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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS SKYHOOK WIRELESS, INC., Plaintiff and Counterclaim-Defendant, v. GOOGLE INC., Defendant and Counterclaimant. ) ) ) ) ) ) ) ) ) ) ) ) )
Case No. 1:10-cv-11571-RWZ Case No. 1:13-cv-10153-RWZ
REQUEST FOR ORAL ARGUMENT
DEFENDANT GOOGLE INC.’S MOTION TO REQUIRE SKYHOOK TO REDUCE THE NUMBER OF ASSERTED CLAIMS AND PROVIDE ADEQUATE INFRINGEMENT CONTENTIONS Plaintiff Skyhook Wireless, Inc. (“Skyhook”) is asserting infringement of 98 patent claims across 13 patents. Courts faced with assertion of over 50 patent claims have found that it imposes a “bone crushing burden” on the defendant and required that the number of claims be reduced. Network Prot. Scis., LLC v. Fortinet, Inc., No. C 12-01106 WHA, 2013 U.S. Dist. Lexis 66487 (N.D. Cal. May 9, 2013) at *5. For the first time on April 15, 2013, Skyhook identified 83 claims that are directed to the same, broad set of accused products, but Skyhook’s infringement contentions fail to clearly identify (1) the accused products, (2) where each asserted claim element is found within each accused product, and (3) the supporting evidence. Skyhook’s assertion of 98 patent claims make this case unmanageable, and it would be impractical to attempt to try to a jury a case involving even a fraction of the claims Skyhook is asserting. See D.I. 152. Defendant Google Inc. (“Google”) respectfully requests that the Court require
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Skyhook to reduce the number of asserted claims to a manageable number, for example a limit of 20 non-duplicative claims, and to provide adequate infringement contentions.
STATEMENT OF FACTS On September 15, 2010, Skyhook filed a Complaint For Patent Infringement (D.I. 1), alleging infringement of four patents: U.S. Patent Nos. 7,414,988 (“the ‘988 patent”); 7,433,694 (“the ‘694 patent”); 7,474,897 (“the ‘897 patent”); and 7,305,245 (“the ‘245 patent”). On February 14, 2011, Skyhook served Preliminary Infringement Disclosures (“PID”) asserting infringement of 15 patent claims of the four patents.1 On March 29, 2013, Skyhook filed its Amended Complaint For Patent Infringement (D.I. 150), alleging infringement of 13 patents.2 On April 15, 2013, Skyhook served PID asserting 83 claims of nine patents. See D.I. 152. The below chart summarizes the patents and patent claims Skyhook currently is asserting: U.S. Patent Number 7,305,2453 7,414,9883 7,433,694 Asserted Claims – Feb. 14, 2011 PID Asserted Claims – Oct. 31, 2012 Amended PID Asserted Claims – Apr. 15, 2013 PID No. of Asserted Claims 6 3 1, 2 2
1, 2, 4-6, 8 1-3 1, 2
On September 24, 2012, the Court held the ‘988 and ‘245 patents invalid. See D.I. 96 at 36. As a result, on October 31, 2012, Skyhook served Amended Infringement Disclosures (D.I. 107), asserting infringement of six claims of the two remaining patents. 2 The Amended Complaint includes claims for infringement of the ‘988 patent (Count I) and the ‘245 patent (Count IV), despite this Court having granted Google’s Motion For Summary Judgment, holding both the ‘988 and ‘245 patent invalid. See D.I. 150 at 2, 10; see also, D.I. 96 at 36.. Google’s Motion To Dismiss Counts I And IV Of Plaintiff’s Amended Complaint For Patent Infringement (D.I. 156) and Motion For Leave To File Reply In Support Of Motion To Dismiss Counts I And Iv Of Plaintiff’s Amended Complaint For Patent Infringement (D.I. 161) are pending before the Court. 3 Held invalid by this Court. See D.I. 96 at 36.
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U.S. Patent Number
Asserted Claims – Feb. 14, 2011 PID
Asserted Claims – Oct. 31, 2012 Amended PID 1-4
Asserted Claims – Apr. 15, 2013 PID
No. of Asserted Claims 4
7,474,897 7,856,234 8,019,357
1-4, 8, 10-13, 15, 18-20 1, 2, 5-8, 11, 1720, 23-26, 29, 36 1-3, 11 1, 3, 5-7, 13, 15, 17-19. 1, 3, 5-7, 13, 15, 17-19 1, 4-6, 12, 15-17 1-5, 7, 11, 12 1-6 1-7
8,022,877 8,154,454 8,223,074 8,242,960 8,229,455 8,054,219 8,031,657 Total asserted claims including patents held invalid4 Total asserted claims excluding patents held invalid
4 10 10 8 8 6 7 98 89
ARGUMENT AND CITATION OF AUTHORITY I. Reducing The Number Of Asserted Patent Claims Promotes Judicial Economy. Courts have found that the assertion of a large number of claims can impose an unreasonable burden on defendants. One court recently found the assertion of 50 claims to be excessively burdensome and observed that a reduction to 15 claims did not go far enough:
See supra, note 2.
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Earlier in this action, [Plaintiff] imposed upon [Defendant] a bone-crushing burden of conducting a prior art search for more than fifty patent claims. This was an unreasonable burden for [Plaintiff] to place on its adversary, especially since [Plaintiff] should have been more selective in choosing claims to assert. [Plaintiff] has recently reduced the number of asserted claims to fifteen, but even this number is still too large to be tried. This is the main point. [Plaintiff] has behaved unreasonably in imposing unnecessary cost on its opponent. Network Prot. Scis., 2013 U.S. Dist. Lexis 66487, at *5. The Court will promote efficiency and judicial economy, and reduce the undue burden on Google, by requiring Skyhook to reduce the number of asserted patent claims now, in advance of the current June 14, 2013 deadline for service of Preliminary Invalidity Contentions and Preliminary Non-Infringement Contentions and before the parties have begun taking fact depositions. Google’s proposal that Skyhook be limited to 20 asserted claims will “help the parties present this case in a way that is manageable and that will fit into the time frame available for trial,” (id. at *6), by streamlining the case, including necessary claim construction proceedings on the nine newly added patents, and facilitating more productive fact and expert discovery – while still allowing Skyhook to pursue a sufficient number of claims. The Federal Circuit has held that district courts may limit the number of patent claims asserted by a plaintiff, even at the outset of a case, as long as the plaintiff is allowed to seek leave to add additional claims upon a showing that the additional claims present unique issues. In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1312 (Fed. Cir. 2011); see also Software Rights Archive, LLC v. Facebook, Inc., No. 12-CV-3970 RMW, Dkt. No. 41 at 3 (N.D. Cal. Feb. 15, 2013) (ordering plaintiff to reduce number of asserted claims from 74 to 30). In Katz, the Federal Circuit reasoned that the plaintiff was not unfairly prejudiced by being required to limit claims where many of the asserted claims were duplicative and the plaintiff did not identify unasserted claims that raised unique liability or damages issues. Katz,
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639 F.3d at 1311-13. Here, many of Skyhook’s asserted claims are duplicative and all target the same broad set of Google products, which Skyhook has identified as “Google Location Services and devices using Google Location Services, alone and in combination.” See generally, D.I. 152, April 15, 2013 PID.5 Google produced documents explaining the operation of the accused Google products, including source code that was produced in September 2011, nearly two years ago, with ongoing updates produced since that time. Skyhook’s experts and attorneys have spent hundreds of hours analyzing Google’s source code since then. See Declaration of Sanjeet K. Dutta In Support of Defendant Google Inc.’s Motion to Require Skyhook to Reduce the Number of Asserted Claims and Provide Adequate Infringement Contentions (“Dutta Decl.”) Exhibit A. Skyhook used this information in its infringement contentions. At this time, Skyhook should be able to significantly narrow the number of asserted claims to 20. Although Google anticipates that Skyhook will be required to substantially narrow its asserted claims even further before trial, see Network Prot. Scis., 2013 U.S. Dist. Lexis 66487, at *9 (“It is impractical for either side to present fifteen claims at trial.”), Google is not seeking such a reduction at this time. II. Skyhook’s Infringement Contentions Are Inadequate. Patent Infringement Disclosures: should clearly identify the accused products (or combinations of products) that is alleged to infringe each asserted claim, and where each asserted claim element is
Skyhook further stated: As used herein, “Google Location Services” includes current and prior versions of Google’s WiFi Location database, Gears, Geolocation API, Google Network Location Provider (“NLP”), Google Location Based Services (“LBS”), the Android operating system, Maps, Client Location Library (CLL), as well as any additional Google products, services, software, or functionality that enables these products and services to provide WiFi-based location services. As used here, devices using Google Location Services include WiFienabled Google Nexus and Motorola handsets and tablets using the Android operating system, Google Chrome laptops, and third party handsets, tablets, laptops and other WiFi-enabled products (including but not limited to those using the Android operating system) that use Google Location Services. Google also directly infringes in combination with others who use Google and other Android devices running Android and applications and services in combination with Google.
Id. at 4-5.
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found within each accused product or combination and supporting evidence. To the extent that [a plaintiff] believes that there are categories of accused products that may be considered together for purposes of infringement, it must explain the basis (including such supporting evidence in its possession) for such categorization, and provide the limitation-by-limitation analysis of at least one specific exemplar for each category. DataTern, Inc. v. MicroStrategy, Inc., No. 1:11-cv-12220-FDS, “Electronic Order” (D. Mass. July 2, 2012) (Stearns, J.). Plaintiffs should provide PID that “specify the location of every claim element within the accused products.” Bender v. Maxim Integrated Prods., Inc., No. C 0901152-SI, 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010). Adequate PID ensure “the case takes a clear path, focusing discovery on building precise final infringement or invalidity contentions and narrowing issues for Markman, summary judgment, trial, and beyond.” Linex Techs., Inc. v. Belkin Int’l, Inc., 628 F. Supp. 2d 703, 707 (E.D. Tex. 2008). Here, Skyhook’s infringement contentions are inadequate at least because (1) Skyhook accuses products that have been discontinued (see e.g., April 15, 2013 PID, D.I. 152 at 4 regarding Gears) for which Skyhook provides no infringement analysis; (2) many of the accused products are not offered for sale by Google (see e.g. id. “the Android operating system”); (3) the accused products include third-party products (devices manufactured by HTC and Samsung) (see eg. id. “third party handsets, tablets, laptops and other WiFi-enabled products (including but not limited to those using the Android operating system) that use Google Location Services”); and (4) claims of direct and indirect infringement are intermingled (see e.g. id. at Exhibit H demonstrating no separation of direct and indirect infringement regarding Qualcomm), where instead Skyhook should separately identify where and how infringement is alleged to occur, and provide supporting evidence therefor, under these two different legal theories with different elements of proof.
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Conclusion For the foregoing reasons, Google requests that the Court issue an order requiring
Skyhook to identify no more than 20 asserted claims and to serve new infringement contentions for those claims that correct the foregoing deficiencies and provide Google adequate notice of where each claim element appears in the accused instrumentalities. Google sent Skyhook a draft of this motion on May 24, 2013 in an effort to quickly resolve these issues without Court intervention, considering the imminent deadline for Google to serve its invalidity and non-infringement contentions due on June 14, 2013. Dutta Decl. Exhibit B. Skyhook confirmed today that it will not agree to limit its asserted claims at this time and that it will not agree to extend Google’s deadline. Id. at ¶ 6. Google intends to file a separate expedited motion seeking relief from the schedule shortly. REQUEST FOR ORAL ARGUMENT Google believes that oral argument may assist the court and wishes to be heard on its motion. Accordingly, Google requests oral argument under Local Rule 7.1(d). /s/ William F. Abrams William F. Abrams (pro hac vice) Sanjeet K. Dutta (pro hac vice) John O. Gilmore (pro hac vice) KING & SPALDING LLP 333 Twin Dolphin Drive Redwood Shores, CA 94065 Telephone: (650) 590-0703 firstname.lastname@example.org email@example.com firstname.lastname@example.org Thomas C. Lundin Jr. (pro hac vice) KING & SPALDING LLP 1180 Peachtree Street Atlanta, GA 30309 Telephone: (404) 572-2808 email@example.com
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Jonathan M. Albano, BBO #013850 Susan Baker Manning (pro hac vice) Robert C. Bertin (pro hac vice) BINGHAM McCUTCHEN LLP One Federal Street Boston, MA 02110-1726 Telephone: (617) 951-8000 firstname.lastname@example.org email@example.com firstname.lastname@example.org ATTORNEYS FOR DEFENDANT AND COUNTERCLAIMANT GOOGLE INC.
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LOCAL RULE 7.1 CERTIFICATION I am counsel for the movant Google, Inc. I certify that I have conferred with counsel for Plaintiff Skyhook Wireless, Inc., as to the relief sought in this motion in a good faith effort to resolve the issues raised in this motion. Skyhook stated that it would oppose this motion. /s/ Sanjeet K. Dutta
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CERTIFICATE OF SERVICE I certify that on this date, I filed the forgoing DEFENDANT GOOGLE INC.’S MOTION TO REQUIRE SKYHOOK TO REDUCE THE NUMBER OF ASSERTED CLAIMS AND PROVIDE ADEQUATE INFRINGEMENT CONTENTIONS with the Clerk of Court using the CM/ECF system, which will automatically send email notification of such filing to the following attorneys of record and to all the registered participants as identified on the Notice of Electronic Filing (NEF): Douglas R. Tillberg Griesinger, Tighe & Maffei, LLP Suite 400 176 Federal Street Boston, MA 02110 Telephone: 617-542-9900 Facsimile: 617-542-0900 email@example.com Matthew D. Powers Azra M. Hadzimehmedovic Tensegrity Law Group, LLP 555 Twin Dolphin Drive, Suite 360 Redwood Shores, CA 94065 Telephone: 650-802-6010 Facsimile: 650-802-6001 firstname.lastname@example.org email@example.com
Dated: May 31, 2013
William F. Abrams William F. Abrams