Monday, January 13, 2014

Google emphasizes inequitable-conduct defense against Rockstar's search engine patents-in-suit

Late on Friday, Google filed its answer to one of the Rockstar "Halloween patent lawsuits": the one targeting Google's search engine core business. (Google is also a recently-added co-defendant in a case targeting Samsung's Android-based devices and trying to get Rockstar's lawsuits against Android device makers transferred from the Eastern District of Texas to the Northern District of California).

I've always made a distinction between Google's world-class defensive efforts and its pathetic counterattacks over Motorola's patents. Google's 88-page answer to the Rockstar/NetStar search engine patents complaint is remarkable: at a stage where most defendants basically just deny all of the allegations and vaguely state some affirmative defenses and counterclaims, Google goes into an unusual level of detail on its allegations of inequitable conduct by the Nortel employees who invented the search engine patents-in-suit and/or their lawyers during prosecution (i.e., the process that resulted in the grant of those patents). That level of detail is attributable to the fact that claims of inequitable conduct have to meet the heightened pleading standard for allegations of fraud.

Google's inequitable-conduct theories are based on allegations that the inventors and their patent attorneys violated their duty of candor and withheld from the United States Patent and Trademark Office certain prior art. While all of the patents-in-suit in the search engine case are from the same patent family and share the same title, there were different examiners at work, and Google alleges that prior art identified and considered by an examiner of one patent application wasn't disclosed to the examiner of some other patent applications. Google also asserts that false representations were made during prosecution.

I can't check on the merits of Google's inequitable-conduct allegations, but I do give Google's lawyers credit for pleading inequitable conduct in such a detailed form little more than two months after the original complaint. They clearly made an effort to discourage, or at least to enable their filing to survive, a motion to dismiss or strike.

Google also raises the usual defenses such as a denial of infringement.

But Google refrained from telling a "patent troll" and competitor conspiracy story in its answer to the complaint. It hints at some of that in a simultaneously-filed motion to transfer the case to the Northern District of California. That motion argues that some key witnesses are located in the Northern District of California, or at least closer to that one than to the Eastern District of Texas, and mentions that Apple and Microsoft employees involved with the Nortel patents auction would have to testify at trial. So the conspiracy theories will come up later, but Google's answer to the complaint focuses on patent-specific issues.

Finally, here's Google's answer to the Rockstar/NetStar search engine patents complaint:

14-01-10 Google Answer to Rockstar Search Patent Complaint by Florian Mueller

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