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 E

quinn emanuel

trial lawyers | los angeles

865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] | FAX [phone]

WRITER'S DIRECT DIAL NO.
[phone]
WRITER'S INTERNET ADDRESS
[e-mail]

June 30, 2014
VIA E-MAIL
Mr. John Lahad
Susman Godfrey LLP
1000 Louisiana
Suite 5100
Houston, TX 77002-5096

Re:

Rockstar Consortium, et al. v. Google Inc., Case No. 2:13-cv-893 (E.D. Tex.)

Dear John:
I write in response to your letter of June 25, 2014 to Andrea Roberts.
Rockstar’s Proposal Regarding References and Combinations
Google cannot accept Rockstar’s proposal requiring that “Google identify 50 references by
September 16, 2014, wherein each obviousness combination counts as a separate prior art
reference, and describe with additional clarity the relevant motivations to combine.”
First, September 16, 2014 is the date of Google’s Preliminary Election, whereby Google must
narrow its references to “not more than a total of 40 references” with no requirement to narrow
obviousness combination. The Model Order is designed this way by the Eastern District Of
Texas Local Rules Advisory Committee for a reason: “Not imposing this requirement for
purposes of the preliminary election gives defendants increased flexibility to develop the
appropriate combinations as discovery proceeds.” Id. at 4. This case is no different. Your
proposal effectively reduces Google’s defenses to a mere 10 combinations over the 40 references
permitted by the Model Order at the Preliminary Election stage. Any such limitation on
obviousness combinations severely impacts Google’s ability to mount its defense, particularly in
light of Rockstar’s continued refusal to supplement its infringement contentions to provide
sufficient notice of its infringement positions. Additionally, the number of combinations in
quinn emanuel urquhart & sullivan, llp
NEW YORK | SAN FRANCISCO | SILICON VALLEY | CHICAGO | WASHINGTON, DC | LONDON | TOKYO | MANNHEIM | MOSCOW | HAMBURG | PARIS |
MUNICH | SYDNEY | HONG KONG | BRUSSELS

Google’s invalidity contentions is a direct result of the number of asserted claims Rockstar has
chosen to keep in play. Once Rockstar makes its preliminary election of asserted claims, there
may significant reductions in the number of combinations.
Your letter fails to cite any case that limits a defendant’s well-articulated (though potentially
voluminous) invalidity defenses this early stage of litigation. Realtime Data, LLC v. Packeteer,
Inc. dealt with invalidity arguments raised after the close of expert discovery. Further, in
Realtime, as you stated in your letter, “the court precluded reliance on two prior art references
because they were not charted on a claim-by-claim and element-by-element basis.” The
references in Realtime were listed in an appendix “without any explanation of how the references
anticipate or render obvious the asserted claims.” Realtime Data’s Reply in Support of Its
Motion to Strike at 2 (Oct. 19, 2009). As Google has now explained several times, its invalidity
contentions chart each obviousness reference on a claim-by-claim and element-by-element basis.
Second, Rockstar’s proposal that Google also “describe with additional clarity the relevant
motivations to combine” on September 16 is simply not justified or required. You state that
“Google’s introduction to each table in Exhibit B simply states that a person of ordinary skill
would have been motivated to combine the reference in Exhibit A with any one or more of the
Exhibit B references.” As discussed during the June 19, 2014 meet and confer, we refer you to
pages 11-44 of Google’s Invalidity Contentions, which lay out in detail the relevant motivations
to combine.
Netgravity and DoubleClick Charts
You demand that Google provide dates for when it will complete is production of Netgravity and
DoubleClick documents that it intends to rely on. As Google expressed during the June 19 meet
and confer, Google intends to comply with its discovery obligations, as laid out by the Court’s
procedural schedule in this case, and will produce all relevant documents according to the
relevant deadlines. There is no basis for an expedited discovery schedule specific to these two
references. Unlike the defendant in IXYS Corp. v. Advanced Power Technology, Inc. – who
moved to amend its final invalidity contentions past the summary judgment stage based on
documents produced well after claim construction and expert reports were completed – Google
intends to substantially complete document production according to the Court’s deadline of
September 16, 2014. As required by the Court’s Docket Control Order, we will “make good
faith efforts to produce all required documents as soon as they are available and not wait until the
substantial completion deadline.” May 13, 2014 Docket Control Order at 3.
In an effort to resolve this issue, Google will provide supplemental invalidity charts for
DoubleClick and Netgravity on July 2, 2014. We note that the products at issue date back to the
late 1990s and were originally developed by non-Google employees, the vast majority of whom
are not at Google now. Google is diligently conducting its investigation as to these prior art
references. Google will continue to produce documents as they are discovered throughout
discovery and Google reserves our right to rely on these documents for invalidity. Again, if you
have any specific examples of things you do not understand based on the purported lack of
specificity in Google’s charts, please let us know.

2

Infringement Charts
Please confirm whether Rockstar would be similarly willing to provide supplemental
infringement contentions on July 14, 2014 to resolve the parties’ ongoing dispute on this issue.
Very truly yours,

Lance Yang
LY

3