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)

EXHIBIT A

Lance Yang
From:
Sent:
To:

Cc:
Subject:

John Lahad [[e-mail]]
Thursday, September 04, 2014 1:19 PM
Lance Yang; Amanda Bonn; '[e-mail]'; '[e-mail]';
'[e-mail]'; '[e-mail]'; '[e-mail]'; Alexander L. Kaplan;
Max L. Tribble; Cyndi Obuz; John Dolan; Justin A. Nelson; Kristin Malone; Max L. Tribble;
Parker Folse; Shawn Blackburn; Stacy Schulze; Tammie J. DeNio
QE-Google-Rockstar; 'Mark Mann'; '[e-mail]'; 'Andy Tindel'
RE: Rockstar v. Google: Motion to Strike Obviousness Combinations

Lance,
Thanks for your email. Rockstar respectfully declines Google’s invitation to withdraw our
motion in exchange for agreeing to a proposal made on the eve of the deadline for Google to
submit its sur-reply. Google’s latest proposal does not address Rockstar’s concerns. Under
this latest proposal, Google still seeks to rely on an unreasonably large number of obviousness
combinations, and still reserves the right to mix and match combinations on a limitation-bylimitation basis. This, too, does not comport with PR 3-3(b).
Presumably, you will cite your so-called compromise (and our rejection of it) in your sur-reply.
We respectfully request that if you do so, you include the entirety of this correspondence as
an exhibit.
Thanks in advance.
Best,
John

John P. Lahad
Susman Godfrey L.L.P.
713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

From: Lance Yang [mailto:[e-mail]]
Sent: Wednesday, September 03, 2014 7:10 PM
To: John Lahad; Amanda Bonn; '[e-mail]'; '[e-mail]'; '[e-mail]';
'[e-mail]'; '[e-mail]'; Alexander L. Kaplan; Max L. Tribble; Cyndi Obuz; John Dolan; Justin A. Nelson;
Kristin Malone; Max L. Tribble; Parker Folse; Shawn Blackburn; Stacy Schulze; Tammie J. DeNio
Cc: QE-Google-Rockstar; 'Mark Mann'; '[e-mail]'; 'Andy Tindel'
Subject: Rockstar v. Google: Motion to Strike Obviousness Combinations

John,

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Google maintains that it has properly identified its obviousness combinations under P.R. 3-3(b), as demonstrated by the
cases cited in the parties’ briefing on this issue, particularly Personal Audio. Google, however, still believes that this
issue can—and should—be resolved without burdening the Court.
To address Rockstar’s concern with the “any one or more” language cited on page 2 of its Reply, Google proposes to
drop the “or more” language. Thus, for each limitation in charts A-1 to A-39 that refers to B chart for obviousness,
Google would rely on the combination of the anticipatory reference (A-1 to A-39) with any one of the references cited
the cited B chart. In other words, Google is proposing to replace “one of ordinary skill in the art would be motivated to
combine the references addressed in claim charts A-1 to A-39 with any one or more of the Table B_ references” with
“one of ordinary skill in the art would be motivated to combine the references addressed in claim charts A-1 to A-39
with any one of the Table B_ references.”
Note that this proposal is limited to the “or more” language cited in Rockstar’s Reply regarding multi-reference
combinations for each limitation. Google reserves the right to rely on different obviousness references across different
limitations. For example, Google may rely on the combination of A+B for one limitation as well as the combination of
A+C for another limitation. Additionally, nothing in this proposal affects Google’s right to rely on obviousness based on
the knowledge of one of ordinary skill in the art (i.e., state of the art). Similarly, nothing in this proposal affects Google’s
ability to rely on multiple references to describe the background or scope of the art generally.
In exchange for Google’s proposed narrowing, Rockstar would withdraw its motion to strike in its entirety. Please let us
know if Rockstar agrees before 3 pm pacific on Thursday.
Also, Rockstar had previously cited the dispute regarding Google’s obviousness combinations as the holdup in adopting
the model order. In light of Google’s proposal, let us know if Rockstar will also agree to adopt the model order as
proposed in Google’s motion regarding entry of the model order.
We are available to discuss this proposal on a call.
Best,
Lance Yang
Associate
Quinn Emanuel Urquhart & Sullivan, LLP
865 S. Figueroa Street, 10th Floor
Los Angeles, CA 90017
213-443-3360 Direct
213-443-3000 Main Office Number
213-443-3100 Fax
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www.quinnemanuel.com
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