Rockstar Consortium US LP et al v. Google Inc

Filing 123

RESPONSE in Opposition re 117 MOTION to Strike Defendant Google Inc.'s Deficient Obviousness Disclosure Under Patent Rule 3-3(B) filed by Google Inc. (Attachments: # 1 Declaration of Lance Yang, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Text of Proposed Order)(Perlson, David)

EXHIBIT I

From: John Lahad [mailto:[e-mail]]
Sent: Friday, June 13, 2014 12:25 PM
To: Andrea P Roberts
Cc: [e-mail]; [e-mail]; [e-mail]; jw@wsfirm.com;
[e-mail]; Alexander L. Kaplan; Max L. Tribble; Mark Mann; blake@themannfirm.com; [e-mail];
QE-Google-Rockstar
Subject: RE: Rockstar v. Google

Andrea,
As discussed in earlier correspondence with your colleague, Lance Yang, Rockstar objects to
Google’s attempt to shirk its disclosure obligations by refusing to provide claim-by-claim and

element-by-element charts for its asserted references. Instead of charting each claim element
by element, Google fashioned Exhibit B to list prior art references that may be combined with
the reference ostensibly charted in Exhibit A. For example, A-1 points to table B1, which says
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 B1 references because: it would

have yielded predictable results." According to Mr. Yang, Exhibits A-1 to A-39 identify each
combination that Google intends to rely on for each limitation and Exhibit B's tables
"streamline" the disclosure. Contrary to Mr. Yang's email, this approach does not comply with
Patent Local Rule 3-3(c) and does not sufficiently identify the combinations Google wishes to
assert. If Google’s approach is credited, millions of potential combinations result — hardly a

streamlining of anything. This is not what the local rules contemplate, which a claim element
by element disclosure and identification of specific combinations.
Furthermore, Google’s invalidity contentions for some alleged prior art systems do not provide
anything more than superficial and rudimentary descriptions of those systems. Google’s

disclosures rely on high-level newspaper and magazine articles and cite no user manuals or
similar technical documents. For example, in A-10, Google relies on the Excite search engine
but only cites an IEEE paper that barely touches on Excite, a few pages from a "Dummies..."
book, and a handful of citations to non-technical articles generally discussing search engines.

Google’s failure to provide sufficient evidence is particularly egregious given that it listed
Graham Spencer and Ben Lutch, co-founders of Excite and current Google employees, as
persons with knowledge of prior art in its initial disclosures. The same is true for Alta Vista (A2). Google failed to provide any technical materials describing Alta Vista even though Alta
Vista's principal developer, Michael Burrows, is a current Google employee and likewise

identified by Google in its initial disclosures. It is also known that Google acquired DoubleClick
in 2007 (which had previously purchased NetGravity). Accordingly, Google has in its
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possession and thus must provide more information on DoubleClick (A-9) and NetGravity (A24) than two patents and a smattering of non-technical articles pulled from the Wayback
Machine, respectively.

Because of Google’s non-compliant and deficient disclosures, Rockstar cannot agree to join in
any motion to limit claims and references. The Model Order does not alter the Local Rules. If
Google provides the element-by-element disclosures required by the local rules and the
additional evidence of prior art in its possession, Rockstar will consider whether a motion is
appropriate. Please provide compliant and complete charts by Friday June 20, 2014. If

Google chooses not to do so, then please provide a time this Monday (preferably before 5:00
pm central) to meet and confer in advance of our motion to strike Google’s non-compliant
contentions.
Finally, you are correct that our cover pleading includes two typographical errors regarding
claim 15 of the ’969 patent and claim 16 of ’183 patent. As of the date of its infringement
contentions, Rockstar is not asserting those two claims in this case.
I look forward to hearing from you.

Best,
John

John P. Lahad
Susman Godfrey L.L.P.
713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

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