Google Inc. and its lawyers at Quinn Emanuel Urquhart & Sullivan have lost an early bid to knock out patent infringement claims by Rockstar Consortium, the Apple Inc.-backed group that snatched up Nortel Networks Inc.’s patent portfolio in a 2011 auction.
In a ruling issued on Monday, U.S. District Judge Rodney Gilstrap in Marshall, Texas, refused to dismiss claims related to two former Nortel patents that Rockstar asserted against Google last year. Siding with Rockstar’s lawyers at McKool Smith, Gilstrap swiftly rejected Google’s arguments that Rockstar’s infringement claims are too vague and that one of the patents, which covers a “system for notifying a user of an incoming communication,” covers a patent-ineligible abstract idea.
In 2011, just as the smartphone wars were heating up, Nortel opted to sell off a stockpile of 6,000 patents as part of its bankruptcy proceedings. Google placed the first offer, triggering a bidding war with archrival Apple. The winning bid of $4.5 billion came from Rockstar, a joint venture between Apple, BlackBerry Inc., Sony Corp., Ericcson Inc. and Microsoft Corp. (Apple reportedly footed more than half the total bill.)
Armed with Nortel’s castoff IP, Rockstar filed a batch of complaints in Eastern Texas in October 2013, alleging that Google’s Android partners infringe seven patents on smartphone technology (the remaining defendants are Samsung Electronics Co., ZTE Corp, LG Electronics Co., HTC Corp, Pantech Co. and AsusTek Computer Inc.). Rockstar didn’t assert the patents against Google directly, though it did bring an unrelated patent case against Google the same day relating to search engine technology.
Things got even more complicated in the months that followed. On Dec. 23, 2013, Google sought a declaratory judgment in U.S. district court in San Francisco that it doesn’t infringe the seven patents Rockstar asserted in the Texas cases. Just days later, on Dec. 31, Rockstar filed a complaint against Google directly in Eastern Texas, alleging infringement of three of the seven patents.
Monday’s ruling pertains only to Rockstar’s Dec. 31 complaint against Google, though it’s effectively a loss for the other defendants since they’re also accused of infringing the same two patents. In separate motions, they joined in some of Google’s arguments.
Google is represented by Quinn Emanuel lawyers including Matthew Warren, Sean Pak and Amy Candido. Rockstar’s attorneys at McKool Smith include Theodore Stevenson III and Douglas Cawley. A Susman Godfrey team led by Max Tribble represents Rockstar in its October 2013 case against Google over search engine patents.