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

Filing 726

NOTICE by AOL Inc re 665 Opposed SEALED MOTION for Clarification and Reconsideration Notice of Supplemental Authority in Support of Its Motion for Clarification and/or Reconsideration of Judge Love's Order Denying Summary Judgment Regarding the Legal Issue of Whether Mere Capability is Sufficient for Infringement of Claims 1-2 of the '120 Patent (Dacus, Deron)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION Bedrock Computer Technologies LLC, Plaintiff, Case No. 6:09-CV-269-LED JURY TRIAL DEMANDED v. SoftLayer Technologies, Inc., et al., Defendants. DEFENDANT AOL’S NOTICE OF SUPPLEMENTAL AUTHORITY IN SUPPORT OF ITS MOTION FOR CLARIFICATION AND/OR RECONSIDERATION OF JUDGE LOVE’S ORDER DENYING SUMMARY JUDGMENT REGARDING THE LEGAL ISSUE OF WHETHER MERE CAPABILITY IS SUFFICIENT FOR INFRINGEMENT OF CLAIMS 1-2 OF THE ‘120 PATENT (DKT. NO. 665) Defendant AOL respectfully submits the following Notice of Supplemental Authority in support of its Motion for Clarification and Reconsideration of Judge Love’s Order Denying Summary Judgment Regarding the Legal Issue of Whether Mere Capability is Sufficient for Infringement of Claims 1-2 of the ’120 Patent (Dkt. No. 665). On April 7, 2011, the U.S. District Court for the Eastern District of Wisconsin addressed this exact legal question and granted summary judgment of noninfringement. In Mikkelsen Graphic Engineering (MGE) v. Zund America, the court held that MGE’s apparatus claims were not drafted to suggest capability, and therefore, actual performance of the functions was necessary to infringe the claims. Because Zund disabled (but did not remove) the accused code, Zund did not perform the claimed functions. Therefore, Zund did not infringe as a matter of law. No. 2:07-cv-00391-LA, Dkt. No. 266, at 18-22 (E.D. Wisc., Apr. 7, 2011) (attached hereto as Exhibit A). In reaching its decision, the Court stated: MGE’s argument that disabling the search function does not cure the infringement is based on its contention that an accused product “need only be capable of operating” in an infringing way in order for a sale of that product to constitute direct infringement. However, this is not a complete statement of the law. Although the sale of an accused product that is capable of operating in noninfringing modes may infringe a patent, that can occur only where the claims of the patent are “drawn to capability.” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 19979, 1204 (Fed. Cir. 2010); Ball Aerosol & Speciality Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 994-95 (Fed. Cir. 2009). For a claim to be drawn to capability, the claim language must specify a product that is capable of performing a particular function or operation, not merely a device that actually performs that function or operation. Mikkelsen, No. 2:07-cv-00391-LA, at 19 (citation and footnote omitted). The Court went on to explain: Nothing in MGE’s apparatus claims suggests that a device that contains disabled source code for searching is within the scope of the claims. The claims are not drafted in terms of software components but in terms of the actual function of the apparatus. In -1- other words, the apparatus claims specify a device that performs MGE’s methods, not a device that contains software code for performing MGE’s methods. When the code for searching is disabled, the device does not perform MGE’s methods, and thus sales of the device with the code for searching disabled is not direct infringement. Id. at 21-22 (emphasis added, footnote omitted). Claim 1 of Bedrock’s 120 patent requires, for example: “a linked list to store and provide access to records stored in memory of the system, at least some of the records automatically expiring” and “a record search means utilizing a search key to access the linked list.” Claim 1 uses active tense; claim 1 does not specify mere capability. Therefore, claim 1, like the claims in MGE, requires that the functions be actually performed. If the accused device does not have a linked list with records that automatically expire, and does not use a search key to access the linked list, there can be no infringement. Bedrock has produced no evidence, nor can it, that AOL ever performs the claimed functions. Therefore, as in MGE, summary judgment of noninfringement is appropriate for AOL. Respectfully submitted, this the 12th day of April 2011. /s/ Deron Dacus____________ 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 Frank G. Smith frank.smith@alston.com ALSTON & BIRD LLP One Atlantic Center 1201 West Peachtree Street -2- Atlanta, GA 30309 Telephone: (404) 881-7240 Facsimile: (404) 256-8184 Alan L. Whitehurst 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 Louis A. Karasik (pro hac vice) lou.karasik@alston.com Rachel 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 Attorneys for Defendant AOL Inc. -3- 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 notice via the Court’s CM/ECF system per Local Rule CV-5(a)(3) on this 12th day of April, 2011. Any other counsel of record will be served by first class mail. /s/ Deron Dacus _________ -4-