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)

EXHIBIT 1

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
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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”

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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

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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 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 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

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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.

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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
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
T. John Ward, Jr.
State Bar No. 00794818
WARD & SMITH LAW FIRM
P.O. Box 1231
Longview, TX 75606-1231
Telephone: [phone]
Facsimile: [phone]
[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 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

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