Rockstar Consortium US LP et al v. Google Inc

Filing 142

SUR-REPLY to Reply to Response to Motion re 117 MOTION to Strike Defendant Google Inc.'s Deficient Obviousness Disclosure Under Patent Rule 3-3(B) filed by Google Inc. (Attachments: # 1 Declaration of Lance Yang, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Perlson, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES LLC,
Plaintiffs,
v.
GOOGLE INC.
Defendant.

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Civil Action No. 13-cv-00893-RG
JURY TRIAL DEMANDED
FILED UNDER SEAL

GOOGLE INC.’S SUR-REPLY IN OPPOSITION TO PLAINTIFF’S MOTION TO STRIKE
GOOGLE INC.’S OBVIOUSNESS DISCLOSURE
UNDER PATENT RULE 3-3(b)

Rockstar’s reply confirms that the issue it has with Google’s invalidity contentions is that
they allegedly disclose too many prior art combinations. But if that is the problem, it is entirely of
Rockstar’s own making. Indeed, Rockstar does not dispute that the number of Google’s obviousness
combinations is a proportionate and necessary response to Rockstar’s 132 asserted claims, Rockstar
also fails to address the inconsistency between its continued pursuit of 132 claims and its position on
narrowing obviousness combinations with the Model Order of this Court, which requires a plaintiff
to narrow asserted claims first. Rockstar also does not dispute that entry of the Model Order would
reduce Google’s obviousness combinations, even under its own “algebra.” Moreover, the large
number of overlapping prior art systems is a direct consequence of the fact that, as even named
inventor Livermore has admitted, the patents rely entirely on preexisting technologies and add no
“new technology” to the fields of Internet search engines and advertising. (8/14/2014 Livermore
Depo., 270:7-15 (“Q: Do you think the associative search engine patents disclose any new type of
technology? A: No.”); 282:21.) (“We didn’t need any new technology.”).)
While Rockstar complains that it is not on notice of Google’s combinations, Google provided
detailed and well articulated combinations in its invalidity contentions. Rockstar fails to identify any
case where a court struck such combinations. Rockstar’s litany of complaints about the allegedly
“impermissibly high number of obviousness combinations” provide no basis for unilaterally
restricting Google’s properly disclosed invalidity defenses, and Rockstar’s motion should be denied.
I.

GOOGLE HAS REPEATEDLY ATTEMPTED
REGARDING BOTH PARTIES’ CONTENTIONS.

TO

AVOID

DISPUTES

While Rockstar alleges that “Google did nothing” to address the parties disputes about their
contentions until Rockstar filed its Motion to Strike, that is simply not true. Google’s good faith
attempts from the beginning of the case to narrow these disputes, the number of asserted claims, and
the issues in this case are documented and unrebutted. (Dkt. 123, 3-6.) From the outset, on April 14,
2014, months before Rockstar raised any issue with combinations, Google requested that Rockstar
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reduce its 144 originally-asserted claims, which were “far too many” and would “greatly increase the
volume of Google’s invalidity contentions, which will be a burden to all parties.” (Dkt. 123-2, 2.)
Rockstar did not respond. And while Rockstar advises that Google should have “run to the Court”
(Dkt. 134, 1), Google sought to resolve the parties’ issues through the meet and confer process as
Google understands is its duty to do. Google offered proposals to address Rockstar’s complaints
regarding Google’s combinations and advocated for the entry of this Court’s Model Order. (Dkt.
123, 3-6; Dkt. 105, 4-6.) On September 3, 2014, Google even offered to remove the “one or more”
language from its contentions—the language that Rockstar says is the source of Google’s allegedly
“millions” of combinations. (Dkt. 117, 2; Dkt. 134, 2.) While this should have resolved Rockstar’s
articulated concern, Rockstar rejected it. (Ex. A to Yang Decl.) These rejections reveal its true
intention, namely, to leave Google with zero obviousness combinations to defend against 132 claims.
II.

GOOGLE PROPERLY IDENTIFIED ITS OBVIOUSNESS COMBINATIONS.1
Rockstar’s reply does not address any of Google’s cases showing that Google’s obviousness

combinations comply with P.R. 3-3(b). Instead, Rockstar relies almost exclusively on Personal
Audio, LLC v. Togi Entm’t, Inc., Case No. 2:13-cv-13, Dkt. 251 (E.D. Tex. Aug. 6, 2014) (“Personal
Audio I”). But Personal Audio I does not support Rockstar’s position that a high number of
combinations necessarily violates P.R. 3-3(b).

(Dkt. 134, 3.)

Indeed, in Personal Audio I,

“Plaintiff’s concern with regard to the Motion appear[ed] to be less about the total number of
references disclosed, and more about whether the disclosure in the invalidity contentions is sufficient
to provide notice to Plaintiff of Defendants’ invalidity theories.” Id., 2. And the Court did not find
P.R. Rule 3-3(b) limited the number of combinations.
Significantly, the defendants in Personal Audio I attempted to rely on unidentified
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To the extent that Rockstar asserts that its motion would strike a single reference in
combination with the knowledge of one of ordinary skill, it is mistaken. (Dkt. 134, 2.) It is wellestablished that “a single prior art reference” in light of the state of the art is not considered “a
combination of items.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed.
Cir. 2000). Google has adequately identified its is single reference obviousness allegations.
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combinations, stating “Defendants’ inclusion of exemplary combinations does not preclude
Defendants from identifying other invalidating combinations as appropriate.” Personal Audio I, 2.
The Court found that “simply providing a small number of ‘exemplary combinations’ does not serve
the notice function of the invalidity contentions as to every possible combination of a universe of
references.” Id. Google, in contrast, does not rely on “exemplary combinations” to allow it to later
rely on other combinations. Instead, Google provided notice of every combination on which Google
intended to rely. (Dkt. 123, 3-6.) Rockstar’s briefing confirms that it understands exactly the
combinations identified by Google.2 (Dkt. 117, 1-2; Dkt. 134, 2.)
Moreover, Rockstar only tells half the story of Personal Audio. First, in Personal Audio, the
parties’ had served expert reports and plaintiffs had narrowed the asserted claims to 4. Here, Google
still must defend against 132 claims, and claim construction has not occurred. Second, Personal
Audio I noted that “the Court may grant Defendants leave to utilize those specific combinations if
Defendants are able to identify the portion of their invalidity contentions that served to put Plaintiff
on notice as to that theory of obviousness.” Id. Defendants subsequently moved for a ruling that
certain combinations were adequately identified under P.R. 3-3(b) and that motion was granted.
Personal Audio, Dkt. 277, 1-2 (E.D. Tex. Aug. 20, 2014) (“Personal Audio II”).
While Personal Audio II came down the day before Rockstar filed its Reply, Rockstar
ignores it entirely. Perhaps this is because Google’s identification of the combinations-at-issue
closely mirrors the Court-approved disclosures in Personal Audio II. For example, the Court in
Personal Audio II allowed use of the following combination the “Klemets” and “Surfpunk”
references. Id., 1. The cited language identifying this combination is reproduced below:
[A] POSITA would have been motivated to combine any one of [Lemay-1, Klemets,
Jonas, Bobo, England-1, Astle, England-2, Hooper, Clanton, Chen, Story or other
references] with any one of, for example: NCSA 3 , NRL, ABC Radionet, AudioNet,
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While Rockstar complains of Google’s allegedly “broad, non-binding language,” Google
confirmed it will not rely on non-identified/charted combinations. (Ex. C to Yang Decl., 1.)
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CBC, CBS News, APOD, PBS, RealAudio, CNN, TravelSound, Compton-1,
Compton-2, Kenner-1, Kenner-2, Kent, Keating, Morrison, Surfpunk, RealAudio
Content Creation Guide, Patrick, Malesky, Sackman-1, Cline, Notess, Sackman-2,
Sackman-3, Orlando Sentinel, Luther-1, Luther-2, Luther-3, Clarient, The New
Yorker, Stone, PBS Preview-1, PBS Preview-2, PBS Preview-3, Snyder,
News@Clarinet, Newsbytes-2, Patent, Banks, Johnston, DC Watch, Richardson,
Klisheimer, IAT, Hughes, Cacas, Ojeda-Zapata 1, Winitski, NOAA Report, Kramer,
Surfer, APOD-June-20, APOD-June-21, Matthews, Reisman, Gabbe, Oliver,
Karpinski, and Shafran.
Personal Audio, Dkt. 109-6 (E.D. Tex. April 17, 2014). The form of this allowed disclosure is
virtually identical to Google’s disclosures in this case, except that Google does not just identify
exemplary combinations, it identifies all asserted combinations. For example, for the limitation
“providing the search results to the user,” Google’s Chart for the Adapt/X anticipatory reference
identifies the combination references in Table B1 (Dkt. 123-9, 14) and Table B1 states:
One of ordinary skill in the art would be motivated to combine the references
addressed in claim charts A-1 to A-39 [which identify Alta Vista, Buckley, Bull,
Dasan, Dedrick 1994, Dedrick 1995, Dedrick Patent, DoubleClick, Merriman I,
Merriman II, Excite, Filepp, FMQA, Fox, Gallagher, HealthGate, HotBot, Infoseek,
Kohda ’96, Kohda, Larsen, Mooney, Myaeng, Naqvi WO, NetGravity, Open Text,
PBS, Peckover, Phillips, PR News, Radecki, Reese, Smart, Submit-IT, Tognazzini,
Turpeinen, Lycos, Webcrawler, Wilms, and Yahoo!] with any one or more of the
Table B1 references listed below [which identifies Peckover, Dow Jones Services
References, Dedrick Patent, Reese, Another Search Engine, The ‘Hottest’ Search
Engine, Filepp, Knoblock, Dummies, Naqvi WO, Bull, HealthGate, InfoSeek, Open
Text, PR News, Kohda ’96, Kohda ’853, Fox 1993, Fox 1991, Short History,
Pinkerton, Frook, Verity, Sullivan, Meeker, Dedrick 1994, Dedrick 1995, Gallagher].
(Ex. B to Yang Decl., 2.) These well articulated identifications of combinations fully satisfy P.R. 33(b).3
III.

GOOGLE PROPERLY IDENTIFIED THE MOTIVATIONS TO COMBINE.
While Rockstar suggests that Google’s disclosures of motivations to combine under P.R. 3-

3(b) are merely “serial descriptions of prior art” (Dkt. 134, 5), this is demonstrably false.
Google’s32-page narrative dedicated to motivations to combine is replete with specific motivations.
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To the extent that the Rockstar argues that the “one or more” language in Google’s
contentions distinguishes this case from Personal Audio, Google disagrees. Further, Google offered
to remove the “one or more” language on September 3, 2014. Rockstar, however, rejected the offer.
(Ex. A to Yang Decl.).
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For example, as relevant to user profiles and delivering search results and ads, Google stated:
These publications, as well as the others cited herein, recognize the problem to be
solved: assisting Internet users in locating relevant information. They also evidence a
trend in finding ways to solve this problem and personalize a computer users’
experience through, for example user profiles and other known methods. This
problem and trend would motivate one skilled in the art to integrate the elements in
the Asserted Patents into a new application.
(Dkt. 123-11, 14.) The alleged “serial descriptions of the prior art” also demonstrate that the claimed
features were well known, that their combination would have generated predictable results, and that
one of ordinary skill would have been motivated to combine them. The passage that Rockstar
complains of even states that “user preferences and user profiles were used to identify content that
might be of interest to a particular user, specifically to try to solve the problem of ‘information
overload’” (Dkt. 123, 9-10) and “a motivation may be found implicitly in the prior art.” Alza Corp.
v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (emphasis added). Google has more than
adequately identified the motivations, as a comparison of the Court-approved motivations in
Personal Audio further confirms. (Compare Personal Audio I, Dkt. 109-6, 29-30 with Dkt. 123-11,
13-44.) KSR also authorizes additional reasons why combinations may be obvious, such as design or
market trends. Rockstar does not dispute that Google has provided these reasons. (Dkt. 123-11, 10.)
IV.

ROCKSTAR FACES NO PREJUDICE.
Rockstar admits that it is not asserting that it would be prejudiced by the amount of discovery

resulting from the number of Google’s combinations. (Dkt. 134, 5.) Instead, Rockstar alleges that
“If [a reference] might be combined with any other reference to form an obviousness combination,
Rockstar is entitled to know.” (Reply, 5 (emphasis added).) Google has provided this exact
information in its invalidity contentions (See, e.g., Dkt. 123, 7.) Google’s specific combinations are
easily identified and because each combination reference is separately charted, Rockstar has not been
prejudiced, even under its own “algebra” or interpretation of P.R. 3-3(b).
For the foregoing reasons, Rockstar’s motion should be denied in its entirety.
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DATED: September 4, 2014

QUINN EMANUEL URQUHART & SULLIVAN, LLP
By /s/ David Perlson
J. Mark Mann
State Bar No. 12926150
G. Blake Thompson
State Bar No. 24042033
MANN | TINDEL | THOMPSON
300 West Main Street
Henderson, Texas 75652
[phone]
[phone] (fax)
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Charles K. Verhoeven
[e-mail]
David A. Perlson
[e-mail]
50 California Street, 22nd Floor
San Francisco, California 94111-4788
Telephone: [phone]
Facsimile: [phone]
Attorneys for Google Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a)(3) on September 4, 2014.

/s/ Lance Yang
Lance Yang

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