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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS SKYHOOK WIRELESS, INC., ) ) Plaintiff and ) Counterclaim-Defendant, ) ) Case No. 1:10-cv-11571-RWZ v. ) Case No. 1:13-cv-10153-RWZ ) GOOGLE INC., ) ) Defendant and ) REQUEST FOR ORAL ARGUMENT Counterclaimant. ) ) )

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

Case 1:10-cv-11571-RWZ Document 169 Filed 06/01/13 Page 1 of 10

2 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 Asserted Claims – Feb. 14, 2011 PID Asserted Claims – Oct. 31, 2012 Amended PID Asserted Claims – Apr. 15, 2013 PID No. of Asserted Claims

7,305,245

3

1, 2, 4-6, 8 6 7,414,988

3

1-3 3 7,433,694 1, 2 1, 2 2

1

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.


3

U.S. Patent Number Asserted Claims – Feb. 14, 2011 PID Asserted Claims – Oct. 31, 2012 Amended PID Asserted Claims – Apr. 15, 2013 PID No. of Asserted Claims

7,474,897 1-4 1-4 4 7,856,234 1-4, 8, 10-13, 15, 18-20 13 8,019,357 1, 2, 5-8, 11, 17-20, 23-26, 29, 36 17 8,022,877 1-3, 11 4 8,154,454 1, 3, 5-7, 13, 15, 17-19. 10 8,223,074 1, 3, 5-7, 13, 15, 17-19 10 8,242,960 1, 4-6, 12, 15-17 8 8,229,455 1-5, 7, 11, 12 8 8,054,219 1-6 6 8,031,657 1-7 7 Total asserted claims including patents held invalid

4

98 Total asserted claims excluding patents held invalid 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:

4

See supra

, note 2.
