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 D

S USMAN GODFREY L . L . P .
A RE GIST ERED LIMITED LIABILITY PARTNE RSHI P

SUITE 5100
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HOUSTON, TEXAS 77002-5096
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Suite 5100
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John P. Lahad
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E-Mail [e-mail]

June 25, 2014
VIA E-MAIL
Ms. Andrea Pallios Roberts, Esq.
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive
5th Floor
Redwood Shores, CA 94065
Re:

Rockstar Consortium US LP, et al. v. Google, Inc.,
Case No. 2:13-cv-893 (E.D. Tex.)

Dear Andrea:
I write in response to your letter of June 23, 2014 regarding our June 19, 2014
meet and confer.
First, this confirms that Plaintiffs Rockstar Consortium US LP and Netstar
Technologies LLC would be amenable to jointly moving the Court to issue an
Order limiting claim terms and prior art references along the lines disclosed in the
Model Order referenced by General Order 13-20:
By the date set for completion of claim construction discovery
pursuant to P.R. 4-4, the patent claimant shall serve a Preliminary
Election of Asserted Claims, which shall assert no more than ten
claims from each patent and not more than a total of 32 claims. Not
later than 14 days after service of the Preliminary Election of
Asserted Claims, the patent defendant shall serve a Preliminary
Election of Asserted Prior Art, which shall assert no more than
twelve prior art references against each patent and not more than a
total of 40 references.

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No later than 28 days before the service of expert reports by the
party with the burden of proof on an issue, the patent claimant shall
serve a Final Election of Asserted Claims, which shall identify no
more than five asserted claims per patent from among the ten
previously identified claims and no more than a total of 16 claims.
By the date set for the service of expert reports by the party with the
burden of proof on an issue, the patent defendant shall serve a Final
Election of Asserted Prior Art, which shall identify no more than
six asserted prior art references per patent from among the twelve
prior art references previously identified for that particular patent
and no more than a total of 20 references. For purposes of this Final
Election of Asserted Prior Art, each obviousness combination
counts as a separate prior art reference.
According to the Court’s May 13, 2014 Scheduling Order, the relevant dates
would be (1) September 2, 2014 for Plaintiffs’ identification of 32 claims, (2)
September 16, 2014 for Google’s selection of 40 references, (3) December 22,
2014 for Plaintiffs’ identification of 16 claims, and (4) January 19, 2015 for
Google’s selection of 20 references total. Please confirm.
We disagree, however, that entry of the Order reducing claims and prior art
references “provides a solution to at least one of Rockstar’s complaints regarding
Google’s invalidity contentions,” as you suggest in your letter. Regardless of the
number of claims asserted, Google improperly wishes to rely on an impermissibly
high number of obviousness combinations. Contrary to your statement, the
number of possible obviousness combinations is not a function of the number of
the claims asserted. The numbers prove this.
Each table in Google’s Exhibit B includes an introductory statement 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 [] references listed
below…” Table B1 contains over two dozen references. If Plaintiffs asserted only
the claims from the ’969 Patent and Google likewise asserted only the various
combinations of references in Table B1, Plaintiffs would still be forced to
prosecute their case in the face of millions of prior art combinations. Google
cannot simply establish a massive pool of prior art references and then extract any
number of combinations at any time. This is insufficient notice of Google’s
invalidity theories, and entry of the Model Order does nothing to resolve this.
In Realtime Data, LLC v. Packeteer, Inc., 2009 WL 4782062, at *3 (E.D. Tex.
Dec. 8, 2009), the court precluded reliance on two prior art references because they
were not charted on a claim-by-claim and element-by-element basis. The
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defendant argued that disclosing the references in an appendix sufficed. Id. The
court disagreed and found that “this type of disclosure cannot serve as sufficient
notice because [the defendant] disclosed over 500 prior art references in Appendix
J, resulting in an impermissibly high number of combinations to reasonably serve
the notice function contemplated by the Patent Rules.” Here, as in Realtime,
Google seeks to rely on an impermissibly high number of combinations, and
winnowing the number of asserted claims does not resolve that.
Google’s reliance on KSR is misplaced. KSR did not reduce a defendant’s
obligation under the patent rules to provide sufficient notice of its invalidity
theories. Further, KSR does not relieve a party from sufficiently describing
motivations to combine. See, e.g., Alexsam, Inc. v. IDT Corp., 715 F.3d 1336,
1347 (Fed. Cir. 2013) (requiring evidence of motivation to combine even if prior
art references disclose claimed elements). Here, Google’s introduction to each
table in Exhibit B simply states that a person of ordinary skill would have been
motivated to combine the reference in Exhibit A with any one or more of the
Exhibit B references. This boilerplate language likewise fails to provide sufficient
notice of Google’s invalidity theories.
Rockstar echoes the proposal made during our conference. That is, Rockstar
proposes that Google identify 50 references by September 16, 2014, wherein each
obviousness combination counts as a separate prior art reference, and describe with
additional clarity the relevant motivations to combine.
With respect to Google’s deficient NetGravity and DoubleClick charts, we
explained that Google should have provided significantly more detail in its charts
for those two references because Google acquired and presumably possesses,
controls, or has custody of the relevant underlying technical documentation.
Google did not deny it had the underlying documents. To the contrary, Google
confirmed it would be producing additional documents this week, but stopped
short of saying it would produce all the documents related to NetGravity and
DoubleClick.
Your letter states that “Rockstar took the position that Google was required to have
already produced every single document on which it will rely at trial in relation to
a particular reference.” That is not Rockstar’s position. Rockstar’s position is that
Google should not be allowed to trickle out discovery and documents for systems
it owns and intends to assert as prior art, especially when there is no dispute that it
has possession, custody, and control of the relevant underlying technical
documents.
The defendant in IXYS Corp. v. Advanced Power Technology, Inc., 2004 WL
1368860, at *3 (N.D. Cal. June 16, 2004), approached its obligations in a fashion

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similar to Google’s present approach, i.e., by not producing relevant underlying
technical materials that described its own system asserted as prior art. The court
rejected that approach:
APT’s reading of the Patent Local Rules is untenable at best and
insultingly tendentious at worst. The Local Rules exist to further
the goal of full, timely discovery and provide all parties with
adequate notice and information with which to litigate their cases,
not to create supposed loopholes through which parties may
practice litigation by ambush. Rule 3-4(b) quite obviously requires
APT to produce more than the “identity” of the prior art upon
which it seeks to rely-if APT believes that a mask layer photograph
or drawing is relevant to this action, then Rule 3-4(b) requires APT
to serve upon IXYS a copy of that same document.
Id.
In addition to producing the underlying documents, Google should have provided
further detail in its DoubleClick and NetGravity charts. You state that “Rockstar
has not cited a single example of something that it does not understand based on
the purported lack of specificity in Google’s charts.” The burden is not on
Rockstar to cite examples of something it does not understand. Rather, Google
must sufficiently describe how the prior art systems purportedly meet every
limitation of every claim. Part and parcel of this is describing how the alleged
prior art systems work. Google’s charts do not do that sufficiently, and there is no
excuse for this when every relevant document is in Google’s possession, custody,
and control.
You reference the two Merriman patents cited in the DoubleClick chart. Is Google
limiting the functionality of DoubleClick to that disclosed in the two patents (and
the handful of magazine and newspaper articles) cited in the chart? Does Google
intend to supplement its DoubleClick chart with the documents it possesses and
will produce? If so, when?
You also provided bates numbers for the two NetGravity “user guides” you
produced. Thank you. Is Google limiting the functionality of NetGravity to that
disclosed in the “user guides” and the other superficial references cited in
NetGravity chart? Does Google intend to supplement its NetGravity chart with the
documents it possesses and will produce? If so, when?
Rockstar proposes that Google provide supplemental DoubleClick and NetGravity
charts with citations to the relevant underlying technical documents by July 2,
2014.

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Finally, Rockstar’s infringement contentions specifically identify each accused
instrumentality and provide a chart identifying specifically where each element of
each asserted claim is found within each accused instrumentality. You requested
supplementation and say that Google has produced over 180,000 pages of
technical documentation. Is this the extent of Google’s production? How many
more pages of technical documentation can Rockstar expect? You also pose
several questions related to meaning and interpretation of the claim terms, but
those questions are more appropriately resolved during the claim construction
process, which is just starting.
Please confirm whether Google will (1) accept Rockstar’s proposal regarding
references and combinations and (2) provide supplemental invalidity charts for
DoubleClick and NetGravity by July 2, 2014.
We remain happy to discuss these issues.
Sincerely,

John P. Lahad

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