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 F

From: John Lahad [mailto:[e-mail]]
Sent: Tuesday, July 22, 2014 3:41 PM
To: Lance Yang; Andrea P Roberts; David Perlson
Cc: Amanda Bonn; Justin A. Nelson; Alexander L. Kaplan; [e-mail]; [e-mail];
[e-mail]; jw@wsfirm.com; [e-mail]; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan;
Shawn Blackburn; QE-Google-Rockstar; James Mark Mann; Andy Tindel; Gregory Blake Thompson; Stacy Schulze;
Tammie J. DeNio; Max L. Tribble
Subject: RE: Rockstar v. Google

Lance,
Google's impermissibly high number of combinations vitiates any identification of them. It is
not sufficient notice to identify thousands of potential combinations. This is, and always has
been, the "issue."
Thanks,
John
John P. Lahad
Susman Godfrey L.L.P.

713-653-7859(office)
713-725-3557 (mobile)
713-654-6666 (fax)

From: Lance Yang [mailto:[e-mail]]
Sent: Tuesday, July 22, 2014 4:05 PM
To: John Lahad; Andrea P Roberts; David Perlson
Cc: Amanda Bonn; Justin A. Nelson; Alexander L. Kaplan; [e-mail]; [e-mail];
[e-mail]; jw@wsfirm.com; [e-mail]; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan;
Shawn Blackburn; QE-Google-Rockstar; James Mark Mann; Andy Tindel; Gregory Blake Thompson; Stacy Schulze;
Tammie J. DeNio; Max L. Tribble
Subject: RE: Rockstar v. Google
John,
At the meet and confer Rockstar, acknowledged that the issue it had with Google's contentions was not the ”identity" of
combinations. Indeed, Rockstar stated that even if Google provided additional detail concerning the combinations that
Google identified (which your prior correspondence acknowledges you already understand), that this would not resolve
the issue because there would be too many combinations. Now that we have identified a proposal in accordance with
what was discussed during the July 10 meet and confer, Rockstar raises the same purported "issue" that Rockstar said
was not the issue in our in person meet and confer.
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Google cannot provide a proposal to address Rockstar's concerns—and the parties cannot narrow the issues to be
addressed by the Court—if Rockstar keeps changing the target. If Rockstar intends to request relief from the Court,
please identify whether Rockstar will be moving to address the alleged insufficiently identified combinations, the
number of combinations, or both. This is important because we have previously provided suggestions to alleviate your
purported concerns regarding the ”identification" of combinations, but Rockstar responded that is not the actual issue.
lt would be inappropriate for Rockstar to raise that issue with the Court without providing sufficient opportunity for the
parties to resolve it.
BesL
Lance

From: John Lahad [mailto:[e-mail]]
Sent: Monday, July 21, 2014 4:02 PM
To: Lance Yang; Andrea P Roberts; David Perlson
Cc: Amanda Bonn; Justin A. Nelson; Alexander L. Kaplan; [e-mail]; [e-mail];
[e-mail]; jw@wsfirm.com; [e-mail]; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan;
Shawn Blackburn; QE-Google-Rockstar; James Mark Mann; Andy Tindel; Gregory Blake Thompson; Stacy Schulze;
Tammie J. DeNio; Max L. Tribble
Subject: RE: Rockstar v. Google
Lance,
Thank you for your email. Google's proposal does not remedy its deficient disclosures or provide
the required notice. Google has still chosen not to sufficiently identify any combinations, and the
possible combinations remain unreasonably high. Accordingly, Rockstar does not agree to your
proposal, and this issue is best resolved by the Court. If Google's position changes, let me know.
Thanks,
]ohn

John P. Lahad
Susman Godfrey L.L.P.

713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

From: Lance Yang [mailto:[e-mail]]
Sent: Friday, July 18, 2014 6:28 PM

To: John Lahad; Andrea P Roberts; David Perlson
Cc: Amanda Bonn; Justin A. Nelson; Alexander L. Kaplan; [e-mail]; [e-mail];
[e-mail]; jw@wsfirm.com; [e-mail]; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan;
Shawn Blackburn; QE-Google-Rockstar; James Mark Mann; Andy Tindel; Gregory Blake Thompson; Stacy Schulze;
Tammie J. DeNio; Max L. Tribble
Subject: RE: Rockstar v. Google
John,
2

Google understands that Rockstar is complaining about the number of combinations disclosed in Google’s invalidity
contentions, and not that Google has failed to identify and chart, on a element by element basis, each asserted
combination. The basis for your allegation that the number of combinations is impermissible remains unclear. As
Rockstar acknowledged during the July 10 in person conference, the local rules place no limit on the number of
combinations. Google maintains the position that its invalidity contentions fully comply with the Court's Patent Rules.
In the spirit of compromise, however, Google proposes as follows. Google will identify no more than 5 references that
Google presently intends to rely on in light of information currently available for each of the six tables in Exhibit B that
chart obviousness references on a limitation by limitation basis. This amounts to a specific identification of no more 30
references total in these tables. The actual number may be lower if Google identifies the same references for multiple
tables. Google would make this identification by July 28. Due to ongoing discovery, the number of asserted claims, and
unsettled claim construction issues, Google would reserve its right to rely on the other references identified in Exhibit B
as the case evolves. Please let us know if Rockstar agrees to this proposal.
Google still believes that adopting the Court's model order is the most appropriate and reasonable mechanism for
narrowing the issues in this case, including the number of Google’s combinations. In light of Google’s proposal to
identify a limited set of obviousness references, let us know if Rockstar would be willing drop its opposition to Google’s
motion to adopt the model order.
Best,
Lance

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