Rockstar Consortium US LP et al v. Google Inc

Filing 282

SUR-REPLY to Reply to Response to Motion re 220 MOTION to Amend/Correct Invalidity Contentions filed by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Affidavit of Meng Xi, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E)(Xi, Meng)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
LLC,
Plaintiffs,

Case No. 2:13-cv-893-JRG-RSP

v.
GOOGLE INC.,

JURY TRIAL DEMANDED

Defendant.

PLAINTIFFS’ SUR-REPLY IN OPPOSITION TO GOOGLE’S
MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS

I.

Google Fails To Demonstrate Diligence When It Missed Publicly Available Documents
Google knows that SEC filings may potentially be relevant art, yet fails to explain why it did

not search the SEC database prior to serving its invalidity contentions. In a case before this Court,
Function Media, L.L.C. v. Google, Inc., No. 2:07-cv-279-RSP, at Dkt. No. 191, Google filed a
notice of prior art pursuant to 35 U.S.C. § 282 that included the SEC filings of two companies. (Xi
Sur-Reply Decl., Ex. A at 9, 10.) Notably, Google was represented by the same counsel in the
Function Media case—Charles Verhoeven, David Perlson, and Carl Anderson of Quinn Emanuel—
as it is now. (Id. at Ex. B.) Google also routinely cites SEC filings as prior art in its own patents.
(See, e.g., id. at Ex. C.)
Google claims that it used its “best efforts” to engage in a prior art search which was broadly
focused on “patents, published patent applications, and non-patent literature, such as journals,
books, academic work, product literature, and internet searching.” (Dkt. No. 276 at 2, 4.) But
Google confuses breadth for depth. No doubt Google casted a wide net in attempting to locate
potentially relevant prior art; however, Google did not dig deep enough. Yahoo and Lycos were
referenced on the face of the patents-in-suit and Google’s invalidity contentions charted each Excite,
InfoSeek, Lycos, Open Text, and Yahoo as systems art. Yet Google inexplicably failed to—and has
given no excuse for why it did not—search the publicly available SEC website for information
pertaining to these systems. Google thus fails to establish any diligence with respect to discovering
the SEC filings and lacks good cause for the proposed amendment. Jazz Pharms., Inc. v. Roxane
Labs., Inc., No. 2:10-CV-06108, 2012 U.S. Dist. LEXIS 107408, at *17-19 (D.N.J. July 30, 2012)
(denying leave to amend invalidity contentions with supplemental FDA filings and specifically
rejecting defendant’s argument that it did not have an obligation to search the FDA website for prior
art before serving contentions).
1
3427578v1/013149

II

Google’s FOIA Submissions Are Unreasonable And Fatal To Good Cause
The Federal Circuit has emphasized the importance of a “timely application” for leave to

amend contentions by recognizing that “if the parties were not required to amend their contentions
promptly after discovering new information, the contentions requirement would be virtually
meaningless as a mechanism for shaping the conduct of discovery in trial preparation.” O2 Micro
Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Even if the Court
were to excuse Google for neglecting to search the SEC website prior to May 23, 2014, the Court
cannot excuse Google for choosing to submit FOIA requests to obtain the SEC filings when more
expeditious methods were available.

Google’s choice delayed the timely disclosure of these

supplemental references to Rockstar and also impacted Google’s ability to timely seek leave to
amend its contentions.
Google attempts, in hindsight, to manufacture a justification for choosing FOIA: it claims it
was concerned about the authenticity of SEC filings obtained through third-party services. (Dkt.
No. 276 at 4.) First, no appreciable difference exists between SEC filings obtained through FOIA
and those obtained through a third-party service—both are equally subject to an authenticity
challenge because only certified records subpoenaed from the SEC would be immune from such a
challenge. (Xi Sur-Reply Decl., Exs. D & E.) Second, Google attempts to hide behind its assertion
that “[p]laintiffs sometimes raise evidentiary challenges to printed publications” as reason for its
decision and points to Rockstar’s reservation of rights to dispute whether the supplemental
references are “printed publications” as evidence of the assertion.

But Google confuses the

authenticity of a document with whether a reference qualifies as a “printed publication” due to its
“public accessibility.” Rockstar’s reservation of rights pertains to the latter, which hinges on the
issue of whether the SEC filings have been made “sufficiently accessible to the public interested in
2
3427578v1/013149

the art” to qualify as a “printed publication” within the meaning contemplated in 35 U.S.C. §§ 102
and 103. In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) (citation and quotation omitted).
“[A] document is publically accessible if it has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the subject matter or art,
exercising reasonable diligence, can locate it.” Cordis Corp. v. Boston Scientific Corp., 561 F.3d
1319, 1333 (Fed. Cir. 2009). If Google contends, as it does, that somehow (1) it was not obligated
to search SEC filings to establish diligence, and (2) it must go through the laborious process of
FOIA to obtain these filings, then Rockstar would be able to raise questions directed to whether the
SEC filings were sufficiently “publicly accessible” back in 1996 to interested, reasonably diligent
persons who are ordinarily skilled in the art.
With respect to Google’s obligation to search SEC filings in the first place, if Google, an
interested party with vast resources and actively engaged in litigation over the patents-in-suit, did
not find the need to visit the SEC website to search for prior art during discovery, then the
presumption is that others interested in the art also would not look to search the SEC database for
prior art. See Jazz Pharm., 2012 U.S. Dist. LEXIS 107408, at *21 (documents filed with the FDA
may not be “publicly available” because “[i]f Roxane, a party actively engaged in litigation over the
Distribution Patents, did not find the need to visit the FDA website to search for prior art during
discovery, then why would others interested in the art look to the FDA website?”).
In addition, Rockstar could dispute whether the SEC filings in question were disseminated
such that it reached or was accessible to the proper audience—i.e., reasonably diligent, interested
persons of ordinarily skill in 1996. In light of Google’s use of FOIA to obtain the SEC filings,
when a filing may properly be considered “publicly accessible” also becomes a point of contention.
For example, if the SEC filing can only be obtained through FOIA, then it cannot be deemed to be
3
3427578v1/013149

publicly accessible by the date of its filing, only on a later date (e.g., perhaps one month out from
when a FOIA request is first submitted). Moreover, 17 C.F.R. § 230.406 permits the “confidential
treatment” of certain SEC filings, often for a limited period of time, such that their status as
“publicly accessible” “printed publications” during that period of time would be at issue.
Google’s use of FOIA to obtain the SEC filings not only caused unreasonable delay on
multiple fronts, but raises many questions about whether the SEC filings Google proposes to
supplement its invalidity contentions with are properly “printed publications” within the meaning of
35 U.S.C. §§ 102 and 103. If the supplemental references are not “printed publications,” then
Google fails to establish how they can be important to its invalidity defense—a further blow to its
ability to show good cause on this motion. See Volterra Semiconductor Corp. v. Primarion, Inc.,
796 F. Supp. 2d 1025, 1062 (N.D. Cal. 2011) (defendants bear the burden to show that the proffered
references are printed publications and “public accessibility is the ‘touchstone’ in determining
whether a reference is a ‘printed publication’”). Thus, the lack of answers to the foregoing
questions is fatal to Google’s motion for leave to amend invalidity contentions.
III.

Clear Prejudice And Lack of Diligence Warrant Denial Of Leave To amend
The Federal Circuit has made clear that the Court may, but need not, consider the other

factors remaining in the “good cause” test if there has been an absence of “diligence” and therefore
a lack of good cause. O2 Micro, 467 F.3d at 1368; see Geotag, Inc. v. Frontier Commc’ns Corp.,
No. 2:10-cv-265, 2013 U.S. Dist. LEXIS 86358, at *160-62 (E.D. Tex. June 12, 2013) (Gilstrap, J.);
see also Sage Electrochromics Inc. v. View Inc., No. C-12-6441, 2014 U.S. Dist. LEXIS 67161, at
*15 (N.D. Cal. May 15, 2014) (stating that the focus of the inquiry is upon the moving party’s
diligence and reasons for seeking a modification; the existence of prejudice may supply additional
reasons for denial). Here, the prejudice to Rockstar is clear—and arguably, presumed—when
4
3427578v1/013149

Google seeks to amend contentions after claim construction is complete and where there has been
no showing of diligence. Innovative Display Techs. LLC v. Acer Inc., No. 2:13-cv-00522-JRG ,
2014 U.S. Dist. LEXIS 83196, at *6-7 (E.D. Tex. June 19, 2014) (Gilstrap, J.) (holding, as a
practical matter, that allowing amendment of invalidity contentions two months before the
scheduled claim construction hearing would prejudice plaintiff and finding, on balance, that such
imposition of a burden on plaintiff would be improper given the defendant’s failure to establish
diligence). Thus, Google’s motion for leave to amend invalidity contentions should be denied.
Dated: November 17, 2014

Respectfully submitted,
By:

/s/ Meng Xi
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 D. 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]
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]
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]
5

3427578v1/013149

[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
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

CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to electronic
service are being served this 17th day of November, 2014 with a copy of this document via the
Court’s CM/ECF system per Local Rule CD-5(a)(3).
/s/ Meng Xi
Meng Xi

6
3427578v1/013149