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)
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WRITER'S DIRECT DIAL NO.
WRITER'S INTERNET ADDRESS
June 23, 2014
Mr. Justin Nelson
Susman Godfrey LLP
1201 Third Avenue
Seattle, Washington 98101-3000
Mr. John Lahad
Susman Godfrey LLP
Houston, TX 77002-5096
Rockstar Consortium, et al. v. Google Inc., Case No. 2:13-cv-893 (E.D. Tex.)
Dear Justin and John:
I write to follow up on Thursday’s meet and confer. We discussed three issues, Google’s request
that the parties jointly request that the Court enter the Model Order Focusing Patent Claims and
Prior Art to Reduce Costs, Rockstar’s contention that Google’s invalidity contentions do not
comply with the Patent Local Rules, and Google’s contention that Rockstar’s infringement
contentions do not comply with the Local Rules. These issues are addressed in turn below.
Model Order Focusing Patent Claims and Prior Art to Reduce Costs. As you know, on
April 14 and again on June 11, Google raised concerns regarding the fact that Rockstar is
currently asserting 142 claims. As a practical matter, this is too many. It is obviously far too
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many to try, and it is also far too many for the claim construction process. Accordingly, Google
asked Rockstar if it would jointly request that the Court enter its Model Order Focusing Patent
Claims and Prior Art to Reduce Costs. Rockstar refused.
As we explained during the meet and confer, if Rockstar does not agree to jointly request that the
Model Order be entered, Google intends to file a motion asking that the Model Order be entered,
and that Rockstar be ordered to initially reduce the number of asserted claims to 15 per patent
and no more than 50 total.
During our call, Rockstar pressed for confirmation that if it agrees to the Model Order, Google
will not file a motion. Google remains committed to agreeing to the terms of the Model Order.
Google will not file a motion for an order requiring Rockstar to reduce the number of asserted
claims if Rockstar agrees to the Model Order1 and will jointly request that the Court enter the
Model Order. Please let us know as soon as possible, and no later than tomorrow, whether
Rockstar will agree to do so.
We believe, however that it would be inappropriate for Rockstar to move to strike Google’s
invalidity contentions. As explained in more detail below, the Model Order provides a solution
to at least one of Rockstar’s complaints regarding Google’s invalidity contentions and so these
issues are tied.
Google’s Invalidity Contentions. Although we had a difficult time understanding Rockstar’s
claim that Google’s invalidity contentions are insufficient, it sounded as though there are
essentially three issues (although Rockstar sometimes combined the first two issues). First,
Rockstar objects to the breadth of Google’s invalidity contentions. Rockstar repeatedly
referenced the potentially “millions” of obviousness combinations identified in Google’s
invalidity contentions. As we explained, the notion of specific combinations is an outdated view
of what obviousness is. Under KSR, part of the obviousness analysis is analyzing the state of the
art. KSR and its progeny do not limit the amount of prior art to be analyzed to determine the
state of the art. Moreover, the number of possible obviousness combinations disclosed in
Google’s invalidity contentions is a function of the number of claims Rockstar has asserted
against Google. If Rockstar is concerned with the breadth of Google’s invalidity case, Google
proposed a solution: entry of the Court’s Model Order, which will streamline the case. Google
will narrow the scope of its invalidity case under the timeline set forth in the Model Order.
Rockstar also asserted that Google’s invalidity contentions do not comply with the Local Rules
because they purportedly do not identify where each element is disclosed in Google’s prior art
references. This simply is not true. For the lead references which Google contends anticipate
one or more of the asserted claims, Google provided claim charts that cite where in the reference
each of the elements is disclosed. (See Invalidity Contentions, Exhibits A1-A39.) As far as we
can tell, Rockstar does not dispute this point. In addition, Google included in those anticipation
To be clear, we mean the entire Model Order. Rockstar suggested that it might agree
to the “first time” reduction in the Model Order. We’re not certain what Rockstar means by that.
But, Google’s position is that the parties should jointly request that the Model Order—all of it—
charts statements that, to the extent that an element is found not to exist in that particular
reference, it is obvious in light of the cited prior art references in Exhibit B. Then, for that
particular element in the Exhibit A chart, Google cited to the relevant Table in Exhibit B. On the
call, Rockstar suggested that Exhibit B does not indicate where in the references the relevant
element is met. But, the Tables in Exhibit B quote where in each of the references the particular
element is disclosed.
Rockstar claimed on the call that Google only cited the reference and not where the element in
the reference is disclosed, but that just isn’t true. We asked if Rockstar’s concerns would be
resolved if we re-served Google’s Exhibit A charts and cited the various obviousness references
in each chart rather than in Tables in Exhibit B, which is largely a word processing task.
Rockstar responded that this would not solve the problem because the charts would be thousands
of pages long. Thus, this circles back to Rockstar’s complaint regarding the breadth of Google’s
invalidity contentions, which would be solved by entry of the Court’s Model Order. If that does
not solve the problem, then Rockstar needs to explain the basis for its contention that Google
only cited the reference and not where the element in the reference is disclosed.
Next, Rockstar complained about the specificity of Google’s claim charts for NetGravity and
Doubleclick because those companies were eventually acquired by Google. According to
Rockstar, Google cited only to the Wayback Machine in these claim charts. Again, this is false.
As we stated on the call, in the NetGravity chart, for example, Google cited to lengthy user
guides. Those documents were produced at GOOG-WRD-00189722 and GOOG-WRD00189795. Additionally, the Doubleclick chart cited to, among other things, two patents that
disclose how the system operated. These are hardly “fluff,” as Rockstar suggested Google only
Rockstar claimed that because Google acquired Doubleclick which had earlier acquired
NetGravity, Google is required by the Patent Local Rules to produce and cite to documents
sufficient to show the operation of these systems. There are several problems with Rockstar’s
position. In the first instance, when Rockstar was citing to the Rule that purportedly requires
Google to produce documents sufficient to show the operation of these systems, Rockstar was
citing to Patent Local Rule 3-4(a). That provision, however, describes Google’s obligations with
respect to production of documents describing the operation of the Accused Instrumentalities,
not prior art systems.
Further, Rockstar took the position that Google was required to have already produced every
single document on which it will rely at trial in relation to a particular reference. We disagree
that is what the Rules require and asked that Rockstar provide authority for its position.
Rockstar additionally argued that Google did not comply with Patent Local Rule 3-3 because it
did not include enough specificity in its invalidity charts regarding how these two systems
operated. But, Rockstar has not cited a single example of something it does not understand
based on the purported lack of specificity in Google’s charts. It is inappropriate for Rockstar to
move to strike without providing Google an explanation of what specifically is allegedly infirm
in Google’s contentions.
Finally, Rockstar suggested that because Google ultimately acquired Doubleclick and
NetGravity, it has a “heightened obligation” with respect to the level of specificity required in its
invalidity contentions for these systems. Rockstar did not cite any authority in support of this
position. We asked that Rockstar provide whatever support it has for this position.
In any event, as we stated on the call, we intend to produce additional documentation that we
have identified in the next week, and will continue to supplement Google’s production as new
material is discovered. Google’s document production will be substantially complete by
September 16, as required by the Docket Control Order.
Rockstar’s Infringement Contentions. Rockstar’s infringement contentions do not comply
with the Local Rules because they do not put Google on notice of what Rockstar claims infringes
the asserted claims, and how it does so. Rockstar’s infringement contentions fail to identify
where each and every element of each asserted claim is allegedly found in the Accused
Instrumentalities. Instead, they provide vague descriptions, parrot claim language, and cite
documents without explaining their relevance. They include numerous screen shots of various
publicly-available documents without identifying the portions of those document on which
Rockstar relies. And the claim charts mix and match citations to documents that appear to be
directed to different Accused Instrumentalities, rather than mapping a single Accused
Instrumentality to the asserted claims.
On the call, we provided some examples of how Rockstar’s infringement contentions are not
sufficiently specific. We explained that Rockstar does not explain what in Google’s systems is
the user profile, or what in Google’s systems is the associative search engine. To be more
specific, for claim 1 of the ‘969 patent, Rockstar does not identify what is the “search request” or
what is the “search argument.” We do not know if the “search argument” is the query, a word in
the query, or something else. Nor does Rockstar identify the “first database having data network
related information” or the “second database having advertisement related information.”
Rockstar only cites to a collection of screen shots. For claim 1 of the ‘245 patent, Rockstar
additional does not identify what the difference is between the “user preference input” and the
“user preference data,” or how Rockstar contends the latter is created based on the former. And,
for claim 1 of the ‘183 patent, Rockstar does not identify what the “first” and “second display
portion of a display of the data processing device” are. Are they windows, physical portions of
one screen, two different screens, or something else? Similarly, various asserted claims require a
“fee record,” but Rockstar’s infringement contentions do not identify what the “fee record” is.
Problems like this appear throughout Rockstar’s infringement contentions.
We asked Rockstar if there is some point in time in which Rockstar will supplement its
contentions based on the documents Google has produced. Google produced over 180,000 pages
of technical documentation pursuant to Patent Local Rule 3-4(a) on May 20, 2014. Rockstar,
however, will not agree to supplement its infringement contentions to provide more specificity
until required to do so under the Discovery Order. If Rockstar continues to refuse to do so, and
in particular if it moves to strike Google’s invalidity contentions, then Google will move to strike
Rockstar’s infringement contentions. Google’s invalidity contentions put Rockstar on notice of
Google’s contentions with far more specificity than do Rockstar’s infringement contentions.
We remain willing to further confer to try to resolve these issues and avoid burdening the Court,
and look forward to your response to our letter in furthering that end.
Very truly yours,
Andrea Pallios Roberts
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