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

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS SKYHOOK WIRELESS, INC., Plaintiff and Counterclaim-Defendant, v. GOOGLE INC., Defendant and Counterclaimant. ) ) ) ) ) ) ) ) ) ) ) ) )

Case No. 1:10-cv-11571-RWZ Case No. 1:13-cv-10153-RWZ

GOOGLE INC.S MOTION FOR RULE 11 SANCTIONS 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 its counsel for asserting in Count XIV of Skyhooks Amended Complaint the objectively baseless claim that Google infringes U.S. Patent 8,031,657 (the 657 Patent). Skyhook knew, before filing its Amended Complaint, that Google cannot infringe the 657 Patent under this Courts order construing identical claim terms recited in the 657 Patents parent. Google seeks the sanction 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.

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The 657 Patent issued on October 4, 2011 and was added to this case on March 29, 2013, with the filing of Skyhooks Amended Complaint (D.I. 150). The 657 Patent is a continuation of U.S. Patent 7,414,988 (the 988 Patent) and thus has the exact same specification as the 988 Patent. The Court held the 988 Patent invalid. 1 Both patents are directed to collection of Wi-Fi access point data using scanning vehicles that systematically drive the 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 scanning vehicles 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 point data, and instead (2) began collecting data from user devices, and Skyhook has known since at least January 3, 2013 that this change occurred in April 2010 more than a year before the 657 Patent issued. Despite this, Skyhooks 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 Skyhooks Infringement Contentions rely are objectively baseless and violate Rule 11(b)(2). [T]here is a threshold below which a claim construction is so unreasonable 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

D.I. 96 at 36-37. 2

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sanctions warranted). It is objectively unreasonable for Skyhook to rely on a claim construction theory at odds with both this Courts existing constructions in this case and Skyhooks own representations 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 the database of Wi-Fi access points described in the 988 Patent and related U.S. Patent 7,433,694 (the 694 Patent). Skyhooks counsel stated: It can be, but . . . not in these patents. Technology Tutorial Tr. at 43:18-22 (emphasis added). Instead, Skyhooks counsel explained that the patents determine[] the accuracy [of access points] by driving all of the streets . . . . Id. at 43:25-44:1. Later, Skyhooks counsel again emphasized that the 988 and 694 Patents do not relate to user-collected data: THE COURT: But neither patent uses, or maybe the technology doesn't call for it under any circumstances, whatever data may be returned from the user, that is, the person that theyre trying to find based on where that person is found. MR. LU: The two, these two patents do not. There are other implementations and Skyhook does in fact use that data. THE COURT: But thats not implicated. MR. LU: But thats 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 Googles motion for summary

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judgment that the 988 Patent is invalid. 2 Two of the claim terms construed by the Court in the parent 988 Patent arterial bias and calculated position information are also used in Claim 1 of the continuation 657 Patent. The Court construed arterial bias and calculated position information as requiring data to be collected systematically using scanning vehicles. The Court construed arterial bias as: The deviation of the calculated position information for a Wi-Fi access point toward heavily trafficked roads and away from the actual geographic location of the access point that occurs when data is collected by scanning vehicles that traverse heavily trafficked roads at the expense of smaller, surrounding streets. D.I. 96 at 9 (emphasis added); see also id. at 11 (deviation that results from arterial bias occurs because data is collected by scanning vehicles that traverse heavily trafficked roads at the expense of smaller, surrounding streets). The Court construed calculated position information as: Estimated physical location(s) of Wi-Fi access points calculated using characteristics of signals transmitted by such Wi-Fi access points, which WiFi access points have been collected systematically, i.e., in a manner in which all the streets in a target area are covered. Id. at 14 (emphasis added). In addition, the Court found that the inventors disavowed use of randomly-collected data: [T]he way to avoid arterial bias in the data set collected is to drive every single street in the target area. Since the inventors denigrate the Random Model as introducing arterial bias into the data set the very problem which the patents aim to solve they have disavowed the Random Model of scanning. The patents-insuit therefore require that the data be collected systematically, i.e., by covering every street in a target area.

The Court also held invalid U.S. Patent No. 7,305,245. D.I. 96 at 36-37. 4

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Id. at 15-16 (citation omitted; emphases added); see also id. at 17 (finding that the prosecution history requires that data be collected in a systematic fashion through planned audit.). On November 13, 2012, Google filed its Amended Non-Infringement Contentions, in which it stated: The accused Google products do not systematically collect information from all streets because Wi-Fi access point information was collected via crowd-sourcing, a collection method which is not systematic[], i.e., in a manner in which all the streets in a target area are covered. D.I. 108 at 7-8. On January 3, 2013, counsel for the parties held a discovery meet-and-confer, in which Googles counsel stated that Google stopped systematically collecting data using scanning vehicles in April 2010, and Skyhook responded memorializing this disclosure. See Dutta Decl., Ex. A. On March 29, 2012, Skyhook filed its Amended Complaint asserting a claim for infringement of the 657 Patent. (D.I. 150). On April 15, 2013, Skyhook served Preliminary Infringement Disclosures and filed Skyhook Wireless, Inc.s Unopposed Motion To File Under Seal Its Preliminary Infringement Disclosure (D.I. 152). Skyhook states in this Preliminary Infringement Disclosure that Skyhook understands that Google contends that it stopped collecting CityBlock data for WLAN-enabled APs in 2010. Infringement Disclosures Ex. A at 4 n.4. On May 1, 2013, Googles counsel sent a letter to Skyhook under the safe harbor provision of Rule 11(c)(2), requesting that Skyhook dismiss with prejudice its claims asserting that Google infringes the 657 Patent. See Dutta Decl., Ex. B. A draft of this motion is attached to the letter. Id. On May 22, 2013, Skyhook responded that it would not agree to dismiss the claims. See Dutta Decl., Ex. C. On June 6, 2013, Google requested that Skyhook reconsider.

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See, Dutta Decl., Ex. D. On June 10, 2013, Skyhook again responded that it would not agree to dismiss the claims. See, Dutta Decl., Ex. E.

ARGUMENT AND CITATION OF AUTHORITY Rule 11 of the Federal Rules of Civil Procedure requires that an attorney presenting or advocating a pleading or other paper to a court to certify that an inquiry reasonable under the circumstances has been performed, and to verify that (1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation, (2) the claims . . . and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, and (3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery[.] Fed. R. Civ. P. 11(b). Parties and counsel may be sanctioned for violating Rule 11(b). Fed. R. Civ. P. 11(c). The purpose of Rule 11 is to curb[] baseless filings[.] Judin v. U.S., 110 F.3d 780, 784 (Fed. Cir. 1997) (citing Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 389 (1990)); see also Raylon, 700 F.3d at 1367 (Rule 11 requires litigants to stop-and-think before initially making legal or factual contentions) (quoting Fed. R. Civ. P. 11 advisory committee note to 1993 amendments, 149 F.R.D. 401, 584-85); Pellegrini v. Analog Devices, Inc., No. 02-11562, 2006 WL 83472 (D. Mass. Jan. 11, 2006) (Zobel, J.). Because [a] patent suit can be an expensive proposition[,] [d]efending against baseless claim of infringement subjects the alleged infringer to undue costsprecisely the scenario Rule 11 contemplates. View Engg, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000). Thus, it is important that the party bringing the suit perform a pre-filing assessment of the basis of each infringement claim. Id.

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The law of the regional circuit applies to Rule 11 sanctions in a patent case. Raylon, 700 F.3d at 1367. The First Circuit has held that groundless filings which fail[] the test of objective reasonableness under the circumstances existing at the time [of filing], irrespective of the filing partys state of mind violate Rule 11. Lancellotti v. Fay, 909 F.2d 15, 18 (1st Cir. 1990) (quoting Kale v. Combined Ins. Co., 861 F.2d 746, 757 n.12 (1st Cir.1988)). In addition, the Federal Circuit has imposed Rule 11 sanctions in patent infringement cases where a party relies on a claim construction that is objectively baseless or so unreasonable that no reasonable litigant could believe it would succeed[.] Raylon, 700 F.3d at 1368-69 (quoting iLor, LLC v. Google, Inc., 631 F.3d 1372, 1378 (Fed. Cir. 2011). In Raylon, the Federal Circuit found frivolous a claim construction that is contrary to all the intrinsic evidence and does not conform to the standard canons of claim construction. Id. at 1369. Skyhooks claim alleging that Google infringes the 657 Patent is premised on an infringement theory and a claim construction that contradict this Courts claim construction order, and thus was objectively unreasonable under the circumstances existing at the time of filing. Lancellotti, 909 F.2d at 18. Skyhook states in its Infringement Disclosures that Google receives Wi-Fi location data from Google Street View cars (CityBlock data) or from individual users. The Infringement Disclosures state: A scanner could be a CityBlock vehicle, iPhone, Android phone, laptop, desktop, etc., Infringement Disclosures (D.I. 152) Ex. I at 2; and There are two sources of data collection: (a) War-drive data (GPS tracks); (b) Data collected from Google clients running on the user laptops and other devices. Id. at 8. But Skyhook knew at the time of filing that the 657 Patent cannot be infringed by collecting data from user devices because the 657 Patent requires active and current collection of Wi-Fi access point data

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systematically, i.e., in a manner in which all the streets in a target area are covered using scanning vehicles. D.I. 96 at 9-16. This Court construed terms of the parent 988 Patent that are recited in claim 1 of the 657 Patent as requiring systematic data collection using scanning vehicles. The Courts construction depends primarily on the specification that the 988 Patent and 657 Patent share. For example, the Court relied on the Discussion of Related Art, which notes that the 988 Patent was explicitly addressed at solving the problem of arterial bias. D.I. 96 at 10. Prior art relying on user-submitted data suffers from arterial bias. Because the data is self-reported by individuals who are not following designated scanning routes, the data tends to aggregate around heavily traffic [sic] areas. Id. (quoting 988 Patent at 3:2-3). The Court also found that the inventors disavowed use of randomly-collected data. Id. at 15-16, 17. The Court thus construed the claim terms used in both the 988 and 657 patents to require data to be collected using scanning vehicles that systematically drive all the streets in a target area. Id. at 9, 14-16. The 657 Patent has the exact same specification as the 988 patent, and therefore the Courts reasoning applies with equal force to the same claim terms in the 657 Patent. See, e.g., August Technology Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011) (We presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.) (quoting z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1348 (Fed. Cir. 2007)). Further, Skyhooks counsel stated at the technology tutorial that the 988 Patent relates only to data collected using scanning vehicles and not user-collected data. This statement applies with equal force to the 657 Patent because both patents share a common specification, which describes only the use of scanning vehicles. See, e.g., 657 Patent at Figure 2 (scanning

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vehicle 201), Figure 3 (scanning vehicle 301), Figure 4 (scanning vehicle 401), Figure 7 (scanning vehicle 701), Figure 8 (scanning vehicles 801). Skyhook has asserted independent claim 1 and dependent claims 2-7, each of which depends from claim 1. Claim 1 is the only independent claim of the 657 Patent and is very similar to claim 1 of the 988 Patent. Both claims recite the terms arterial bias and calculated position information so the Courts constructions and Skyhooks statements concerning the 988 Patent apply equally to the 657 Patent. See, e.g., August Technology, 655 F.3d at 1284. Data collected from user devices, i.e., crowd sourcing, is not collected using scanning vehicles or systematically instead it is collected randomly, which the Court expressly found outside the scope of the 988 and 657 patents. D.I. 96 at 15-16. Thus, Skyhooks assertion that Googles collection of access point data from user devices infringes the 657 Patent is objectively baseless. Raylon, 700 F.3d at 1368-69. Skyhooks construction is contrary to all the intrinsic evidence and the Courts existing constructions, and no reasonable litigant could believe it would succeed[.] Id. Further, Skyhook has known since at least January 3, 2013 that Google stopped collecting Wi-Fi data using Street View scanning vehicles in April 2010. See Dutta Decl. Ex. A. In addition, Google announced publicly on July 9, 2010 that it stopped collecting Wi-Fi data using Street View vehicles, by posting on Googles official blog that Wi-Fi data collection equipment has been removed from [Googles] cars in each country and the independent security experts Stroz Friedberg have approved a protocol to ensure any Wi-Fi related software is also removed from the cars before they start driving again. Dutta Decl. Ex. F. Further, the Federal Communications Commission published a public report on April 13, 2012 that found that Google ceased any collection of Wi-Fi data using Street View cars before May 2010. See Dutta Decl. Ex. G at 9, 12, 24. Indeed, Skyhook admits this

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knowledge in its Infringement Contentions, stating: Skyhook understands that Google contends that it stopped collecting CityBlock data for WLAN-enabled APs in 2010. Infringement Disclosures Ex. A at 4 n.4. The 657 Patent requires computer-implemented logic for receiving sets of newlydiscovered readings for Wi-Fi access points in the target area, 657 Patent, claim 1, so the fact that Google stopped collecting data using scanning vehicles in April 2010 before the 657 Patent issued in 2011 means that Google cannot infringe, and cannot ever have infringed, the 657 Patent. Skyhooks Infringement Contentions for a different patent (U.S. Patent No. 7,856,234) state that even if CityBlock collection ceased in 2010, use of CityBlock data . . . continued until at least March 2012. Skyhook does not make this assertion for the 657 Patent, for good reason because the 657 Patent requires receiving sets of newly-discovered readings for Wi-Fi access points in the target area, and thus the use of already-collected data cannot infringe the 657 Patent. Skyhooks knowledge of this fact means that its filing of the Amended Complaint asserting the 657 Patent is objectively baseless and frivolous. See, e.g., Raylon, 700 F.3d at 1368-69. Skyhook should be sanctioned for its violations of Rule 11(b). CONCLUSION For the foregoing reasons, Google. respectfully requests that the Court find that Skyhook violated Rule 11(b) in asserting that Google infringes the 657 Patent, grant Googles motion for sanctions, dismiss with prejudice Count XIV of Skyhooks Amended Complaint, and award Google its costs and attorneys fees incurred in connection with this motion.

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/s/ William F. Abrams William F. Abrams (pro hac vice) Sanjeet K. Dutta (pro hac vice) John O. Gilmore (pro hac vice) KING & SPALDING LLP 333 Twin Dolphin Drive Redwood Shores, CA 94065 Telephone: (650) 590-0703 wabrams@kslaw.com sdutta@kslaw.com jgilmore@kslaw.com Thomas C. Lundin Jr. (pro hac vice) KING & SPALDING LLP 1180 Peachtree Street Atlanta, GA 30309 Telephone: (404) 572-2808 tlundin@kslaw.com Jonathan M. Albano, BBO #013850 Susan Baker Manning (pro hac vice) Robert C. Bertin (pro hac vice) BINGHAM McCUTCHEN LLP One Federal Street Boston, MA 02110-1726 Telephone: (617) 951-8000 jonathan.albano@bingham.com susan.manning@bingham.com r.bertin@bingham.com ATTORNEYS FOR DEFENDANT AND COUNTERCLAIMANT GOOGLE INC.

LOCAL RULE 7.1 CERTIFICATION I am counsel for the movement Google, Inc. I certify that I have conferred with counsel for Plaintiff Skyhook Wireless, Inc., as to the relief sought in this motion in a good faith effort to resolve the issues raised in this motion. Skyhook stated that it would oppose this motion /s/ William F. Abrams William F. Abrams

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CERTIFICATE OF SERVICE I certified that on this date, I filed the foregoing DEFENDANT GOOGLE INC.S MOTION FOR RULE 11 SANCTIONS AGAINST SKYHOOK WIRELESS, INC. with the Clerk of the Court using the CM/ECF system, which will automatically send email notification of such filing to the following attorneys of record and to all registered participants as identified on the Notice of Electronic Filings (NEF): Douglas R. Tillber Griesinger, Tighe & Maffei, LLP Suite 400 176 Federal Street Boston, MA 02110 Telephone: 617-542-9900 Facsimile: 617-542-0900 dtillberg@gtmllp.com Matthew D. Powers Azra M. Hadzimehmedovic Tensegrity Law Group, LLP 555 Twin Dolphin Drive, Suite 360 Redwood Shores, CA 94065 Telephone: 650-802-6010 Facsimile: 650-802-6001 matthew.powers@tensegritylawgroup.com azra@tensegritylawgroup.com /s/ William F. Abrams William F. Abrams

Dated: June 10, 2013

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