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

Filing 879

NOTICE by Yahoo! Inc. re 878 Notice (Other) Yahoo!'s Response to Bedrock's Notice of Conclusion of Second Reexamination (Chaikovsky, Yar)

UNITED STATES DISTRICT COURT 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 YAHOO!’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION Yahoo! hereby responds to Bedrock’s Notice of Conclusion of Second Reexamination (“Notice”). In its Notice, Bedrock asserted that “the art relied upon by Yahoo! was undeniably in front of the USPTO in the second re-examination.” Dkt. No. 878 at 1. Bedrock’s assertion is irrelevant, because the second reexamination was not allowed to be presented to the jury at trial and is not in evidence.1 Further, the issue is not whether the prior art relied upon by Yahoo! was in front of the PTO; rather, the issue is whether the examiner substantively considered the prior art. This Court should only defer to the PTO if and when the PTO actually examines the patent in view of the Yahoo! prior art. It is clear from the examination history that the PTO did no such thing. Contrary to Bedrock’s assertion, there is no indication in the second reexamination record, on the Notice of Intent to Issue Ex Parte Reexamination Certificate (“NIRC”), or on the Ex Parte Reexamination Certificate that the examiner ever considered the prior art Yahoo! relied upon at trial and in briefing on Yahoo!’s Renewed Motion for Judgment as a Matter of Law Regarding Invalidity (Docket Nos. 845, 871) (“Motion”). FACTUAL BACKGROUND Yahoo! presented evidence at trial that the following prior art either anticipates or makes obvious the ’120 patent: 1) early versions of the Linux route.c file (Linux source code versions 1.3.52, 1.3.53, and 2.0.1 (“the ’95 Linux Code”)), and 2) the Naval Research Laboratories key management computer source code (“the NRL code”). See Motion at 6-14 and 14-20, respectively. There is no indication that the PTO ever substantively considered either of these two sets of prior art in the second reexamination. The Request for Ex Parte Reexamination of U.S. Patent No. 5,893,120, No. 90/011,426 (“Request”) was filed on January 10, 2011 and cited six pieces of prior art: an article by Christopher J. Van Wyk and Jeffrey Scott Vitter; the ’495 and ’499 patents issued to Richard 1 Docket No. 680, regarding Bedrock’s Motion in limine A. YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 1 Nemes; and three patents issued to Thatte, Dirks, and Morris. These six references were included on an Information Disclosure Statement (“IDS”) accompanying the January 2011 Request. In February 2011, the PTO granted the Request for Reexamination. Along with the order, the examiner included a copy of the January 2011 IDS, upon which he had initialed the six pieces of prior art cited in the Request and considered as required by PTO regulations. MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) 609.05(b) (“Examiners must consider all citations submitted in conformance with the rules, and their initials when placed adjacent to the considered citations on the list or in the boxes provided on a form PTO/SB/08A and 08B . . . provides a clear record of which citations have been considered by the Office.”). On April 1, 2011, Bedrock submitted an IDS which cited two early versions of the ’95 Linux code—Linux source code versions 1.3.52 and 2.0.1. However, the examiner did not initial or make any other marking on this IDS indicating that the examiner considered these references.2 On April 28, 2011—after the first day of trial—Bedrock submitted to the PTO the declaration of Alexey Kuznetsov, including attachments of the ’95 Linux code. There is no IDS in the reexamination record for this submission, and no indication in the record that the examiner considered these documents. Bedrock also submitted an IDS that cited the NRL code. Again, there are no initials or any other marking on this IDS in the record, and no indication that the examiner considered these references. As Yahoo! has already noted in the Motion, the NIRC does not indicate that the NRL code or the ’95 Linux code were ever considered by the PTO during the reexamination. In fact, the NIRC specifies that the Certificate will be issued in view of the “Request for Reexamination 2 At trial, Nicholas Godici, former Commissioner for Patents at the PTO, testified that the absence of an examiner’s initials indicated that prior art was not reviewed. Trial Transcripts May 9, 2011 (Afternoon) at 170:23-171:6. YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 2 submitted 1/10/2011,” and does not contain any citation, mention, or discussion of any prior art considered other than the art included in the Request. The Certificate itself only lists the article and patents included in the Request, and does not identify the art relied upon at trial. Dkt. No. 878-1. CONCLUSION Contrary to Bedrock’s characterization, the reexamination record establishes that the PTO did not consider the art that Yahoo! relied upon at trial and in its Renewed Motion for Judgment as a Matter of Law Regarding Invalidity. In fact, the Reexamination Certificate does not identify the art relied upon at trial. Dated: September 28, 2011 Respectfully submitted, /s/ Yar R. Chaikovsky 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 Fay E. Morisseau (Texas Bar No. 14460750) fmorisseau@mwe.com MCDERMOTT WILL & EMERY LLP 1000 Louisiana, Suite 1300 Houston, TX 77002 Tel: 713.653.1700 Fax: 713.739.7592 Christopher D. Bright cbright@mwe.com MCDERMOTT WILL & EMERY LLP 18191 Von Karman Ave, Ste. 500 Irvine, California 92612 Tel: 949.757.7178 YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 3 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 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. YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 4 CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this the 28th day of September, 2011. /s/ Yar R. Chaikovsky Yar R. Chaikovsky YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 5