Rockstar Consortium US LP et al v. Google Inc

Filing 124

SUR-REPLY to 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 NetStar Technologies LLC, Rockstar Consortium US LP. (Lahad, John)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
LLC,
Civil Action No. 2:13-cv-893

Plaintiffs,
v.

JURY TRIAL DEMANDED

GOOGLE INC.,
Defendant.

PLAINTIFFS’ SUR-REPLY IN OPPOSITION TO
GOOGLE’S 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
Plaintiffs Rockstar Consortium US LP and Netstar Technologies LLC (“Rockstar”)
submit this sur-reply to raise three points, but otherwise rest on their prior briefing.
First, Google argues that by demanding that Google identify a reasonable number of
obviousness combinations, Rockstar is “seeking to foreclose Google from having the very
‘flexibility to develop the appropriate combinations as discovery proceeds’ that the Model Order
contemplates.”

(Doc. 119 at 3).

The “flexibility” afforded by the Model Order must be

reconciled with the notice of function of the Patent Rules, which as described in Rockstar’s
Motion to Strike, Doc. 117, is absent from Google’s purported obviousness disclosure. Google’s
position effectively amounts to having the flexibility to use whatever art it wants, however it
wants to use it, and whenever it wants to use it.

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Second, Google’s Reply appears to belittle Rockstar’s complaint regarding the
outrageous number of potential obviousness combinations. But as several courts in this District
have held, asserting hundreds or thousands of potential obviousness combinations does not
provide the notice required by the Local Patent Rules. See LML Patent Corp. v. J.P. Morgan
Chase & Co., No. 2:08-cv-448, 2011 WL 5158285, at *4 (E.D. Tex. Aug. 11, 2011); Realtime
Data, LLC v. Packeteer, Inc., No. 6:08-cv-144, 2009 WL 4782062, at *2 (E.D. Tex. Dec. 8,
2009).
Finally, nothing supports Google’s argument that a reduction in claims results in a
reduction in the number of obviousness combinations. Google still may – and likely will – assert
the same prior art references against 32 claims as it does against 141 claims. And Google still
may – and likely will – employ the same combined-in-any-way-we-want approach to
obviousness after a reduction in claims. Google refers to its offer to limit the universe of
references to 30. (Doc. 119 at n.2). Tellingly, Google does not say that it will limit the universe
of combinations, which is the real dispute between the parties. Rockstar should not be forced to
endure discovery in the shadow of thousands of potential prior art combinations. That is entire
point of the Patent Rules and the Model Order.
Entry of the Model Order should not come at the price of Rockstar having to surrender its
right to notice of specific obviousness combinations as required by the Local Rules. That is what
Google is attempting to do. Thus, Rockstar asks that the Court deny Google’s Motion.

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DATED: August 11, 2014

Respectfully submitted,
By:

/s/ John P. Lahad
Max L. Tribble, Jr. – Lead Counsel
State Bar No. 20213950
Alexander L. Kaplan, State Bar No. 24046185
John P. Lahad, State Bar No. 24068095
Shawn Blackburn, State Bar No. 24089989
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Justin A. Nelson, State Bar No. 24034766
Parker C. Folse, III, WA State Bar No. 24895
Kristin Malone, WA State Bar No. 46251
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Amanda K. Bonn, CA State Bar No. 270891
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, CA 90067-6029
Telephone: [phone]
Facsimile: [phone]
[e-mail]
T. John Ward, Jr., State Bar No. 00794818
Claire Abernathy Henry, State Bar No. 24053063
WARD & SMITH LAW FIRM
P.O. Box 1231
Longview, TX 75606-1231
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

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S. Calvin Capshaw, State Bar No. 03783900
Elizabeth L. DeRieux, State Bar No. 05770585
D. Jeffrey Rambin, State Bar No. 00791478
CAPSHAW DERIEUX, LLP
114 E. Commerce Ave.
Gladewater, TX 75647
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Rockstar Consortium US LP and
NetStar Technologies LLC

CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to
electronic service are being served this 11th day of August, 2014 with a copy of this document
via the Court’s CM/ECF system per Local Rule CD-5(a)(3).
/s/ John P. Lahad
John P. Lahad

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