Joshua W. Budwin
`Direct Dial: (512) 692-8727
`jbudwin@McKoolSmith.com
`
`
`300 W. 6th Street
`Suite 1700
`Austin, TX 78701
`
`July 24, 2014
`
`
`
`
`Telephone: (512) 692-8700
`Facsimile: (512) 692-8744
`
`
`VIA EMAIL (W/O ENCLOSURES) AND FTP (W/ ENCLOSURES)
`
`
`
`Mathew S. Warren
`Quinn Emanuel & Sullivan, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`
`
`RE:
`
`Google Inc., v. Rockstar Consortium US LP, et al.; Case No. 3:13-cv-5933;
`United District Court of North District of California.
`
`Rockstar’s/MobileStar’s P.R. 3-1 and 3-2 Disclosures
`
`Dear Counsel for Plaintiffs:
`
`In compliance with P.R. 3-1 and 3-2, Rockstar Consortium US LP and MobileStar
`Technologies LLC (collectively referred to as “Rockstar”) hereby submit their “Disclosure of
`Asserted Claims and Infringement Contentions” and accompanying document production.
`
`Where it states herein that the infringement contentions and/or documents are available
`via FTP, the following FTP information should be used:
`
`
`Host:
`Username:
`Password:
`Directory:
`
`sftp://ftp.mckoolsmith.com
`rockstar_oppco
`rck7000
`P.R. 3-1 and 3-2 Disclosures
`
`I.
`
`Disclosures Pursuant to P.R. 3-1
`
`(a) Asserted Claims and Priority Dates
`U.S. Patent No. 5,838,551: claims 1-3. Each asserted claim is entitled to a priority date at
`least as early as December 21, 1995.
`
`U.S. Patent No. 6,037,937: claims 1-5, 7-17, 19-24. Each asserted claim is entitled to a
`priority date at least as early as December 4, 1997.
`
`U.S. Patent No. 6,128,298: claims 11-19 and 22-32. Each asserted claim is entitled to a
`
`Google Ex. 1425, pg. 1
`
`

`

`priority date at least as early as April 28, 1995.
`
`U.S. Patent No. 6,333,973: claims 1-13, 21-26 and 33. Each asserted claim is entitled to
`a priority date at least as early as April 23, 1997.
`
`U.S. Patent No. 6,463,131: claims 1-8. Each asserted claim is entitled to a priority date at
`least as early as December 22, 1997.
`
`U.S. Patent No. 6,765,591: claims 1, 4, 7, and 8. Each asserted claim is entitled to a
`priority date at least as early as May 26, 1998.
`
`U.S. Patent No. 6,937,572: claims 17-20. Each asserted claim is entitled to a priority date
`at least as early as March 19, 2000.
`
`(b) Accused Instrumentalities
`For each of the asserted patents, and as set forth in the claim charts found on the provided
`FTP site, Rockstar identifies the following accused instrumentalities: Google Nexus 5, Google
`Nexus 7, and Google Nexus 10.
`
`(c) Infringement Contentions
`
`The infringement theories for each of the accused instrumentalities are identified in the
`claim charts on the provided FTP site. Rockstar alleges that each of the accused
`instrumentalities infringes each asserted claim literally and directly. Alternatively, based upon
`the evidence set forth in the claim charts provided on the FTP site and for the reasons set forth in
`Rockstar’s answer and counterclaims, Rockstar contends
`that each of
`the accused
`instrumentalities infringes each asserted claim of each asserted patent via indirect infringement,
`both induced and contributory. Rockstar contends that Google indirectly infringes each asserted
`claim by inducing infringement by others, such as, manufacturers, resellers, and end-use
`customers, in accordance with 35 U.S.C. § 271(b) in this District and elsewhere in the United
`States. Rockstar contends that Google indirectly infringes each asserted claim by contributing to
`infringement by others, such as manufacturers, resellers, and end-use customers, in accordance
`with 35 U.S.C. § 271(c) in this District and elsewhere in the United States. Direct infringement is
`the result of activities performed by the manufacturers, resellers, and end-users of the accused
`instrumentalities. Rockstar notes that the contentions provided on the FTP site include those for
`U.S. Patent Nos. 5,838,551 (“the ’551 patent”), 6,037,937 (“the ’937 patent”), 6,128,298 (“the
`’298 Patent”), 6,333,973 (“the ’973 Patent”), 6,463,131 (“the ’131 Patent”), 6,765,591 (“the ’591
`Patent”), and 6,937,572 (“the ’572 Patent”).
`
`(d) Doctrine of Equivalents
`
`Rockstar contends that each of the accused instrumentalities infringes each of the asserted
`claims literally and directly. In the alternative, Rockstar contends that any element found not to
`be literally infringed is infringed under the doctrine of equivalents because the differences
`between the claimed inventions and the accused instrumentalities, if any, are insubstantial.
`Rockstar also contends that Plaintiff directly infringes the asserted claims by making, using,
`offering for sale, selling, and importing in to the United States the accused instrumentalities as
`
`Google Ex. 1425, pg. 2
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`

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`well as indirectly infringe each of the asserted claims by contributing to and/or inducing others
`(e.g., plaintiff’s customers or its customers’ customers) to directly infringe those claims.
`Rockstar further contends that Plaintiff’s infringement is deliberate and willful entitling Rockstar
`to an injunction, enhanced damages, and attorneys’ fees.
`
`(e) Priority dates:
`
`See section (a) supra.
`
`(f) Software as Infringing Instrumentalities
`
`Because Rockstar accuses software of infringing some elements of some of the asserted
`claims of some of the asserted patents, Rockstar will, once plaintiff’s source code production is
`complete, supplement its contentions as permitted by Patent Rule 3-1(g) or as otherwise
`appropriate.
`
`(g) Willful Infringement
`
`Google had actual notice of the patents at least by April 4, 2011, when it placed its initial
`bid for the Nortel patent portfolio containing each of the patents asserted herein, was further
`aware of the patents patent as a result of Rockstar’s October 31, 2013 filing of the action against
`ASUS, HTC, Huawei, LG, Pantech, Samsung, and ZTE, was further aware of the patents prior to
`filing its complaint for declaratory relief in this case, and further has knowledge of its
`infringement of the patents by way of Rockstar’s Answer and Counterclaims in this case.
`Rockstar hereby incorporates all allegations relating to willful infringement in its Answer and
` See Rockstar’s Answer to Complaint for Declaratory Judgment and
`Counterclaims.
`Noninfringement and Counterclaims, Dkt. 61.
`
`(h) Reservation of rights:
`
`Rockstar reserves the right, consistent with the local Patent Rules, the Federal Rules and
`other applicable authority, to revise its infringement theories and to identify additional accused
`instrumentalities as the case progresses (e.g., through discovery, claim construction, etc.).
`
`II.
`
`Document Production Pursuant to P.R. 3-2
`
`In addition to containing the claim charts discussed above, the provided FTP contains
`Rockstar’s document production pursuant to P.R. 3-2. The following lists the specific
`documents that correspond to each category of P.R. 3-2:
`
`P.R. 3-2(a) Documents: RKS_NDCA_0001289 to RKS_NDCA_0001299.
`
`P.R. 3-2(b) Documents: RKS_NDCA_0001283 to RKS_NDCA_0001288;
`RKS_NDCA_0001300 to RKS_NDCA0001310;
`POISSON_NDCA_0000001 to POISSON_NDCA_0000173;
`EGAN_NDCA_0000001 to EGAN_NDCA_0000004.
`
`
`
`Google Ex. 1425, pg. 3
`
`

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`P.R. 3-2(c) Documents: RKS_NDCA_0000001 to RKS_NDCA_0001282.
`
`Rockstar has used its best efforts to identify responsive P.R. 3-2. However, as discovery
`progresses, Rockstar reserves the right to supplement its document production to identify
`additional responsive documents. To the extent additional responsive documents are identified
`during the course of discovery, Rockstar will promptly supplement its production.
`
`If you have any questions, please do not hesitate to contact me.
`
`Regards,
`
`/s/ Josh W. Budwin
`
`Josh W. Budwin
`
`Via Email - All Other Counsel of Record.
`
`
`cc:
`
`Google Ex. 1425, pg. 4
`
`