Rockstar Consortium US LP et al v. Google Inc

Filing 117

MOTION to Strike Defendant Google Inc.'s Deficient Obviousness Disclosure Under Patent Rule 3-3(B) by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Affidavit of John Lahad, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 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’ MOTION TO STRIKE
DEFENDANT GOOGLE INC.’S DEFICIENT OBVIOUSNESS DISCLOSURE
UNDER PATENT RULE 3-3(B)

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In 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), Judge Folsom held that when it comes to an accused infringer’s
obviousness defense, “Patent Rule 3-3(b) requires disclosures of combinations, not just
references, and thus does not expect the patentee to consider every possible combination of the
references cited.” (Emphasis added). In this case, Defendant Google Inc. (“Google”) shirks its
disclosure obligations, fails to identify a reasonable number of prior art combinations, and wants
Plaintiffs Rockstar Consortium US LP and Netstar Technologies LLC (“Rockstar”) to “consider
every possible combination of the references cited,” which numbers in the millions.
Further, instead of articulating a specific motivation to combine each combination as
required by Rule 3-3(b) – which is nearly impossible under Google’s flawed approach – Google
relies on boilerplate language that any one of the millions of combinations “would have yielded
predictable results” and “would have improved the primary or obviousness references in the
same way.”
The Patent Rules’ disclosure requirements were designed to avoid this type of
obviousness by ambush, and Google’s deficient disclosure significantly prejudices Rockstar’s
prosecution of this case. Rockstar should not be made to go through discovery in the shadow of
millions (or even thousands) of potential obviousness combinations only to have Google’s expert
select a small number of those combinations when opining on validity of the patents-in-suit.
Because Google’s obviousness disclosure does not provide the notice required by Patent Rule 33(b) and significantly prejudices Rockstar, it should be struck.
I.

Factual Background
In its May 23, 2014 Invalidity Contentions, Google provided claim charts for 39

allegedly anticipatory references.

Google also appended “Exhibit B” to its Invalidity

Contentions. Exhibit B contains seven tables, Table B1 to Table B7, that list several prior art
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references and include a handful of quotations from each reference. Exhibit 1 (Exhibit B to
Google’s Invalidity Contentions).1 According to Google, the references in these Exhibit B tables
can be combined – in any number of ways – with any one of the 39 anticipatory references to
form various obviousness combinations. As Google explains in its preamble to each of 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). Google has thus taken the position it can combine Anticipatory
Reference A1 with Obviousness References B1, B2, and B3; or A1 with B1, B4, and B5; or A1
with B1, B2, B3, B4, and B5; and so forth to fashion any obviousness combination it wants to
assert in this case and at trial.

Google’s flawed approach results in millions of potential

obviousness combinations.2

1

Unless otherwise noted, all exhibit citations are to the exhibits attached to the declaration of
John P. Lahad.
2

For example, Table B1 lists 28 individual references. Given 28 individual references and using
n!
the formula
where n equals the number to choose from and r equals the number
(n − r )!(r!)
chosen, there are 378 possible combinations of two references; 20,475 combinations of four
references; and 13,123,110 possible combinations of ten references. This data reflects the
combinations of references from a single table in Exhibit B. Adding individual references from
other tables increases the number of possible combinations by several orders of magnitude.
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2

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 merely reducing the number of asserted claims
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.
Exhibit 3 (Lahad June 25 letter to Roberts) at 2. In the spirit of compromise, Rockstar proposed
that “Google identify 50 references by September 16, 2014, wherein each obviousness
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combination counts as a separate prior art reference, and describe with additional clarity the
relevant motivations to combine.” Id. at 3. Google declined, and again relied on its contention
that Rockstar had asserted too many claims. Exhibit 7 (Yang June 30 letter to Lahad) at 1.
On July 2, 2014, Google advised Rockstar of its intent to withdraw 12 of its asserted
anticipatory references in response to Rockstar’s withdrawal of one of the patents-in-suit.
Exhibit 4 (Yang July 2 email to Lahad). Google argued that this demonstrated the effect of
reducing claims on the number of prior art combinations. Id. 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 on July 10, 2014, counsel
for Google offered to submit a proposal to address Rockstar’s concerns with Google’s
obviousness disclosure.
Eight days 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 5 (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 6 (Lahad July 21 email to Yang).

Rockstar explained that Google’s proposal would not cure the prejudice and provide the required
notice. Id.
II.

Legal Standard
It is well established that “Local Patent Rules are a valid exercise of the court’s authority

to manage its docket in accordance with the Federal Rules of Civil Procedure.” Finisar Corp. v.
DirecTV Group, Inc., 424 F. Supp. 2d 896, 899 (E.D. Tex. 2006). In Cummins-Allison Corp. v.
SBM Corp., No. 9:07-cv-196, 2009 WL 763926, at *1 (E.D. Tex. Mar. 19, 2009), the court
explained that the purpose of the Patent Rules is to “further the goal of full, timely discovery,
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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.” See
also Realtime Data, LLC v. Packeteer, Inc., No. 6:08-cv-144, 2009 WL 4782062, at *2 (E.D.
Tex. Dec. 8, 2009) (citing Cummins-Allison).
Likewise, the purpose of P.R. 3-3 is to place the plaintiff on notice of potentially
invalidating art that a defendant will assert in their case and at trial. Id.; see also CumminsAllison, 2009 WL 763926, at *4. P.R. 3-3(b) requires:
Not later than 45 days after service upon it of the “Disclosure of Asserted Claims
and Infringement Contentions,” each party opposing a claim of patent
infringement, shall serve on all parties its “Invalidity Contentions” which must
contain the following information:
…
(b) Whether each item of prior art anticipates each asserted claim or renders it
obvious. If a combination of items of prior art makes a claim obvious, each such
combination, and the motivation to combine such items, must be identified.
As Judge Clark warned, “[m]ere ‘suggestion’ does not suffice.” Cummins-Allison, 2009 WL
763926 at *4.
III.

Google’s Obviousness Disclosure Does Not Comply with Patent Rule 3-3(b)
Patent Rule 3-3(b) requires a party challenging the validity of a patent to provide a

complete and specific disclosure: “If a combination of items of prior art makes a claim obvious,
each such combination, and the motivation to combine such items, must be identified.”
(Emphasis added). It is not sufficient notice to “identify” millions or even thousands of possible
combinations, which is what Google has done.
Google’s failure to disclose obviousness combinations significantly prejudices Rockstar.
How can Rockstar be expected to conduct discovery into Google’s invalidity case without notice
of the combinations in play? To date, Google has issued several third-party subpoenas, and
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likely will issue dozens more, regarding validity. Will the subjects of these subpoenas be part of
Google’s obviousness case, and if so, how? The disclosures required by P.R. 3-3(b) are intended
to answer these questions.

Google’s disclosures do not.

This hide-the-ball approach to

obviousness does not comply with the letter and spirit of P.R. 3-3(b), and Google’s Exhibit B
should be struck.
The motivation behind Google’s approach is no secret.

By disclosing two sets of

references and claiming that one of ordinary skill in the art would be motivated to combine a
reference in the first set with any one or more references in second set, Google (and its expert)
seeks to reserve for later use any combination it sees fit.

When later challenged on a

combination, Google will point to this purported disclosure and argue that Rockstar had notice of
the combination.3 But notice of millions of combinations is no notice at all.
In LML Patent Corp., the plaintiff moved to strike 28 previously-unidentified prior art
combinations.

Defendant responded that the challenged combinations were “merely new

combinations of previously disclosed references.” 2011 WL 5158285 at *1. Defendant added
that the plaintiff would suffer no prejudice because it was “already familiar with the references at
issue” and “had an opportunity to take discovery regarding them.” Id. Citing P.R. 3-3(b), Judge
Folsom rejected this argument:

3

Google’s obfuscation of the relevant combinations until later in litigation would not be unique
to this case. In Superspeed, LLC v. Google Inc., pending in the Southern District of Texas
before Judge Lake, the plaintiff moved to strike portions of Google’s expert’s invalidity report
because he “ignores the majority of references cited in Google’s contentions and instead devotes
a substantial section of his report to arguments about such previously undisclosed combinations,
picking and choosing components from disparate sections of the Invalidity Disclosures and
arguing that together they render obvious certain claims in the Plaintiff’s patents.” SuperSpeed’s
Motion at 1, SuperSpeed, LLC v. Google Inc., No. 4:12-cv-1688 (S.D. Tex. July 7, 2014), ECF
No. 160. Rockstar seeks to avoid this exact situation by bringing this motion.
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On one hand, Defendants served Plaintiff with their new combinations more than
three months before the trial setting, which would appear to allow Plaintiff
sufficient time to analyze them and respond before trial. On the other hand,
Patent Rule 3–3(b) requires disclosure of combinations, not just references, and
thus does not expect the patentee to consider every possible combination of the
references disclosed. P.R. 3–3(b) (“If a combination of items of prior art makes a
claim obvious, each such combination, and the motivation to combine such items,
must be identified.”).
Id. at *4. The court added, “Defendants present no authority holding that new combinations are
permissible simply because the constituent references were previously disclosed.” Id. at *6.
Here, as the defendant did in LML Patent Corp., Google discloses several constituent references
and wants Rockstar to consider every possible combination of them. As Judge Folsom found,
this approach does not comply with P.R. 3-3(b).
In Realtime Data, the plaintiff similarly sought to preclude the defendant’s reliance on
previously-undisclosed obviousness combinations. The court found that “invalidity theories
relying on these references violate the express requirements and underlying purpose of Patent
Rule 3-3.” 2009 WL 4782062 at *3.

The court rejected the defendant’s argument that an

appendix listing over 500 prior art references and a clause purporting to “reserve the right to
combine references” found in that appendix provided adequate notice of potential combinations.
Id. According to the court, “this type of disclosure cannot serve as sufficient notice because
Citrix disclosed over 500 prior art references in Appendix J, resulting in an impossibly high
number of combinations to reasonably serve the notice function contemplated by the Patent
Rules.” (Emphasis added). Like the Realtime Data defendant’s disclosure, Google’s Exhibit B
fails to adequately identify specific obviousness combinations, results in an impermissibly high
number of combinations, and fails to reasonably serve the notice function of P.R. 3-3(b).

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In correspondence on this issue, Google tried to distinguish Realtime Data on the grounds
that it “dealt with invalidity defenses raised after the close of expert discovery.” Exhibit 7 (Yang
June 30 letter to Lahad). This distinction, if it is one, is immaterial. The court specifically
addressed the obligations imposed by P.R. 3-3(b) and found them unmet by “an impossibly high
number of combinations.”
Google also sought to distinguish Realtime Data by arguing that the “references in
Realtime were listed in an appendix ‘without any explanation of how the references anticipate or
render obvious the asserted claims.’” Id. Regardless of any absence of explanations, the court
unambiguously found that the failure to enumerate the obviousness combinations that would be
in play warranted exclusion. The court could not have been clearer: “Despite narrowing the
number of relevant references, however, the Court finds that it remains difficult, if not
impossible, to assess which combinations Citrix intends to assert against the specific claims at
issue here.” Realtime Data, 2009 WL 4782062 at n.7.
The holdings of LML Patent Corp. and Realtime Data confirm the inadequacy and noncompliance of Google’s obviousness disclosures under P.R. 3-3(b). Accordingly, this Court
should strike Google’s Exhibit B.
IV.

Google’s Boilerplate Motivations to Combine Do Not Suffice
Google prefaces each table in Exhibit B with the same preamble:
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 B[], 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 B[] references listed below
because: it would have yielded predictable results; using the techniques of the
Table B[] references would have improved the primary or obviousness references
in the same way; and applying the techniques of the Table B[] references to
improve primary or obviousness references would have yielded predictable
results.

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Exhibit 1 at 4, 28, 53, 81, 151, 207, and 219. Thus, according to Google, regardless of the scope
and content of the references combined, regardless of the number of references combined, and
regardless of the claims against which the combination is asserted, the motivation to combine is
identical. This, too, does not accord with P.R. 3-3(b). P.R. 3-3(b) requires identification of
motivations to combine with the same specificity as the actual combinations. Realtime Data,
2009 WL 4782062 at *2 (describing the requirements of P.R. 3-3 to include “the identity of the
combination of items of prior art that makes a claim obvious and the motivation to combine such
items”) (emphasis added). This further supports striking Google’s deficient disclosure.
V.

Google’s Proposal Does Not Cure Its Defective Disclosure
In response to Rockstar’s complaints, Google tacitly acknowledged the deficiency in its

approach and offered to reduce the number of references in its Exhibit B tables. Yet even with
this reduction in references, Google’s proposal still fails to identify sufficiently the prior art
combinations Google may assert. Under conservative estimates, Google’s proposal results in
several thousand combinations, which is still far too numerous to provide the required notice.
Indeed, that Google’s proposal does not cure its defective disclosure speaks volumes about the
intrinsic inadequacy of its approach.
Moreover, Google’s “narrowing” proposal has no teeth because Google refuses to be
bound by its selection. Instead, Google “reserve[s] its right to rely on the other references
identified in Exhibit B as the case evolves.” In other words, Google wishes to retain the option
to resurrect any unselected reference and cobble together a new combination at its whim. In
Realtime Data, the court rejected this end run around the rules:
The Court does not find that reserving the right to combine any charted prior art
references offers a plaintiff sufficient notice to adequately rebut a defendant’s
largely undisclosed invalidity theories. Language preserving a defendant an

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opportunity to later rely upon undisclosed combinations does not “clearly
suggest” the combination in the manner required by Patent Rule 3-3.
2009 WL 4782062 at *3 (citing Cummins-Allison, 2009 WL 763926, at *3-4); see also LML
Patent Corp., 2011 WL 5158285 at *6 (citing Realtime Data).
VI.

Conclusion
Google’s approach to obviousness indisputably does not comply with P.R. 3-3(b). At

each turn, Google has argued that the number of asserted claims excuses its failure to comply.
However, this Court’s “no-excuses” policy means that Google must comply with its discovery
obligations regardless of its views on the number of asserted claims. Google repeatedly has
refused to do so. Accordingly, Rockstar respectfully requests that this Court strike Exhibit B to
Google’s May 23, 2014 Invalidity Contentions.
DATED: July 23, 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]

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[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]
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 CONFERENCE
I hereby certify that between June 18 and July 21, 2014 counsel for Plaintiffs (Justin
Nelson, John Lahad, Amanda Bonn, Jeff Rambin, Elizabeth Derieux) repeatedly met and
conferred via email and telephone with counsel for Defendant (David Perlson, Andrea Roberts,
Lance Yang) regarding the issue presented in this Motion. I further certify that lead and local
counsel for Plaintiffs (Max Tribble, John Lahad, Jeff Rambin) met and conferred in person with

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lead and local counsel for Defendant (Charles Verhoeven, Andrea Roberts, Blake Thompson) on
July 10, 2014. The parties were unable to reach agreement on the issue presented in this Motion.
/s/ John P. Lahad
John P. Lahad

CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to
electronic service are being served this 23rd 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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