Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al

Filing 673

RESPONSE to Motion re 587 SEALED PATENT MOTION IN LIMINE, 604 Amended SEALED MOTION Defendants' Amended Motions in Limine ADDITIONAL BRIEFING IN SUPPORT OF DEFENDANTS MOTION IN LIMINE #4 [DKT. NO. 604] AND IN OPPOSITION TO PLAINTIFFS MOTION IN LIMINE A AND I [DKT. NO. 587] filed by AOL Inc, Amazon.com Inc., Google Inc., MySpace Inc., Softlayer Technologies, Inc., Yahoo! Inc.. (Capoccia, Rachel)

Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al Doc. 673 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-LED JURY TRIAL DEMANDED ADDITIONAL BRIEFING IN SUPPORT OF DEFENDANTS' MOTION IN LIMINE #4 [DKT. NO. 604] AND IN OPPOSITION TO PLAINTIFF'S MOTION IN LIMINE `A' AND `I' [DKT. NO. 587] Dockets.Justia.com I. SUMMARY The PTO decided to conduct a second reexam of the '120 patent based on prior art the PTO considered in the first reexam because the PTO realized it likely made a material mistake in interpreting important teachings of the prior art. Despite realizing that it made a material mistake in the first reexam proceeding, the PTO issued the reexam certificate in the first reexam because the PTO's procedure requires it to do so. Defendants submit that the Court should exclude evidence of both reexams. Should the Court allow evidence of the first reexam, however, the Court should admit evidence of both reexams because they are inextricably intertwined. II. IN GRANTING THE SECOND REEXAM, THE PTO REALIZED IT MADE A MATERIAL MISTAKE IN THE FIRST REEXAM The ex parte petition for the first reexam was filed with the PTO on February 9, 2010. The petition for the ex parte second reexam was filed on January 10, 2011. The PTO issued a notice that it intended to issue a reexamination certificate ("NIRC") in the first reexam on January 14, 2011. About one month later, on February 22, 2011, the PTO issued an order granting the second reexam. In its order, the PTO found substantial new questions of patentability with two of the prior art references, U.S. Patent No. 4,695,949 ("Thatte") and U.S. Patent No. 6,119,214 ("Dirks"), at issue in the first reexam. The PTO found that, even though the two references were considered in the first reexam, the petition for the second reexam presented the two references "in a new light." Dkt. No. 608, Exh. A of Whitehurst Decl. at 9-10. The PTO explained that it saw the Thatte prior art "in a new light" because, even though the PTO found that in the first reexam "Thatte allegedly did not teach the removal of records when the linked list was accessed because the insertion of records operation is suspended while reconciliation/removal is performed," the PTO now realizes that portions of Thatte suggest "an alternative interpretation whereby the reference count filter is inherently accessed while -1- reconciliation/removal is taking place." Id. at 10. The PTO also explained that it saw the Dirks prior art "in a new light" because, even though the PTO found that in the first reexam "Dirks allegedly did not teach the claimed linked list and Dirks was found to not be combinable with Morris," the PTO now realizes that portions of Dirks "suggest that a linked list may be inherently taught or that it may at least not be incompatible to combine Dirks with a reference teaching a similar system employing linked lists." Id. at 11. Thus, the PTO recognized that it made a mistake in the first reexam by misinterpreting and/or not fully appreciating material teachings of Thatte and Dirks. By granting the second reexam petition, the PTO acknowledged that it now saw those references "in a new light" to find a "substantial new question" of patentability. III. THE SECOND REEXAMINATION PROCEEDING IS INEXTRICABLY INTERTWINED WITH THE FIRST REEXAMINATION PROCEEDING During the first reexam, Bedrock submitted an angled expert declaration that did not give the PTO all the relevant facts. The Requestor of the second reexam submitted an expert declaration in response to Bedrock's expert declaration, identifying facts Bedrock's expert ignored. Upon examining the facts in light of both declarations, the PTO found in the second reexam a substantial new question of patentability for the '120 patent in light of a more complete exploration of the same prior art examined in the first reexam. See Dkt. No. 608, Exh. A of Whitehurst Decl. at 9-11. In the second reexam, the PTO is continuing the examination began in the first reexam to address the "new light" in which it now sees the prior art. In the second reexam, the PTO acknowledged that, while Thatte was at issue in the first reexam, it nevertheless qualified as prior art for purposes of the second reexam: -2- US Patent No. 4,695,949 issued to Thatte et al on September 22, 1987 (hereafter "Thatte") that was cited in earlier reexamination. Thatte qualifies as prior art under 102(b). Id. at 5 (emphasis added). In justifying the second reexam, the PTO also stated: In this instant Reexamination, the Request has set presented [sic] Thatte in a new light and cited further portions of Thatte that suggesting an alternative interpretation . . . These cited teachings are new and non-cumulative and are relevant to the reasons for confirmation of claims in the [first] proceeding. Accordingly, they would be important to a reasonable Examiner in determining the patentability of the claims. Id. at 10 (emphasis added). In both reexams, the PTO also found substantial new questions of patentability with respect to Dirks in combination with other references. The PTO, in its decision to grant the second reexam, acknowledged "[i]n the [first] proceeding, Dirks was considered and was found to not teach the distinguishing features of the claimed record search means because Dirks allegedly did not teach the claimed linked list and Dirks was found to not be combinable with Morris." Id. at 11. In the second reexam, the PTO found that Dirks "suggest[s] that a linked list may be inherently taught or that it may at least not be incompatible to combine Dirks with a reference teaching a similar system employing linked lists." The PTO in the second reexam thus found that Dirks is "new and non-cumulative" and "relevant to the reasons for confirmation of claims in the [first] proceeding." Id. Even though the PTO has issued its reexamination certificate in the first reexam, the PTO has now called into question its own findings. Evidence of the first reexam without evidence of the second reexam, is incomplete and misleading as to the true USPTO record. IV. THE PTO PROCEEDED WITH THE REEXAMINATION CERTIFICATE IN THE FIRST REEXAM BECAUSE THE PTO'S STATED PROCEDURES REQUIRE IT TO DO SO -3- Despite realizing that it likely made a material mistake in the first reexamination proceeding, the PTO issued the reexamination certificate in the first reexamination (rather than merging the two reexamination proceedings and withdrawing its notice of intent to issue a reexamination certificate in the first proceeding) because the PTO's procedures--as set out in the MPEP and the CFR--require it to do so. Those procedures state that two co-pending reexamination proceedings "will usually be merged" only if the first one "has not been terminated." 37 C.F.R. 1.565(c). Here, the first reexam was terminated before the second reexam was granted. "A NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated." See, e.g., MPEP 2287, paragraph 6. The first reexam terminated when the PTO issued the NIRC on January 14, 2011, well before the PTO granted the second petition for reexamination on February 22, 2011. Under the PTO's rules, the two reexamination procedures could not have been merged. Furthermore, failure to conclude the first reexamination is contrary to federal statute. The MPEP explains: Pursuant to 35 U.S.C. 305, `[a]ll reexamination proceedings under this section will be conducted with special dispatch within the Office.' This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination. Thus, if a second request for reexamination will unduly delay the first reexamination proceeding, the two proceedings generally will not be merged. If the Office were to merge the two proceedings, the first reexamination proceeding would need to be withdrawn from its place in the process, thus delaying, instead of advancing, prosecution. This would run contrary to the statutory `special dispatch' requirement of 35 U.S.C. 305 and its intent. On the other hand, if the Office does not merge, the first reexamination proceeding can be concluded, and any substantial new question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no delay resulting. The second request is then considered based on the claims in the patent -4- as indicated in the issued reexamination certificate, rather than the original claims of the patent. MPEP 2283(V) (emphasis added). In short, the issuance of the first reexam certificate does not reflect finality or lack of mistake by the PTO. Rather, the first reexam certificate reflects the fact that the PTO was following its own procedures. V. THE COURT SHOULD EXCLUDE EVIDENCE OF EITHER REEXAM, BUT IF IT ALLOWS EVIDENCE REGARDING THE FIRST REEXAM, THE COURT SHOULD ALLOW EVIDENCE REGARDING THE SECOND REEXAM The Court should not allow evidence of either reexam. Should it allow evidence of one, however, it should allow evidence of both. It would be fundamentally unfair to allow evidence of the first reexam while not allowing evidence of the second reexam, because to do so would provide the jury with an incomplete and inaccurate understanding of the reexamination status. VI. CONCLUSION For the forgoing reasons, the Defendants respectfully request the Court exclude mention of either reexam. However, to the extent the Court allows Bedrock to present evidence of the first reexam, the Defendants should be allowed to present evidence of the second reexam. -5- Respectfully submitted, this the 29th day of March 2011. /s/ Yar R. Chaikovsky (with permission) Yar R. Chaikovsky ychaikovsky@mwe.com John A. Lee jlee@mwe.com Bryan K. James bjames@mwe.com MCDERMOTT WILL & EMERY LLP 275 Middlefield Rd., Suite 100 Menlo Park, CA 94025 Tel: 650.815.7400 Fax: (650) 815-7401 Christopher D. Bright cbright@mwe.com MCDERMOTT WILL & EMERY LLP 18191 Von Karman Ave, Ste. 500 Irvine, California 92612 Tel: 949.757.7178 Fax: 949.851.9348 Natalie A. Bennett nbennett@mwe.com MCDERMOTT WILL & EMERY LLP 227 West Monroe Chicago, IL 60614 Tel: 312.984.7631 Fax: 312.984.7700 Jennifer Doan Texas Bar No. 08809050 jdoan@haltomdoan.com J. Scott Andrews Texas Bar No. 24064823 sandrews@haltomdoan.com HALTOM & DOAN Crown Executive Center, Suite 100 6500 Summerhill Rd. Texarkana, Texas 75503 Tel: 903.255.1002 Fax: 903.255.0800 Attorneys for Defendant Yahoo! Inc. /s/ Rachel M. Capoccia________ Rachel M. Capoccia alan.whitehurst@alston.com Marissa R. Ducca marissa.ducca@alston.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 frank.smith@alston.com ALSTON & BIRD LLP One Atlantic Center 1201 West Peachtree Street Atlanta, GA 30309 Telephone: (404) 881-7240 Facsimile: (404) 256-8184 Louis A. Karasik (pro hac vice) lou.karasik@alston.com Rachel M. Capoccia rachel.capoccia@alston.com ALSTON & BIRD LLP 333 South Hope Street 16th Floor Los Angeles, CA 90071 Telephone: (213) 576-1148 Facsimile: (213) 576-1100 Deron R. Dacus Texas Bar No. 00790553 derond@rameyflock.com RAMEY & FLOCK, P.C. 100 E. Ferguson, Suite 500 Tyler, Texas 75702 Telephone: (903) 597-3301 Facsimile: (903) 597-2413 Attorneys for Defendants MySpace, Inc. and AOL Inc. -6- /s/ John C. Alemanni (with permission) Steven Gardner E. Danielle T. Williams John C. Alemanni Alton Absher III KILPATRICK TOWNSEND & 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 TOWNSEND & STOCKTON LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309-4530 Telephone: 404-815-6500 Fax: 404-815-6555 J. Thad Heartfield Texas Bar No. 09346800 thad@jth-law.com M. Dru Montgomery Texas Bar No. 24010800 dru@jth-law.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/ Todd M. Briggs (with permission) Claude M. Stern claudestern@quinnemanuel.com Todd M. Briggs toddbriggs@quinnemanuel.com QUINN EMANUEL URQUHART & SULLIVAN, 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 mikejones@potterminton.com POTTER MINTON 110 N. College Tyler, Texas 75702 Telephone: (903) 597-8311 Facsimile: (903) 593-0846 Attorneys for Defendant Google Inc. -7- CERTIFICATE OF SERVICE This is to certify that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on this 29th day of March, 2011. Any other counsel of record will be served by first class mail. /s/ Rachel M. Capoccia _________ -8-