Rockstar Consortium US LP et al v. Google Inc

Filing 97

RESPONSE in Opposition re 92 MOTION for Leave to File A Supplemental Brief In Response To Googles Motion To Transfer In Light Of Newly-Acquired Evidence filed by Google Inc. (Attachments: # 1 Affidavit Declaration of Andrea Pallios Roberts, # 2 Exhibit A to Declaration of Andrea Pallios Roberts, # 3 Text of Proposed Order)(Perlson, David)

EXHIBIT A

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

INITIAL DISCLOSURE STATEMENT OF DEFENDANT GOOGLE INC.
Pursuant to Rule 26(a)(1)(A) of the Federal Rules of Civil Procedure and Paragraphs 1(a)
through (g) and 3(b) and (c) of this Court’s Discovery Order, Defendant Google Inc. (“Google”)
provides this Initial Disclosure Statement. Google makes these disclosures based on its current
knowledge, without the benefit of formal discovery in this action, and without waiver of
attorney-client privilege, work product, common interest privilege, or any other privilege.
Google’s investigations are continuing and Google expressly reserves the right to amend or
modify these disclosures in accordance with Rule 26 based on additional information obtained
through formal discovery, continued investigation, or other means. Google further reserves the
right to object on any applicable basis to the production of documents and things from the
categories identified herein or the obtaining of testimony from the witnesses identified herein.
Subject to the foregoing, Google provides the following information and disclosures
based on Plaintiffs Rockstar Consortium US LP and NetStar Technologies LLC’s (collectively,
“Plaintiffs”) Complaint and Disclosure of Asserted Claims and Infringement Contentions
Pursuant to Patent Rule 3-1 (“Infringement Contentions”), which allege infringement of U.S.

01980.00010/5867472.3

1

inventors, the prosecuting attorney, and/or other persons owing a duty of candor to the PTO.
Google has provided details of its unenforceability allegations in its Answer to Plaintiffs’
Complaint, dated January 10, 2014.
4.

Unclean Hands

Plaintiffs’ claims against Google are barred under the doctrine of unclean hands,
including for the reasons set for in paragraphs 45 – 231 of Google’s Answer to Rockstar’s
Complaint.
5.

Limitation on Patent Damages

On information and belief, any claim for damages based on the alleged infringement of
the claims of the patents-in-suit must be limited according to 35 U.S.C. §§ 286, 287, and/or 288.
(d)

Persons Having Knowledge of Relevant Facts

Based on information currently available to Google after reasonable investigation, the
following entities and individuals may have discoverable information that Google may use to
support its claims or defenses in this action. Google provides the following list without any
concession, agreement, admission, or waiver of any ultimate determination of relevance or
admissibility of particular information for any purpose, and without waiver of attorney-client
privilege or work-product immunity, or any other privilege or immunity. Google reserves the
right to amend or supplement this list of persons based on facts that may be disclosed during
discovery.
Name

Contact Information

Adam Juda

May be reached through
counsel for Google.

Connection to Case
Google employee

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
3

Knowledge
Structure,
characteristics,
operation, and/or
business aspects of the
accused features of
Search Ads.

Name
Jonathan
Alferness

Contact Information
May be reached through
counsel for Google.

Connection to Case
Google employee

Structure,
characteristics,
operation, and/or
business aspects of the
accused features of
Search Ads.

Google employee

Structure,
characteristics,
operation, and/or
business aspects of the
accused features of
Local Ads.

Google employee

Structure,
characteristics,
operation, and/or
business aspects of the
accused features of
Search Ads.

Google employee

Structure,
characteristics,
operation, and/or
business aspects of
accused advertising
features of Google’s
personalized search.

Co-Founder of Excite;
current Google
employee

Prior art relevant to
the patents-in-suit.

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
Amin Charaniya

May be reached through
counsel for Google.
Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

Myles Sussman

May be reached through
counsel for Google.
Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

Dandapandi
Sivakumar

May be reached through
counsel for Google.
Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

Graham Spencer

May be reached through
counsel for Google.

Knowledge

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

4

Name
Ben Lutch

Contact Information

Connection to Case

Knowledge

May be reached through
counsel for Google.

Co-Founder of Excite;
current Google
employee

Prior art relevant to
the patents-in-suit.

Co-Founder of Excite

Prior art relevant to
the patents-in-suit.

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
Martin Reinfried

Incredible Labs
San Francisco, CA

Michael Burrows May be reached through
counsel for Google.
Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

Principal developer of Prior art relevant to
AltaVista search
the patents-in-suit.
engine; current Google
employee

Louis Monier

Kyron
139 Forest Ave.
Palo Alto, CA

Principal developer of
AltaVista search
engine

Jerry Yang

Los Altos Hills, CA

Co-Founder of Yahoo! Prior art relevant to
Inc.
the patents-in-suit.

David Filo

Yahoo! Inc.
701 First Avenue,
Sunnyvale, CA
94089

Co-Founder of Yahoo! Prior art relevant to
Inc.
the patents-in-suit.

Representative
of Yahoo! Inc.

Yahoo! Inc.
701 First Avenue,
Sunnyvale, CA
94089

Yahoo! Inc.

Prior art relevant to
the patents-in-suit

Brian Pinkerton

A9
130 Lytton Ave
Palo Alto, California,
94301

Founder of
WebCrawler

Prior art relevant to
the patents-in-suit.

Steve Kirsch

OneID
156 2nd Street
San Francisco, CA
94107

Founder of InfoSeek
Corporation

Prior art relevant to
the patents-in-suit.

Danny Sullivan

Search Engine Land
Orange County, CA

Editor-in-chief, Search Prior art relevant to
Engine Land
the patents-in-suit.

5

Prior art relevant to
the patents-in-suit.

Name

Contact Information

Connection to Case

Knowledge

Tim Bray

Vancouver, Canada

Former Open Text
employee; former
Google employee

Prior art relevant to
the patents-in-suit

Lilly Buchwitz

May be reached through
counsel for Google.

Former Open Text
employee

Prior art relevant to
the patents-in-suit

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
Robert Carl
Barrett

Unknown

Named inventor of
U.S. Patent No.
5,727,129

Prior art relevant to
the patents-in-suit

Daniel Clark
Kellem

Unknown

Named inventor of
U.S. Patent No.
5,727,129

Prior art relevant to
the patents-in-suit

Paul Philip
Maglio

Unknown

Named inventor of
U.S. Patent No.
5,727,129

Prior art relevant to
the patents-in-suit

Youji Kohda

Unknown

Prior art author

Prior art relevant to
the patents-in-suit

Sesumu Endo

Unknown

Prior art author

Prior art relevant to
the patents-in-suit

Richard Prescott
Skillen

Contact information or
last known contact
information is believed to
be in possession of
Plaintiffs.

Named inventor of the
patents-in-suit

Conception and
reduction to practice
of the patents-in-suit;
prior art.

Frederick
Caldwell
Livermore

Contact information or
last known contact
information is believed to
be in possession of
Plaintiffs.

Named inventor of the
patents-in-suit

Conception and
reduction to practice
of the patents-in-suit;
prior art.

Bruce Garlick

Contact information or
last known contact
information is believed to
be in possession of
Plaintiffs

Attorney responsible
for prosecution of the
patents-in-suit

Prosecution of the
applications resulting
in issuance of the
patents-in-suit.

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DATED: April 28, 2014

QUINN EMANUEL URQUHART & SULLIVAN, LLP
By

/s/ David Perlson
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]
ATTORNEYS FOR DEFENDANT GOOGLE INC.

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