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 C

Lance Yang
From:
Sent:
To:
Cc:
Subject:

Lance Yang
Monday, June 02, 2014 5:02 PM
John Lahad; QE-Google-Rockstar; Andrea P Roberts; Charles K Verhoeven; David Perlson;
Sam Stake; 'Mark Mann'
Alexander L. Kaplan; Amanda Bonn; Cyndi Obuz; John Dolan; Justin A. Nelson; Kristin
Malone; Max L. Tribble; Parker Folse; Shawn Blackburn; Stacy Schulze; Tammie J. DeNio
RE: Rockstar v. Google: Google's Invalidity Contentions

John,
Google confirms that those are the correct charts. The disclosures are not identical, but do rely on some of the same
underlying documents.
Regarding the highlighted references in your attachment, several of the references are charted in Exhibit B. Any
references not charted may be used, if at all, for different purposes, such as to establish the state of the art or for
background.
Best,
Lance Yang
Associate
Quinn Emanuel Urquhart & Sullivan, LLP
865 S. Figueroa Street, 10th Floor
Los Angeles, CA 90017
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From: John Lahad [mailto:[e-mail]]
Sent: Friday, May 30, 2014 3:19 PM
To: QE-Google-Rockstar; Andrea P Roberts; Charles K Verhoeven; David Perlson; Sam Stake; 'Mark Mann'
Cc: Alexander L. Kaplan; Amanda Bonn; Cyndi Obuz; John Dolan; John Lahad; Justin A. Nelson; Kristin Malone; Max L.
Tribble; Parker Folse; Shawn Blackburn; Stacy Schulze; Tammie J. DeNio
Subject: Rockstar v. Google: Google's Invalidity Contentions

Counsel,
I write regarding Google’s May 23, 2014 invalidity contentions. First, it appears that there are
several duplicate charts. For example, even though it is titled differently, A-1 is the same as A-23.
Both rely on the Naqvi WO. Likewise A-12 is the same as A-21 (Mooney), A-22 is the same as
A26 (Myaeng and Khorfage), and A3 is the same as A32 (Buckley). Please confirm my
understanding.
Second, Eastern District of Texas Patent Local Rule 3-3 requires each party opposing a claim of
patent infringement to serve invalidity contentions that must include “a chart identifying where
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specifically in each alleged item of prior art each element of each asserted claim is found, including
for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the
structure(s), act(s), or material(s) in each item of prior art that performs the claimed function[.]”
On May 23, 2014 Google served its invalidity contentions and included 39 charts for prior art
references. It also served an Exhibit C, which according to Google, lists references on which it
intends to rely. However, Google failed to provide charts for several of the references identified I
n Exhibit C. Those uncharted references are highlighted in the attached. If Google does in fact
intend to rely on these references as prior art, please provide charts in accordance with Local Rule
3-3 by the close of business Monday.
Thanks in advance,
John
John P. Lahad
Susman Godfrey L.L.P.
713-653-7859 (office)
713-725-3557 (mobile)
713-654-6666 (fax)

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