Rockstar Consortium US LP et al v. Google Inc

Filing 231

Joint Statement Concerning Update of Narrowing of Issues and Proposal for Claim Construction Hearing Procedure by Google Inc. (Sistos, Antonio)

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-JRG-RSP
JURY TRIAL DEMANDED

JOINT STATEMENT CONCERNING UPDATE ON NARROWING OF ISSUES AND
PROPOSAL FOR CLAIM CONSTRUCTION HEARING PROCEDURE
Pursuant to the Court’s October 21, 2014 Order (Dkt. 213), Plaintiffs Rockstar
Consortium US LP and NetStar Technologies LLC (“Rockstar”) and Defendant Google Inc.
(“Google”) hereby submit the following joint notice to the court detailing the parties’ agreements
regarding the claim construction disputes and proposals for the October 28, 2014 Claim
Construction hearing.
I.

TERMS NO LONGER IN CONTENTION
On Thursday, October 23 2014, Rockstar informed Google that it would no longer assert

claims 7, 12, and 20 of U.S. Patent No. 7,895,183 (“the ‘183 patent”). Accordingly, the Court
need not determine the antecedent basis of “the search term” as recited in claims 7 and 20 of the
‘183 patent or “the communications interface” as recited in claim 12 of the ‘183 patent. (Dkt.
158 at 29; Dkt. 183 at 30.)
II.

TERMS ON WHICH THE PARTIES HAVE COME TO AN AGREEMENT
The Parties agree to the constructions of the following terms:

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Term

Claims

Agreed Construction

“search results”

All Claims

“the set of results the user
receives from a search engine
after submitting a search
argument”

“user”

‘969 – All
‘178 – All
‘183 – All
‘883 – All
‘245 – All
‘970: 1, 10, 17, 26, 33, 45
‘969 – All
‘178 – All
‘183 – All
‘883 – All
‘245 – All
‘970: 1, 10, 17, 26, 33, 45

“a person using or operating a
data processing device”1

“the user”

III.

“the user” refers back to “a
user” in the preamble2

ORDERING OF THE TERMS FOR ORAL ARGUMENT
The Parties propose that the Court hear oral argument on the following terms, in the order

listed below. The parties are also at the Court’s pleasure should the Court wish to hear argument
on a term not listed in Part III or in a different order:
Group 1

1. Associative search engine
2. Correlating … the particular advertisement (including
construction of “correlating” and “particular advertisement”)
3. Advertisement database

Group 2

4.

Database Search Engine

Group 3

5.
6.
7.
8.

Generate a fee record
Extract a toll
User profile
User preference terms

Group 4

1

The parties agree their dispute regarding “user” can be resolved with the dispute regarding
“data processing device.”
2
To further narrow the issues, Rockstar has agreed to change its proposed construction for
“preference data for the user” to “data regarding the user's preferences.” Rockstar maintains its
constructions for the other user preference terms.

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2

Group 5

Group 6
Group 7
Group 8

Group 9

IV.

9. Prior searching history
10. Subsequent advertisement selection operations.
11. Selecting at least one different advertisement based upon
the non-selection of the at least one advertisement
12. Antecedent basis for claim 22 of the ‘969 Patent
13. Determining whether the ad[] was successful (Google
intends to argue this term with the prior term (#12))
14. Search refinement input
15. Refin[ing] the search results / Refined search results
16. Modified search results
17. Advertising Machine

TERMS WHICH THE PARTIES PROPOSE BE SUBMITTED ON THE
BRIEFING
The parties propose that the following claim construction disputes be submitted on the

briefing for the Court’s consideration, and accordingly do not require oral argument:
Term

Claims

“communications interface”

’245 – 9
’970 – 1, 10, 33, 41, 42
’183 – 12, 14
’883 – 20, 23
’245 – 1, 5, 8, 9, 17
’970 – 1, 10, 11, 14, 17, 23, 26, 27, 30, 33, 34
’178 – 1, 12, 17, 18
’183 – 1, 5, 9, 11, 14, 18
’883 – 1, 20
’969 – 6, 13
’245 – 1, 5, 8, 9, 17
’970 – 1, 3, 10, 11, 14, 17, 19, 23, 26, 27, 30,
33, 34, 36, 41, 42, 44
’178 – 1, 8, 12
’183 – 1, 5, 8, 9
’883 – 1, 4, 8, 20, 23
’970 – 3, 19, 36, 44

“communications link”

“data processing device [of a user]”

“direct[ing] the data processing device to a
website corresponding to the selection of the
advertisement”
“display[ing] in the [first/second] display
portion of a display of the data processing
device”

01980.00010/6302103.1

’183 – 1, 9, 14

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“distinct differing database”
“search argument”
“web page data format”
all ordering disputes

V.

’883 – 10, 28
All Claims
’183 – 1, 14
’970 – 17, 26, 41
’178 – 1, 12
’183 – 1

ROCKSTAR’S PROPOSAL FOR THE REMAINING CLAIM TERMS
Rockstar believes that the remaining terms that Google wishes to defer in Section VI

should be submitted on the briefs and decided now. Google has proposed interpreting numerous
claim terms (many of which, in Rockstar’s view require no interpretation or the meaning of
which should have been agreed). Google should not have two bites at the claim construction
apple because it proposed a large number of terms to begin with. Google’s argument that the
number of terms it proposed is a function of the number of claims also does not hold because
Rockstar’s list of terms was drawn from those claims. In the parties’ P.R. 4-1 Disclosures,
Rockstar proposed only 10 terms for construction; Google proposed over 100. Indeed, numerous
terms have dropped out over the briefing process because Rockstar told Google it would not
pursue certain claims. The parties have agreed on the terms for argument and the order of those
terms. Any remaining terms should either be submitted on the briefs or should be withdrawn,
with prejudice, by Google.
VI.

GOOGLE’S PROPOSAL FOR THE REMAINING CLAIM TERMS
There are certain terms where it is not entirely clear whether a bona fide or relevant

dispute exists between the parties—at least, based on Rockstar's current infringement
contentions. Additionally, Rockstar will need to reduce its number of asserted claims to no more
than 50 claims by November 6, 2014 (Dkt. 201), which may likely eliminate some of these
disputes.

Google is not seeking two bites at the apple as Rockstar suggests. As Google has

previously explained, the number of asserted terms is a product of the number of asserted claims,

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and the lack of clarity as to the issues in dispute is a product of the nature of Rockstar’s current
infringment contentions. Google is simply seeking a reasonable solution given the realities of
the case. And if, as Rockstar states, it only believed 10 terms needed construction, it should not
have an issue with Google’s proposal.
Accordingly, and in taking into consideration the Court’s request that the parties’ reduce
the issues for the October 28, 2014 claim construction hearing, Google is willing to withdraw the
terms below if it is without prejudice to its ability raise them, if needed, at a later time in the
case:
Term

Claims

“client”

’969 – 8, 14, 17, 22

“database”

’969 – 1, 8, 14, 17, 22
’245 – 1, 9, 17
’970 – 1, 5, 8, 10, 13, 15, 17, 21, 24, 26, 29,
31, 33, 39, 41
’178 – 1
’183 – 1
’883 – 1, 3, 10, 20, 22, 28

“data network related information”

’969 – 1, 8, 17, 22
’883 – 1, 10, 20, 28

“included in a web page”

‘970 – 7, 14, 23, 30, 38, 46
‘178 – 11, 19
‘183 – 5, 11, 18
‘970 – 10, 26

“receiving a response from the data processing
device via the communications link that
indicates non-selection of the at least one
advertisement”
“server [computer]”

’969 – 8, 17, 22
’970 – 33, 34-39, 41, 42-45, 47
’883 – 9
’970 – 5, 13, 21, 29

“sorting the search results”
“update[e|ing] the advertisement database
based upon the [non-] selection of the
advertisement”
“updating advertisements provided to the data
processing device based upon a determination

01980.00010/6302103.1

’178 – 8

5

that the user does not select the at least one
advertisement”

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DATED: October 27, 2014

/s/ Justin A Nelson (with permission)

/s/ David A. Perlson

Max L. Tribble, Jr. – Lead Counsel
State Bar No. 20213950
Alexander L. Kaplan, State Bar No. 24046185
John P. Lahad, State Bar No. 24068095
Shawn Blackburn, State Bar No. 24089989
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

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]

Justin A. Nelson, State Bar No. 24034766
Parker C. Folse, III, WA State Bar No. 24895
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

Attorneys for Google Inc.

Amanda K. Bonn, CA State Bar No. 270891
Meng Xi, CA State Bar No. 280099
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, CA 90067-6029
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
T. John Ward, Jr., State Bar No. 00794818
Claire Abernathy Henry, State Bar No.
24053063
WARD & SMITH LAW FIRM
P.O. Box 1231

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Longview, TX 75606-1231
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
S. Calvin Capshaw, State Bar No. 03783900
Elizabeth L. DeRieux, State Bar No. 05770585
D. Jeffrey Rambin, State Bar No. 00791478
CAPSHAW DERIEUX, LLP
114 E. Commerce Ave.
Gladewater, TX 75647
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Rockstar Consortium US LP and
Netstar Technologies LLC

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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 October 27, 2014.

/s/ Antonio Sistos

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