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IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF MASSACHUSETTSSKYHOOK WIRELESS, INC., ))Plaintiff and )Counterclaim-Defendant, )) Case No. 1:10-cv-11571-RWZv. ) Case No. 1:13-cv-10153-RWZ)GOOGLE INC., ))Defendant and ) REQUEST FOR ORAL ARGUMENTCounterclaimant. )))

DEFENDANT GOOGLE INC.’S MOTION TO REQUIRESKYHOOK TO REDUCE THE NUMBER OF ASSERTED CLAIMSAND PROVIDE ADEQUATE INFRINGEMENT CONTENTIONS

Plaintiff Skyhook Wireless, Inc. (“Skyhook”) is asserting infringement of 98 patentclaims across 13 patents. Courts faced with assertion of over 50 patent claims have found that itimposes a “bone crushing burden” on the defendant and required that the number of claims bereduced.

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’sinfringement 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’sassertion of 98 patent claims make this case unmanageable, and it would be impractical toattempt 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

2Skyhook 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”). OnFebruary 14, 2011, Skyhook served Preliminary Infringement Disclosures (“PID”) assertinginfringement 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 83claims of nine patents.

See

D.I. 152.The below chart summarizes the patents and patent claims Skyhook currently is asserting:

U.S. PatentNumberAsserted Claims –Feb. 14, 2011 PIDAsserted Claims –Oct. 31, 2012Amended PIDAsserted Claims –Apr. 15, 2013 PIDNo. of AssertedClaims

7,305,245

3

1, 2, 4-6, 8 67,414,988

3

1-3 37,433,694 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, onOctober 31, 2012, Skyhook served Amended Infringement Disclosures (D.I. 107), asserting infringement of sixclaims of the two remaining patents.

2

The Amended Complaint includes claims for infringement of the ‘988 patent (Count I) and the ‘245 patent (CountIV), 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 SupportOf 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. PatentNumberAsserted Claims –Feb. 14, 2011 PIDAsserted Claims –Oct. 31, 2012Amended PIDAsserted Claims –Apr. 15, 2013 PIDNo. of AssertedClaims

7,474,897 1-4 1-4 47,856,234 1-4, 8, 10-13, 15,18-20138,019,357 1, 2, 5-8, 11, 17-20, 23-26, 29, 36178,022,877 1-3, 11 48,154,454 1, 3, 5-7, 13, 15,17-19.108,223,074 1, 3, 5-7, 13, 15,17-19108,242,960 1, 4-6, 12, 15-17 88,229,455 1-5, 7, 11, 12 88,054,219 1-6 68,031,657 1-7 7Total asserted claims including patents held invalid

4

98Total asserted claims excluding patents held invalid 89

ARGUMENT AND CITATION OF AUTHORITYI.

Reducing The Number Of Asserted Patent Claims Promotes Judicial Economy.

Courts have found that the assertion of a large number of claims can impose anunreasonable burden on defendants. One court recently found the assertion of 50 claims to beexcessively burdensome and observed that a reduction to 15 claims did not go far enough:

4

See supra

, note 2.
