Rockstar Consortium US LP et al v. Google Inc

Filing 138

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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EXHIBIT 15 quinn emanuel trial lawyers | silicon valley 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL: (650) 801-5000 FAX: (650) 801-5100 WRITER'S DIRECT DIAL NO. (650) 801-5023 WRITER'S INTERNET ADDRESS June 23, 2014 VIA EMAIL Mr. Justin Nelson Susman Godfrey LLP Suite 3800 1201 Third Avenue Seattle, Washington 98101-3000 Mr. John Lahad Susman Godfrey LLP 1000 Louisiana Suite 5100 Houston, TX 77002-5096 Re: 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 quinn emanuel urquhart & sullivan, llp LOS ANGELES | 865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL (213) 443-3000 FAX (213) 443-3100 NEW YORK | 51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL (212) 849-7000 FAX (212) 849-7100 SAN FRANCISCO | 50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL (415) 875-6600 FAX (415) 875-6700 CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL (312) 705-7400 FAX (312) 705-7401 LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL +44(0) 20 7653 2000 FAX +44(0) 20 7653 2100 TOKYO | Akasaka Twin Tower Main Bldg., 6th Floor, 17-22 Akasaka 2-Chome, Minato-ku, Tokyo 107-0052, Japan | TEL +81 3 5561-1711 MANNHEIM | Erzbergerstraße 5, 68165 Mannheim, Germany | TEL +49(0) 621 43298 6000 FAX +49(0) 621 43298 6100 FAX +81 3 5561-1712 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 1 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— be entered. 2 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 used. 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. 3 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. 4 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 01980.00010/6074449.1 01980.00010/6074449.1 5

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