Rockstar Consortium US LP et al v. Google Inc

Filing 119

REPLY to Response to Motion 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 Google Inc. (Perlson, David)

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.

DEFENDANT GOOGLE INC.’S REPLY IN SUPPORT OF 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

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Google’s motion requests what should be non-controversial in this case: entering of the
Court’s [Model] Order Focusing Patent Claims and Prior Art to Reduce Costs (“Model Order”).
Rockstar does not dispute the salient points of Google’s Motion. That Rockstar has asserted 141
claims against Google. That 141 claims is far too many. That Rockstar will not assert anything
close to 141 claims at trial. And that there is no way the Court and the parties can meaningfully
address the myriad of claim construction issues—there are currently over one hundred terms in
dispute—that arise from this many claims. Thus, it is appropriate for the Court to grant Google’s
motion and enter the Model Order as doing so will benefit the parties and the Court by focusing
the case to a manageable scope.1
Rockstar’s only argument in opposition to entry of the Model Order is based on its
alleged issues with Google’s Invalidity Contentions. (Dkt. No. 116, 8.) That Rockstar has
concerns with the sufficiency of Google’s Invalidity Contentions, however, is not a ground for
denying Google’s motion. Rockstar has separately filed a motion to strike Google’s obviousness
combinations, and Google will address the merits of Rockstar’s motion in opposition thereto.
(Dkt. No. 117.) Google believes that Rockstar’s P.R. 3-1 Infringement Contentions do not
comply with the Local Rules and Google will soon file its own motion to strike, which Rockstar
will presumably oppose. Such disputes are not uncommon in patent litigation. But neither the
Model Order nor the Eastern District of Texas Local Rules Advisory Committee Commentary
Regarding Model Order Focusing Patent Claims and Prior Art to Reduce Costs in any way
1

Rockstar’s claim that Google proposed adoption of the Model Order without
modification only two days before it filed its motion (Dkt. No. 116, 5) is incorrect. Google
raised the issue of the Model Order in correspondence on April 14, June 11, and June 23, and the
parties discussed Google’s proposal during a telephonic meet and confer on June 23. (See Dkt.
No. 117-3.) And, as is clear from Rockstar’s counsel’s June 25 letter (Dkt. No. 105, Ex. D),
Rockstar agreed to jointly request that the Court enter the Model Order. (Cf., Dkt. No. 116, 4-5.)

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suggest that such disputes warrant departure from the Model Order, and they have no relevance
to Google’s motion.
That complaints regarding invalidity contentions do not warrant rejection of the Model
Order is particularly apparent in this case because Rockstar’s purported issue with Google’s
Invalidity Contentions is already dealt with in the Model Order. While Rockstar suggests that
Google has not identified its obviousness contentions with specificity (Dkt. No. 116, 8),
Rockstar’s real objection is to the number of potential obviousness combinations in Google’s
Invalidity Contentions. This is evident from both Rockstar’s repeated reference to the number of
potential obviousness combinations (see e.g. Dkt. No. 116, 3, 8), as well as its rejection of every
attempt by Google to address Rockstar’s purported concerns regarding “specificity.”2 The
Model Order, however, already provides that the patent defendant shall serve a Final Election of
Asserted Prior Art by the date set for service of expert reports by the party with the burden of
proof on an issue. The Final Election shall identify no more than six asserted prior art references
per patent, and no more than a total of 20 references, and each obviousness combination counts
as a separate prior art reference. (General Order No. 13-20) (emphasis added).
Rockstar nevertheless argues that narrowing the number of obviousness combinations at
the Final Election according to the Model Order is too late because that will be two weeks after
2

In particular, Google offered to re-format its obviousness contentions so that it
provides quotes of the specific portions of its obviousness references that disclose the elements
of the asserted claims in its anticipation charts, rather than referring to the tables in Exhibit B to
its Invalidity Contentions. (Dkt. No. 117-3, 3.) Rockstar rejected that proposal. (Id.) Google
further offered to identify no more than five references that Google presently intends to rely on
for each of the six tables in Exhibit B. This amounts to a specific identification of no more 30
references total in these tables. (Dkt. No. 117-6.) Rockstar rejected that proposal as well, saying
the “possible combinations remain unreasonably high.” (Dkt. No. 117-7.) Rockstar also took
issue with the fact that Google reserved the right to rely on other references identified in Exhibit
B as the case evolved, as specifically contemplated by the Model Order. (Dkt. No. 116 at 5) But
Rockstar ignores that Google’s offer would advise Rockstar which obviousness combinations
Google is focused on at this point in the case, so that Rockstar could do the same.

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the close of fact discovery. (Dkt. No. 116, 8.) But the commentary of the Local Rules Advisory
Committee shows it specifically elected to set the deadlines to serve the Final Election of
Asserted Claims and Final Election of Prior Art based on expert discovery deadlines, not fact
discovery because:
[t]he principal object of the final narrowing is lessening the costs associated with
expert witnesses and final preparation of the case for trial. . . . The timing of the
final election also gives the parties maximum opportunity to consider discovery
and claim construction in making their election, and may move the presentation of
any discovery disputes to points earlier in the case.
(Eastern District of Texas Local Rules Advisory Committee Commentary Regarding Model
Order Focusing Patent Claims and Prior Art to Reduce Costs, 5) (emphasis added). The
Committee further noted: “[n]ot imposing this requirement for purposes of the preliminary
election gives defendants increased flexibility to develop the appropriate combinations as
discovery proceeds.” (Id. at 6.) Rockstar’s effort to modify the Model Order by requiring
Google to reduce the number of obviousness combinations first directly contradicts the goals of
the Local Rules Advisory Committee. Indeed, Rockstar is inappropriately seeking to foreclose
Google from having the very “flexibility to develop the appropriate combinations as discovery
proceeds” that the Model Order contemplates.
Moreover, the number of obviousness combinations identified in Google’s Invalidity
Contentions is a function of the number of claims asserted by Rockstar. Combinations would
necessarily go down when Rockstar goes from 141 claims to no more than 32 claims, as it would
under the Model Order. And if the Model Order is entered, Google would be further required to
reduce the number of prior art references when it serves its Preliminary Election of Asserted
Prior Art to no more than 40 total, and then again to no more than 20 total in the Final Election
of Asserted Prior Art. (General Order 13-20.)

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In short, Rockstar’s complaints regarding Google’s Invalidity Contentions do not warrant
refusing to enter the Model Order. Rather, Rockstar’s assertion of an unreasonably high number
of claims necessitates entry of the Model Order, which will require both parties to focus the
patent claims and reduce costs.3
For the foregoing reasons, Google requests that its motion be granted.

3

In addition to requesting that the Court enter the Model Order, Google also asked the
Court to order Rockstar to reduce the number of asserted claims to 15 claims per patent and no
more than 50 total by July 14, 2014, or as soon thereafter as this matter can be heard. Contrary
to Rockstar’s arguments, this request is not mooted by the fact that July 14 passed because
Google asked for Rockstar to make this reduction “as soon thereafter as this matter can be
heard.” Given that Rockstar does not dispute that it is currently asserting over 4.5 times as many
claims as permitted under the Model Order, the parties and the Court would benefit from an
immediate reduction in the number of asserted claims. Nevertheless, in light of the current date
and that the Model Order would require Rockstar to reduce the number of asserted claims by
September 2, Google is focused on the Court entering the Model Order. Google had also asked
that the Court extend the deadline for the parties to comply with P.R. 4-2 to July 18. As the
parties have already complied with P.R. 4-2, that issue is moot.

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DATED: July 30, 2014

QUINN EMANUEL URQUHART & SULLIVAN, LLP
By

/s/ David A. Perlson
J. Mark Mann
State Bar No. 12926150
G. Blake Thompson
State Bar No. 24042033
MANN | TINDEL | THOMPSON
300 West Main Street
Henderson, Texas 75652
[phone]
[phone] (fax)
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Charles K. Verhoeven
[e-mail]
David A. Perlson
[e-mail]
50 California Street, 22nd Floor
San Francisco, California 94111-4788
Telephone: [phone]
Facsimile: [phone]
Attorneys for Google Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a)(3) on July 30, 2014.
/s/ Andrea Pallios Roberts
Andrea Pallios Roberts

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