Rockstar Consortium US LP et al v. Google Inc

Filing 126

MOTION to Compel by Rockstar Consortium US LP. (Attachments: # 1 Appendix of Exhibits ISO Motion to Compel, # 2 Affidavit of Amanda Bonn ISO Motion to Compel, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 Exhibit 21, # 24 Text of Proposed Order Granting Motion to Compel)(Bonn, Amanda)

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Exhibit 10 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ROCKSTAR CONSORTIUM US LP AND NETSTAR TECHNOLOGIES LLC Plaintiffs, Case No. 2:13-cv-00893-JRG-RSP v. GOOGLE INC. JURY TRIAL DEMANDED Defendant. Plaintiffs’ Disclosure of Asserted Claims and Infringement Contentions Pursuant to Patent Rule 3-1 Plaintiffs Rockstar Consortium US LP and Netstar Technologies LLC (“Plaintiffs”) provide the following Disclosure of Asserted Claims and Infringement Contentions as to Defendant Google Inc. (“Google”) in accordance with Patent Local Rule (P.R.) 3-1. Fact discovery has not yet begun and Google has not yet provided documents or other information to Plaintiffs. Accordingly, Plaintiffs reserve the right to supplement or alter their responses herein based on any information produced by Google or other material located or produced during the course of discovery. I. Preliminary Statement Plaintiffs provide their P.R. 3-1 contentions, which contain the following information: (a) a list of each claim of each patent-in-suit that is allegedly infringed by Google; (b) for each asserted claim, the identity of each Accused Instrumentality of which Plaintiffs are aware; (c) charts identifying where each element of each asserted claim is found in each accused instrumentality, including for each element that is governed by 35 U.S.C. §112(6), the identity of 3106893v1/013149 1 the structure(s) and act(s) in the Accused Instrumentality that perform(s) the claimed function; (d) a statement identifying whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents; (e) for patents that claim priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and (f) identification of Plaintiffs’ own product(s) that incorporate(s) or reflect(s) each asserted claim. In making these contentions, Plaintiffs have not yet received any discovery from Google regarding its infringing methods and systems and has not had access to the source code of the accused methods and systems. Plaintiffs have, however, researched available information, including (1) Google’s websites, (2) publicly available information published by Google regarding the Accused Instrumentalities, and (3) publicly available statements and information describing Google’s Accused Instrumentalities. Google engages in the allegedly infringing conduct through computer systems operating proprietary software. Google does not publicly disclose the precise operation of its computer systems and does not publicly disclose its source code. Because Google has not publicly disclosed the specific operation of the Accused Instrumentalities and does not publicly disclose source code for those products and services, Plaintiffs are inherently limited in the degree of specificity they can provide in the preliminary infringement contentions. Under these circumstances, the Eastern District of Texas recognizes that a plaintiff will not be able to provide highly specified infringement contentions and that, under the federal rules, should be permitted further discovery to supplement initial contentions with additional information. See American Video Graphics, L.P. v. Electronic Arts, Inc., 2005 U.S. Dist. LEXIS 3740 *7-8 (E.D. Tex. 2005). Similarly, the law requires that Plaintiffs only provide Google “with notice of infringement beyond that which is provided by the mere language of the patent rules themselves” 3106893v1/013149 2 and the disclosures are “not meant to provide a forum for litigation of the substantive issues.” Network Caching Technology, LLC v. Novell, Inc., 2003 U.S. Dist. LEXIS 9881, 2003 WL 21699799, *4-5 (N.D. Cal. 2003). Accordingly, Plaintiffs reserve the right to amend these disclosures, including the identity of the claims being asserted, upon receiving discovery from Google. II. Each Claim Of Each Patent In Suit That Is Allegedly Infringed By Defendant Based on available information obtained to date, Plaintiffs allege that Google has infringed and is infringing at least the following claims (“Asserted Claims”) of the following patents: Patent Claims Alleged Infringed Literally and/or Under the Doctrine of Equivalents U.S. Patent No. 6,098,065 (“’065 Patent”) 1 U.S. Patent No. 7,236,969 (“’969 Patent”) 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23 U.S. Patent No. 7,469,245 (“’245 Patent”) 1, 3, 4, 5, 6, 7, 8, 9, 12, 13, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25 U.S. Patent No. 7,672,970 (“’970 Patent”) 1, 2, 3, 4, 5, 6, 8, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 28, 29, 30, 31, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45, 46, 47 U.S. Patent No. 7,895,178 (“’178 Patent”) 1, 5, 6, 7, 8, 9, 10, 12, 14, 15, 16, 17, 18 U.S. Patent No. 7,895,183 (“’183 Patent”) 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20 U.S. Patent No. 7,933,883 (“’883 Patent”) 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 28 3106893v1/013149 3 III. The Identity of Defendant’s Accused Instrumentalities Based on available information obtained to date, Plaintiffs allege that the following Accused Instrumentalities infringe the Asserted Claims: Google’s advertising services and applications including but not limited to Google Ads, Google AdWords, and Google AdWords Express or similar functionality used in conjunction with, the Google Search app, the Android search bar, Google custom search, Google premium search services,; 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, along with Google’s search algorithm and Google’s algorithm for providing advertisements with search results. The Accused Instrumentalities also include any Google system that collects user data through registration, tracking, or other means, including but not limited to Google Plus, Doubleclick, Advertiser IDs for Android or any other system or operation used to track user activity on any Google-owned property, the data from which is used to provide search results and/or advertising to its users. It also includes the computers, databases, data centers, and code versions that perform or have performed the above activities. IV. Charts Identifying Where Each Element Of Each Asserted Claim Is Found Within Each Accused Instrumentality The claim charts attached as Exhibits A through G identify where each element of each asserted claim is found within the Accused Instrumentalities, as required under P.R. 3-1(c). V. Whether Each Element Of Each Asserted Claim Is Claimed To Be Literally Present Or Present Under The Doctrine Of Equivalents In The Accused Instrumentality Plaintiffs claim that each element of each asserted claim is present literally in the Accused Instrumentalities unless expressly noted in the claim charts attached. To the extent any claim construction results in the Accused Instrumentalities falling outside the literal scope of any asserted claim, Plaintiffs reserve the right to contend that the Accused Instrumentalities still 3106893v1/013149 4 infringe under the doctrine of equivalents. Once the Court construes the claims at issue, Plaintiffs will designate which of such claims are infringed under the doctrine of equivalents. VI. Priority Date to Earlier Application Each of the claims asserted with respect to the Patents in Suit are entitled to a priority date no later than June 6, 1996. VII. Plaintiffs’ Products That Incorporate or Reflect Each Asserted Claim None. VIII. Document Production Pursuant To Patent Rule 3-2 Plaintiffs are serving herewith, via FTP, Plaintiffs’ initial document production, which includes documents produced pursuant to P.R. 3-2. Plaintiffs have used their best efforts to identify responsive P.R. 3-2 documents and only those documents. However, given the volume of documents, some documents may have been inadvertently listed or inadvertently omitted. To the extent such deficiencies are identified, Plaintiffs will supplement the production accordingly. These documents have been marked “CONFIDENTIAL” or “CONFIDENTIAL— SOURCE CODE.” Pursuant to Patent Local Rule 2.2, access to such documents shall be limited to each party’s outside counsel of record and the employees of such outside attorneys until such time as a protective order is entered. DATED: March 24, 2014 Respectfully submitted, By: 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 NY State Bar No. 5017249 SUSMAN GODFREY L.L.P. 3106893v1/013149 5 1000 Louisiana Street, Suite 5100 Houston, Texas 77002 Telephone: (713) 651-9366 Facsimile: (713) 654-6666 Justin A. Nelson State Bar No. 24034766 Parker C. Folse, III WA State Bar No. 24895 SUSMAN GODFREY L.L.P. 1201 Third Ave, Suite 3800 Seattle, Washington 98101 Telephone: (206) 516-3880 Facsimile: (206) 516-3883 T. John Ward, Jr. State Bar No. 00794818 WARD & SMITH LAW FIRM P.O. Box 1231 Longview, TX 75606-1231 Telephone: (903) 757-6400 Facsimile: (903) 757-2323 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 24th day of March, 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 3106893v1/013149 6

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