Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al
Unopposed MOTION for Leave to File (Supplement Invalidity Contentions) by AOL Inc, Amazon.com Inc., Google Inc., Match.Com LLC, MySpace Inc., Softlayer Technologies, Inc., Yahoo! Inc.. (Attachments: # 1 Exhibit A (Part 1 of 2), # 2 Exhibit A (Part 2 of 2), # 3 Text of Proposed Order)(Williams, E Danielle)
Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION Bedrock Computer Technologies LLC, Plaintiff, v. SoftLayer Technologies, Inc., et al., Defendants. Case No. 6:09-CV-269 JURY TRIAL DEMANDED
DEFENDANTS' UNOPPOSED MOTION FOR LEAVE TO SUPPLEMENT THEIR INVALIDITY CONTENTIONS Defendants SoftLayer Technologies, Inc., Google, Inc., Yahoo! Inc., MySpace Inc., Amazon.com Inc., Match.com LLC, and AOL Inc. (collectively "Defendants") hereby move for leave to supplement their Invalidity Contentions for U.S. Patent No. 5,893,120 (the "`120 patent") pursuant to P.R. 3-6(b). The Defendants have met and conferred with Plaintiff Bedrock Computer Technologies LLC ("Bedrock"), and Bedrock does not oppose. I. BACKGROUND On June 16, 2009, Bedrock filed this action, accusing the Defendants of infringing the `120 patent. Pursuant to P.R. 3-3, Defendants served Invalidity Contentions on January 8, 2010 ("Defendants' Invalidity Contentions"). On December 9, 2009, Red Hat Inc. ("Red Hat") filed an action against Bedrock in this Court seeking a declaration that the `120 patent is invalid, among other relief.1 Red Hat served its Invalidity Contentions on May 14, 2010 ("Red Hat's Invalidity Contentions"). Red Hat's Invalidity Contentions were substantially similar to the
Red Hat, Inc. v. Bedrock Computer Technologies, LLC, Case No. 6:09-cv-549.
Defendants' Invalidity Contentions, except for the addition of several references and accompanying claim charts. On August 27, 2010, Defendants filed an unopposed motion for leave to supplement their invalidity contentions to include the additional art cited in Red Hat's Invalidity Contentions, which this Court granted on September 1, 2010.2 Red Hat and the crossclaim defendants NYSE Euronext, Rackspace Hosting, Inc., ThePlanet.com Internet Services, Inc., Whole Foods Market, Inc., 1&1 Internet, Inc., ConocoPhillips Co., ConAgra Foods, Inc., Facebook, Inc., Go Daddy Group, Inc., Nationwide Mutual Insurance Co., R.L. Polk & Co., SunGard Data Systems, Inc., The Gap Inc., and Virgin America Inc., served additional Invalidity Contentions on October 18, 2010 ("Red Hat/Crossclaim Defendants' Invalidity Contentions"). Red Hat/Crossclaim Defendants' Invalidity Contentions were substantially similar to the Defendants' Invalidity Contentions, except for the addition of several references and accompanying claim charts. On October 19, 2010, Defendants requested Bedrock's consent to supplement their Invalidity Contentions with the additional references and corresponding claim charts from the Red Hat Invalidity Contentions, and Bedrock indicated that it would not oppose any motion for leave to serve Supplemental Invalidity Contentions. Accordingly, the Defendants seek to supplement their Invalidity Contentions to include the additional references and corresponding claim charts presented in Red Hat/Crossclaim Defendants' Invalidity Contentions. A copy of the Proposed Supplemental Invalidity
Contentions, which is identical to Red Hat/Crossclaim Defendants' Invalidity Contentions served on October 18, 2010, is attached hereto as Exhibit A. Bedrock has been on notice of these references since at least October 18, 2010, and thus will suffer no prejudice if this Motion is granted. Further, granting this Motion will allow the parties to litigate the issues surrounding all
Dkt. No. 276.
of the prior art disclosed to Bedrock in this case--rather than artificially limiting the Defendants to a subset of the art disclosed to Bedrock. This would further judicial economy by increasing the likelihood that this case could resolve key issues regarding the validity of the `120 patent which would lead to more efficient disposition of both actions. II. ARGUMENT Under Local Patent Rule 3-6(b), amendments or supplements to invalidity contentions are allowed "upon a showing of good cause." P.R. 3-6(b). In determining good cause, this Court often considers four factors, all of which favor the Defendants here: (1) the explanation for the failure to make the disclosure in the party's initial invalidity contentions; (2) the importance of the thing that would be excluded; (3) potential prejudice in allowing the thing that would be excluded; and (4) the availability of a continuance to cure any prejudice.3 For the reasons stated below, the Defendants respectfully submit that supplementing of their Invalidity Contentions is warranted. A. Defendants' Explanation for Failure to Include the Additional References in Its Invalidity Contentions.
Since the beginning of the case, the Defendants have diligently searched for and analyzed prior art relevant to the `120 patent. The Defendants continue to search diligently for prior art references, additional documentation and/or corroborating evidence concerning prior art systems, as explained in Defendants' Invalidity Contentions.4 Defendants' Invalidity Contentions
included all of the prior art known to the Defendants by January 8, 2010 and Defendants' first supplement to the Invalidity Contentions included all of the prior art known to the Defendants by May 14, 2010. On October 18, 2010, Red Hat and the crossclaim Defendants served Invalidity
Arbitron, Inc. v. Int'l Demographics, Inc., No. 2:06-cv-434, 2008 WL 4755761, at *1 (E.D. Tex. Oct. 29, 2008). See January 8, 2010 Invalidity Contentions at 4.
Contentions on Bedrock pursuant to the Docket Control Order in that action.
Hat/Crossclaim Defendants' Invalidity Contentions included six additional claim charts of references of which the Defendants were not aware at the time they served their prior invalidity contentions. Upon learning of the additional references, the Defendants now have had the opportunity to analyze the prior art references against the claims of the `120 patent. Given the complexity and fast pace of this case, the discovery of supplemental documentation and the determination that those references render the claims of the `120 patent invalid in the months following the deadline for Invalidity Contentions are reasonable. B. The Prior Art Documentation Defendants Seek to Include in Their Invalidity Contentions is Critical to Defense of this Action.
The additional references to be included in the Invalidity Contentions are important to this case because they show prior invention, knowledge, and/or use of the purported invention claimed in the `120 patent by someone other than the named inventor of the `120 patent.5 They additionally support the Defendants' contention that the existing technology and knowledge in the field deemed the inventions obvious to those skilled in the art before the earliest possible priority date of the `120 patent. For example, some of these references are dated from the early and mid-1990s and include source code that performed on-the-fly garbage collection from linked lists associated with hash tables via an external chaining technique.6 These references were written more than a year--and in some cases, several years--before the filing of the `120 patent.7
See Exhibit A, Proposed Supplemental Invalidity Contentions at Ex. D-12 - D-17. As noted herein, these references and charts are identical to those served by Red Hat on October 18, 2010. 6 See Exhibit A, Proposed Supplemental Invalidity Contentions, e.g., Ex. D-12. 7 See, e.g., Exhibit A, Proposed Supplemental Invalidity Contentions, at Ex. D-14 and Ex. D-15, dated from 1993.
As the Proposed Supplemental Invalidity Contentions demonstrate, the additional prior art anticipates or renders obvious the claims of the `120 patent. Given the importance of these additional references, the Defendants will suffer significant prejudice if they are not allowed to present the supplemental references to the Court to prove invalidity of the `120 patent.8 C. Plaintiff is Not Prejudiced by the Defendants' Supplementation of Their Invalidity Disclosures.
Bedrock has been on notice of the additional references since receiving Red Hat/Crossclaim Defendants' Invalidity Contentions on October 18, 2010 and has known of and consented to Defendants' intent to supplement their Invalidity Contentions since October 19, 2010. In addition Bedrock will need to analyze these additional references to defend the Red Hat action. Therefore, Bedrock will not be unfairly burdened in analyzing these references for this case. Consequently, Bedrock will suffer no prejudice if this motion is granted. D. A Continuance is Not Necessary.
Bedrock will not be prejudiced by the grant of this motion and does not oppose this motion. Accordingly, there is no need for a continuance. III. RELIEF REQUESTED The Defendants have demonstrated the requisite good cause necessary to supplement their Invalidity Contentions. Therefore, the Defendants respectfully request that the Court grant the Defendants' Unopposed Motion for Leave to Supplement their Invalidity Contentions.
See Alt v. Medtronic, Inc., No. 2:04-cv-370, 2006 WL 278868 at *4-5 (E.D. Tex., Feb. 1, 2006) (Davis, J.) (finding that exclusion of new and significant prior art would strongly prejudice the party seeking amendment).
Respectfully submitted, this 10th day of November, 2010. /s/ E. Danielle T. Williams Steven Gardner E. Danielle T. Williams John C. Alemanni Alton Absher III KILPATRICK STOCKTON LLP 1001 West 4th Street Winston-Salem, NC 27101 Telephone: 336-607-7300 Fax: 336-607-7500 William H. Boice Russell A. Korn KILPATRICK STOCKTON LLP Suite 2800 1100 Peachtree Street Atlanta, GA 30309-4530 Telephone: 404-815-6500 Fax: 404-815-6555 J. Thad Heartfield Texas Bar No. 09346800 firstname.lastname@example.org M. Dru Montgomery Texas Bar No. 24010800 email@example.com THE HEARTFIELD LAW FIRM 2195 Dowlen Road Beaumont, TX 77706 Telephone: 409-866-2800 Fax: 409-866-5789 Attorneys for Defendants SoftLayer Technologies, Inc. and Amazon.com Inc. /s/ Marissa R. Ducca (with permission) Alan L. Whitehurst firstname.lastname@example.org Marissa R. Ducca email@example.com ALSTON & BIRD LLP The Atlantic Building 950 F Street, N.W. Washington, DC 20004 Telephone: (202) 756-3300 Facsimile: (202) 756-3333 Frank G. Smith firstname.lastname@example.org ALSTON & BIRD LLP One Atlantic Center 1201 West Peachtree Street Atlanta, GA 30309 Telephone: (404) 881-7240 Facsimile: (404) 256-8184 Michael J. Newton (SBN 24003844) email@example.com ALSTON & BIRD LLP Chase Tower 2200 Ross Avenue, Suite 3601 Dallas, TX 75201 Telephone: (214) 922-3423 Facsimile: (214) 922-3839 Louis A. Karasik (pro hac vice) firstname.lastname@example.org ALSTON & BIRD LLP 333 South Hope Street 16th Floor Los Angeles, CA 90071 Telephone: (213) 576-1148 Facsimile: (213) 576-1100 Attorneys for Defendants MySpace Inc. and AOL LLC
/s/ Todd M. Briggs (with permission) Claude M. Stern email@example.com Todd M. Briggs firstname.lastname@example.org QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 555 Twin Dolphin Dr., Suite 560 Redwood Shores, CA 94065 Telephone: 650-801-5000 Facsimile: 650-801-5100 Michael E. Jones State Bar No. 10929400 email@example.com POTTER MINTON 110 N. College Tyler, Texas 75702 Telephone: (903) 597-8311 Facsimile: (903) 593-0846 Attorneys for Defendants Google Inc. and Match.com, LLC
/s/ Yar R. Chaikovsky (with permission) Yar R. Chaikovsky firstname.lastname@example.org MCDERMOTT WILL & EMERY 275 Middlefield Rd., Suite 100 Menlo Park, CA 94025 Telephone: (650) 815-7447 Facsimile: (650) 815-7401 Attorney for Defendant Yahoo! Inc.
CERTIFICATE OF SERVICE The undersigned hereby certifies that on this 10th day of November, 2010 a true and correct copy of the foregoing has been served on all counsel of record via electronic mail.
/s/ E. Danielle T. Williams E. Danielle T. Williams