Rockstar Consortium US LP et al v. Google Inc

Filing 105

Opposed MOTION for the Court to Enter its [Model] Order Focusing Patent Claims and Prior Art to Reduce Costs, to Limit the Number of Asserted Claims, and to Extend the Deadline for the Parties to Comply with P.R. 4-2 by Google Inc. (Attachments: # 1 Affidavit Declaration of Andrea Pallios Roberts, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Text of Proposed Order)(Perlson, David)

EXHIBIT C

From:
Sent:
To:
Cc:
Subject:

John Lahad [[e-mail]]
Friday, June 13, 2014 12:25 PM
Andrea P Roberts
[e-mail]; [e-mail]; [e-mail];
[e-mail]; [e-mail]; Alexander L. Kaplan; Max L. Tribble; Mark Mann;
[e-mail]; [e-mail]; QE-Google-Rockstar
RE: Rockstar v. Google

Andrea,
As discussed in earlier correspondence with your colleague, Lance Yang, Rockstar objects to
Google’s attempt to shirk its disclosure obligations by refusing to provide claim-by-claim and
element-by-element charts for its asserted references. Instead of charting each claim element
by element, Google fashioned Exhibit B to list prior art references that may be combined with
the reference ostensibly charted in Exhibit A. For example, A-1 points to table B1, which says
that “one of ordinary skill in the art would be motivated to combine the references addressed
in claim charts A-1 to A-39 with any one or more of the Table B1 references because: it would
have yielded predictable results.” According to Mr. Yang, Exhibits A-1 to A-39 identify each
combination that Google intends to rely on for each limitation and Exhibit B’s tables
“streamline” the disclosure. Contrary to Mr. Yang’s email, this approach does not comply with
Patent Local Rule 3-3(c) and does not sufficiently identify the combinations Google wishes to
assert. If Google’s approach is credited, millions of potential combinations result – hardly a
streamlining of anything. This is not what the local rules contemplate, which a claim element
by element disclosure and identification of specific combinations.
Furthermore, Google’s invalidity contentions for some alleged prior art systems do not provide
anything more than superficial and rudimentary descriptions of those systems. Google’s
disclosures rely on high-level newspaper and magazine articles and cite no user manuals or
similar technical documents. For example, in A-10, Google relies on the Excite search engine
but only cites an IEEE paper that barely touches on Excite, a few pages from a “Dummies...”
book, and a handful of citations to non-technical articles generally discussing search engines.
Google’s failure to provide sufficient evidence is particularly egregious given that it listed
Graham Spencer and Ben Lutch, co-founders of Excite and current Google employees, as
persons with knowledge of prior art in its initial disclosures. The same is true for Alta Vista (A2). Google failed to provide any technical materials describing Alta Vista even though Alta
Vista’s principal developer, Michael Burrows, is a current Google employee and likewise
identified by Google in its initial disclosures. It is also known that Google acquired DoubleClick
in 2007 (which had previously purchased NetGravity). Accordingly, Google has in its
possession and thus must provide more information on DoubleClick (A-9) and NetGravity (A24) than two patents and a smattering of non-technical articles pulled from the Wayback
Machine, respectively.
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Because of Google’s non-compliant and deficient disclosures, Rockstar cannot agree to join in
any motion to limit claims and references. The Model Order does not alter the Local Rules. If
Google provides the element-by-element disclosures required by the local rules and the
additional evidence of prior art in its possession, Rockstar will consider whether a motion is
appropriate. Please provide compliant and complete charts by Friday June 20, 2014. If
Google chooses not to do so, then please provide a time this Monday (preferably before 5:00
pm central) to meet and confer in advance of our motion to strike Google’s non-compliant
contentions.
Finally, you are correct that our cover pleading includes two typographical errors regarding
claim 15 of the ‘969 patent and claim 16 of ‘183 patent. As of the date of its infringement
contentions, Rockstar is not asserting those two claims in this case.
I look forward to hearing from you.
Best,
John
John P. Lahad
Susman Godfrey L.L.P.
713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

From: Andrea P Roberts [mailto:[e-mail]]
Sent: Wednesday, June 11, 2014 4:42 PM
To: John Lahad
Cc: [e-mail]; [e-mail]; [e-mail]; [e-mail];
[e-mail]; Alexander L. Kaplan; Max L. Tribble; Mark Mann; [e-mail]; [e-mail];
QE-Google-Rockstar
Subject: RE: Rockstar v. Google

John,
I write to follow up on our prior correspondence regarding Rockstar’s assertion of 144 claims against Google.
We continue to believe that this is unreasonable. In your email below, you state that the Court has not entered
the Model Order Focusing Patent Claims and Prior Art to Reduce Costs. We believe that the Model Order
Focusing Patent Claims and Prior Art to Reduce Costs is appropriate given the plaintiff’s current asserted
claims and the patents at issue in the case. Please let us know if Rockstar will file a joint motion for the Court
to enter an order focusing patent claims and prior art.
Additionally, Rockstar’s P.R. 3-1 cover pleading purportedly asserts infringement of claim 15 of the ‘969 patent
and claim 16 of the ‘183 patent. However, Rockstar’s infringement charts do not provide any corresponding
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entries for those claims as required by P.R. 3-1(c). Please confirm that Rockstar does not intend to assert
infringement of claim 15 of the ‘969 patent and claim 16 of the ‘183 patent.
Thanks,
Andrea
Andrea Pallios Roberts
Of Counsel,
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
650-801-5023 Direct
650.801.5000 Main Office Number
650.801.5100 FAX
[e-mail]
www.quinnemanuel.com
NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
by e-mail, and delete the original message.

From: John Lahad [mailto:[e-mail]]
Sent: Friday, April 18, 2014 1:51 PM
To: Andrea P Roberts
Cc: [e-mail]; [e-mail]; [e-mail]; [e-mail];
[e-mail]; Alexander L. Kaplan; Max L. Tribble; Mark Mann; [e-mail]; [e-mail];
QE-Google-Rockstar
Subject: RE: Rockstar v. Google

Andrea,
Thanks for your email, and good chatting with you today. We disagree that the number of
patents and claims is unreasonable at this stage in the litigation. As you mentioned, under the
Court’s model order – which has not been issued in this case – the earliest Rockstar would
have to make an election is “by the date set for completion of claim construction discovery.”
Under the Court’s current sample DCO, that’s not until September. Google’s only argument is
burden, but that was explicitly taken into consideration by the Court in its model order, which
intends to “streamline[] the issues in this case.” Accordingly, to the extent Rockstar must limit
claims, it will do so when ordered by the Court.
You add that Rockstar’s infringement contentions “do not provide sufficient specificity to put
Google on notice of what functionalities Rockstar contends infringes the asserted patents.”
Suffice it to say, we disagree. Per PR 3-1, Rockstar’s infringement contentions name each
instrumentality currently accused of infringement and provide ample evidence “identifying
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specifically where each element of each asserted claim is found within each Accused
Instrumentality.”
Happy to discuss.
Thanks,
John
John P. Lahad
Susman Godfrey L.L.P.
713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

From: Andrea P Roberts [mailto:[e-mail]]
Sent: Monday, April 14, 2014 1:56 PM
To: John Lahad
Cc: [e-mail]; [e-mail]; [e-mail]; [e-mail];
[e-mail]; Alexander L. Kaplan; Max L. Tribble; Mark Mann; [e-mail]; [e-mail];
QE-Google-Rockstar
Subject: Rockstar v. Google

Counsel,
I write regarding Rockstar’s infringement contentions. First, Rockstar’s assertion of 144 claims in 7 patents is
unreasonable. As a practical matter, this is far too many. Not only is it extremely difficult for Google to
analyze Rockstar’s infringement contentions, but it will greatly increase the volume of Google’s invalidity
contentions, which will be a burden to all parties. Moreover, Rockstar cannot possibly try anything remotely
close to 144 claims and must know that it will, at least eventually, have to reduce the number of asserted
claims. Indeed, under the Court’s Model Order Focusing Patent Claims and Prior Art to Reduce Costs,
Rockstar will need to limit itself to 32 asserted claims by the close of claim construction discovery. Rockstar
should reduce the number of asserted claims now, before Google serves its invalidity contentions under P.R. 33. Please confirm that Rockstar will do so by Friday, April 18.
Second, Rockstar’s infringement contentions, while voluminous due to the number of asserted claims, do not
provide sufficient specificity to put Google on notice of what functionalities Rockstar contends infringes the
asserted patents. Without such specificity, it is extremely difficult, if not impossible, for Google to identify
“documentation sufficient to show the operation” of such accused functionalities, as required by P.R. 3-4, or to
do so by May 19, much less determine what other documents or source code is relevant to Rockstar’s
infringement contentions. We request that Rockstar provide more specificity as to what is accused. Please
confirm that Rockstar will do so by Friday, April 18.
If Rockstar does not agree to either of the above, please provide a time this week when Rockstar is available to
meet and confer on these issues.
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Thanks,
Andrea
Andrea Pallios Roberts
Of Counsel,
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
650-801-5023 Direct
650.801.5000 Main Office Number
650.801.5100 FAX
[e-mail]
www.quinnemanuel.com
NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
by e-mail, and delete the original message.

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