Rockstar Consortium US LP et al v. Google Inc
Filing
212
NOTICE by Google Inc re 198 Sealed Patent Response to Non-Motion,, Google's Objections to Plaintiffs Evidence Submitted with its Reply Claim Construction Brief (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Anderson, Carl)
EXHIBIT A
Carl Anderson
From:
Sent:
To:
Cc:
Subject:
Antonio Sistos
Wednesday, July 23, 2014 6:20 PM
John Lahad; Carl Anderson; Andrea P Roberts; Justin A. Nelson; Shawn Blackburn; Amanda
Bonn; Alexander L. Kaplan; jrambin@capshawlaw.com; ederieux@capshawlaw.com;
ccapshaw@capshawlaw.com; jw@wsfirm.com; claire@wsfirm.com; Max L. Tribble; Kristin
Malone; Parker Folse; Cyndi Obuz; John Dolan
QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
RE: Rockstar v. Google
John,
Regarding the impermissibility of construing a claim limitation such that its scope changes over time, I direct you to PC
Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359 (Fed. Cir. 2005). In particular:
A claim cannot have different meanings at different times; its meaning must be interpreted as of its effective
filing date. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed.Cir.1995) (en banc) (“[T]he focus is
on the objective test of what one of ordinary skill in the art at the time of the invention would have understood
the term to mean.”), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); see also Kopykake, 264 F.3d at
1383 (“[W]hen a claim term understood to have a narrow meaning when the application is filed later acquires a
broader definition, the literal scope of the term is limited to what it was understood to mean at the time of
filing.”).
Id. at 1363.
Regards,
Antonio Sistos
Of Counsel,
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6334 Direct
415.875.6600 Main Office Number
415.875.6700 FAX
antoniosistos@quinnemanuel.com
www.quinnemanuel.com
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From: John Lahad [mailto:jlahad@SusmanGodfrey.com]
Sent: Monday, July 21, 2014 9:26 PM
To: Carl Anderson; Andrea P Roberts; Justin A. Nelson; Shawn Blackburn; Amanda Bonn; Alexander L. Kaplan;
jrambin@capshawlaw.com; ederieux@capshawlaw.com; ccapshaw@capshawlaw.com; jw@wsfirm.com;
claire@wsfirm.com; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan
Cc: QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
Subject: RE: Rockstar v. Google
Carl,
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Wednesday at 11 am Pacific works. Please circulate a dial‐in.
Further, in its 4‐2 disclosures, Google stated that it “may also rely on expert testimony from
one or more experts or persons skilled in the art, including but not limited to Dr. Edward A.
Fox.” To the extent Google relies on expert testimony from Dr. Fox or any other expert or
witness, Rockstar reserves the right to submit rebuttal expert testimony in response.
Thanks, and talk to you Wednesday.
Best,
John
John P. Lahad
Susman Godfrey L.L.P.
713‐653‐7859 (office)
713‐725‐3557 (mobile)
713‐654‐6666 (fax)
From: Carl Anderson [mailto:carlanderson@quinnemanuel.com]
Sent: Monday, July 21, 2014 6:59 PM
To: Carl Anderson; John Lahad; Andrea P Roberts; Justin A. Nelson; Shawn Blackburn; Amanda Bonn; Alexander L.
Kaplan; jrambin@capshawlaw.com; ederieux@capshawlaw.com; ccapshaw@capshawlaw.com; jw@wsfirm.com;
claire@wsfirm.com; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan
Cc: QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
Subject: RE: Rockstar v. Google
John,
The parties are required under P.R. 4‐2(c) to meet and confer on claim construction issues. We propose to start with a
call on Wednesday, July 23, 2014 at 11:00 a.m. Pacific. Can you please confirm Rockstar is available?
Very truly yours,
Carl
From: Carl Anderson
Sent: Tuesday, July 15, 2014 7:25 PM
To: 'John Lahad'; Andrea P Roberts; 'Justin A. Nelson'; 'Shawn Blackburn'; 'Amanda Bonn'; 'Alexander L. Kaplan';
'jrambin@capshawlaw.com'; 'ederieux@capshawlaw.com'; 'ccapshaw@capshawlaw.com'; 'jw@wsfirm.com';
'claire@wsfirm.com'; 'Max L. Tribble'; 'Kristin Malone'; 'Parker Folse'; 'Cyndi Obuz'; 'John Dolan'
Cc: QE-Google-Rockstar; 'Mark Mann'; 'atindel@andytindel.com'; 'blake@themannfirm.com'
Subject: RE: Rockstar v. Google
John,
Further to our efforts to reduce the number of potential disputes before the court, we also withdraw the following term:
“transmit[ting] the search results together with the at least one advertisement via the [at least one] communications
link to the data processing device.”
As that term was likewise not included in Rockstar’s P.R. 4‐1 submissions, the parties need not exchange proposed
constructions for it.
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Very truly yours,
Carl
From: John Lahad [mailto:jlahad@SusmanGodfrey.com]
Sent: Monday, July 14, 2014 10:31 PM
To: Carl Anderson; Andrea P Roberts; Justin A. Nelson; Shawn Blackburn; Amanda Bonn; Alexander L. Kaplan;
jrambin@capshawlaw.com; ederieux@capshawlaw.com; ccapshaw@capshawlaw.com; jw@wsfirm.com;
claire@wsfirm.com; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan
Cc: QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
Subject: RE: Rockstar v. Google
Carl,
Thanks for your email. This confirms Google’s withdrawal of “search engine.” Again, this in no
way impacts Plaintiffs’ ability to assert claims that include that term. And thanks for the
clarification on the typo.
As to the “determining whether the advertisement was successful” term, Google can have
more time to complete the tasks you mention if it wishes, provided that it offers a proposed
construction in a timely fashion. And I’m confident Google won’t object to any necessary
response from our end.
Thanks,
John
John P. Lahad
Susman Godfrey L.L.P.
713‐653‐7859 (office)
713‐725‐3557 (mobile)
713‐654‐6666 (fax)
From: Carl Anderson [mailto:carlanderson@quinnemanuel.com]
Sent: Monday, July 14, 2014 8:29 PM
To: John Lahad; Andrea P Roberts; Justin A. Nelson; Shawn Blackburn; Amanda Bonn; Alexander L. Kaplan;
jrambin@capshawlaw.com; ederieux@capshawlaw.com; ccapshaw@capshawlaw.com; jw@wsfirm.com;
claire@wsfirm.com; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan
Cc: QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
Subject: RE: Rockstar v. Google
John,
In light of the fact that Rockstar is not asserting ‘969 claim 15 or ‘183 claim 16, we agree that there is no need to
construe “access provider” and “update an access provider webpage.” Furthermore, we no longer propose to construe
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the term “search engine.” As that term was not included in Rockstar’s P.R. 4‐1 submissions, the parties need not
exchange proposed constructions for it.
The term “the selection of an advertisement” should read “the selection of the advertisement.” I trust that resolves
your question. Apologies for the typo.
Finally, with regard to Rockstar’s request to add “determining whether the advertisement was successful” to its list of
terms, I note that your request comes just one day before proposed constructions are due. While we have always made
every effort to cooperate with Rockstar, this does not give Google sufficient time to complete an investigation of
potential claim constructions and gather supporting evidence for this term. Please confirm that, to the extent Google
requires more time to complete those tasks, Rockstar will not object to timely supplementation by Google for that
term.
Very truly yours,
Carl
Carl Anderson
Partner,
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6328 Direct
415-875-6600 Main Office Number
415-875-6700 FAX
carlanderson@quinnemanuel.com
www.quinnemanuel.com
This message was sent by an attorney and may contain confidential information protected by a legal privilege. If you are
not the intended recipient, please delete it and notify us by phone or e-mail that you have done so.
From: John Lahad [mailto:jlahad@SusmanGodfrey.com]
Sent: Monday, July 14, 2014 8:47 AM
To: Carl Anderson; Andrea P Roberts; Justin A. Nelson; Shawn Blackburn; Amanda Bonn; Alexander L. Kaplan;
jrambin@capshawlaw.com; ederieux@capshawlaw.com; ccapshaw@capshawlaw.com; jw@wsfirm.com;
claire@wsfirm.com; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan
Cc: QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
Subject: RE: Rockstar v. Google
Carl,
This confirms that the parties will not offer constructions for (1) “at least one differing
database,” (2) “based upon user interests selected from the group…,” (3) determining, via
communication with the data processing device that the user does not select the at least one
advertisement,” (4) “providing/provide,” and (5) ‘”user profile database.” Of course, this in no
way impacts our ability to assert claims containing these terms.
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This also confirms that Google has added “client” to its list. Similarly, Plaintiffs add
“determining whether the advertisement was successful” to their list of terms, and intend to
propose a construction for that term.
Finally, two questions for you. First, we did not assert any of the “access provider” claims.
Google’s 4‐1 disclosures list “access provider” and “update an access provider webpage.”
Does Google intend to seek construction of these terms from unasserted claims? Please let
me know. Second, Google’s 4‐1 disclosures include the term “the selection of an
advertisement,” but none of the asserted claims include this term. There are other “selection”
terms, but I cannot find this particular term in a claim. Can you point me to the source of this
term, please?
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: Carl Anderson [mailto:carlanderson@quinnemanuel.com]
Sent: Monday, June 30, 2014 7:14 PM
To: Andrea P Roberts; John Lahad; Justin A. Nelson; Shawn Blackburn; Amanda Bonn; Alexander L. Kaplan;
jrambin@capshawlaw.com; ederieux@capshawlaw.com; ccapshaw@capshawlaw.com; jw@wsfirm.com;
claire@wsfirm.com; Max L. Tribble; Kristin Malone; Parker Folse; Cyndi Obuz; John Dolan
Cc: QE-Google-Rockstar; 'Mark Mann'; atindel@andytindel.com; blake@themannfirm.com
Subject: Rockstar v. Google
Counsel,
Through further review of the 143 asserted claims and the parties’ P.R. 4‐1 submissions, and in an effort to reduce the
number of potential disputes before the court, we withdraw the following terms from consideration for claim
construction:
1. at least one differing database
2. based upon user interests selected from the group consisting of social interests, family interests, political
interests, technological interests, geographical interests, environmental interests, and educational interests
3. determining, via communication with the data processing device that the user does not select the at least one
advertisement
4. provid[e|ing]
5. user profile database
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None of the terms above were included in Rockstar’s P.R. 4‐1 submissions. Please confirm that Rockstar agrees that
these terms need not be construed, and thus the parties need not exchange proposed constructions for those terms in
their P.R. 4‐2 submissions.
Additionally, we inadvertently omitted the term “client” from our proposals. We accordingly intend to offer a
construction for “client” in our P.R. 4‐2 exchange. Please confirm Rockstar will do the same.
Very truly yours,
Carl
Carl Anderson
Partner,
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6328 Direct
415-875-6600 Main Office Number
415-875-6700 FAX
carlanderson@quinnemanuel.com
www.quinnemanuel.com
This message was sent by an attorney and may contain confidential information protected by a legal privilege. If you are
not the intended recipient, please delete it and notify us by phone or e-mail that you have done so.
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