Rockstar Consortium US LP et al v. Google Inc

Filing 220

MOTION to Amend/Correct Invalidity Contentions by Google Inc. (Attachments: # 1 Affidavit of Lance Yang, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10a, # 12 Exhibit 10b, # 13 Exhibit 11)(Perlson, David) (Additional attachment(s) added on 10/27/2014: # 14 Text of Proposed Order) (ch, ).

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

DECLARATION OF LANCE YANG IN SUPPORT OF GOOGLE INC.’S MOTION TO
AMEND INVALIDITY CONTENTIONS

I, Lance Yang, declare as follows:
1.

I am an attorney at the law firm of Quinn Emanuel Urquhart & Sullivan, LLP,

counsel for Defendant Google Inc. (“Google”) in this matter. I have personal knowledge of the
facts stated herein and if called to testify could and would competently testify thereto.
2.

Plaintiffs Rockstar Consortium US LP and NetStar Technologies LLC’s

(collectively, “Rockstar”) served its complaint on October 31, 2013 asserting 7 patents, which
included a total of 171 claims. Shortly after, Google began its prior art search. Google’s prior
art search efforts included multiple rounds of prior art searching by a professional prior art
search firm. Google also enlisted an expert consultant and two of Google’s outside counsel to
investigate prior art.
3.

Google’s prior art investigation conducted before serving its Invalidity

Contentions netted over 300 prior art references. These references included references related to
the search engine systems offered by Excite, Infoseek, Lycos, Open Text, and Yahoo. Google
cited approximately 200 of these references in the Invalidity Contentions it served on May 24,
2014. Google’s Invalidity Contentions included detailed claim charts for the search engine
websites offered by Excite, Infoseek, Lycos, Open Text, and Yahoo. These Invalidity
Contentions included over 2,750 pages and 46 detailed claim charts.
4.

After serving its Invalidity Contentions, Google continued to conduct its prior art

investigation and further develop its invalidity arguments and defenses. This investigation
including interviews with third parties associated with these companies and serving third party
subpoenas for information related to the Excite, Infoseek, Lycos, Open Text, and Yahoo search
engines prior art systems.
5.

Google became aware of the potential relevance of the filings related to the Initial

Public Offerings of Excite, Inc.; Infoseek Corporation; Lycos, Inc.; Open Text Corporation; and

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Yahoo! Inc in July 2014 after speaking with a third party who had first-hand knowledge of prior
art search engine companies. The IPO filings that Google seeks to add to its invalidity
contentions were unavailable on the SEC’s online search tool, EDGAR, because these
documents predated the earliest documents on EDGAR for these companies.
6.

On July 24, 2014, Google submitted multiple Freedom of Information Requests to

the SEC for these IPO filings. On August 14, 2014, the SEC provided eight of the nine IPO
filings that Google seeks to add to its invalidity contentions. Google produced these filings on
August 26, 2014.
7.

Attached as Exhibits 1-10 are a true and correct copies of the charts Google is

seeking to add to its Invalidity Contentions.
8.

Attached as Exhibit 11 is a true and correct copy of an email from Lance Yang of

Quinn Emanuel to counsel for Rockstar dated September 9, 2014.
I declare under penalty of perjury under the laws of the United States of America that the
foregoing is true and correct. Executed September 4, 2014 in Los Angeles, California.

___________________________________________
Lance Yang

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