Rockstar Consortium US LP et al v. Google Inc
MOTION to Strike Plaintiffs' Patent Rule 3-1 Infringement Contentions by Google Inc. Responses due by 8/25/2014 (Attachments: # 1 Affidavit Declaration of Andrea Pallios Roberts, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 12, # 12 Exhibit 13, # 13 Exhibit 14, # 14 Exhibit 15, # 15 Exhibit 16, # 16 Exhibit 17, # 17 Text of Proposed Order)(Perlson, David)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES LLC,
Civil Action No. 13-cv-00893-RG
JURY TRIAL DEMANDED
GOOGLE INC.’S MEMORANDUM IN SUPPORT OF ITS MOTION TO STRIKE
PLAINTIFFS’ PATENT RULE 3-1 INFRINGEMENT CONTENTIONS
Rockstar’s Infringement Contentions are insufficient under Patent Rule 3-1 (“P.R. 3-1”)
because they fail to identify where each and every element of each asserted claim is allegedly
found in the Accused Instrumentalities.
Rockstar’s contentions are filled with prejudicial
omissions: they parrot claim language, cite documents without explaining their relevance, and
incorporate bare screen shots – without identifying the portions of those screens on which
Rockstar relies and without explaining how anything depicted on the screens allegedly meets the
recited limitations. Courts have held these very omissions show a failure to comply with the
Patent Rules. Rockstar’s Infringement Contentions also improperly mix together documents
directed to different Accused Instrumentalities, rather than map a single Accused Instrumentality
to the asserted claims. Rockstar’s contentions span more than 1,200 pages because they cover
more than 140 asserted claims, yet they do not provide Google notice of what is specifically
accused of meeting the limitations of the claims. Despite Google’s repeated requests that it
supplement its contentions, Rockstar refuses to comply with P.R. 3-1.
Because Rockstar has refused to provide Google with meaningful notice of Rockstar’s
infringement theories, Google requests that the Court strike Rockstar’s Infringement
In the alternative, Google requests that the Court compel Rockstar to serve
amended contentions that comply with P.R. 3-1 within 10 days of this Court’s order, allow
Google to amend its responsive disclosures as appropriate, and continue the trial date.
ROCKSTAR SERVES DEFICIENT INFRINGEMENT CONTENTIONS AND
REFUSES TO SUPPLEMENT THEM.
Plaintiffs Rockstar Consortium US LP and Netstar Technologies LLC (“Rockstar”) filed
this lawsuit on October 31, 2013, accusing Defendant Google Inc. (“Google”) of infringing U.S.
Patent Nos. 6,098,0651; 7,236,969; 7,469,245; 7,672,970; 7,895,178; 7,895,183; and 7,933,883
(the “patents-in-suit”) which are directed to an Associative Search Engine. On March 24, 2014,
Rockstar served its P.R. 3-1 Disclosure of Asserted Claims and Infringement Contentions
(“Infringement Contentions”). (Dkt. No. 40.)
On April 14, Google complained to Rockstar that its Infringement Contentions do not
provide the required specificity to give Google notice of what Rockstar contends infringes the
asserted claims. (Ex. 1 (Roberts 4/14/14 Email).) Google requested that Rockstar provide more
specificity in order to comply with Rule 3-1. (Id.) Rockstar refused to do so, contending that its
contentions “name each instrumentality currently accused of infringement and provide ample
evidence ‘identifying specifically where each element of each asserted claim is found within
each Accused Instrumentality.’” (Ex. 2 (Lahad 4/18/14 Email) (quoting Rule 3-1).)
GOOGLE PRODUCES EXTENSIVE TECHNICAL DOCUMENTATION, BUT
ROCKSTAR CONTINUES TO REFUSE TO SUPPLEMENT.
Google completed its technical document production pursuant to Patent Rule 3-4(a) on
May 20, 2014. (Dkt. No. 75.) Google went over and above P.R. 3-4(a)’s requirement to produce
documents “sufficient to show” the operation of the Accused Instrumentalities, producing more
than 180,000 pages of technical documentation. Thereafter, Rockstar complained that Google’s
Patent Rule 3-3 Invalidity Contentions did not comply with the Rules. (Ex. 3 (Lahad 6/13/14
Email.) Google responded, among other ways, that its Invalidity Contentions provided more
specificity than Rockstar’s own Infringement Contentions, which Rockstar maintains comply
with the Rules, and refuses to supplement. (Ex. 4 (Roberts 6/16/14 Email).) In a letter of June
25, Rockstar disagreed that Google’s Invalidity Contentions provide sufficient detail. (Ex. 5
(Lahad 6/25/14 Letter).) Rockstar contended that Google “should have provided further detail in
Rockstar is no longer asserting infringement of the ’065 patent.
its DoubleClick and NetGravity charts,” and that “[t]he burden is not on Rockstar to cite
examples of something it does not understand.” (Id. at 4.)
The parties met and conferred regarding Google’s Invalidity Contentions and Rockstar’s
Infringement Contentions on June 19, in letters dated June 23, June 25, and June 30, and in
person on July 10, 2014, and Google explained the deficiencies in Rockstar’s disclosure. (See,
e.g., Ex. 6 (Roberts 6/23/14 Letter) at 4-5, Ex. 7 (Yang 6/30/14 Letter) at 3.) In addition to
describing the overarching deficiencies, Google pointed Rockstar to specific, prejudicial
examples. For instance, Google pointed out that Rockstar’s chart for claim 1 of the ’969 patent
does not explain what in Google’s systems allegedly constitute the “search request” or the
“search argument,” which are distinct claim limitations. (Ex. 6 (Roberts 6/23/14 Letter) at 4.)
Rockstar’s chart for claim 1 of the ’245 patent likewise does not explain the difference between
the “user preference input” and the “user preference data,” or how Rockstar contends the latter is
created based on the former, as required by the claim. (Id.) Similarly, Rockstar’s chart for claim
1 of the ’183 patent does not identify what the “first” and “second display portion of a display of
the data processing device” are, leaving Google to speculate whether Rockstar contends these
“display portions” are windows, physical portions of one screen, two different screens, or
something else. (Id.) Google noted that Rockstar’s infringement contentions are rife with these
Rockstar refused Google’s multiple requests that Rockstar supplement its deficient
contentions. (See, e.g., Ex. 5 (Lahad 6/25/14 Letter) at 5.) Rockstar has never provided a
substantive response to the prejudicial omissions Google identified. Instead, Rockstar has said
that it will not supplement its contentions until required to do so by the Discovery Order. (Ex. 6
(Roberts 6/23/14 Letter) at 4; Dkt. No. 69.)
THE PATENT RULES REQUIRE A PATENT HOLDER TO PROVIDE NOTICE
OF WHAT IS SPECIFICALLY ACCUSED.
Under the express requirements of Rule 3-1(c), patentees must produce a “chart
identifying specifically where each element of each asserted claim is found within each Accused
Instrumentality.” P.R. 3-1(c) (emphasis added). A chart “must particularly point to the portion
of the Accused Product which is asserted to perform the function described in each claim
limitation” such that defendants have “adequate notice and information with which to litigate
their cases.” Linex Techs., Inc. v. Belkin Int’l, Inc., 628 F. Supp. 2d 703, 706, 714 (E.D. Tex.
2008). Patentees are also required to be “as specific as possible” in identifying the accused
products, P.R. 3-1(b), and must disclose whether any element is claimed to be present under the
doctrine of equivalents. P.R. 3-1(d). P.R. 3-1 contentions “must be reasonably precise and
detailed . . . to provide a defendant with adequate notice of the plaintiff’s theories of
infringement.” UltimatePointer LLC v. Nintendo Co., Nos. 11-cv-496, 11-cv-571, 2013 WL
6253767, at *2 (E.D. Tex. Dec. 3, 2013) (quoting Realtime Data, LLC v. Packeteer, Inc., No. 08cv-144, 2009 WL 2590101, at *5 (E.D. Tex. Aug. 18, 2009)); see also Computer Acceleration
Corp. v. Microsoft Corp., 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007) (the Patent Rules are meant
to “provide all parties with adequate notice and information with which to litigate their cases”).
ROCKSTAR’S INFRINGEMENT CONTENTIONS DO NOT COMPLY WITH
PATENT RULE 3-1.
Rockstar’s Claim Charts Do Not “Identify Specifically Where Each
Element of Each Asserted Claim Is Found Within Each Accused
Instrumentality,” In Violation Of Rule 3-1(c).
Rockstar’s Infringement Contentions do not put Google on notice of what Rockstar
claims infringes the asserted claims, nor do they explain how the Accused Instrumentalities
allegedly infringe the asserted claims. Several courts have held infringement contentions like
Rockstar’s to be inadequate. For example, courts have held that a patentee’s infringement
contentions are inadequate where they “incorporate screen shots in lieu of explanatory text,”
such that the defendant must “guess what particular system (or aspect of a particular system)
[plaintiff] is accusing of meeting each limitation.” Digital Reg. of Tex., LLC v. Adobe Sys. Inc.,
No. 12-cv-01971, 2013 WL 3361241, at *3-4 (N.D. Cal. July 3, 2013); see also Droplets, Inc. v.
Amazon.com, No. C12-03733, 2013 WL 1563256, at *3-5 (N.D. Cal. Apr. 12, 2013) (holding
that infringement contentions comprised of many pages of screen shots for each limitation “fail
to provide the factual basis of the [patentee’s] contentions” without an explanation as to “which
language from the claim limitations corresponds to the selected . . . screen shots”); Global
Sessions LP v. Travelocity.com LP, No. 10-cv-671, 2012 WL 1903903, at *7 (E.D. Tex. May 25,
2012) (“Simply charting www.amazon.com as a representative example to illustrate specific
theories of infringement for multiple websites is insufficient . . . .”). Courts have also held
contentions are inadequate where they merely parrot the claim language. See, e.g., H-W Tech.,
L.C. v. Apple, Inc., No. 11-cv-651, 2012 WL 3650597, at *4, *7 (E.D. Tex. Aug. 2, 2012)
(ordering patentee to supplement infringement contentions, in part because the existing
contentions “merely recite[d] language from the claims at issue without providing any support
for some of their elements”). Likewise, courts have held contentions are inadequate where they
purport to cover an uncharted product simply because they cover an allegedly similar charted
Computer Acceleration Corp., 503 F. Supp. at 823, 825 (striking infringement
contentions for accused product A as inadequate under P.R. 3-1, where patentee charted only
accused product B and claimed that that chart covered accused product A as well).
Rockstar’s contentions commit all of the above offenses. First, they are comprised
almost entirely of screen shots. For example, the screen shots corresponding to the limitation
“receiving, from the user, a search request including a search argument corresponding to the
desired information,” recited in claim 1 of the ‘969 patent, depict text entered on
www.google.com, on a mobile handset running Android 4.2, on a tablet device running Android
4.0.2, on AOL, on the Google Search Application running on iOS 7.1, on YouTube, on Google
custom search, and in “GET request of Advanced Search.” (Ex. 12 (’969 chart) at 2-9.) These
bare screen shots fail to identify what Rockstar contends is “a search request” or “a search
argument;” indeed, Rockstar makes no attempt whatsoever to point out, highlight, or annotate
specifically what on these screens allegedly constitutes “a search request” or “a search
argument.” By way of example, two of these bare screen shots are pictured below:
(Id. at 3 and 8.)
Contrary to the requirement to “identify specifically” each accused element, Rockstar’s
disclosure withholds any indication of what portions of these screens it intends to rely upon.
Because Rockstar makes no attempt to explain how the screen shots demonstrate that the claim
limitation is satisfied, nor to identify what the “search request” and “search argument” are
alleged to be, Google cannot determine if Rockstar contends the “search argument” is a query, a
word in the query, or something else, and where, if at all, the recited “search request” is shown.
Rockstar’s failure to comply with the Patent Rules requirements is pervasive. For the
’969 claim chart, more than 180 out of 217 pages contain only screen shots. (Ex. 12 (’969
chart).) The screen shots Rockstar relies on for the ‘969 patent also depict, among other things,
Google, YouTube, and Chrome customer support web pages relating to targeted advertising, and
official Google blog posts regarding the same.
The screen shots are mix-and-match
combinations of separate applications and devices, which makes it even less clear how Rockstar
contends that “each element of each asserted claim is found within each Accused
Instrumentality.” (P.R. 3-1(c) (emphasis added); Ex. 12 (’969 chart), passim.)
The ’245 claim chart has the same flaws. More than 110 of 148 pages contain only
screen shots, and with respect to claim 1, Rockstar’s contentions allege that eight different screen
shots satisfy the limitation “creating user preference data based upon the user preference input.”
(Ex. 13 (’245 Chart) at 10-17.) The screen shots depict Google Search History, a google.com
tutorial on how search works, a Google support web page on ad settings, a Google blog post on
ad transparency, Settings for Google Ads on google.com, and instructions on creating one’s own
Google account. (Id.) Two examples of Rockstar’s bare screen shots which completely fail to
identify the elements it contends correspond to “creating user preference data based upon the
user preference input,” are pictured below:
(Id. at 11 and 13.)
Rockstar deliberately avoids identifying where on these screen shots there is “user
preference input” and “user preference data.” And Rockstar does not explain how the screen
shots demonstrate that the “creating” limitation in the claim is satisfied. The ’245 chart also uses
screen shots mixed and matched from discrete applications and devices. Again, Rockstar does
not provide notice of how it contends “each element of each asserted claim is found within each
Accused Instrumentality.” P.R. 3-1(c).
The charts for the other patents-in-suit are similarly deficient. (Exs. 14-17 (all other
claim charts.) It is well-settled law that Rockstar’s disclosure fails to comply with P.R. 3-1, and
the Court should strike the deficient contentions.
Rockstar Has Not Made An Identification Of The Accused Instrumentalities
That Is “As Specific As Possible” As Required By Rule 3-1(b).
Under the Patent Rules, Rockstar must be “as specific as possible” in indentifying the
accused products. P.R. 3-1(b). Rockstar fails to meet this standard. For instance, as to Claim 1
of the ’969 patent, Rockstar broadly alleges the following:
Google’s advertising services and applications perform the steps of the claimed
method. The infringing services and applications include but are not limited to Google
Ads, Google AdWords, and Google AdWords Express (or similar functionality) used
in conjunction with google.com, the Google Search app, the Android search bar,
Google custom search, Google premium search services, youtube.com, Google search
services provided to third party websites such as Custom Search Services or AdSense
for Search, and any Google-owned property that matches advertisements based in part
on a received search term (hereinafter the “Accused Instrumentalities”).
(Ex. 12 (’969 chart) at 1.) The allegations are nearly identical for Claim 1 of each of the other
patent-in-suit. (Exs. 13-17 (all other claim charts) at 1.) “Google Ads” is an extremely broad
and vague reference. Google’s advertising system is very complex and comprised of many
different functionalities. Rockstar’s ambiguous allegations improperly place on Google the
burden of determining what functionalities in Google’s complex systems Rockstar may elect to
Rockstar’s discovery demands relating to these allegations further exemplify such
Rockstar has requested that Google “produce all source code relating to
functionalities identified in Plaintiffs’ infringement contentions, including but not limited to
source code relating to AdWords, AdSense, AdServer (release software), GWS (Google Web
Server), GFE (Google Front End), Google Search Request and Google Search Response
Objections, Google and Double-Click cookies, and search ranking, and any other source code
relating to functionalities identified in Plaintiffs’ infringement contentions.” (Ex. 8 (Bonn 7/2/14
Email).) Google asked Rockstar weeks ago for an explanation of why it believes all such code is
relevant (Ex. 9 (7/3/14 Roberts Email)) – for example, AdSense is not even accused – but
Rockstar has not provided an explanation. The Patent Rules are intended to foreclose this sort of
catch-all identification of accused products. See Keranos, LLC v. Silicon Storage Tech., Inc.,
No. 13-cv-17, 2013 WL 5763738, at *3 (E.D. Tex. Aug. 5, 2013) (denying plaintiff’s motion for
leave to amend infringement contention, and stating, “Plaintiff chose to list a handful of
exemplar products and then demand that Defendants disclose additional products. But the burden
is on Plaintiff, not Defendants, to search for and identify infringing products to the extent
possible based on publically available information.”).
Rockstar Makes Impermissible Blanket Assertions Regarding Infringement
Under The Doctrine Of Equivalents, In Violation Of P.R. 3-1(d).
Patentees cannot rely on blanket assertions that, to the extent they cannot prove literal
infringement, every limitation of every claim is present under the doctrine of equivalents. See,
e.g., Ameranth, Inc. v. Pizza Hut, Inc., No. 12-cv-729, 2013 WL 3894880, at *2-9 (S.D. Cal. July
26, 2013) (holding that such generalized contentions were insufficient to “alert the alleged
infringer which theories the patentee believes its pre-filing investigation supports”). Each of
Rockstar’s claim charts states, “In the event that a claim element is deemed to be missing under a
literal infringement analysis (e.g., due to claim construction), Rockstar reserves the right to
demonstrate the presence of a substantial equivalent of such an element and to pursue
infringement under the doctrine of equivalents.” (Exs. 12-17 (all claim charts) at 1.)
blanket allegations of potential infringement by equivalents – without so much as an attempt to
claim there is evidence supporting the allegations – is improper. Under the Patent Rules, claim
charts must show “[w]hether each element of each asserted claim is claimed to be literally
present or present under the doctrine of equivalents in the Accused Instrumentality.” P.R. 3-1(d)
(emphasis added); see also Ameranth, 2013 WL 3894880, at *2-9; ICON Internet Competence
Network B.V. v. Travelocity.com LP, No. 11-cv-01131, 2013 WL655024, at *10-11 (N.D. Tex.
Feb. 22, 2013) (boilerplate doctrine of equivalents contentions inadequate); Schutz Container
Sys., Inc. v. Mauser Corp., No. 09-cv-3609, 2010 WL 2408983, at *2 (N.D. Ga. June 11, 2010)
(holding that if plaintiff wants to assert a claim under the doctrine of equivalents, it must amend
its “boilerplate” contentions “to assert such a claim on a limitation-by-limitation basis”). The
Court should strike Rockstar’s contentions under the doctrine of equivalents.
THE COURT SHOULD STRIKE ROCKSTAR’S DEFICIENT CONTENTIONS
FOR FAILURE TO COMPLY WITH PATENT RULE 3-1.
In deciding whether infringement contentions should be struck, this Court considers the
following factors: “(1) the reason for the delay and whether the party has been diligent; (2) the
importance of what the court is excluding and the availability of lesser sanctions; (3) the danger
of unfair prejudice; and (4) the availability of a continuance and the potential impact of a delay
on judicial proceedings.” H-W Tech., 2012 WL 3650597 at *6 (citing Computer Acceleration
Corp., 503 F. Supp. 2d at 822). Here, all four factors weigh in favor of striking Rockstar’s
Rockstar Has No Explanation For Delay, And Has Not Been Diligent In
Providing Or Supplementing Its Infringement Contentions.
Rockstar’s heavy reliance on bare screen shots and its refusal to supplement these with a
disclosure of how specific products practice specific claim limitations is unexcused. Rockstar
has no explanation for the delay in providing contentions that comply with the Patent Rules.
Indeed, Rockstar’s repeated use of bare screen shots demonstrates it has deliberately withheld the
disclosure required by the Patent Rules. Rockstar could have, but chose not to, point out,
highlight, or annotate specific portions of those documents it intends to rely on. It could have,
but chose not to, explain how what is depicted allegedly meets the recited limitations.
Rockstar’s failure to explain how it contends Google practices each limitation of the
asserted claims is not excused by the fact that Rockstar did not initially have access to Google’s
confidential technical documentation. See, e.g., Connectel, LLC v. Cisco Sys., Inc., 391 F. Supp.
2d 526, 527-28 (E.D. Tex. 2005) (“‘The Patent Rules demonstrate high expectations as to
plaintiffs’ preparedness before bringing suit, requiring plaintiffs to disclose their preliminary
infringement contentions before discovery has even begun.’ . . . Plaintiffs are expected to
rigorously analyze all publicly available information before bringing suit and must explain with
great detail their theories of infringement.”) (citation omitted). Moreover, even if Rockstar’s
vague contentions could have somehow been justified at the outset of the case, Google produced
more than 180,000 pages of technical documents over two months ago. Thus, Rockstar cannot
complain that it needs access to confidential information to remedy its deficient disclosure. But
Rockstar still refuses to provide a single word in response to Google’s numerous examples of
To the extent that Rockstar has offered any “explanation” for its delay, it relies on
provisions of the Discovery Order addressing production of source code.
(Ex. 6 (Roberts
6/23/14 Letter) at 4; Dkt. No. 69.) That provision of the Discovery Order, however, does not
excuse Rockstar from providing sufficient disclosures in the first instance; rather it merely
provides a deadline by which Rockstar is entitled to further supplement its Infringement
Contentions after the complete production of source code.
Striking Rockstar’s Infringement Contentions Is The Appropriate Sanction.
While the decision whether to strike Rockstar’s Infringement Contentions lies within the
discretion of the Court, doing so is the most appropriate remedy because Rockstar has refused
Google’s repeated requests for supplementation. In stark contrast with Google’s many attempts
to address Rockstar’s complaints regarding Google’s Invalidity Contentions (see, e.g., Dkt. Nos.
117-3, 117-5, 117-6), Rockstar flatly refused to make any attempt to address Google’s concerns.
(Ex. 2 (Lahad 4/18/14 Email); Ex. 5 (Lahad 6/25/14 Letter) at 5.) Given Rockstar’s position,
were the Court to order Rockstar to amend its contentions, the new contentions would still likely
fail to comply with the Patent Rules, necessitating further motion practice. Compare Computer
Acceleration Corp., 503 F. Supp. at 824-25 (finding this factor “weighe[d] heavily in favor of
striking” an infringement contention where patentee ignored the “crystal clear” requirement to
“provide a claim chart for each accused product,” and noting that to hold otherwise would
“discourage the voluntary exchange of information”) with H-W Tech., 2012 WL 3650597 at *7
(finding this factor weighed against striking all infringement contentions, in part because the
patentee had “attempted to address any deficiencies through supplemental infringement
Absent Striking Rockstar’s Infringement Contentions, There Is Significant
Risk Of Unfair Prejudice To Google.
Rockstar’s failure to put Google on adequate notice of the claims against it has caused
Google significant prejudice. For example, Rockstar’s refusal to point out what specifically in
Google’s systems Rockstar contends meet the “user preference input” and “user preference data”
limitations, as described above, has prejudiced Google throughout the claim construction
process. The parties proposed differing claim constructions for these claim terms, but Google
never received an adequate disclosure of what Rockstar contends falls within the scope of those
claims. That is precisely the prejudice that the disclosure requirements in the Patent Rules are
intended to avoid. Similarly, Google has produced and is working to produce all “relevant”
documents as required by the Discovery Order. But it is hampered in doing so by Rockstar’s
failure to articulate clearly what is accused. This inevitably means that the parties will disagree
as to whether Google has completed its discovery obligations, necessitating expending time and
resources on meet and confers and potential motion practice. More generally, Google still does
not have the core information it needs in order to build a defense against Rockstar’s allegations
of infringement. See Connectel, 391 F. Supp. 2d at 528; see also Linex Techs., Inc., 628 F. Supp.
at 711-12 (noting that non-detailed, non-product-specific infringement contentions prevent
defendants from building their defenses).
The opening claim construction brief is due on
September 16, 2014; the deadline to substantially complete document production is September
16, 2014; the Markman hearing is set for October 28, 2014; and jury selection is set for June 8,
2015. (Dkt. No. 68.) From the date that the parties are required to substantially complete their
document productions, they will have less than four months to complete depositions before the
close of fact discovery.
Under this tight schedule, Rockstar’s deliberate omissions have
prejudiced Google in developing its non-infringement and invalidity theories. This prejudice
could have been avoided had Google received sufficient infringement contentions, or even if
Rockstar had offered a substantive, good-faith response to the inadequacies Google specifically
Only A Continuance Of The Trial Date Would Cure The Prejudice To
The only continuance available to cure the prejudice to Google is to continue the trial
date. The current close of fact discovery is January 7, 2015, and jury selection is set to begin on
June 8, 2015. Were the Court to continue only the fact discovery deadline to accommodate
Rockstar’s failure to timely provide adequate contentions, the deadlines thereafter, including the
time the Court has to resolve dispositive motions, Daubert motions, and pretrial filings, would be
excessively compressed, further prejudicing Google. Thus, unless the Court is amenable to
continuing the trial date, no remedy can relieve the prejudice to Google caused by Rockstar’s
refusal to provide adequate notice of its infringement theories.
IN THE ALTERNATIVE, THE COURT SHOULD ORDER ROCKSTAR TO
PROMPTLY SUPPLEMENT ITS DEFICIENT CONTENTIONS AND
CONTINUE THE TRIAL DATE.
If the Court does not find that Rockstar’s deficient Infringement Contentions should be
stricken, the Court should require that Rockstar promptly amend them to comply with the Patent
Rules. See Digital Reg. of Tex., 2013 WL 3361241 at *3-4; Droplets, Inc., 2013 WL 1563256 at
*3-5; H-W Tech., 2012 WL 3650597 at *4, *7-8. The Court should also provide Google the
opportunity to amend its subsequent disclosures as appropriate, and continue the trial date. The
prejudice to Google caused by Rockstar’s refusal to make a good faith effort to “identify
specifically where each element of each asserted claim is found within each Accused
Instrumentality,” P.R. 3-1(c), is ongoing. Rockstar’s failure to make its required disclosures will
hamper claim construction briefing, the Court’s Markman hearing, timely completion of fact
discovery, and expert reports on non-infringement and invalidity. The Court’s schedule for this
case was premised on Rockstar’s timely compliance with the Patent Rules, which it failed to do.
The Court should order Rockstar promptly to comply and set a new schedule that will, consistent
with the timing of other deadlines regularly established by this Court, provide Google with a fair
chance to prepare its case for trial.
For the foregoing reasons, Google requests that the Court strike Rockstar’s infringement
In the alternative, Google requests that the Court compel Rockstar to serve
amended Infringement Contentions that comply with P.R. 3-1 within 10 days of this Court’s
order, allow Google to amend its subsequent disclosures as appropriate, and continue the trial
DATED: August 8, 2014
QUINN EMANUEL URQUHART & SULLIVAN, LLP
/s/ David 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
(903) 657-6003 (fax)
QUINN EMANUEL URQUHART &
Charles K. Verhoeven
David A. Perlson
50 California Street, 22nd Floor
San Francisco, California 94111-4788
Telephone: (415) 875 6600
Facsimile: (415) 875 6700
Attorneys for Google Inc.
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 August 8, 2014.
/s/ Andrea Pallios Roberts
Andrea Pallios Roberts
CERTIFICATE OF CONFERENCE
I hereby certify that the parties have met and conferred telephonically and in person
pursuant to Local Rule CV-7(h) and the Discovery Order. In addition to meeting and conferring
via email, on June 19, 2014 counsel for Plaintiffs (Justin Nelson, John Lahad, and Elizabeth
Derieux) and counsel for Defendant (David Perlson, Andrea Pallios Roberts, and Lance Yang)
met and conferred telephonically regarding the issue presented in this motion. In addition, on
July 10, 2014, lead and local counsel for Plaintiffs (Max Tribble, John Lahad, and Jeff Rambin)
met and conferred in person with lead and local counsel for Defendant (Charles Verhoeven,
Andrea Pallios Roberts, and Blake Thompson) regarding the issue presented in this motion. The
parties were unable to reach agreement.
/s/ Andrea Pallios Roberts
Andrea Pallios Roberts
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