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`Ex. GOOG 1019
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`EX. GOOG 1019
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page1 of 16
`
`(Counsel listed on signature page)
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`OAKLAND DIVISION
`
`GOOGLE INC.,
`Plaintiff,
`
`v.
`ROCKSTAR CONSORTIUM US LP
`and
`MOBILESTAR TECHNOLOGIES
`LLC,
`
`Defendants.
`
`CASE NO. 13-cv-5933-CW
`JOINT CLAIM CONSTRUCTION
`AND PREHEARING STATEMENT
`UNDER PATENT LOCAL RULE 4-
`3
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`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
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`Ex. GOOG 1019
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page2 of 16
`
`Under Patent Local Rule 4-3 and the Court’s Minute Order and Case
`Management Order, Plaintiff Google Inc. (“Google”) and Defendants Rockstar
`Consortium US LP and MobileStar Technologies LLC (“Rockstar”) hereby submit
`this Joint Claim Construction and Prehearing Statement.
`
`I.
`
`CONSTRUCTION OF THOSE CLAIM TERMS, PHRASES, OR
`CLAUSES ON WHICH THE PARTIES AGREE
`
`The Parties agree to the construction of the following terms:
`Term
`Claims
`Agreed Construction
`“integrated circuit
`‘551 Patent, claims 2-3
`“a circuit constructed on a single
`component”
`monolithic substrate”
`“the physical viewing area where the
`“the physical viewing area
`representation of the control tool
`corresponding to the
`overlays the manipulable area
`manipulable area portion
`portion”
`and the representation of
`the control tool”
`Order of steps
`
`‘937 Patent, claims 1, 13
`
`‘937 Patent, claim 1
`
`‘937 Patent, claim 2
`‘572 Patent, claim 17
`
`‘973 Patent, claims 1, 8,
`21, 33
`‘973 Patent, claim 1
`
`Order of steps
`“dynamically displaying at
`least a portion of the call
`trace information that was
`received”
`
`“independent connections
`with different bandwidths”
`“means for displaying on
`the display a portion of the
`received notification
`messages and the
`associated message type
`indicators as entries in a
`single selectable list”
`
`[1.3] must occur before [1.4];
`[1.4] must occur before [1.5];
`[1.5] must occur before [1.6].
`[2.2] must occur before [2.3].
`“displaying at least a portion of the
`call trace information that was
`received without requiring further
`user interaction between receiving
`and displaying the call trace
`information”
`Plain meaning
`
`Function: displaying on the display
`a portion of the received notification
`messages and the associated
`message type indicators as entries in
`a single selectable list
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page3 of 16
`
`Agreed Construction
`Function: displaying on the display
`detailed information about a sender
`of the selected pending message
`upon direction from the user
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: displaying at least one of
`sender home telephone number data,
`sender business telephone number
`data, sender cellular telephone
`number data, sender e-mail address
`data, and sender fax number data
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: displaying one of the
`portions of the received notification
`messages and the associated
`graphical icon as a single entry in
`the single selectable list
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: displaying a sender
`identification and the associated
`graphical icon as a single entry in
`the single selectable list
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`
`Claims
`‘973 Patent, claim 2
`
`Term
`“means for displaying on
`the display detailed
`information about a sender
`of the selected pending
`message upon direction
`from the user”
`
`‘973 Patent, claim 3
`
`“means for displaying at
`least one of sender home
`telephone number data,
`sender business telephone
`number data, sender
`cellular telephone number
`data, sender e-mail address
`data, and sender fax
`number data”
`
`‘973 Patent, claim 4
`
`“means for displaying one
`of the portions of the
`received notification
`messages and the
`associated graphical icon
`as a single entry in the
`single selectable list”
`
`“means for displaying a
`sender identification and
`the associated graphical
`icon as a single entry in the
`single selectable list”
`
`‘973 Patent, claim 5
`
`1 2 3 4 5 6 7 8 9
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`11
`12
`13
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`CASE NO. 13-CV-5933-CW
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page4 of 16
`
`Claims
`‘973 Patent, claim 6
`
`Term
`“means for displaying a
`sender identification and
`the associated message
`type indicator as a single
`entry in the single
`selectable list”
`
`‘973 Patent, claim 21
`
`“means for displaying on
`the display screen an
`identification of the sender
`and the associated message
`type indicator for each of
`the received notification
`messages as entries in a
`single selectable list to
`allow the user to select one
`of the pending messages
`from the single selectable
`list for viewing”
`
`‘973 Patent, claim 21
`
`“means for directing the
`display screen to display
`detailed information about
`the sender of the selected
`pending message in
`response to selection by the
`user”
`
`Agreed Construction
`Function: displaying a sender
`identification and the associated
`message type indicator as a single
`entry in the single selectable list
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: displaying on the display
`screen an identification of the sender
`and the associated message type
`indicator for each of the received
`notification messages as entries in a
`single selectable list to allow the
`user to select one of the pending
`messages from the single selectable
`list for viewing
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: directing the display
`screen to display detailed
`information about the sender of the
`selected pending message in
`response to selection by the user
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`
`-2-
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page5 of 16
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`Claims
`‘973 Patent, claim 24
`
`Term
`“means for displaying each
`of the sender identification
`and the associated
`graphical icons as separate
`entries in the single
`selectable list”
`
`‘973 Patent, claim 25
`
`“means for displaying the
`detailed sender information
`for the selected pending
`message only upon
`direction from the user”
`
`‘973 Patent, claim 26
`
`“means for directing the
`display screen to display at
`least one of sender home
`telephone number data,
`sender business telephone
`number data, sender
`cellular telephone number
`data, sender e-mail address
`data, and sender fax
`number data”
`
`“address of the filter node”
`
`‘298 Patent, claims 11,
`14-15, 19, 23-24, 27-28,
`31
`
`Agreed Construction
`Function: displaying each of the
`sender identification and the
`associated graphical icons as
`separate entries in the single
`selectable list
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: displaying the detailed
`sender information for the selected
`pending message only upon
`direction from the user
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`Function: directing the display
`screen to display at least one of
`sender home telephone number data,
`sender business telephone number
`data, sender cellular telephone
`number data, sender e-mail address
`data, and sender fax number data
`
`Structure: Display 2400, feature
`processor 3300, memory 3400,
`display module 3700, and message
`center 6100, including as recited and
`described in Figures 2, 3, 6, 7A, and
`7B, and equivalent
`“unique identifier of the filter node
`on a public network such as the
`Internet”
`
`The Parties agree the following terms require the specified antecedent basis:
`‘937 Patent Antecedent
`Basis Constructions
`“the user input”
`
`Refers to “a user input” in the “receiving” limitation of claim 1,
`or the “means for receiving” limitation of claim 13
`
`-3-
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page6 of 16
`
`‘937 Patent Antecedent
`Basis Constructions
`“said control tool” / “the
`control tool”
`“said manipulable area
`portion” / “the manipulable
`area portion”
`“the representation of the
`control tool”
`
`“the at least one control tool
`function”
`
`“the at least one
`manipulation function”
`
`Refers to “a control tool” in the “displaying” limitation of claim
`1, or the “means for displaying” limitation of claim 13
`Refers to “a manipulable area portion” in the “providing”
`limitation of claim 1, or the “means for providing” limitation of
`claim 13
`Refers to “a representation of a control tool” in the “displaying”
`limitation of claim 1, or the “means for displaying” limitation
`of claim 13
`Refers to “at least one control tool function” in the “displaying”
`limitation of claim 1, or the “means for displaying” limitation
`of claim 13
`Refers to “at least one manipulation function” in the
`“providing” limitation of claim 1, or the “means for providing”
`limitation of claim 13
`
`The Parties agree on the function only for the following means plus function
`terms. The parties do not agree on what structure, if any, corresponds to these
`functions. As set out in Exhibits A and B, Google maintains that certain terms are
`indefinite; Rockstar disagrees.
`Term
`“means for determining a
`message type of the
`pending messages from the
`information corresponding
`to the received notification
`messages”
`“means for associating a
`message type indicator
`with each of the received
`notification messages
`based on the determined
`message type”
`“means for receiving a
`selection of one of the
`pending messages based on
`the entries in the single
`selectable list”
`“means for retrieving
`[manipulating] the selected
`pending message for
`viewing and manipulation
`by the user.”
`
`Agreed Construction
`The function is “determining a
`message type of the pending
`messages from the information
`corresponding to the received
`notification messages”
`
`The function is “associating a
`message type indicator with each of
`the received notification messages
`based on the determined message
`type “
`
`The function is “receiving a
`selection of one of the pending
`messages based on the entries in the
`single selectable list”
`
`The function is “retrieving the
`selected pending message for
`viewing and manipulation by the
`user”
`
`Claims
`‘973 Patent, claim 1
`
`‘973 Patent, claim 1
`
`‘973 Patent, claim 1
`
`‘973 Patent, claim 1
`
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`CASE NO. 13-CV-5933-CW
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`Page 6
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page7 of 16
`
`Claims
`‘973 Patent, claim 7
`
`‘973 Patent, claim 7
`
`‘973 Patent, claim 21
`
`‘131 Patent, claim 1
`
`‘131 Patent, claim 1
`
`‘131 Patent, claim 1
`
`‘131 Patent, claim 1
`
`‘131 Patent, claim 1
`
`‘298 Patent, claim 32
`
`Term
`“means for accessing an
`external mail server”
`“means for retrieving the
`selected pending message
`from the external mail
`server”
`“means for associating a
`message type indicator
`with each of the received
`notification messages
`based on the message type
`of the corresponding
`pending message”
`“means for determining a
`characteristic of the
`communication event”
`“means for selecting a
`notification based on the
`characteristic”
`“means for sending the
`user the selected
`notification”
`“means for receiving a
`selection from the user
`indicating a format for
`delivery of further
`notification information
`regarding the
`communication event”
`“means for allowing the
`further notification
`information regarding the
`communication event to be
`sent to the user in the
`selected format”
`“means for buffering
`further data packets
`received from the first
`network while waiting for
`the return packet”
`
`Agreed Construction
`The function is “accessing an
`external mail server”
`The function is “retrieving the
`selected pending message from the
`external mail server”
`
`The function is “associating a
`message type indicator with each of
`the received notification messages
`based on the message type of the
`corresponding pending message”
`
`The function is “determining a
`characteristic of the communication
`event”
`The function is “selecting a
`notification based on the
`characteristic ”
`The function is “sending the user the
`selected notification”
`
`The function is “receiving a
`selection from the user indicating a
`format for delivery of further
`notification information regarding
`the communication event”
`
`The function is “allowing the further
`notification information regarding
`the communication event to be sent
`to the user in the selected format”
`
`The function is “buffering further
`data packets received from the first
`network while waiting for the return
`packet”
`
`-5-
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page8 of 16
`
`Claims
`‘298 Patent, claim 27
`
`‘298 Patent, claim 27
`
`‘298 Patent, claim 28
`
`‘298 Patent, claim 28
`
`‘298 Patent, claim 28
`
`Term
`“means for receiving from
`the first network, a data
`packet having destination
`information, which
`includes a destination
`address and a destination
`port, corresponding to a
`node in the second network
`and having source
`information, which
`includes a source address
`and a source port,
`corresponding to a node in
`the first network”
`“means for sending to the
`second network, the data
`packet having the replaced
`source information,
`whereby that packet is
`routed according to its
`destination information to
`the corresponding second
`network node”
`“means for receiving from
`the second network, a data
`packet having the address
`of the filter node as the
`destination address”
`“means for correlating the
`destination port of the
`destination information in
`the data packet to
`particular source
`information being
`maintained”
`“means for sending to the
`first network the data
`packet having the replaced
`destination information,
`whereby that packet is
`routed according to its
`destination information to
`the corresponding first
`network node”
`
`Agreed Construction
`The function is “receiving from the
`first network, a data packet having
`destination information, which
`includes a destination address and a
`destination port, corresponding to a
`node in the second network and
`having source information, which
`includes a source address and a
`source port, corresponding to a node
`in the first network”
`
`The function is “sending to the
`second network, the data packet
`having the replaced source
`information, whereby that packet is
`routed according to its destination
`information to the corresponding
`second network node”
`
`The function is “receiving from the
`second network, a data packet
`having the address of the filter node
`as the destination address”
`
`The function is “correlating the
`destination port of the destination
`information in the data packet to
`particular source information being
`maintained”
`
`The function is “sending to the first
`network the data packet having the
`replaced destination information,
`whereby that packet is routed
`according to its destination
`information to the corresponding
`first network node”
`
`-6-
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page9 of 16
`
`Claims
`‘298 Patent, claim 29
`
`‘298 Patent, claim 31
`
`‘298 Patent, claim 31
`
`‘298 Patent, claim 31
`
`‘298 Patent, claim 31
`
`‘298 Patent, claim 32
`
`‘298 Patent, claim 32
`
`Term
`“means for ignoring a data
`packet received from the
`second network, if the
`destination port of the
`destination information in
`that data packet can not be
`correlated to the
`maintained source
`information”
`“means for receiving from
`the first network, a data
`packet having a destination
`address corresponding to a
`node in the second
`network”
`“means for sending to the
`second network the data
`packet having the replaced
`source address, whereby
`that packet is routed to the
`corresponding second
`network node”
`“means for receiving a
`return packet from the
`second network, responsive
`to the data packet having
`the replaced source
`information”
`“means for sending to the
`first network the return
`packet having the replaced
`destination address,
`whereby that packet is
`routed to the corresponding
`the first network node”
`“means for buffering
`further data packets
`received from the first
`network while waiting for
`the return packet, and
`means for controlling
`means (b) through (g) on
`an individual basis for
`processing the further
`packets, if any, that were
`buffered”
`
`Agreed Construction
`The function is “ignoring a data
`packet received from the second
`network, if the destination port of
`the destination information in that
`data packet can not be correlated to
`the maintained source information”
`
`The function is “receiving from the
`first network, a data packet having a
`destination address corresponding to
`a node in the second network”
`
`The function is “sending to the
`second network the data packet
`having the replaced source address,
`whereby that packet is routed to the
`corresponding second network
`node”
`
`The function is “receiving a return
`packet from the second network,
`responsive to the data packet having
`the replaced source information”
`
`The function is “sending to the first
`network the return packet having the
`replaced destination address,
`whereby that packet is routed to the
`corresponding the first network
`node”
`
`The function is “buffering further
`data packets received from the first
`network while waiting for the return
`packet”
`
`The function is “controlling means
`(b) through (g) on an individual
`basis for processing the further
`packets, if any, that were buffered”
`
`-7-
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page10 of 16
`
`II.
`
`EACH PARTY'S PROPOSED CONSTRUCTION OF EACH
`DISPUTED CLAIM TERM, PHRASE, OR CLAUSE, TOGETHER
`WITH AN IDENTIFICATION OF INTRINSIC AND OTHER
`EVIDENCE
`
`Exhibits A and B, attached hereto, identify the disputed claim terms. Exhibit
`A contains Google’s proposed constructions for each disputed claim term and
`intrinsic and other evidence in support; Exhibit B contains Rockstar’s proposed
`constructions for each disputed claim term and intrinsic and other evidence in
`support.
`
`III. MOST SIGNIFICANT TERMS
`
`The parties identify the following ten claim terms, or groups of claim terms,
`as the most significant at this time to resolution of the case. Where the parties have
`listed groups of claim terms, the parties believe there is a single dispute that will
`resolve construction of the grouped claim terms:
`1.
`“pending message” (claims 1, 2, 5-8, 10-13, 21-23, 25, ‘973 patent)
`2.
`“the board” / antecedent basis of “the board” (claim 1, ‘551 patent)
`3.
`“sending the user” (claims 1 and 5, ‘131 patent)
`4.
`“call” (claims 17-20) / “call trace” (claims 17-20) / “call trace
`information” (claims 17-20, ‘572 patent)
`“permitting the at least one control tool function to be activated when
`the user input does select the control tool” (claims 1, 13, ‘937 patent)
`“wherein the notification messages are received from an interface with
`independent connections with different bandwidths for [the] different
`types of pending messages” / “wherein the notification messages are
`received from an interface with independent connections with different
`bandwidths for the different types of the plurality of message senders”
`(claims 1, 8, 33, ‘973 patent)
`“a Faraday cage” (claim 1, ‘551 patent)
`“manipulable area portion” (claims 1-3, 9, 13-15, and 21, ‘937 patent)
`“determining if the user input selects the control tool” (claims 1 and 13,
`‘937 patent)
`
`5.
`
`6.
`
`7.
`8.
`9.
`
`-8-
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`CASE NO. 13-CV-5933-CW
`
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page11 of 16
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`“storing the call trace information” (claim 20, ‘572 patent)
`10.
`Google’s Position
`A.
`Despite Google’s request that Rockstar reduce the number of asserted claims,
`Rockstar is currently asserting over 80 claims from seven patents. Google has made
`good faith efforts to narrow and to limit the number of claim construction disputes,
`and to focus the disputes before the Court despite the fact that Rockstar continues to
`assert an unreasonable number of patents, and an unreasonable number of claims
`from those patents.
`Google prepared a detailed proposal for case narrowing, and sent that
`proposal to Rockstar on September 24, 2014. After the Federal Circuit’s stay of the
`Texas actions, Google asked Rockstar to confirm that any case narrowing
`procedures in this action would apply equally to the Texas actions that have been
`stayed while this action is pending. Google believes that the parties should agree
`that any claims or patents eliminated from the California action through case
`narrowing would also be eliminated from the stayed Texas actions. Without such an
`agreement, there will not be an actual “narrowing” of the parties’ dispute—only
`venue-shifting would be accomplished. This would defeat the efficiencies that the
`Federal Circuit identified as the basis for the stay. With this condition, Google
`remains committed to the case narrowing procedure that Google first proposed
`nearly two months ago. At this time, it appears that Rockstar is only willing to
`narrow its case against Google – not against Google’s customers, the OEM
`defendants in the Texas actions.1
`Given the number of patents, claims, and claim terms currently at issue,
`Google respectfully submits that in addition to the ten terms identified pursuant to
`
`
`1 Rockstar’s position statement complains that “No response from Google (or the EDTX
`defendants) has been received” to a particular question. To clarify the record, Rockstar posed this
`question for the first time today, October 24, 2014.
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`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`CASE NO. 13-CV-5933-CW
`
`Ex. GOOG 1019
`Page 11
`
`

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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page12 of 16
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`Rule 4-3(c), there remain additional terms that are significant to resolution of this
`case. For example, many asserted claims include means-plus-function limitations.
`These means-plus-function limitations must be construed before trial, and their
`construction is at least as “significant to the resolution of the case” as any other term
`identified for construction. Moreover, as examples, Google also identifies the
`following additional terms as equally “most significant to the resolution of this
`case:”
`
`1.
`
`2.
`3.
`4.
`5.
`
`6.
`
`7.
`
`8.
`9.
`
`“means for receiving a selection from the user indicating a format for
`delivery of further notification information regarding the
`communication event” / “receiving a selection from the user indicating
`a format for delivery of further notification information” (claims 1 and
`5, ‘131 patent)
`“further notification information” (claims 1 and 5, ‘131 patent)
`“wizard” (claim 1, ‘591 patent)
`“logging the call trace information” (claim 19, ‘572 patent)
`“maintaining, by the filter node” (claim 11) / “maintaining the source
`information taken from the outgoing data packet in correlation with a
`unique value representing a port of the filter node” (claims 14, 19, 23) /
`“maintaining the source address taken from the data packet” (claim 24)
`/ “means for maintaining the source information taken from the
`outgoing data packet in correlation with a unique value representing a
`port of the filter node” (claim 27) / “means for maintaining the source
`address taken from the data packet” (claim 31) (claims 11, 14, 19, 23,
`24, 27, 31, ‘298 patent)
`“receiving a user input to the physical viewing area corresponding to
`the manipulable area portion and the representation of the control tool”
`(claims 1, 13, ‘937 patent)
`“extending across substantially the whole area within the confines of
`the edges of the substrate” (claim 1, ‘551 patent)
`“collection of palettes” (claim 1, ‘591 patent)
`“filter node” (claims 11-12, 14-15, 17, 19, 23-24, 27-32, ‘298 patent)
`
`While Google considers the claim terms above representative of terms that are
`significant for the resolution of the case, Google notes that resolution of claim
`construction disputes will not occur until summary judgment briefing and argument,
`which is many months away. (Dkt. 88.) The parties have not yet engaged in expert
`
`-10-
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`CASE NO. 13-CV-5933-CW
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`discovery and are still pursuing fact discovery from each other and from third
`parties. Further discovery (or case narrowing) may cause the list of “most
`significant” terms to be different at the time of summary judgment briefing relative
`to what it is today. Thus, Google’s motions for summary judgment may seek
`construction of terms not listed above, as necessitated by subsequent case
`developments, including upcoming fact and expert discovery.
`B.
`Rockstar’s Position
`Rockstar is agreeable to case narrowing and has made several case narrowing
`proposals to Google. However, and as indicated above, Google has rejected each
`case narrowing proposal. Google insists on making any case narrowing proposal in
`this case contingent on Rockstar’s agreement “that any claims or patents eliminated
`from this California action through case narrowing would also be eliminated from
`the stayed Texas actions.” So that Rockstar could consider Google’s “contingency,”
`Rockstar asked Google (and the EDTX defendants) to provide a clear “yes” or “no”
`response to this statement: “Will each of the defendants in the presently-stayed
`EDTX case agree to be bound by any infringement and validity findings in the
`NDCA case?” No response from Google (or the EDTX defendants) has been
`received. Case narrowing is a two-way street requiring effort and agreement from
`both parties to limit not just the number of asserted claims, but also the number of
`prior art references and obviousness combinations.
`
`IV. THE ANTICIPATED LENGTH OF TIME NECESSARY FOR THE
`CLAIM CONSTRUCTION HEARING
`
`Should the Court order a separate hearing on claim construction, the parties
`believe that at least six hours will be necessary.
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`
`CASE NO. 13-CV-5933-CW
`
`Ex. GOOG 1019
`Page 13
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page14 of 16
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`V.
`
`POSSIBLE WITNESSES AT THE CLAIM CONSTRUCTION
`HEARING
`
`Google's position
`A.
`Should the Court order a separate hearing on claim construction, Google may
`call Dr. Marwan Hassoun to provide testimony regarding the ‘551 patent, including
`indefiniteness of the term “extending across substantially the whole area within the
`confines of the edges of the substrate.”2
`B.
`Rockstar's position
`Should the Court order a separate hearing on claim construction, Rockstar
`does not intend to present any live witnesses in support of its claim constructions.
`However, if Google calls Dr. Hassoun in support of the alleged indefiniteness of the
`term “extending across substantially the whole area within the confines of the edges
`of the substrate,” Rockstar will call Dr. Dean Neikirk in rebuttal to Dr. Hassoun.
`Notwithstanding Google’s statement in footnote 2, Google’s Rule 4-2
`disclosure does not indicate which patents or which terms the various experts
`identified therein may be called to testify about. The information about Dr.
`Hassoun’s anticipated testimony was not disclosed until Google sent its draft of the
`Rule 4-3 statement shortly before the joint filing of this document. Consistent with
`Rockstar’s Rule 4-2 disclosure, this Rule 4-3 disclosure properly indicates that it
`“will call Dr. Dean Neikirk in rebuttal to Dr. Hassoun.”
`
`
`2 Google disclosed its intent to rely on testimony from Dr. Hassoun as claim construction
`evidence in Google’s Patent Rule 4-2(b) disclosure. Dr. Neikirk was not mentioned in Rockstar’s
`Patent Rule 4-2(b) disclosure.
`
`-12-
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
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`CASE NO. 13-CV-5933-CW
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page15 of 16
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`Respectfully submitted,
`
`DATED: October 24, 2014
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By: /s/ Patrick D. Curran
`Charles K. Verhoeven (Bar No. 170151)
`Sean Park (Bar No. 219032)
`David Eiseman (Bar No. 114758)
`Kristin J. Madian (Bar No. 233436)
`quinn-google-n.d.cal.-13-
`05933@quinnemanuel.com
`50 California Street, 22nd Floor
`San Francisco, California 94111
`(415) 875-6600
`(415) 875-6700 facsimile
`
`Victoria F. Maroulis (Bar No. 202603)
`quinn-google-n.d.cal.-13-
`05933@quinnemanuel.com
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, California 94065
`(650) 801-5000
`(650) 801-5100 facsimile
`
`Patrick D. Curran (Bar No. 241630)
`quinn-google-n.d.cal.-13-
`05933@quinnemanuel.com
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`(212) 849-7000
`(212) 849-7100 facsimile
`
`Attorneys for Google Inc.
`
`-13-
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
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`CASE NO. 13-CV-5933-CW
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`Case4:13-cv-05933-CW Document139 Filed10/24/14 Page16 of 16
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`DATED: October 24, 2014
`
`Respectfully submitted,
`
`By /s/ Joshua W. Budwin
`Courtland L. Reichman (SBN 268873)
`McKool Smith Hennigan, P.C.
`255 Shoreline Drive Suite 510
`Redwood Shores, CA 94065
`(650) 394-1400
`(650) 394-1422 (facsimile)
`
`Mike McKool (Admitted Pro Hac Vice)
`mmckool@mckoolsmith.com
`Douglas A. Cawley (Admitted Pro Hac Vice)
`dcawley@mckoolsmith.com
`Ted Stevenson III (Admitted Pro Hac Vice)
`tstevenson@mckoolsmith.com
`David Sochia (Admitted Pro Hac Vice)
`dsochia@mckoolsmith.com
`McKool Smith, P.C.
`300 Crescent Court Suite 1500
`Dallas, TX 75201
`(214) 978-4000
`(214) 978-4044 (fac