Google Facing Trial Over Web Surfing Patents

, The Litigation Daily

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Back in 2009, two inventors formed a company called Personalized User Model LLP and sued Google Inc. for supposedly infringing their patents on Internet search technology. "Large companies cannot be allowed to out-muscle small inventors and misappropriate their valuable works," PUM's attorney, Marc Friedman (now of Dentons), said in a press release hyping the lawsuit.

Four years later, the case is finally nearing trial, though probably not in the form that Friedman and PUM's founders had envisioned. Through an unusual licensing deal, Google says that it's technically a co-owner of the very patents PUM is asserting. Google argues that PUM lacks standing to sue because it failed to join all co-owners of the patent as plaintiffs, and it has also put PUM on the defensive, claiming that one of its founders breached a contract with a former employer by concealing the patented inventions.

It will be up to a jury to decide whether Google's creative defense has merit. In a decision issued on Monday, U.S. District Judge Leonard Stark in Wilmington scheduled the case for trial in March 2014. Stark also refused to reconsider aspects of an earlier ruling denying Google summary judgment on its defenses and counterclaims.

PUM is the brainchild of two computer scientists and longtime collaborators, Roy Twersky and Yochai Konig. They hold two patents, issued in 2005 and 2008, on methods of personalizing the Web-surfing experience of Internet users.

Like any defendant in a patent case, Google argues that PUM's patents are invalid and not infringed. But Google's lawyers at Quinn Emanuel Urquhart & Sullivan have also shifted focus onto the question of when Konig first conceived of the patented technology. According to Google, Konig came up with his ideas in the late 1990s, when he was employed by the research institute SRI International. Google asserts that Konig was under a contractual duty to assign his patents to SRI, so he tried to keep his invention under wraps until he left the company.

The case took an unusual turn in 2011, when Google struck a deal with Konig's former employer. In exchange for a cash payment, SRI agreed to hand Google whatever rights it has in the patents-at-issue.

PUM's lawyer, Friedman, told the Litigation Daily that the arrangement between SRI and Google is "bizarre." According to Friedman, Google will return the IP rights to SRI once the lawsuit is over. In other words, Google is renting an ownership stake in the patents it's accused of infringing.

Bizarre or not, the deal with SRI gave Google new ammunition for its defense. Quinn Emanuel sought summary judgment on the affirmative defense that PUM lacks standing, arguing that PUM needed get all the co-owners of the patents on board with the lawsuit. Google also counterclaimed that Konig breached his employment contract with SRI. That employment contract required Konig to disclose to SRI all inventions conceived during his period of employment.

In a Sept. 9 opinion, Stark ruled that Google couldn't prove as a matter of law that Konig conceived of his invention while at SRI. As a result, Stark refused to grant Google summary judgment on its affirmative defense that PUM lacks standing, as well as on its breach of contract counterclaim. Quinn Emanuel asked Stark to reconsider aspects of that ruling, but he refused the request in Monday's decision.

Quinn Emanuel partner David Perlson referred our questions to Google's press office, which didn't immediately respond to an email seeking comment.

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