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)

Exhibit 3

John Lahad
From:
Sent:
To:
Cc:

Subject:

John Lahad
Thursday, July 03, 2014 9:39 AM
'Lance Yang'; Andrea P Roberts; Justin A. Nelson
Amanda Bonn; Alexander L. Kaplan; '[e-mail]';
'[e-mail]'; '[e-mail]'; '[e-mail]';
'[e-mail]'; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John
Dolan; Shawn Blackburn; QE-Google-Rockstar; 'James Mark Mann'; 'Andy Tindel';
'Gregory Blake Thompson'; John Lahad; Stacy Schulze; Tammie J. DeNio
RE: Rockstar v. Google

Lance,
As I’ve indicated, we disagree, and will ask the Court to strike Google’s obviousness
combinations.
Thanks,
John
John P. Lahad
Susman Godfrey L.L.P.
713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

From: Lance Yang [mailto:[e-mail]]
Sent: Wednesday, July 02, 2014 9:20 PM
To: John Lahad; Andrea P Roberts; Justin A. Nelson
Cc: Amanda Bonn; Alexander L. Kaplan; '[e-mail]'; '[e-mail]';
'[e-mail]'; '[e-mail]'; '[e-mail]'; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi
Obuz; John Dolan; Shawn Blackburn; QE-Google-Rockstar; 'James Mark Mann'; 'Andy Tindel'; 'Gregory Blake Thompson'
Subject: RE: Rockstar v. Google

John,
As we have indicated, bringing a motion regarding the number of “combinations” currently at play wastes the Court’s
and the parties’ resources. We have already agreed to the limitations on obviousness combinations in the Model
Order. Model Order, ¶ 3 (“For purposes of this Final Election of Asserted Prior Art, each obviousness combination
counts as a separate prior art reference”). And the reductions in claims and art called for in the Model Order will also
assist Rockstar’s purported concerns regarding the number combinations. Indeed, twelve of Google’s thirty-nine
invalidity charts disclosing the basis for its contentions that the asserted claims are anticipated by the prior art related
only to claim 1 of the ‘065 patent. Thus, since Rockstar dropped that claim from its contentions, Google will not rely on
those prior art references to show anticipation of any other claim. In other words, by Rockstar reducing the scope of its
case by just one claim, that reduced the scope of Google’s anticipation case by a third. Similarly, the obviousness
combinations corresponding to those anticipatory charts have also dropped as a direct result of Rockstar’s claim
narrowing, and the same would occur with a further reduction of references called for by the Model Order.
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In response to your previous email on this subject, this is not a case where Rockstar would have to “consider every
possible combination of the references disclosed.” Google has confirmed several times that it intends to rely on charted
obviousness combinations in Exhibits A and B and not uncharted references. Finally, it remains unclear just what relief
Rockstar intends to seek in its motion.
Best,
Lance
From: John Lahad [mailto:[e-mail]]
Sent: Wednesday, July 02, 2014 11:49 AM
To: Andrea P Roberts; Lance Yang; Justin A. Nelson
Cc: Amanda Bonn; Alexander L. Kaplan; '[e-mail]'; '[e-mail]';
'[e-mail]'; '[e-mail]'; '[e-mail]'; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi
Obuz; John Dolan; Shawn Blackburn; QE-Google-Rockstar; 'James Mark Mann'; 'Andy Tindel'; 'Gregory Blake Thompson'
Subject: RE: Rockstar v. Google

Andrea,
I think my letter was sufficiently clear that agreement on the model order would require
Google to narrow the prior art references/combinations. Accordingly, I strongly disagree with
your position that Rockstar reneged on anything. Rockstar does not agree to moving the date
for 4-2 disclosures and does not agree to an expedited briefing schedule. Note that Rockstar
will be seeking relief from the Court regarding Google’s impermissibly high number of
obviousness combinations.
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: Wednesday, July 02, 2014 12:14 PM
To: John Lahad; Lance Yang; Justin A. Nelson
Cc: Amanda Bonn; Alexander L. Kaplan; '[e-mail]'; '[e-mail]';
'[e-mail]'; '[e-mail]'; '[e-mail]'; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi
Obuz; John Dolan; Shawn Blackburn; QE-Google-Rockstar; 'James Mark Mann'; 'Andy Tindel'; 'Gregory Blake Thompson'
Subject: RE: Rockstar v. Google

John,
Rockstar has changed its position relation to the model order. On June 25, you wrote: “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
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