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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 )Counterclaimant. )))

GOOGLE INC.’S MOTION FOR RULE 11SANCTIONS AGAINST SKYHOOK WIRELESS, INC.

Defendant Google Inc. (“Google”) hereby moves under Rule 11 of the Federal Rules of Civil Procedure for sanctions against plaintiff Skyhook Wireless, Inc. (“Skyhook”) and itscounsel for asserting in Count XIV of Skyhook’s Amended Complaint the objectively baselessclaim that Google infringes U.S. Patent 8,031,657 (“the ‘657 Patent”). Skyhook knew, beforefiling its Amended Complaint, that Google cannot infringe the ‘657 Patent under this Court’sorder construing identical claim terms recited in the ‘657 Patent’s parent. Google seeks thesanction of dismissal with prejudice of Count XIV of the Amended Complaint, costs and attorneys’ fees incurred in connection with this motion, and such other relief as the Court deems just.

INTRODUCTION

The ‘657 Patent can only be infringed by collecting Wi-Fi data using scanning vehicles,and Skyhook knows – and knew before filing its Amended Complaint – that Google stopped collecting Wi-Fi data using scanning vehicles more than a year before the ‘657 Patent issued.

Case 1:10-cv-11571-RWZ Document 175 Filed 06/10/13 Page 1 of 12

2The ‘657 Patent issued on October 4, 2011 and was added to this case on March 29,2013, with the filing of Skyhook’s Amended Complaint (D.I. 150). The ‘657 Patent is acontinuation of U.S. Patent 7,414,988 (“the ‘988 Patent”) and thus has the exact samespecification as the ‘988 Patent. The Court held the ‘988 Patent invalid.

1

Both patents aredirected to collection of Wi-Fi access point data using scanning vehicles that systematically drivethe streets of a target geographical area.The ‘657 Patent shares several claim terms with the ‘988 Patent that the Court construed to require driving scanning vehicles for the collection of Wi-Fi access point location data.Further, during the claim construction technology tutorial on October 25, 2011, Skyhook stated that the ‘988 Patent relates only to collection of Wi-Fi access point location data using scanningvehicles and not to access point data collected from user devices.Skyhook has known since at least November 13, 2012 that Google (1) stopped using“Street View” or “CityBlock” scanning vehicles to systematically collect Wi-Fi access pointdata, and instead (2) began collecting data from user devices, and Skyhook has known since atleast January 3, 2013 that this change occurred in April 2010 – more than a year before the ‘657Patent issued. Despite this, Skyhook’s Amended Complaint asserts that Google infringes the‘657 Patent.Because the Court already construed claim terms used in the ‘657 Patent, the proposed constructions on which Skyhook’s Infringement Contentions rely are objectively baseless and violate Rule 11(b)(2). “[T]here is a threshold below which a claim construction is sounreasonable that no reasonable litigant could believe it would succeed.”

Raylon, LLC v.Complus Data Innovations, Inc.

, 700 F.3d 1361, 1368 (Fed. Cir. 2102) (finding Rule 11

1

D.I. 96 at 36-37.


3sanctions warranted). It is objectively unreasonable for Skyhook to rely on a claim constructiontheory at odds with both this Court’s existing constructions in this case and Skyhook’s ownrepresentations to this Court.

STATEMENT OF FACTS

On September 15, 2010, Skyhook filed its Complaint For Patent Infringement (D.I. 1)alleging that Google infringes, among other patents, the ‘988 patent.On October 21, 2011, the parties presented a claim construction technology tutorial.During the technology tutorial the Court asked if user-collected data becomes part of thedatabase of Wi-Fi access points described in the ‘988 Patent and related U.S. Patent 7,433,694(“the ‘694 Patent”). Skyhook’s counsel stated: “It can be, but . . .

not in these patents.

”Technology Tutorial Tr. at 43:18-22 (emphasis added). Instead, Skyhook’s counsel explained that the patents “determine[] the accuracy [of access points] by driving all of the streets . . . .”

Id.

at 43:25-44:1. Later, Skyhook’s counsel again emphasized that the ‘988 and ‘694 Patents do notrelate to user-collected data:THE COURT: But neither patent uses, or maybe the technology doesn't callfor it under any circumstances, whatever data may be returned from the user,that is, the person that they’re trying to find based on where that person isfound.MR. LU: The two,

these two patents do not

. There are other implementationsand Skyhook does in fact use that data.THE COURT: But that’s not implicated.MR. LU: But

that’s not implicated in these two patents.

Id.

at 47:16-48:1 (emphases added).On September 14, 2012, this Court issued its Memorandum Of Decision (D.I. 96)construing the disputed claims of the asserted patents and granting Google’s motion for summary
