Rockstar Consortium US LP et al v. Google Inc
RESPONSE in Opposition re 122 MOTION to Strike Plaintiffs' Patent Rule 3-1 Infringement Contentions filed by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Declaration of Shawn D. Blackburn, # 2 Exhibit 1 - Rockstar's P.R. 3-1 Disclosure of Asserted Claims and Infringement Contentions, # 3 Exhibit 2 - Rockstar's P.R. 3-1 Infringement Claim Chart for '065, # 4 Exhibit 3 - Rockstar's P.R. 3-1 Infringement Claim Chart for '969, # 5 Exhibit 4 - Rockstar's P.R. 3-1 Infringement Claim Chart for '245, # 6 Exhibit 5 - Rockstar's P.R. 3-1 Infringement Claim Chart for '970, # 7 Exhibit 6 - Rockstar's P.R. 3-1 Infringement Claim Chart for '178, # 8 Exhibit 7 - Rockstar's P.R. 3-1 Infringement Claim Chart for '183, # 9 Exhibit 8 - Rockstar's P.R. 3-1 Infringement Claim Chart for '883, # 10 Exhibit 9 - 4-14-14 email between counsel, # 11 Exhibit 10 - 4-18-14 email between counsel, # 12 Exhibit 11 - 7-3-14 email between counsel, # 13 Exhibit 12 - 7-8-14 email between counsel, # 14 Exhibit 13 - 7-24-14 email between counsel, # 15 Exhibit 14 - 8-27-14 email between counsel, # 16 Exhibit 15 - 6-23-14 email between counsel, # 17 Text of Proposed Order)(Blackburn, Shawn)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
Civil Action No. 2:13-cv-893
JURY TRIAL DEMANDED
PLAINTIFFS’ RESPONSE TO DEFENDANT’S MOTION TO STRIKE PLAINTIFFS’
PATENT RULE 3-1 INFRINGEMENT CONTENTIONS
Google’s motion to strike Plaintiffs Rockstar Consortium US LP and Netstar
Technologies LLC’s (“Rockstar”) infringement contentions is without support in law or fact.
Indeed, Google fails to cite this Court’s relevant cases in which software is accused. Likewise,
Google misrepresents the contents of Rockstar’s infringement contentions, which include: text
describing the functionality of Google’s products, screen shots demonstrating the operation of
Google’s products, publically available code demonstrating Google’s infringement, and
Google’s own public admissions of how its products work. In reality, Google’s motion is nothing
more than retaliation for Rockstar’s motion to strike Google’s plainly deficient invalidity
contentions. Google has admitted as much. If Rockstar’s infringement contentions were truly as
deficient as Google claims, Google would have immediately sought relief. Google did not. Thus,
Google’s motion is nothing more than a retaliatory motion meant to distract the Court from
Google’s noncompliant invalidity contentions as well as an egregious yet transparent attempt to
avoid its discovery obligations and delay the disposition of this case on the merits.
a. Rockstar’s Infringement Contentions
On March 24, 2014, Rockstar served Google with more than 1,200 pages of detailed
infringement contentions. (Dkt. No. 40; Exs. 1-8). These contentions represent the culmination
of hundreds of hours of work by Rockstar’s expert consultants and attorneys performed over the
span of several months during which Rockstar rigorously analyzed all of Google’s publically
available information, fully complying with Patent R. 3-1. Rockstar’s infringement contentions
explicitly state that the Accused Instrumentalities include:
Google Ads, Google AdWords, and Google AdWords Express (or similar
functionality) used in conjunction with google.com, the Google Search app, the
Android search bar, Google custom search, Google premium search services,
youtube.com, Google search services provided to third party websites such as
Custom Search Services or AdSense for Search1, and any Google-owned property
that matches advertisements based in part on a received search term.
(Ex. 3 at 1). Rockstar also provided claim charts detailing Google’s infringement of the asserted
patents. The charts include not only text describing the functionality of Google’s products, but
also screen shots demonstrating how Google infringes when Google’s products are in operation.
(See, e.g., Ex. 3 at 2-9 (demonstrating a search argument (at 3-8) included in a search request (at
9)).) When publically accessible, Rockstar also provided code demonstrating Google’s
infringement. (See, e.g., Ex. 5 at 57-62, 96-97, 152-156.) Furthermore, Rockstar went beyond
what the Patent Rules require by providing evidence of Google’s own admissions of how its
products work in the form of publically available Google blog posts and tutorials. (See, e.g., Ex.
8 at 34-41 (demonstrating in Google’s own words how it selects advertisements relating to
search arguments using the user profile data.))
b. Rockstar Agreed to Amend Once Google Completes Source Code Production.
Shortly after the infringement contentions were served, Google began bemoaning its
alleged inability to understand Rockstar’s infringement theories. (Ex. 9 Roberts 4/14/14 Email).
Rockstar responded in the only way that it could, by explaining to Google that it had fully
complied with Rule 3-1—having provided Google infringement contentions as detailed as the
totality of publically available information permitted. (Ex. 10 Lahad 4/18/14 Email). Rockstar
has nonetheless, as Google admits, agreed to supplement its infringement contentions once
Google has produced source code for each Accused Instrumentality. Google Br. at 3. Despite the
fact that Rockstar has agreed to supplement its infringement contentions once source code is
Google falsely contends that “AdSense is not even accused.” Google Br. at 10. As the quoted text demonstrates,
obviously it is.
produced in full, Google has incessantly harassed Rockstar regarding its infringement
contentions all the while shirking its discovery obligations. Id.
c. Google’s Failure to Timely Comply With Patent R. 3-4 Prevents Rockstar From
Supplementing its Contentions.
Google contends that it complied with Patent R. 3-4 on May 20, 2014. Google Br. at 2.
Not so. Patent R. 3-4 requires the Google to produce “Source code, specifications, schematics,
flow charts, artwork, formulas, or other documentation sufficient to show the operation of any
aspects or elements of an Accused Instrumentality.” Patent R. 3-4(a). Google failed to produce a
single line of source code on May 20, 2014. Moreover, even after the protective order was
entered on June 19, 2014, Google refused to produce any source code. (Ex. 11 Roberts 7/3/14
Email). Rockstar informed Google that “P.R. 3-4(a) requires the alleged infringer to produce any
and all documents describing the operation of any aspects or elements of an accused
instrumentality,” which obligation “clearly covers source code.” Edward D. Ioli Trust v. Avigilon
Corp., 2012 WL 5830711, at *3 (E.D. Tex. Nov. 16, 2012); (Ex. 12 Bonn 7/8/14 Email). Finally,
on July 24, 2014, Google made a limited amount source code available for inspection. (Ex. 13
Roberts 7/24/14 Email). In doing so, Google admitted that the source code it was producing was
incomplete. Id. (“Google expects to make additional code available for inspection.”) At the time
of filing, Google has not yet produced source code sufficient to show the operation of each
Accused Instrumentality. (Ex. 14 Bonn 8/27/14 Email). Nor has Google made a complete
production of “any and all” other documents describing the operation of the accused
functionalities. Id. Rockstar is under no obligation to supplement its infringement contentions
until Google fully complies with Patent R. 3-4(a). Indeed, Rockstar cannot supplement its
contentions until Google does so. Moreover, Google’s May 20, 2014 180,000 page document
dump, consisting of large portions of irrelevant and nonresponsive documents comingled with
responsive documents—many of which are nearly unreadable to the naked eye—does not trigger
Rockstar’s duty to supplement under the Discovery Order. Id. Once Google fully complies with
this Court’s Rules and Orders by fully producing its relevant source code and completing its
production of technical documents, Rockstar will supplement its infringement contentions in
accordance with the Discovery Order.
Google Fails to Cite This Court’s Case Law Concerning Infringement Contentions and
Patent R. 3-1 requires “[a] chart identifying specifically where each element of each
asserted claim is found within each Accused Instrumentality.” “Plaintiffs are expected to
rigorously analyze all publicly available information before bringing suit and must explain with
great detail their theories of infringement.” Connectel, LLC v. Cisco Sys., Inc., 391 F. Supp. 2d
526, 528 (E.D. Tex. 2005). However, this Court recognizes that “PICs [preliminary infringement
contentions] are not meant to provide a forum for litigation of the substantive issues; they are
merely designed to streamline the discovery process.” STMicroelectronics, Inc. v. Motorola, Inc.,
308 F. Supp. 2d 754, 755 (E.D. Tex. 2004) (citation omitted). This Court also recognizes that
“[s]oftware cases present unique challenges for the parties and the courts because, prior to
discovery, plaintiffs usually only have access to the manifestation of the defendants’ allegedly
infringing source code and not the code itself. From this manifestation, plaintiffs must somehow
divine whether the defendants’ code infringes.” Am. Video Graphics, L.P. v. Elec. Arts, Inc., 359
F. Supp. 2d 558, 560 (E.D. Tex. 2005) (“AVG”). Moreover, in cases in which a defendant’s
source code is not publically available “plaintiffs are typically unable to give highly specified
infringement contentions.” Id.; see also Orion IP, LLC v. Staples, Inc., 407 F. Supp. 2d 815, 817
(E.D. Tex. 2006) (“[I]n software cases, the Court has recognized the pragmatic limitation on
detailed PICs when plaintiffs do not have the necessary access to non-public software, which is
needed to make detailed infringement contentions.”) “In these situations, through Rules 3–6 and
3–7, the Patent Rules recognize the preliminary nature of plaintiff's preliminary contentions
accommodate plaintiffs’ need to supplement their initial contentions.” Id. at 560-61. Thus, the
Court recognizes plaintiffs’ need for source code prior to supplementation of their infringement
contentions. Notably, Google makes no mention of STMicroelectronics or AVG in its brief
despite the fact that this case involves software intensive Accused Instrumentalities.
Rockstar’s Infringement Contentions Satisfy the Demands of Patent. R. 3-1
Prior to March 24, 2014, the date on which Rockstar’s infringement contentions were
due, Rockstar had access only to public information regarding the Accused Instrumentalities. In
a case such as this, Plaintiffs are required to “rigorously analyze all publicly available
information.” Connectel, 391 F. Supp. 2d at 528. Rockstar did just that. Rockstar has not, as did
the plaintiffs in Connectel, “just allege infringement of hundreds of [products], submit those
[product] manuals as evidence, and expect to narrow its claims upon the receipt of source code.”
Id. In fact, Rockstar expects that each Accused Instrumentality infringes each claim asserted
against that Instrumentality and anticipates that source code will confirm Google’s wide spread
and pervasive infringement.
In reality, Rockstar’s expert consultants and attorneys expended hundreds of hours of
work identifying Google’s potentially infringing products and services. Only those products that
Rockstar believes infringe based on publically available information were listed in the
infringement contentions. Rockstar’s claim charts describe Google’s Accused Instrumentalities
on an element by element basis. The charts include where possible: (1) code showing the
functionality of Google’s products (See, e.g., Ex. 5 at 57-62, 96-97, 152-156.), (2) screen shots
demonstrating how Google products satisfy each element of the claims (See, e.g., Ex. 3 at 2-9),
and (3) evidence of Google’s own admissions of how its products work in the form of publically
available Google blog posts and tutorials. (See, e.g., Ex. 8 at 34-41.)
Like Rockstar, the plaintiff in AVG conducted an extensive investigation before serving
its infringement contentions. Connectel, 391 F. Supp. 2d at 528. Also, like the plaintiff in AVG,
Rockstar seeks source code to fill the gaps in its infringement contentions and definitively
demonstrate the functionality of the Accused Instrumentalities. Id. Rockstar’s claim charts are,
however, far more detailed than those found to comply with Patent R. 3-1 in AVG. For example,
the AVG claim charts largely recited the claim language, and provided one sentence stating that
each Accused Instrumentality found in an exhibit performed the function required by the claim
language. Am. Video Graphics, 359 F. Supp. 2d at 559. As described above, Rockstar has done
far more than that. In fact, the defendant in AVG suggested that the plaintiff should be made to
“produce ‘screen shots’ to communicate how the games infringe. Id. at 560. The Court found this
unnecessary. Id. at 561. Though screen shots are not required, Rockstar has provided them—
along with other public information—to remove all doubt as to how the Accused
Instrumentalities infringe the asserted claims. Therefore, Rockstar’s infringement contentions
fully comply with Patent R. 3-1.
Google Mischaracterizes Rockstar’s Infringement Contentions
Google contends that Rockstar’s infringement contentions are inadequate because they:
(1) “incorporate screen shots in lieu of explanatory text,” (2) “merely parrot the claim language,”
and (3) “purport to cover an uncharted product simply because they cover an allegedly similar
charted product.” Google Br. at 5. Google is wrong on all accounts.
Rockstar has not simply incorporated screen shots in lieu of explanatory text. Rather, as
demonstrated above, in addition to screen shots, Rockstar’s claim charts include code showing
the functionality of Google’s products and evidence of Google’s own admissions of how its
products work. Moreover, this Court approved of the use of screen shots to illustrate
infringement in Global Sessions LP v. Travelocity.com LP stating, “[t]o comply with P .R. 3–1,
plaintiffs may use representative screenshots to illustrate specific theories of infringement with
respect to websites accused in their entirety.” 2012 WL 1903903 at *5 (E.D. Tex. May 25,
2012); see also Orion IP, LLC, 407 F.Supp.2d at 817 (allowing representative screen shots rather
than “screen shots for every possible manifestation” of the accused website).
Rockstar likewise does not “merely parrot the claim language” in its infringement
contentions. As described above and demonstrated below in Section V, the claim charts contain
evidence far beyond the mere parroting of the claim language. In fact, even Google admits as
much. With respect to claim 1 of the ‘245 claim chart, Google admits that Rockstar provides
“screen shots depict[ing] Google Search History, a google.com tutorial on how search works, a
Google support web page on ad settings, a Google blog post on ad transparency, Settings for
Google Ads on google.com, and instructions on creating one’s own Google account.” Google Br.
at 7. Accordingly, Google’s allegation that Rockstar merely parrots the claim language is untrue
even by Google’s account.
Finally, Google claims that Rockstar’s infringement contentions are inadequate because
they “purport to cover an uncharted product simply because they cover an allegedly similar
charted product.” Google Br. at 5. Google misunderstands the law. For support, Google cites
Computer Acceleration Corp. v. Microsoft Corp., 503 F. Supp. 2d 819 (E.D. Tex. 2007) for the
proposition that all Accused Instrumentalities must be charted. Google is incorrect. In Computer
Acceleration, there were only two products and two claims at issue. Id. at 824. Moreover, the
defendant had long since received source code for both products, but had not attempted to amend
its contentions in compliance with the Local Patent Rules despite having promised to do so. Id.
Unsurprisingly, the Court held that both products should have been charted and struck the
uncharted product. Id. at 825. By contrast, this Court has routinely approved the use of
representative claim charts in infringement contentions in cases involving numerous Accused
Instrumentalities and patents. See Connectel, LLC v. Cisco Sys., Inc., 391 F.Supp.2d 526
(E.D.Tex.2005) (ordering defendant “to designate exemplar accused infringing products.”);
Orion IP, LLC v. Staples, Inc., 407 F. Supp. 2d 815, 817 (E.D. Tex. 2006)(“In dealing with
something like a website, it would be unrealistic to expect plaintiffs to provide screen shots for
every possible manifestation of the alleged infringement. Instead, plaintiffs should provide
specific theories of infringement and representative examples of the alleged infringement.”);
Epicrealm, Licensing, LLC v. Autoflex Leasing, Inc., 2007 WL 2580969 at *3 (E.D. Tex. Aug.
27, 2007) (“discovery may include products and services (in this case, websites and systems)
‘reasonably similar’ to those accused in the PICs); Plant Equipment, Inc., v. Intrado, Inc., Case
No. 2:09-cv-395 (E.D. Tex. Feb. 1, 2012) (“Because [plaintiff] will have one infringement
theory . . ., there is no need for [plaintiff] to provide additional charts for each and every
permutation.”) Thus, Rockstar is not required to provide a separate claim chart for each Accused
Instrumentality, but rather may provide “representative examples of the alleged infringement.”
Orion IP, 407 F. Supp. 2d at 817. Rockstar has done exactly that.
Google’s Specific Examples of Alleged Deficiencies Show Its Position is Meritless.
Despite all the sound and the fury, Google only provides three specific examples of the
infringement contention’s alleged deficiencies. Even a cursory examination of the claim charts
debunks Google’s argument. Google first complains that with respect to claim 1 of the ’969
patent, which includes the limitation “receiving, from the user, a search request including a
search argument corresponding to the desired information,” it is unable to determine what
Rockstar contends is the search argument and what is the search request. Google Br. at 6-7.
Nonsense. The claim chart clearly shows the search argument “become a nurse” entered into the
search box of numerous Accused Instrumentalities. (Ex. 3 at 2-8.) The chart then shows on the
next page the search request, which is plainly and explicitly labeled “GET request of ‘Advanced
Search.’” (Id. at 9.) In fact, in other charts the same image is labelled “GET “search request.”
(Ex. 5 at 16-17.) Moreover, the screen shot plainly demonstrates that the Get request of
“Advanced Search” includes the search argument “become a nurse” on the third and fourth lines
of the request. (Ex. 3 at 9 (“become%20a%20nurse”)). Thus, there is no ambiguity as to what
Rockstar contends constitutes the search argument and the search request.
Google’s argument with respect to claim 1 of the ’245 patent is likewise flawed. Google
claims that it is unable to distinguish between what constitutes “user preference input” and “user
preference data.” In support of its position Google cites to the element “creating user preference
data based upon the user preference input.” Google Br. at 8. Google completely ignores the
element immediately preceding this element which states, “receiving user preference input from
the data processing device via the communications link.” (Ex. 4 at 3-9.) In this element, Rockstar
graphically lays out what constitutes user preference input. (Id.) For example, the first screen
shot shows that a user can input preferences relating to language, geographic region, the site or
domain, the terms appearing, the level of censorship of the search results, and more. (Id. at 3.)
Rockstar also provides evidence that Google uses user preference input by citing to Google’s
own blog post that shows that it uses those user inputs in its Accused Instrumentalities. (Id. at 4.)
In the next element starting on page 10 of the ’245 claim chart, Rockstar demonstrates—often in
Google’s own words—that Google creates user preference data based on the previously
described user preference input. For example, the blog post on page 12 shows that Google keeps
track of the user preference input—creating user preference data—such as location or prior
searches in order to provide the user with relevant advertisements. (Id. at 12.) Page 13 shows that
Google creates user preference data from user preference inputs such as searches. (Id. at 13.)
Specifically, the screen shot shows that Google has created user preference data in the interests
section showing that the user is interested in Memory Card Readers. (Id.) Moreover, the screen
shot shows that this data was created from the user’s “previous searches.” (Id.) Thus, it is
obvious what Rockstar contends constitutes “user preference input” and “user preference data.”
Finally, Google contends that the “chart for claim 1 of the ’183 patent does not identify
what the ‘first’ and ‘second display portion of a display of the data processing device’ are.”
Google Br. at 3. The claim requires the display of search results in the “first display portion” and
the advertisement in the “second display portion” of the display. (Ex. 7 at 45.) The very first
screen shot provided by Rockstar refutes Googles complaint. This screen shot is a graphic—
created by Google itself—showing that advertisements occur in one portion of the display and
search results in another. (Id.) These portions of the display are separated by a bolded red dashed
line. Nothing could communicate more clearly that there are two display portions: one for
advertisements and one for search results.
Google Falsely Contends That Rockstar Makes Blanket Assertions of Infringement
Under the Doctrine of Equivalents in Violation of Patent Rule 3-1(d).
Google contends that Rockstar has alleged that “to the extent [Rockstar] cannot prove
literal infringement, every limitation of every claim is present under the doctrine of equivalents.”
Google Br. at 10. Rockstar has done no such thing. Rather, Rockstar claims:
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 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.
(Ex. 1 at 4-5.) In short, Rockstar currently alleges literal infringement, but reserves the right to
amend and assert infringement under the doctrine of equivalents if the Court construes the claims
such that the Accused Instrumentalities fall outside the literal scope of the claims. This is proper.
The Local Patent Rules provide that following claim construction a party may “without leave of
court that amend its ‘Infringement Contentions’ with respect to the information required by
Patent R. 3-1(c) and (d).” Patent R. 3-6(a)(1).
Moreover, even case law cited by Google contradicts its assertions and supports
Rockstar’s position.2 For instance, in Schutz Container Sys., Inc. v. Mauser Corp., 2010 WL
2408983 *2 (N.D. Ga. June 11, 2010) (citing a Rule 3-6 equivalent) the court stated:
It is the Court's view the Plaintiffs are asserting a claim based on literal
infringement and reinforcing their right to amend to plead under the doctrine of
equivalents if the process of claim construction alters the meaning of the terms. It
is within Plaintiffs' right to amend its disclosure within thirty (30) days of the
Rockstar’s reservation of the right to amend its contentions to assert infringement under
the doctrine of equivalents following claim construction, is entirely consistent with the court’s
view in Schutz and Patent R. 3-6(a)(1). Accordingly, Google’s wrongheaded attempt to strike
Rockstar’s contentions under the doctrine of equivalents should be rejected.
If the Court Strikes Rockstar’s Contentions, Rockstar Requires Ample Time to Amend
As punishment for Rockstar’s imaginary sins, Google first proposes that Rockstar’s
infringement contentions should be struck in their entirety without leave to amend. In the
alternative, Google suggests that the Court should give Rockstar a mere ten days to amend its
infringement contentions and continue the trial date. Both of these requests are laughable.
Google’s citation of ICON Internet Competence Network B.V. v. Travelocity.com LP, 2013 WL 655024 (N.D. Tex.
Feb. 22, 2013) in support of its motion to strike is bizarre. In that case, the court had already performed claim
construction and then granted summary judgment of non-infringement. ICON had nothing to do with the sufficiency
of infringement contentions under Patent R. 3-1.
In claiming that Rockstar’s infringement contentions should be struck in their entirety
without leave to amend, Google cites no case in which this has ever happened much less one that
is still in the middle of fact discovery. Indeed, in H–W Tech., L.C. v. Apple, Inc., 2012 WL
3650597, at *5 (N.D. Tex. Aug. 2, 2012), cited by Google, after finding the infringement
contentions deficient, the court struck the contentions without leave to amend only as to one
product among many and allowed the plaintiff to amend its infringement contentions as to all
other accused products. Likewise, in Computer Acceleration, the court struck only one of two
accused products—a product that was previously completely uncharted. 503 F. Supp. 2d at 825.
Moreover, the plaintiff had received source code from the defendants and failed to supplement as
previously promised, the case was at a late stage—approximately 2.5 months from jury selection,
and fact discovery closed the day the opinion issued. Id. at 824, fn. 2. None of this is true in this
case. In reality, as the cases cited in Google’s brief demonstrate, this Court and others routinely
grant leave to supplement deficient infringement contentions, particularly when the case is yet in
fact discovery. See, e.g., Connectel, 391 F. Supp. 2d at 528-29 (granting leave to amend); Linex
Technologies, Inc. v. Belkin Int'l, Inc., 628 F. Supp. 2d 703, 714 (E.D. Tex. 2008) (same); Digital
Reg. of Tex., LLC v. Adobe Sys. Inc., 2013 WL 3361241, at *6 (N.D. Cal. July 3, 2013) (same);
Droplets, Inc. v. Amazon.com, 2013 WL 1563256, at *3-5 (N.D. Cal. Apr. 12, 2013) (same).
Furthermore, Google fails to demonstrate that Rockstar’s contentions should be struck.
Under the Computer Acceleration standard, on a motion to strike this Court considers the
following factors: “(1) the reason for the delay and whether the party has been diligent; (2) the
importance of what the court is excluding and the availability of lesser sanctions; (3) the danger
of unfair prejudice; and (4) the availability of a continuance and the potential impact of a delay
on judicial proceedings.” H-W Tech., 2012 WL 3650597 at *6 (citing Computer Acceleration
Corp., 503 F. Supp. 2d at 822). None of these factors favors striking Rockstar’s contentions.
As to the first factor, Rockstar exercised extraordinary diligence in creating its
contentions. Rockstar expended hundreds of hours over several months scouring the internet
searching for publically available evidence of infringement to produce claims charts that are
approximately 1,200 pages in length. Moreover, to the extent that Rockstar has not supplemented
its contentions based on Google’s confidential information, this is entirely Google’s fault. As
noted above, Google failed to timely produce source code and has not yet produced many
relevant portions of source code that would allow Rockstar to supplement. (Ex. 13 Roberts
7/24/14 Email); (Ex. 14 Bonn 8/27/14 Email.) Additionally, in dumping on Rockstar 180,000
pages of technical documentation—much of which is either irrelevant or unintelligible, Google
has stifled Rockstar’s efforts to identify relevant technical materials that may aid in
supplementation. (Ex. 14 Bonn 8/27/14 Email.) Finally, Rockstar contended from the beginning
of this dispute that it would supplement its contentions once Google produced sufficient source
code. Accordingly, this factor weighs against striking the contentions.
Google fails to even address the first half of the second factor: the importance of what the
court is excluding, but rather, simply argues that striking is the appropriate sanction. Google
wants Rockstar’s contentions struck in their entirety without leave to amend, effectively ending
the case. Rockstar’s infringement contentions are of unparalleled importance as this case cannot
continue without them. Moreover, the lesser sanction of requiring Rockstar to amend its
contentions is available. Accordingly, this factor weighs against striking the contentions.
With respect to the third factor, there is no risk of unfair prejudice to Google because any
prejudice that Google suffers is self-inflicted. Rockstar informed Google on April 18, 2014 that it
was in compliance with Patent R. 3-1 and would not supplement until required to do so by the
Discovery Order. Nonetheless, Google delayed three and a half months before filing its motion
and now hopes to successfully claim prejudice with respect to claim construction and discovery.
Google cannot. See Orion IP, LLC, 407 F. Supp. 2d at 817-18 (“A defendant cannot lay behind
the log until late in the case and then claim it lacks notice as to the scope of the case or the
infringement contentions”). Google has long known when claim construction would begin and
discovery would end, but chose to delay filing its motion to strike until now.
Moreover, Google was willing to forego moving to strike Rockstar’s contentions so long
as Rockstar did not move to strike Google’s invalidity contentions. (Ex. 15 Roberts 7/25/2014
Letter at 4.) (“[I]f [Rockstar] moves to strike Google’s invalidity contentions, then Google will
move to strike Rockstar’s infringement contentions.”) True to its promise, Google filed the
present retaliatory motion only after Rockstar moved to strike Google’s invalidity contentions.
Dkt. Nos. 117; 122. The conditional nature of Google’s motion belies the current claims of
prejudice. Furthermore, had Google produced all of its relevant source code on the date it was
required to—June 19, 2014 at the latest—Rockstar would have been required to provide updated
contentions by July 19, 2014—a month prior to the beginning of claim construction briefing.
Instead, Google delayed and has admittedly not yet completed its source code production. (Ex.
13 Roberts 7/24/14 Email).
Additionally, Google’s main complaint is an alleged lack of detail in the contentions.
But, “[a]n amendment that adds specificity and detail to contentions concerning [previously
identified accused products] …will not prejudice Defendants.” Thomas Swan & Co. Ltd. v.
Finisar Corporation et al., Case No. 2:13-cv-178, Dkt No. 167 (E.D. Tex. Aug. 11, 2014)
(citations omitted). Thus, this factor weighs against striking Rockstar’s contentions.
Finally, with respect to the final factor, fact discovery does not close in this case until
January 7, 2015 and trial is more than nine months away. Google is once again trying to use
supposedly deficient contentions to delay resolution of the case. Thus, this factor likewise
weighs against striking Rockstar’s contentions.
Google’s alternative request—that the court provide Rockstar a mere ten days to amend
contentions and continue the proceedings—is likewise absurd. Google well knows that Rockstar
could not possibly amend 1,200 pages of infringement contentions in ten days. Google cites no
case in which a party was given so little time to amend its contentions. In reality, courts routinely
grant thirty to sixty days to amend deficient infringement contentions. See, e.g., Connectel, 391
F. Supp. 2d at 528-29 (granting 60 days to amend); Digital Reg. of Tex., 2013 WL 3361241, at
*6 (same); Droplets, Inc., 2013 WL 1563256, at *5 (granting 30 days to amend). Given the
breadth of infringement and the extensive nature of Rockstar’s claim charts, should the court find
it necessary, Rockstar requests sixty days to amend its infringement contentions.
In any event, no amendment is necessary here until Google completes its production. It
would be wasteful of the parties’ resources to amend infringement contentions only to re-amend
them once Google completes its source code production. Especially given the breadth and scope
of Rockstar’s 1,200 pages of contentions, amending the original contentions before Google
completes its source code production is unnecessary, duplicative, and wasteful.
In conclusion, Rockstar has fully complied with Patent R. 3-1 and Rockstar will
supplement its contentions as required by the Discovery Order once Google completes it source
code production. However, to the extent the Court disagrees, the Court should grant Rockstar
sixty days to amend its contentions.
DATED: August 29, 2014
/s/ Shawn D. Blackburn
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 D. Blackburn, State Bar No. 24089989
SUSMAN GODFREY L.L.P.
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
Kristin Malone, WA State Bar No. 46251
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: (206) 516-3880
Facsimile: (206) 516-3883
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: (310) 789-3100
Facsimile: (310) 789-3150
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: (903) 757-6400
Facsimile: (903) 757-2323
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: (903) 236-9800
Facsimile: (903) 236-8787
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 29th 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/ Shawn D. Blackburn
Shawn D. Blackburn
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