Rockstar Consortium US LP et al v. Google Inc

Filing 116

RESPONSE in Opposition re 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 filed by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Declaration of John P. Lahad, # 2 Exhibit 1 Exhibit B to Google's Invalidity Contentions, # 3 Exhibit 2 6-23-2014 Letter from Google's counsel to Plaintiffs' counsel, # 4 Exhibit 3 7-2-2014 and 7-3-2014 Email exchanges between counsel, # 5 Exhibit 4 7-18-2014 Email from Google's counsel to Plaintiffs' counsel, # 6 Exhibit 5 7-21-2014 Email from Plaintiffs' counsel to Google's counsel, # 7 Exhibit 6 General Order 13-20, # 8 Text of Proposed Order)(Lahad, John)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
LLC,
Plaintiffs,

Civil Action No. 2:13-cv-893

v.
GOOGLE INC.,

JURY TRIAL DEMANDED

Defendant.

PLAINTIFFS’ RESPONSE IN OPPOSITION TO
GOOGLE’S 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
This Court should deny Defendant Google Inc.’s (“Google”) July 2, 2014 Motion for the
Court to Enter its [Model] Order Focusing Patent Claims and Prior Art to Reduce Costs, and to
Limit the Number of Asserted Claims, and To Extend the Deadline for the Parties to Comply
with P.R. 4-2 (Doc. 105). In its Motion, Google asks this Court to order Plaintiffs Rockstar
Consortium US LP and Netstar Technologies LLC (“Rockstar”) to select 15 claims per patent
and no more than 50 total claims by July 14, 2014, “or soon thereafter as this matter can be
heard.” Doc. 105 at 1. Google also requests that this Court extend the deadline for Patent Rule
4-2 disclosures from July 15, 2014 to July 18, 2014. As Google’s requested deadlines have
passed, Google’s Motion is now moot, and this Court should deny the Motion as moot.
Should this Court not consider Google’s Motion moot, it should nevertheless deny the
Motion. Google’s own actions betray its arguments, and confirm that Google simply seeks to

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impose an additional and unnecessary burden on Rockstar with no good cause. Further, the
number of asserted claims in this case pales in comparison to the thousands of prior art
combinations Google seeks to rely on in showing that the asserted claims are obvious. As
explained to Google, Plaintiffs would be amenable to entry of the Model Order provided that
Google identifies with reasonable clarity its obviousness combinations as required by this
District’s Patent Rules. Until then, this Court should forego entry of the Model Order.
I.

Factual Background
On March 24, 2014, Rockstar served its infringement contentions pursuant to Patent Rule

3-1. As required by Rule 3-1(c), Rockstar provided claim charts “identifying specifically where
each element of each asserted claim is found within each Accused Instrumentality.”1
On April 14, 2014, Google complained that the number of claims charted and asserted by
Rockstar was “far too many.” See Doc. 105-3 at 2 (Roberts April 14 email). Google added:
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. 3-3.
Id. Rockstar declined Google’s demand to prematurely limit the number of asserted claims, and
responded that under the Model Order, “the earliest Rockstar would have to make an election is

1

In its Motion, Google complains that Rockstar accused “a broad and vaguely defined set of
products and services.” Dkt. 105 at 2-3. This can hardly be the case when Rockstar identified
by name several Google products and services, including Google Ads, Google, AdWords,
Google AdWords Express, the Google Search App, and AdSense for Search.

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‘by the date set for completion of claim construction discovery.’” Id. at 1 (Lahad April 18 email
to Roberts). Google did not reply.
Google served its invalidity contentions on May 23, 2014. Google provided charts for 39
anticipatory references. Google also appended “Exhibit B” to its invalidity contentions that
contained seven tables, Table B1 to Table B7. Exhibit 1 (Exhibit B to Google’s Invalidity
Contentions).2 According to Google, these tables contain the prior art references that could be
combined – in any number of ways – with any one of the 39 anticipatory references to form
various obviousness combinations. As Google explained in its preambles to the tables:
To the extent the references addressed in claim charts A-1 to A-39 does [sic] not
disclose the limitations identified in each chart citing Table B1, 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 listed below
because: it would have yielded predictable results; using the techniques of the
Table B1 references would have improved the primary or obviousness references
in the same way; and applying the techniques of the Table B1 references to
improve primary or obviousness references would have yielded predictable
results.
Id. at 4 (emphasis added). In other words, Google’s position is that it can combine any charted
anticipatory reference with any combination of the dozens of references in its Exhibit B tables.
Table B1, for example, has over two dozen references. Thus, under Google’s approach, it could
combine Anticipatory Reference A1 with Obviousness References B1, B2, and B3 or A1 with
B1, B4, and B17, or A1 with B1, B2, B3, B4, and B5 and so forth. This results in literally
millions of potential obviousness combinations.

2

Unless otherwise noted, all exhibit citations are to the exhibits attached to the declaration of
John P. Lahad.
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Rockstar complained to Google that its approach to obviousness vitiated the notice
function of Patent Rule 3-3(b), which requires identification of each combination and the
motivation to combine each item of prior art. Google disagreed. According to Google:
[T]he number of possible obviousness combinations disclosed in Google’s
invalidity contentions is a function of the number of claims Rockstar has asserted
against Google. If Rockstar is concerned with the breadth of Google’s invalidity
case, Google proposed a solution: entry of the Court’s Model Order, which will
streamline the case. Google will narrow the scope of its invalidity case under the
timeline set forth in the Model Order.
Exhibit 2 (Roberts June 23 letter to Lahad).
In response, Rockstar explained that the Model Order would not cure the prejudice to
Rockstar caused by Google’s impermissibly high number of obviousness combinations:
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.
Doc. 105-5 (Lahad June 25 Letter to Roberts) at 2.
As a compromise, Rockstar proposed that Google agree to identify 50 references initially
– instead of the 40 references provided for by the Model Order – wherein each obviousness
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combination counts as a separate reference. Id. at 3. Google declined, and prepared a joint
motion to adopt the Model Order “as-is” – incorrectly claiming that Rockstar had agreed to the
unmodified Model Order. Doc. 105-6 (Yang June 30 email to Lahad) at 2. That is, Google
proposed adoption of the Model Order without modification just two days before it filed its
current Motion.
On July 2, 2014, Google advised Rockstar of its intent to withdraw 12 anticipatory
references in response to Rockstar’s withdrawal of one of the patents-in-suit. Exhibit 3 (Yang
July 2, 2014 email to Lahad). Google argued that this demonstrated the effect of reducing claims
on the number of prior art combinations. Rockstar disagreed, and on July 3, 2014, Rockstar
informed Google that it intended to move to strike Google’s obviousness combinations. Id.
During the subsequent in-person meet and confer, counsel for Google offered to submit a
proposal to address Rockstar’s concerns with Google’s obviousness combinations. More than
one week later, Google proposed limiting its obviousness case to no more than five references
for each table in Exhibit B and no more than 30 references total. Exhibit 4 (Yang July 18 email
to Lahad). Google also “reserve[d] its right to rely on the other references identified in Exhibit B
as the case evolves.” Id.
Rockstar declined Google’s proposal.

Exhibit 5 (Lahad July 21 email to Yang).

Rockstar explained that Google’s proposal does not cure the prejudice and provide the required
notice. Id. Despite the reduction in the number of references, Google’s proposal still yields
thousands of possible combinations and does not identify sufficiently the prior art combinations
Google will assert. See, e.g., LML Patent Corp. v. J.P. Morgan Chase & Co., No. 2:08-cv-448,
2011 WL 5158285, at *4 (E.D. Tex. Aug. 11, 2011) (Folsom, J.) (“Patent Rule 3-3(b) requires
disclosures of combinations, not just references, and thus does not expect the patentee to

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consider every possible combination of the references cited.”). This is further compounded by
Google’s reservation of “its right to rely on the other references identified in Exhibit B as the
case evolves.” Rockstar cannot agree to entry of the Model Order limiting claims without
knowing the bases for Google’s obviousness case.3
II.

There is No Good Cause For Intermediate Selection
In its present Motion, Google demands that this Court order Rockstar “to reduce the

number of asserted claims to 15 claims per patent and no more than 50 total by July 14, 2104, or
as soon thereafter as this matter can be heard.” Doc. 150 at 9. There is no good cause for this
intermediate selection of claims, and Google’s purported justifications were considered and
rejected by the Eastern District of Texas Local Rules Committee during its drafting of the Model
Order.
Google argues that “[a] reduction in the number of claim terms by September 2, the close
of claim construction discovery, is too late to substantially reduce the costs associated with claim
construction.” Id. at 10. The original version of the Model Order required preliminary election
of claims within “40 days after the accused infringer is required to produce documents sufficient
to show the operation of the accused instrumentalities.” Exhibit 6 (General Order 13-20) at 7.
According to the Rules Committee, however:
[T]he later preliminary election reflects the fact that the completeness of an
accused infringer’s initial production of documents sufficient to show the
operation of the accused instrumentality is often subject to reasonable debate.
The later preliminary election allows time to resolve such matters.
Id. at 12. This case is not immune from the debate underscored by the Committee. In fact,
Google will not be producing source code until August at the earliest, and the completeness and
3

As explained in Rockstar’s forthcoming Motion to Strike, Google’s approach to obviousness
does not comply with the letter and spirit of P.R. 3-3, and its Exhibit B should be struck.

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scope of this source code production – and of Google’s production as a whole – remains to be
seen.4
Google also argues that the Court should accelerate claim election in order “to allow the
parties to focus on construing a more reasonable number of asserted claims, and not waste time
and resources on claims that will never see trial.” Doc. 105 at 10. The Local Rules committee
likewise accounted for this issue in crafting the Model Order:
[T]he later deadline allows initial claim construction disclosures to take place,
giving the parties the benefit of each other’s claim construction positions in
making their preliminary elections. At the same time, the preliminary election is
early enough to avoid undue expense from briefing and arguing excess claim
construction issues.
Exhibit 6 at 13 (emphasis added). Google’s proposal is inconsistent with one of the goals of the
Model Order, i.e., to allow for election after proposed constructions have been exchanged.
Google closes by referencing the parties’ identification of 110 claim terms for
construction. Doc. 105 at 11. Google forgets to mention that it is responsible for 100 of those
4

P.R. 3-4(a) requires a party opposing a claim of patent infringement to produce or make
available for copying or inspection source code for the accused instrumentalities at the time it
serves it invalidity contentions. The Protective Order in this case, issued by this Court on
June 19, 2014, states that source code will be made available for inspection “upon reasonable
notice to [Google], which shall not be less than three business days in advance of the requested
inspection.” Google failed to produce source code with its invalidity contentions or after
receiving the agreed-upon three days’ notice. During discussions on this issue, Google took the
erroneous position that production of other technical documents was sufficient under the Patent
Rules. In Edward D. Ioli Trust v. Avigilon Corp., No. 2:10-cv-605, 2012 WL 5830711, at *3
(E.D. Tex. Nov. 16, 2012), Judge Gilstrap held that “[t]his District’s P.R. 3-4(a) requires the
alleged infringer to produce any and all documents describing the operation of any aspects or
elements of an accused instrumentality,” and that P.R. 3-4(a) “clearly covers source code,
regardless of what additional materials may exist to disclose the functionality of the technology
at issue.” (Emphasis added). Google still has not produced a single line of source code and has
committed only to produce a “substantial” portion of its source code in August. Google cannot
drag its feet on source code production and simultaneously demand reduction in asserted claims.
This, too, does not comport with the Model Order.
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terms despite the fact that, as Google concedes at 3, “the asserted claims are highly repetitive,
and many are method and system analogs.” In other words, the number of asserted claims does
not reflect the number of potential claim construction disputes.
III.

Rockstar Would Be Amenable to the Model Order Provided Google Complies with Its
Patent Rule 3-3 Obligations
Entry of the Model Order and the parties’ disclosure obligations under the Patent Rules

are mutually exclusive; however, the Model Order is premised on the parties meeting their
disclosure obligations. As the Local Rules Committee recognized:
In the experience of the members of the working group, the costs associated with
invalidity contentions and claim construction are two of the most significant costs
incurred in the pretrial phase of patent cases. However, reducing the cost of
invalidity contentions through an early election has proved elusive considering the
early stage at which invalidity contentions are served and the overriding need to
give both plaintiffs and defendants sufficient information to make a meaningful
election.
Exhibit 6 at 11. In this case, Rockstar would be amenable to entry of the Model Order provided
that Google identify with specificity the obviousness combinations it intends to assert. As it
currently stands, the Model Order would require Rockstar to select claims in the face of
thousands of obviousness combinations. This is hardly the “sufficient information” needed to
make a “meaningful election” under the Model Order.
In response to Rockstar’s demand for further clarity, Google’s has said that it will
specifically identify prior art combinations as required under the Model Order, which means that
it will identify combinations on January 19, 2015, two weeks after the close of discovery. This is
too late. P.R. 3-3 requires identification of combinations now.
The Rules Committee cited the need for “increased flexibility” for defendants to “develop
the appropriate combinations as discovery proceeds.” Exhibit 6 at 15. This flexibility to develop
appropriate combinations, however, does not give defendants freedom to drown plaintiffs in a
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pool of potential references “any one or more” of which could be combined with references from
another pool to create an obviousness case. Because, as the Rules Committee appreciated, “[a]
small number of prior art references can be combined to form an exponentially greater number of
bases for invalidity,” Exhibit 6 at 14, the Model Order’s provision for identification of specific
combinations after the end of discovery does not remedy Google’s deficient disclosures.
This Court should deny Google’s Motion.
DATED: July 21, 2014

Respectfully submitted,
By:

/s/ John P. Lahad
Max L. Tribble, Jr. – Lead Counsel
State Bar No. 20213950
Alexander L. Kaplan, State Bar No. 24046185
John P. Lahad, State Bar No. 24068095
Shawn Blackburn, State Bar No. 24089989
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Justin A. Nelson, State Bar No. 24034766
Parker C. Folse, III, WA State Bar No. 24895
Kristin Malone, WA State Bar No. 46251
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Amanda K. Bonn, CA State Bar No. 270891
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, CA 90067-6029
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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T. John Ward, Jr., State Bar No. 00794818
Claire Abernathy Henry, State Bar No. 24053063
WARD & SMITH LAW FIRM
P.O. Box 1231
Longview, TX 75606-1231
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
S. Calvin Capshaw, State Bar No. 03783900
Elizabeth L. DeRieux, State Bar No. 05770585
D. Jeffrey Rambin, State Bar No. 00791478
CAPSHAW DERIEUX, LLP
114 E. Commerce Ave.
Gladewater, TX 75647
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Rockstar Consortium US LP and
NetStar Technologies LLC

CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to
electronic service are being served this 21st day of July, 2014 with a copy of this document via
the Court’s CM/ECF system per Local Rule CD-5(a)(3).

/s/ John P. Lahad
John P. Lahad

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