused damage to Futiction Media, and Function Media is etititled to recover from Google the da1Iages sustained by Function Media as a result of Google's wrongful acts in an amount subject to proof at triaL. Google's infringemetit of Function Media's exclusive rights under the '025 patent wil continue to damage Function Media, causing irreparable harm for which there is no adequate re1Iedy at law, unless enjoined by this Court. 17. Upon infor1Iation and belief, Google's infringement of the '025 patent will be wilful and deliberate, entitling Function Media to increased damages utider 35 U.S.C. § 284 and to attorneys' fees and costs incurred in prosecuting this actioii utider 35 U.S.C. § 285. 18. Yahoo has infringed and cotitinues to infringe the '025 patent by its manufacture, use, sale, importatėon, and/or offer for sale of products and services utilzing Yahoo's Publisher, Content Match, Sponsored Search, SmarAds and Advertising technologies and other products and services related to internet advertising, atid its contributing to and induce1Ient of others to manufacture, use, sell, import, and/or offer for sale of infringing products. Yahoo is liable for its itifringement of the '025 patent purSuant to 35 U.S.C. § 271. 19. Yahoo's acts of infringement have caused damage to Function Media, and Function Media is entitled to recover. from Yahoo the damages sustained by Function Media as a result of Yahoo's wrongful acts in an amount subj ect to proof at triaL. Yahoo's infringement of Function Media's exclusive rights under the '025 patent wil continue to damage Function Media, causing irreparable harm for which there is no adequate remedy at law, unless enjoined 3982588.1 1.815 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 5 of 9 INFRIGEMENT OF u.s. PATENT NO. 6.8:29,587 21. On September 3, 2002 United States Patent No. 6,829,587 (the "587 patent') was duly and legally issued for an invention entitled 'Method for Using Computers to Facilitate and Control the Publishing of Presentations to a Plurality of Print Media Venues.' Function Media was assigned the '587 patent and continues to hold all rights and interest in the '587 patent. A true and correct copy of the '587 patent is attached hereto as Exhibit C. 22. Google has infringed and continues to infringe the '587 patent by its manufacture, use, sale, importation, and/or offer for sale of products and services utilizing Google Print Ads, AdSense, atid other products and services related to print advertising, and its contributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale of infringing products. Google is liable for its infringement of the '587 patent pursuant to 35 U.S.C. § 271. 23. Google's acts of infringemetit have caused damage to Function Media, and Function Media is entitled to recover from Google the damages sustained by Function Media as a result of Google's wrongful acts in an amount subject to proof at triaL. Google's infringement of Futiction Media's exclusive fights under the '587 patent will continue to damage Function Media, causing irreparable harm for which there is no adequate remedy at law, unless enjoined by this Court. 24. Upon information and belief, Google's infringe1Ient of the '587 patent is willful and deliberate, entitling Function Media to increased damages under 35 U.S.C. § 284 and to attorneys' fees and costs incurred in prosecuting this action under 35 U.S.c. § 285. INFRIGEMENT OF U.S. PATENT NO. 7,249,059 25. On July 24, 2007, United States Patent No. 7,249,059 (the "059 patent' was duly and legally issued for an invention entitled 'Method for Using Computers to Facilitate and Control the Creating of a Plurality of Functions.' Function Media was assigned the '059 patent 3982588.1 1.815 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 6 of 9 and continues to hold all rights and interest in the '059 patent. A true and correct copy of the '059 patent is attached hereto as Exhibit D. 26. Google has infringed and continues to infringe the '059 patent by its manufacture, use, sale, importation, and/or offer for sale of products and services utilizing Google's AdSense and AdWords technologies, Google Print Ads, My Client Center, and other products and services related to intemet and print advertisitig, and its cotitributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale of infringing products. Google is liable for its infringe1Ient of the '059 patent pursuant to 35 U.S.C. § 271. 27. Google's acts of infringement have caused damage to Function Media, and Functioti Media is entitled to recover from Google the da1Iages sustained by Function Media as a result of Google's wrongful acts in an a1I0unt subject to proof at triaL. Google's infringement of Function Media's exclusive fights under the '059 patetit wil continue to damage Function Media, .causing irreparable harm for which there is no adequate remedy at law, unless enjoined by this Court. 28. Upon information and belief, Google's infringement of the '059 patent wil be wilful ånd deliberate, entitling Function Media to increased damages under 35 U.S.C. § 284 and to attorneys' fees and costs incurred iti prosecuting this action under 35 U.S.c. § 285. 29. YahOO has infringed atid cotitinues to infringe the '059 patent by its manufacture, use, sale, importation, and/or offer for sale of products and services utilizing Yahoo's Publisher, Contetit Match, Sponsored Search, SmartAds Advertising, and Ambassador technologies and other products and services related tô internet and print advertising, and its contributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale of infringing products. Yahoo is liable for its infringement of the '059 patent purSuant to 35 U.S.C. § 271. 30. Yahoo's acts of infringement have caused damage to Function Media, and Function Media is entitled to recover from Yahoo the damages Sustained by Function Media as a result of Yahoo's wrongful acts in ati a1I0unt subj ect to proof at triaL. Yahoo's infringement of Function Media's exclusive rights under the '059 patent wil continue to damage Function 3982588.1 1.815 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 7 of 9 Media, causing irreparable har1I for which there is no adequate remedy at law, unless enjoined by this Court. 31. Upon information atid belief, Yahoo's infringement of the '059 patent wil be wilful and deliberate, entitling Function Media to increased damages under 35 U.S.C. § 284 and to attorneys' fees and costs incurred in prosecuting this action under 35 U.S.C. § 285. JURY. DEMAND 32. Function Media de1Iands a trial by jury on all issues. PRAYEllFORRELIEF WHREFORE, Plaintiff Function Media, L.L.C.., requests entry of judgment in its favor and agaitist Google, Inc. and Yahoo!, Inc.. as follows: a) Declaration that Google, Inc. atid Yahoo!, Inc. have infringed U.S. Patent Nos. 6,446,045 and 7,240,025, ånd 7,249,059, and that Göogle, Inc. has infringed U.S. Patent No. 6,829,587; b) Per1Ianently enjoining Google, Inc., and Yahoo!, Inc., and the respective offcers, agents, employees, and those acting in privity with them, from further infringement, contributory infringement and/or inducing infringement of U.S. Patent Nos. 6,446,045, 7,240,025, and 7,249,059 a.d permanently enjoining Google, Itic., and its respective offcers, agents, employees, and those acting in privity with it from further . infringement, contributory infringement, and/or inducing infritigement of u.s, Patent No. 6,829,587; c) Awarding the damages arising out of Google, Inc. and Yahoo!, Itic.'s infringement of U.S. Patent Nos. 6,446,045, 7,240,025, and 7,249,059 and Google, Inc.'s infringement of U.S. Patent No. 6,829,587 including enhanced da1Iages pursuant to 35 U.S.C. § 284, to Function Media, L.L.c., together with prejudgment and post-judgment interest, in an a1I0unt āccording to proof; 3982588.1 1.815 Case 2:07 -cv-00279-CE Document 12 Filed 07/24/07 Page 8 of 9 d) An award of attorneys' fees pursuant to 35 U.S.C. § 285 or as otherwise permitted by law; and e) For such other costs and further relief as the Court may deem just and proper. Respectfully submitted, BY: /s/ ElizabethLDeRieux S. Calvin Capshaw State Bar No. 03783900 Email: ccapshawcæmailbmc.com Elizabeth L. DeRieux State Bar No. 05770585 Email: ederieuxcæmailbmc.c01I BROWN MCCAROLL, LLP 1127 Judson Road, Suite 220 Longview, TX 75601 3999 Po Box Lotigview, TX 75606 903-236-9800 Fax: 903-236"-8787 Max L. Tribble, Jr. - Lead Attorney State Bar No. 20213950 E1Iail: mtribble(Ðsusmatigodfrey.com SUSMA GODFREY LLP 1000 Louisiana, Suite 5100 Houston, Texas, 77002 Telephone: (713) 651-9366 Facsimile: (713) 654-6666 OF COUNSEL: Joseph S. Grnstein State Bar No. 24002188 E1Iail: jgrinstein(Ðsus1Iangodfrey. C01I SUSMA GuŲFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002-5096 Telephone: (713) 651-9366 Fax: (713) 654-6666 3982588.1 1.815 Case 2:07-cv-00279-CE Document 12 Filed 07/24/07 Page 9 of 9 Nicholas F. Daum State Bar No. 236155 Email: ndaumc?susmangodfrey.c01I SUSMA GODFREY L.L.P. 1901 Avenue of the Stars Suite 950 Los Atgeles,CA 90067 Tęlephotie: (310) 789-3100 Fax: (310) 789-3150 3982588.1 1.815 EXHIBIT 2 Case 2:07-cv-00279-CE Document 311 Filed 12/04/09 Page 1 of 1 IN THE uNlrED STATES DiSTRICT COURT FOR THE EASTERN DISTIUCT OF TEXAS MASHALL DivIsiON FUNCTION MEDIA, L.L.C., § § § § § § § § § Plaintiff, VS. Civil Action No. 2:07-CV-279 COOGLE, INC. AN YAHOO, INC., Defendants. JURY TIUAL DEMAED ORDER GRATING PLAINTIFF'S EXPEDITED SUPPLEMENTAL MOTION TO COMPEL DEPOSITION OF GOOGLE EXECUTIVES The Court hereby GRANTS in part Plaintėff Function Media's Expedited Supple1Iental M6tionto Compel Deposition of Google Executives (Dkt. No. 271). The Court hereby orders Sergey Brin and Susan Wojcicki to appear for deposition. Depositions wil be limited to two hours for Mr. Brin and three hours for Ms. Wojcicki. SIGNED this 4th day of December, 2009. CHARLES EVEffNG V UNITED STATES MAGIS RATE JUDGE EXHIBIT 3 GQoglé" Corporate Information . Home . Corporate Info Google Management Co-founders Larr Page, president of Products, and Sergey Brin, president of o Overview o Technology Technology, brought Google to life in September 1998. Since then, the company has grown to more o Business than 10,000 employees worldwide, with a management team that represents some of the o Culture most experienced technology professionals in the industry. Eric Schmidt joined Google as o Management chairman and chief executive offcer in 2001. o Milestones o Initiatives . At a Glance Board of Directors . Eric Schmidt, Google Inc. . Sergey Brin, Google Inc. o Quick Profile o Offices . Our Philosophy o Ten things o Software . Larr Page, Google Inc. . John Doerr, Kleiner Perkins Caufield & Byers . Ram Shrram, Sherpalo . John Hennessy, Stanford University . Paul Otellni, Intel principles o Privacy principles o Design . Shirley M. Tilghman, Princeton University . AnnMather principles o No 110P-uPo Security Operating Committee . Eric Schmidt, Chairman of the Board and Chief Executive Officer Find on this site: il S,e,er~h J . Larr Pa~, Co-Founder & President, Products . Sergey Brin, Co-Founder & President, Technology . Nikesh Arora, President, Global Sales Operations and Business Development . Laszlo Bock, Vice President, People Operations . Shona L. Brown, Senior Vice President, Business Operations, Google Inc. . W. M. Coughran, Jr., Senior Vice President, Engineering . David C. Drummond, Senior Vice President, Corporate Development and Chief Legal Officer . Alan Eustace, Senior Vice President, Engineering & Research . Urs Hölzle, Senior Vice President, Operations & Google Fellow Huber, Senior Vice President, Engineering . Jeff the CEO and Founders . Omid Kordestani, Senior Advisor, Offce of . Patrick Pichette, Senior Vice President & Chief Financial Offcer . Jonathan Rosenberg, Senior Vice President, Product Management . Rachel Whetstone, Vice President, Public Policy and Communications . Susan Wojcicki, Vice President, Product Management Key executives by function: Engineering . Vinton G. Cerf, Vice President & Chief Internet Evangelist . Stuart Feldman, Vice President, Engineering . Jen Fitzpatrck, Vice President, Engineering . Ben Fried, Chief Information Officer . Vic Gundotra, Vice President, Engineering . Udi Manber, Vice President, Engineering . Nelson Mattos, Vice President, Engineering, EMEA . Brian McClendon, Vice President, Engineering responsibility for Google's day-to-day operations with Eric Schmidt and Sergey Brin. Michigan State University computer science professor Dr. Carl Victor Page, Larr's love of computers began at age six. While following in his father's footsteps in academics, he became Michigan, where he an honors graduate from the University of earned a bachelor's degree in engineering, with a concentration on The son of computer engineering. During his time in Ann Arbor, Larr built an inkjet printer out of Lego TM bricks. While in the Ph.D. program in computer science at Stanford University, Larr met Sergey Brin, and together they developed and ran Google, which began operating in 1998. Larr went on leave from Stanford after earning his master's degree. In 2002, Larr was named a World Economic Forum Global the National Advisory Leader for Tomorrow. He is a member of Michigan College of Committee (NAC) ofthe University of Engineering, and together with co-founder Sergey Brin, Larr was honored with the Marconi Prize in 2004. He is a trustee on the the X PRIZE, and was elected to the National Academy of board of Engineering in 2004. Sergey Brin Co-Founder & President, Technology Moscow, received a bachelor of science degree with honors in mathematics and computer science from the Maryland at College Park. He is currently on leave University of from the Ph.D. program in computer science at Stanford University, where he received his master's degree. Sergey is a recipient of a National Science Foundation Graduate Fellowship as well as an honorary MBA from Instituto de Empresa. It was at Stanford where he met Larr Page and worked on the project that became Google. Together they founded Google Inc. in 1998, and Sergey continues to share responsibility for day-to-day operations Sergey Brin, a native of with Larry Page and Eric Schmidt. Sergey's research interests include search engines, information extraction from unstructured sources, and data mining of large text collections and scientific data. He has published more than a dozen academic papers, including Extracting Patterns and Relations from the World Wide Web; Dynamic Data Mining: A New Architecture for Data with High Dimensionality, which he published with Larr Page; Scalable Techniques for Mining Casual Structures; Dynamic Itemset Counting and Implication Rules for Market Basket Data; and Beyond Market Baskets: Generalizing Association Rules to Correlations. Sergey has been a featured speaker at several international academic, business and technology forums, including the World Economic Forum and the Technology, Entertainment and Design Conference. He has shared his views on the technology industry and the future of search on the Charlie Rose Show, CNBC, and CNNfn. In 2004, he and Larr Page were named "Persons of the Week" by ABC World News Tonight. Nikesh Arora President, Global Sales Operations and Business Development Nikesh oversees all revenue and customer operations, as well as marketing and partnerships. Since joining Google in 2004, he has held several positions with the company. Most recently, he led Google's global direct sales operations. He also developed and managed the company's operations in the European, Middle Eastern and African markets and was responsible for creating and expanding strategic partnerships in those regions for the benefit of Google's growing number of users and advertisers. With a background as an analyst, Nikesh's main areas of focus have been consulting, IT, marketing and finance. Prior to joining Google, he was chief marketing officer and a member of the management board at T-Mobile. While there, he spearheaded all product development, terminals, brand and marketing activities of T-Mobile Europe. In 1999, he started working with Deutsche Telekom and founded T-Motion PLC, a mobile multimedia subsidiary ofT-Mobile InternationaL. Prior to joining Deutsche Telekom, Nikesh held management positions at Putnam Investments and Fidelity Investments in Boston. Nikesh holds a master's degree from Boston College and an MBA from Northeastern University, both of which were awarded with distinction. He also holds the CF A designation. In 1989, Nikesh Technology in Varanasi, India with graduated from the Institute of a bachelor's degree in electrical engineering. Laszlo Bock Vice President, People Operations Laszlo Bock leads Google's people function globally, which includes all areas related to the attraction, development and retention of "Googlers." most recently he was a vice president of Laszlo joined Google from the General Electric Company, where human resources within GE Capital Solutions. He had earlier served as vice president of compensation and benefits for GE Commercial Equipment Financing. Before GE, Laszlo was a management consultant at McKinsey & Company, serving clients in the technology, private equity and media industries on issues of organizational design, talent acquisition and development, and cultural transformation. Laszlo's client work also extended to broader business growth and turnaround strategy. Earlier, he worked as a compensation consultant at Hewitt Associates, an HR consultancy. Laszlo earned an MBA from the Yale University School of Management and a bachelor's degree in international relations from Pomona College. He is on the Western Region Advisory Board of consumer offerings to publisher and business services. He directs the teams with a special focus on delivering exceptional user experience, continuous innovation, and highly relevant, accountable, and untraditional marketing. Prior to joining Google in 2002, Jonathan founded, led and managed some ofthe most innovative product development teams of the Internet's first era. He was the founding member of (fHome's product group and served as senior vice president of online products and services after the merger of Excite and (fHome. Prior to that, Jonathan managed the eWorld product line for Apple Computer. Earlier, he was director of product marketing for Knight Ridder Information Services in Palo Alto, California, where he directed development of one of the first commercially deployed online relevance ranking engines and menu-driven Boolean search services for consumers. Jonathan holds an MBA from the University of Chicago and a bachelor's degree with honors in economics from Claremont McKenna College, where he graduated Phi Beta Kappa. Rachel Whetstone Vice President, Public Policy and Communications Rachel Whetstone joined Google in 2005, after 15 years advising senior politicians and companies on their strategic communications. She leads the company's global teams for public policy and communications. , Rachel has a bachelor's degree in history from Bristol University. Susan Wojcicki Vice President, Product Management Susan Wojcicki is vice president of product management at Google responsible for the design and innovation of all of Google's advertising and measurement platform products, including AdWords, AdSense, DoubleClick and Google Analytics. She has managed AdSense product management since inception in 2002, and has led all advertising programs on Google.com and its advertising network since 2006. Susan joined Google in 1999 as the company's first marketing manager and worked on the initial viral marketing programs as well as the first Google homepage doodles. She also led the initial development of several key successful consumer products including Google Images, Google Books and Google Video. Before joining Google, Susan worked at Intel and was a management consultant at Bain & Company and R.B. Webber & Company. She graduated with honors from Harvard University, holds a master's in economics from the University of California at Santa Cruz, and an MBA from UCLA. EXHIBIT 4 SMYSER KAPLAN & VESELKA, L.L.P. BANK OF AMERICA CENTER 700 LOUISIANA SUITE 2300 HOUSTON. TEXAS 77002 TELEPHONE 713.221.2300 FACSIMILE 713.221.2320 March 31, 2010 Mr. Thomas B. Walsh, iv Fish & Richardson P.C. 5000 Ban One Center 1717 Main Street Dallas, Texas 75201 By email and us. Mail Re: Software Rights Archive, LLC v. Google Inc. et al., Case No. 2:07-CV-511 (CE); Texas, Marshall In the Utited States Distnct Cour for the Eastern Distnct of Division Dear Tom: I earlier spoke with you regarding our request for a copy of an unedacted transcript of the Function Media v. Google tral and followed it up with a confrmg email on March 18. . Confnning oUr telephone call yesterday~ we add to that request oUr request for deposition transcripts of all Google witnesses in the case, both present and fotmer employees as well as any expert or fact witnesses presented by Google. Finally, vverequest copies of all expert reports provided by Google or Function Media. I thnk it unecessar to deliver a lengthy statement on the relevance of such materials, but they undoubtedly relate to the natue of Google's search engine operations and its business, and as such, they are relevant (at the very least) to inngement and damages issues in our case. As I have earlier stated, you are of course free to make appropriate confidentiality designations under our Protective Order. I look forward to hearg from you. Please confirm your agreement. ~ŋ~ Lee L. Kaplan cc: Mr. Ruf B. Cordell Regards, Victor Hardy Charley Ainswort Chrs Bunt Calvin Capshaw Elizabeth deRieux (All cc 's by email) EXHIBIT 5 FISH & RICHARDSÖN P.C. Frederick P. Fish' 1855-1930 1717 MAN STRPET SUlTB 5000 DALs, TEXs 752.01 Telephone 214 747-5070 'WK. Richardson 1859-1951 - May 11,2010 Lee L. Kaplan Sinyser, Kaplan & Veselka L.L.P. Facsimile 214747-2°91 Web Site ww.fr.com Thomas B. Walsh, N 214 292-4°9° Ban of Anerica Cetiter 700 Louisiana Suite 2300 Houston, TX 77002 Email washtPfr.com ATLANTA Re: Software Rėghts Archėve, LLC v. Google Inc., et ali Case No. 2:07-cv-511 (CE) Civil Dear Lee: BOSTON DALLAS I write in response to your letter dated March 31,7010. il that letter you requested u:n:edácted trial tránscripts; éxpert reports;-and depositioiïtrMscripts froiItié-- . - Furictėon Medėa v.Google case. You stated that these materials "undoubtedly relate to the natue of Google's DELAWAIl.1 HOUSTON search etigiue ōperations." MUNICH NEW YORK SILICON VALLEY The patents and technologies involved in the Function Media case relate to user interfaces for formatting and managing advertisements. SRA has previously characterized the patents in this case as relating to the "analysis of non-semantic hyperlink relationships." In other words, the cases are not "undoubtedly relate SOUTHERN CALIFORNIA ( d)" TWIN CITIES Because these materials relate to different underlying technologies and patents, they are neither relevant nor discōverable. See, e.g., SSL Servs., LLC v. Cėtrėx Sys., Inc., WASHINGTON, DC Case No. 08-CV-158-TJW, Doc. No. 63 (E.D.Tex. Feb. 10,2010). ;L;ur~JJ~$l'Thomas B. Walsh, IV 90433413.doc EXHIBIT 6 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 1 of 16 IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FUNCTION MEDIA, L.L.C., v. Civil Case No. 2:007-CV-279 (TJW) JURY TRIAL DEMANDED GOOGLE, INC. AND YAHOO!, INC. GOOGLE INC'S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIRST AMENDED COMPLAINT ANSWER Google Inc. ("Google") responds to the allegations in the First A1Iended Complaint ("Complaint") by Plaintiff Function Media, L.L.C. ("Plaintiff') with this pleading. i. NATURE OF THE ACTION The first paragraph of the Complaint contains an introductory paragraph to which no responsive pleading is required. To the extent a response is deemed necessary, Google denies that it has corrtted patent infringement and further denies that Plaintiff is entitled to any relief from Google. II. JURISDICTION AND VENUE 1. Google admits that Plaintiff s Complaint purports to arise under the patent laws of the United States, 35 U.S.C. § 101 et seq., and admits that, for purposes of this action, Google does tiot contest that this Court has subject matter jurisdiction of this action pursuant to 28 U.S.C. §§ 1331, 1337, and 1338(a). Google, however, denies that, as to it, any such patent infringemetit has transpired. 2. Google admits that it does business in the Eastern District of Texas, and admits that, for purposes of this action, it does not contest that venue is proper in the Eastern District of Texas. Google denies that it has committed acts of infringement in the Eastern District of Texas. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIS IN RESPONSE TO PLAINTIFF'S FIRST AMENDED COMPLAINT - Page 1 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 2 of 16 Google is otherwise without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 2 of the Complaint and, on that basis, denies all such allegations. III. PARTIES 3. Paragraph 3 of the Complaint, in and of itself, contains no allegations directed towards Google and no responsive pleading is therefōre required. To the extent a response is deemed necessary, Google is without knowledge or inforration sufficient to form a belief as to the truth of the allegations of paragraph 3 of the Complaint and, on that basis, denies all such trųth of the allegations of paragraph 4 of the C01IplaiIėt atid, on that basis, denies all such allegations. 5. Google admits the allegations of paragraph 5 of the Complaint. 6. Google is without knōwledge or information sufficient to form a belief as to the trųth of the allegations of paragraph 6 of the Complaint and, on that basis, denies all such allegations. DENIAL OF INFRINGEMENT OF u.s. PATENT NO. 6,446,045 7. Goōgle admits that U.S. Patent No. 6,446,045 (the '''045 patent") entitled "Method for V sing Computers to Facilitate and Control the Creating of a Plurality of Functions" indicates on its face that that it issued on September 3,2002. Google further admits that the '045 patetit is attached to the Complaint as Exhibit A. Google denies that the '045 patent was legally issued, Google is without knowledge or informatioti sųfficieėit to form a belief as to the truth of the remaining allegations of paragraph 7 of the Complaint and, on that basis, denies all such allegations. 8. Google denies the allegations contained in paragraph 8 of the Complaint. 9. Google denies the allegations contained in paragraph 9 of the Complaint. 10. Google denies the allegations contained in paragraph 10 of the Complaint. GOOGLE INC.'S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 2 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 3 of 16 11. Google is without know ledge or information sufficient to sufficient to form a belief as to the truth of the allegations of paragraph 11 of the Complaint with respect to Yahoo, Inc.' s C'Yahoo") conduct, and on that basis, Google denies all allegatiöns in paragraph 11 that are directed to Yahoo. 12. Google is without knowledge or information sufficient to sufficient to form a belief as to the truth of the allegations of paragraph 12 of the Complaint with respect to Yahoo's conduct, and on that basis, Göogle denies all allegations in paragraph 12 that are directed to Yahoo. 13. Google is without knowledge or information sufficient to sufficient to form a belief as to the truth of the allegations of paragraph 13 of the Complaint with respect to Yahoo's conduct, and oti that basis, Google denies all allegatiöns in paragraph 13 that are directed to Yahoo. DENIAL OF INFRINGEMENT OF U.S. PATENT NO. 7,240,025 14. Google admits that U.S. Patent No. 7,240,025 (the "'025 patent") entitled "llternet Advertising System and Method" indicates on its face that that it issued on July 3, 2007. Google further admits that the '025 patent is attached to the C01Iplaint as Exhibit B. Google denies that the '025 patent was legally issued. Google is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of paragraph 14 of the Complaint and, on that basis, denies all such allegations. 15. Google denies the allegations contained in paragraph 15 of the Complaint. 16. Google denies the allegations contained in paragraph 16 of the Complaint. 17. Google denies the allegations contained in paragraph 17 of the C01Iplaint. 18. Google is without knowledge or information sufficient to suffcient to form a belief as to the truth of the ailegatėons of paragraph 18 of the Complaint with respect to Yahoo's conduct, and on that basis, Google denies all allegations in paragraph 18 that are directed to Yahoo. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 3 Case 2:07-cv-00279-CE Document 18 Filed 09/24/07 Page 4 of 16 19. Google is without knowledge or information sufficient to suffcient to form a belief as to the truth of the allegatiotis of paragraph 19 of the C01Iplaint with respect to Yahoo's conduct, and on that basis, Google denies all allegations in paragraph 19 that are directed to Yahoo. 20. Google is without khowledge or information sufficient to suffcient to form a belief as to the truth of the allegations of paragraph 20 of the Complaint with respect to Yahoo's conduct, and on that basis, Google denies all allegations in paragraph 20 that are directed to Yahoo. DENIAL OF INFRINGEMENT OF U.S. PATENT NO. 6,829,587 21. Google denies that u.S. Patent No. 6,829,587 (the '''587 patent") is entitled "Method for Using Computers to Faciltate and Cotitrol the Publishing of Presentations to a Plurality of Print Media Venues" and denies that it issued on September 3, 2002. Google admits that the' 587 patent is attached to the C01Iplaint as Exhibit C. Google denies that the' 587 patent was legally issued. Google is without khowledge or information sufficient to form a belief as to the truth of the remaining allegations of paragraph 21 of the Complaint and, on that basis, denies all sučh allegatiotis. 22. Google denies the allegations contained in paragraph 22 of the Complaint. 23. Google denies the. allegations contained in paragraph 23 of the Complaint. 24. Google denies the allegations contained in paragraph 24 of the Complaint. DENIAL OF INFRINGEMENT OF U.S. PATENT NO. 7,249,059 25. Google admts that U.S. Patetit No. 7,249,059 (the '''059 patent") indicates on its face that that it issued on July 24; 2007 but denies that it is entitled "Method for Using Computers to Faciltate and Control the Creating of a Plurality of Functions." Google ad1Its that the '059 patent is attached to the Complaint as Exhibit D. Google denies that the '059 patent was legally issued. Google is without khowledge or information sufficient to form a belief as to the truth of the remaining allegations of paragraph 25 of the Complaint and, on that basis, detiies all such allegations. GOOGLE INC.'S ANSWER, DEFENSES AND CÚUNTERCLAIMS INRE8PONSE TO PLAINTIFF'S FIRST AMENDEb COMPLAINT - Page 4 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 5 of 16 26. Google denies the allegations contained in paragraph 26 of the Complaint. 27. Google denies the allegations contained in paragraph 27 of the Complaint. 28. Google denies the allegations contained in paragraph 28 of the C01Iplaint. 29. Google is without knowledge or information sufficietit to sufficient to form a belief as to the truth of the allegations of paragraph 29 of the Complaint with respect to Yahoo's conduct, and on that basis, Google denies all allegations in paragraph 29 that are directed to Yahoo. 30. Google is without knowledge or information sufficient to sufficient to form a belief as to the trth of the allegations of paragraph 30 of the C01Iplaint with respect to Yahoo's conduct, atid on that basis, Google denies all allegations in paragraph 30 that are directed to Yahoo. 31. Google is without knowledge or information sufficient to sufficient to form a belief as to the truth of the allegations of paragraph 31 of the Complaint with respect to Yahoo's conduct, and on that basis, Google denies all allegations in pāragraph 31 that are directed to Yahoo. JURY DEMAND 32. Google admits that the Complaint sets forth a demand for trial by jury on all issues. PRAYER FORRELIEF 33. Google denies that Plaintiff is entitled to any relief, and denies all of the allegatiotis directed towards Google contained in paragraphs (a) - (e) ofPlaintėff's Prayer for Relief. 34. To the extent that any allegations of the Complaint have not been previously specifically admitted or denied, Google denies them. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 5 Case 2:07-cv-00279-CE Document 18 Filed 09/24/07 Page 6 of 16 DEFENSES Google, for its Defenses, pleads: First Affirmative Defense (Failure To State Claim) 35. Plaintiff's Complaint fails to state a claim against Goōgleupon which relief can be granted. Second Affirmative Defense (Invalidity of U.S. Pat. No. 6,446,045) 36. Each asserted claim of U.S. Pat. No. 6,446,045 is invalid for failure to comply with one or 1I0re of the requirements of United States Code, Title, 35, including without li1Iitation, 35 U.S.C. §§ 101, 102, 103, and 112, and the rules, regulations, and laws pertaining thereto. Third Affirmative Defense (Invalidity of U.S. Pat. No. 7,240,025) 37. Each asserted claim of U.S. Pat. No. 7,240,025 is invalid for failure to c01Iply with one or more of the requirements of United States Code, Title, 35, including without limitation, 35 U.S.c. §§ 101, 102, 103, and 112, and the niles, regulations, and laws pertaining thereto. Fourth Affrnative Defense (Invalidity of U.S. Pat. No. 6,829,587) 38. Each asserted claim of U.S. Pat. No. 6,829,587 is invalid for failure to comply with one or 1Iore of the requirements of United States Code, Title, 35, including without limitation, 35 U.S.c. §§ 101, 102, 103, and 112, and the rules, regulations, and laws pertaining thereto. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 6 Case 2:07-cv-00279-CE Document 18 Filed 09/24/07 Page 7 of 16 Fifth Affrmative Defense (Invalidity of U.S. Pat. No. 7,249,059) 39. Each asserted claim of U.S. Pat. No. 7,249,059 is invalid for failure to comply with one or more of the require1Ients of United States Code, Title, 35, including without limitation, 35 U.S.c. §§ 101, 102, 103, and 112, and the rules, regulations, and laws pertaining thereto. Sixth Affirmative Defense (Non-Infringement of U.S. Pat. No. 6,446,045) 40. Google has not and does not infringe any valid and enforceable claim of U.S. Pat. No. 6,446,045 under any sųbsection of 35 U.S.C. § 271. Seventh Affirmative Defense (Non-Infringement of U.S. Pat. No. 7,240,025) U.S. Pat. 41. Google has not and does not infringe any valid and enforceable claim of No. 6,446,045 under any subsection of 35 U.S.C. § 271. Eighth Affrmative Defense (Non-Infringement of U.S. Pat. No. 6,829,587) 42. Google has not and does not infringe any valid and enforceable claim of U.S. Pat. No. 6,829,587 under any subsection of 35 U.S.C. § 271. Ninth Affrmative Defense (Non-Infringement of U.S. Pat. No. 7,249,059) 43. Google has not and does not infringe any valid and enforceable claim of U.S. Pat. No. 7,249,059 under any subsection of 35 U.S.C. § 271. Tenth Affirnative Defense (Unenforceabilty of U.S. Pat. No. 7,240,025) 44. The claims of U.S. Pat. No. 7,240,025 ("the '025 patent") are unenforceable as a result of inequitable conduct by the applicants, their attorney(s), their agent(s), representative(s), predecessors in interest to the '025 patent, and/or the person(s) involved in the preparation and/or GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 7 Case 2:07 -cv-00279-CE Documčnt 18 Filed 09/24/07 Page 8 of 16 prosecution of that patent. Google alleges that the inequitable conduct comprised intentional misrepresentations and/or omissiotis includirtg without limitation, the following: a) Durirtg the prosecution of the application that led to the' 587 patent, the USPTO cited U.S. Pat. No. 6,401,075 to Mason et a1. (the "Masoti patent"). The Mason patent disclosed technology that was highlymaterial to the patents-in-suit, but the Mason patent filng date was just weeks later than the priority date for the '587 patent. b) On information and belief, during the prosecution of the application that led to the '025 patent, named inventors Lucirtda Stone and Michael Dean, by and through their attorney Henry Croskell ("Attorney Croskell"), engaged ar attorney in California, Kenneth S. Roberts ("Attorney Roberts"), to irtvestigate the prior art status of the Mason patent. Irt this regard, Attorney Roberts sub1Iitted a declaration in the application that became the '025 patent suggesting that the Mason patent could not have been based on an invention prior to October 1999. c) Attorneys Croskell and Roberts were involved in the prosecution of the '025 patent and thus owed a duty of candor and good faith under 37 C.P.R. § 1.56 to disclose information to the USPTO that may be material to the patetitabilty of the '025 patent. d) On information and belief, the declaration by Attorney Roberts and accompanying statemetits by Attorney Croskell withheld highly material information pertaining to the Mason patent technology and related prior ar. e) On information and belief, Attorney Roberts Was informed by Arthur Behrman and/or additional named invetitors on the Mason patent that Global Networks Inc. Was for1Ied on or about April 1999 for the purpose of developing an online network for the dissemination of electronic advertisements, which suggests a date of invention six months earlier than the October 1999 date suggested in the Attorney Roberts declaration, and moreover that had this information been shared with the USPTO then Attorney Croskell's assertion that the date of invention for the '025 patent was prior to October 1999 would have been insufficient to overcome art April 1999 date for the Mason patent techrtology. GOOGLE INC.'S ANSWER, DEFENSES AND COUNTERCLAIS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 8 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 9 of 16 t) Furthermore, on infor1Iation and belief, Attomey Roberts was informed by Mr. Behrman of the October 1999 announce1Ient concerning the devel0p1Ient of the Global Networks Inc. system with a third-pary intemational advertising agency. On information and belief, the subject October 1999 announcement was known to Attorney Roberts and was in fact an October 12, 1999 Business Wire announcement that not only disclosed aspects of the Global Networks Inc. system, but also the prior ar DoubleClick DART syste1I. The subject October 1999 announcement and infor1Iātion concernng the DoubleClick DART system was not disclosed to the USPTO. This information, and particularly the DoubleClick DART system, was also highly material to the patentability of the subject patent and the state of the ar at the time. g) On information and belief, this information was withheld from the USPTO by those owing a duty of candor and good faith under 37 C.F.R. § 1.56 with the intent to deceive the USPTO as to the true nature and scope of the prior ar, including the Global Networks Inc. system and DoubleClick DART technology and thus cause the USPTO to improperly grant the '025 patent. Eleventh Affrmative Defense (Unenforceabilty of U.S. Pat. No. 7,249,059) 45. The clai1Is of U.S. PaLNo. 7,249,059 ("the '059 patent") are unenforceable as a result of inequitable conduct by the applicants, their attortey(s), their ageht(s), representative(s), predecessors in interest to the '025 patent, and/or the person(s) involved in the preparation and/or prosecution of that patent. Google alleges that the inequitable conduct c01Iprised intentional misrepresentations and/or omissions including without limitation, the following: a) Google reasserts and incorporates by reference its state1Ients from paragraph 44 above and further alleges that the acts and inequitable conduct arising from the prosecution of the '025 patetit renders the '059 patent unenforceable too. b) The '059 patent is a continuation-in-par ("CIP") of an earlier fied application; new matter was added to the '059 patent when it was filed on July 11, 2002. GOOGLE INC.'S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 9 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 10 of 16 c) Among the new 1Iatter added to the '059 patent as of its filing date of July 11, 2002, is substantial new matter describing "third pary professionals." d) In a response to an Office action from the USPTO fied on April 5, 2006, Attorney Croskell repeatedly referenced the "third pary professional" new matter added as of the July 11, 2002 fiing date as supporting the pending claims and distinguishing those claims over the prior ar of record. e) Iti this same response to the USPTO, Attorney Croskell further referred to the USPTO to the Mason patent and the declaration of Attorney Roberts cited during the prosecution of the '025 patent. Attorney Croskell then misleadingly suggested, despite having just identified the "third pary professional" tiew matter added on July 11, 2002 as supporting the patentability of the claims, that the claims of the '059 patent were similarly entitled to "a date of invention for the clai1Ied subject matter that is prior to October 1999." f) These highly material and misleading statements by Attorney Croskell regarding the Mason patent and the purported dates of invention by Lucinda Stone and Michael Dean improperly led the USPTO to ignore the teachings and date of the invention described in the Mason patent and declaration of Attorney Roberts by convincing the USPTO that the '059 patent was etititled to a date of invention three years earlier than was possible in view of the new matter added to the CIP in its filing on July 11, 2002. g) On information and belief, these statements by those owing a duty of candor and good faith under 37 C.F.R. § 1.56 were made with the intent to deceive the USPTO as to the true nature and scope of the prior ar and dates of inventioti of the subject matter clai1Ied in the '059 patent and cause the USPTO to improperly grant the'059 patent. Twelfth. Affrmative Dęfeėlse (Claims Bared) 46. Plaintiff's clai1Is are bared in whole or in par based on prosecution history estoppel and/or prosecution history disclaimer. GOOGLE INC.'S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAITIFF'S FIST AMENDED COMPLAINT - Page 10 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 11 of 16 Thirteenth Affirmative Defense (Costs Bared) 47. Plaintiff is barred by 35 U.S.C. § 288 from recovering costs associated with its action. Additiōnal Defenses Reserved (Defenses Based on Later Discovered Evidence) 48. Google reserves all affrmative defetises uiidelRule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the United States, arid any other defenses at law or in equity that may exist now or that may be available in the future basëd on discovery aiid further factual investigation in this action. COUNTERCLAIMS 49. For its Counterclaims against Funčtion Media, L.L.c., Google pleads, based on persoiial knowledge as to all acts or events that it has undertaken or witnessed, and upon information and belief as to all others: Nature of the Action 50. This is an action by defendant and counter-claimant Google pursuant to Rule 13 of the Federal Rules of Civil Procedure for declarations of non-infringe1Ient, invalidity, and unenforceabilty of U.S. Pat. No. 6,446,045 ("the '045 patent"), U.S. Patent No. 7,240,025 ("the '025 patent"), U.S. Patent No. 6,829,587 ("the '58? patent"), and U.S. Patent No. 7,249, 059 ("the '059 patent"). The Parties 51. Countër-claimant Google is a corporation organized under the laws of the state of Delaware with its principal place of business at 1600 Amphitheatre Parkway, Mountain View, California 94043. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIRST AMENDED COMPLAINT - Page 11 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 12 of 16 52. Upoti ėnfor1Iatėon and belėef, Functėon Media, L.L.c. ės a corporatėon organized under the laws of the state of Texas and has ėts prėncėpal place of business at 1021 Wėlder Way, Tyler, Texas 75703. Jurisdiction and Venue 53. These counterclaėms seek declaratory and ėnjunctėve relėef under the Declaratory Judg1Ient Act, 28 U.S.C. §§ 2201 and 2202. The Court on these bases, has subject matter jurėsdėctėon of such claėmspursuatit to 28 U.S.C. §§ 1331 and 1338 as these counterclaims arėse underthe patent laws of the Unėted States, set forth at Tėtle 35 Unėted States Code. 54. The '045 patent was ėssued by the Unėted States Patent and Trademark Offėce on September 3, 2002.Plaintėff, based on averments ėn ėts Complaint, claims to be the owtier of all rėght, tėtleand ėnterest ėn and to the '045 patent, atid claims that Google has ėnfringed that patent. 55. The '025 patent was ėssued by the United States Patent and Trademark Offce on July3,2007. Plaintėff, based on averinents ėn ėts Complaint, claims to be the owner of all right, tėtle and interest ėn and to the '025 patent, and claims that Google has infrėnged that patent. 56. The '587 patent was ėssued by the Unėted States Patent and Trademark Offėce on Dece1Ibet 7, 2004. Plaintiff, based on averments ėn ėts Complaint, claims to be the owner of all rėght, tėtle atid ėnterest ėn and to the' 587 patent, and claims that Google has ėnfringed that patent. 57. The ' 059 patent was ėssued by the Unėted States Patent and Trademark Offėce on July 24,2007. Plaėntėff, based on averments ėn ėts Complaint, claims to be the owner of all rėght, tėtle and interest hi and to the '059 patent, and claims that Google has infrėnged that patent 58. Plaintėff has consented to personal jurisdėctėon by commencėng ėts actėon for patent ėnfrėngement ėn this judėcėal jurėsdėctėon, as set forth ėn Plaintėff's First Amended C01Iplaėnt. 59. Venueės proper ėn this Dėstrct pursuant to 28 U.S.C. §§ 1391 and 1400. Count I 60. Google has not and does not ėnfrėnge any valid and/or enforceable claim of the '045 patent, '587 patent, '025 patent, or '059 patent under 35 U.S.C. § 271. GOOGLE INC. 'S ANSwER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIRST AMENDED COMPLAINT - Page 12 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 13 of 16 Count II 61. The '045 patent, '587 patent, '025 patent, and'059 patents are invalid for failing to satisfy the requirements of, without limitation, 35 U.S.C. §§ 101, 102, 103, and 112. Coiint III 62. The'025 patent and the '059 patent are unenforceable because Plaintiff (including its predecessors in interest), through their inventors, attorneys, and agents committed inequitable conduct during the prosecution of the applications that issued as the'025 patent and the '059 patent, which render these patents unenforceable as alleged in paragraphs 44 and 45, which are reassertéd here. These acts of inequitable conduct include but are not limited to makng material misrepresentations as to the scope and content of the prior art,withholding information 1Iaterial pertaining to the prior ar, and makng 1Iaterial misrepresentations as to the date of the alleged invention and scope of an earlier declaration submitted to the USPTO. this information concerns both the dates of invention and prior art to the patents-in-suit atid is therefore highly material to the patentability of the issued claims and infects the'025 patent and '059 patent. Jury Demand 63. PurSuant to Local Rule CV 38(a) and Fed.R.Civ.P. 38, defetidant and counter- clai1Iant Google demands a trial by jury on all issues so triable in this action. REQUEST FOR RELIEF ON PLAINTIFF'S COMPLAINT 64. WlfREFORE, Google asks this Court to enter judgment in Google's favor and against Plaintiff Function Media, L.L.C. by granting the followitig relief: a) a dismissal of all claims in Plaintiff's Coniplaint against Google with prejudice and a complete denial of Plaintiff's requests for damages, costs, attorney fees, and any other form of relief; b) a permanent injunction restraining Plaintiff and its respective, officers, parners, employees, agents, parents, subsidiaries, and affiiates, and any other persons acting on its behalf or in coticert with, from charging or threatening, orally or in writing, that the '045 GOOGLE INC.'S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 13 Case 2:07-cv-00279-CE Document 18 Filed 09/24/07 Page 14 of 16 patent, the '025 patent, the '587 patent, or the '059 patent have been infringed by Google under any subsection of 35 V.S.C. § 271; and c) an award to Google of its reasonable attorneys' fees, costs, and all interest (including without limitation any attorney awards based upon 35 U.S.C. § 285) and any such other and further relief as the Court finds just and proper. REQUEST FOR RELIEF ON GOOGLE'S COUNTERCLAIMS 65. WHEREFORE, Google asks this Court to enter judgment in Google's favor and against Plaintiff Function Media, L.L.C. by granting the following relief: a) a declaration that Google does not irifringe and has not infringed any valid and enforceable claim of the '045 patent, the '025 patent, the' 587 patent, and the '059 patent under any subsection of 35 U.S.C. § 271; b) a declaratiori that all claims of the '045 patent, the '025 patent, the '587 patent, and the '059 patent are invalid under 35 V.S.C. §§ 101, 102, 103, and 112; c) a declaration that all claims of the' 02.5 patent and the '059 patent are unenforceable; d) a permanent injunction restraining Plaintiff and its respective, officers, parners, employees, agents, parents, subsidiaries, and affiiates, and any other persons acting on its behalf or in concert with it, from suing or threatening to sue for infringement of the '045 patetit, the '025 patent, the '587 patent, or the '059 patent on the basis of the makng, using, sellng, offering for sale or importing of any Google product or service; and e) an award to Google of its reasonable attorneys' fees, costs, and all interest (including without limitation any attorney awards based upon 35 V.S.C § 285) and any such other and further relief as the Court finds just and proper. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 14 Case 2:07 -cv-00279-CE Document 18 Filed 09/24/07 Page 15 of 16 Dated: September 24, 2007 Respectfully submitted, FISH & RICHARDSON P.e. By: \s\Thomas B. Walsh, IV Thomas B. Walsh, IV - Lead Attorney Texas Bar No. 00785173 Fish & Richardson P.C. 5000 Bank One Center 1717 Main Street Dallas, TX 75201 Telephone: (214) 747-5070 Facsimile: (214) 747~209i E-mail: walshęfr.com Hary L. Gilam, Jr. State Bar No. 07921800 Melissa R. S1Ith State Bar No. 24001351 GILLAM & SMITH, L.L.P. 303 South Washington A venue Marshall, TX 75670 Telephone: (903) 934~8450 Facsimile: (903) 934-9257 E-mail: gilęgilamsmithlaW.com E-mail: melissaęgilams1Ithlaw.com Counsel for Defendant GOOGLEINC. GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIS IN RESPONSE TO PLAINTIFF'S FIRST AMENDED COMPLAINT - Page 15 Case 2:07-cv-00279"-CE Document 18 Filed 09/24/07 Page 16 of 16 CERTIFICATE OF SERVICE The undersigned hereby certfies that a tre and correct copy of the above and foregoing docu1Ient has been served on Septe1Iber 24, 2007 to all counsel of record who are deemed to have consented to electronic service via the Court's CMlCF system per Local Rule CV-5(a)(3). S. Calvin Capshaw, Esq. Elizabeth L. DeRieux, Esq. BruWn McCarroll, LLP 1127 Judson Road, Suite 220 P.O. Box 3999 Longview, TX 75601-5157 Attorneys for Plaintiff FUCTION MEDIA, L.L.C. Max L. Tribble, Jr. J oseph S. Grirtstein Sûsman Godfrey LLP 1000 Louisiana, Suite 5100 Houston, TX 77002 Attorneys for Plaintiff FUCTION MEDIA,LL.C. Nicholas F. Daum Susman Godfrey LLP 1901 Avenue ofthe Stars, Suite 950 Los Atigeles, CA 90067 Attorneys for Plaintiff FUCTION MEDIA, L.L.c. \s\Thomas B. Walsh, IV Thomas B. Walsh, IV 10773474.doc GOOGLE INC.' S ANSWER, DEFENSES AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF'S FIST AMENDED COMPLAINT - Page 16 EXHIBIT 7 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MAHALL DIVISION SOFfW AR RIGHTS ARCHIVE, LLC § ~§ Plaintiff, § § § § Civil Action No. 2:07-cv-24-CE GOOGLE INC.~ YAHOO! INC., § lAC SEARCH & MEDIA, INC., AOL LLC, § and LYCOS, INC. § Defendants. § § JURY TRI DEMADED PLAINTIFF'S INITIAL DISCLOSURES Pursuat to Rule 26(a) of the Federal Rules of Civil Procedure and the Discovery Order in this case, Plaintiff Softare Rights Archive, LLC ("Softare Rights Archive") hereby makes the intial disclosures set fort below. These disclosures are based upon inforration reasonably and curently available to Softare Rights Archive, LLC. Softare Rights Archive, LLC reserves the nght to supplement these disclosures based upon infonnation developed in the course of ths lawsuit though discovery or factual investigation. Softare Rights Archive, LLC also reserves the nght to object to the admssibilty of any inorration disclosed. (a) the correct names of the paries to the lawsuit; Softare Rights Archive, LLC believes that the names of the paries to this lawsuit as cited in the caption are correct. (b) the name, address, and telephone number of any potential paries; Softare Rights Archive believes that there are no potential paries other than the named paries. (c) the legal theories and, in general, the factual bases the disclosing par's claims or defenses (the disclosing party need not marshal all evidence that may be offered at tral); of Defendants have infrnged and contiue to infinge Softare Rights Archive's patents-in suit by their manufactue, use, sale, importation, and offer for sale of products and servces. Defendants are liable to Softare Rights Archive under 35 U.S.C. § 271. The bases for Softare Rights Archive's clais are set fort more fully in the existent Complaint and in the Infrngement Contentions. Softare Rights Archive has produced and wil continue to produce documents in accordance with the Federal Rules, the Local Rules and this Cour's Discovery Orders. (d) the name, address, and. telephone nuņberof persons having ktowledge of relevant facts, a brief statement of each identified person's connection with the case, and a brief, fair sumar of the substance of the inforiation known by any such person; Danel Egger c/o Smyser Kaplan Veselka LLP 700 Louisiana, Suite 2300 Houston, Texas 77002 713"-221-2300 Danel Egger is an inventor of the patented technology and has knowledge of standing, the patents-in-suit, liabilty, and damages. Ron Sauers 3330 Tranquil Trail Mebane, NC 27302 919-563-6518 Mr. Sauers is an inventor of the patented technology and ha.s knowledge regarding the applicable technology, the patents-in-suit, and Libertech. Shawn Canon P.O. Box 12015 Research Triangle Park, NC 27709 919-386-0250 Mr. Canon is an inventor of the patented technology and has knowledge regarding the applicable technology, the patents-in-suit, and Libertech. Jeffrey Ait c/o Smyser Kaplan Veselka LLP 700 Louisiana, Suite 2300 Houston, Texas 77002 713-221-2300 Mr. Ait ha

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