Hovsepian v. Apple, Inc.

Filing 170

Hovsepian v. Apple, Inc.

Doc. 170

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KEKER & V AN NEST, LLP

2 DAVID J. SILBERT - #173128 DAN JACKSON -#216091
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DARLYN J. DUR - #169825
710 Sansome Street

4 San Francisco, CA 94111-1704

Telephone: [phone]

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Facsimile: [phone]

ddure~kvn.com
dsi Ibert~kvn. com di ackson~kvn.com

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8 Attorneys for Defendants

9 COMCAST CABLE COMMCATIONS LLC and INSIGHT COMMCA TrONS, INC.
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UNTED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA - SAN JOSE DIVISION

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Case No. C-05-01114 JW
In re

16 ACACIA MEDIA TECHNOLOGIES CORPORATION
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REPLY IN SUPPORT OF DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF INVALIDITY AND NONINFRINGEMENT OF ALL CLAIMS OF THE '702 PATENT
Date: Time: Courtroom: Judge:
June 9, 2006
10:00 a.m.

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8, 4th Floor Honorable James Ware

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REPLY IN SUPPORT OF DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF INV ALIDITY AND NONINFRIGEMENT OF ALL CLAIMS OF THE '702 PATENT CASE NO. C-05-01114 JW

373294.01

Dockets.Justia.com

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INTRODUCTION
Acacia's opposition to Defendants' i motion for parial sumar judgment of invalidity
and noninfringement ofthe '702 patent is most remarkable for what Acacia, once again,
concedes. Acacia reconfirms its repeated admissions that all ofthe claims of

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the '702 patent are

both invalid and not infrnged:
all of

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the claims of Acacia's '702 patent are: (1) invalid, due to the Court's

finding that the claim terms "sequence encoder" and "identification.
encoder" are indefinite, and (2) not infrim!ed, due to the Court's

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construction of the phrase "transmission system at a first location" limits all of the claims to transmission systems which are located at one particular location.
Opp. at 1:14-17 (emphases added).

Acacia makes no attempt whatsoever to argue that there are any genuine issues as to any
fact that is material to Defendants' motion for partial sumar judgment. Indeed, Acacia

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concedes that the "only significant difference" between Defendants' motion and Acacia's own

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motion for parial summar judgment is that Acacia asked the Court to certify the judgment for
appeal pursuant to Federal Rule of

Civil Procedure 54(b), which Defendants opposed, and the

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Court declined to do. Opp. at 1: 18 (emphasis added).

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Acacia's only argument against Defendants' motion is that Acacia's own motion for
parial sumary judgment, against itself, is stil "pending," so the Cour should not consider

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i The following defendants joined in the motion for parial summar judgment, and join in this
brief as well: Comcast. Cable Communications LLC; Insight Communications, Inc.; EchoStar Satellte LLC; EchoStar Technologies Corp.; The DIRCTV Group, Inc.; Cable One, Inc.; Mediacom Communications Corporation; Bresnan Communications; Cequel III Communications I, LLC (dba Cebridge Connections); Charer Communications, Inc.; Arstrong Group; Block Communications, Inc.; East Cleveland Cable TV and Communications LLC; Wide Open West Ohio LLC; Massillon Cable TV, Inc.; Mid-Continent Media, Inc.; US Cable Holdings LP; Savage Communications, Inc.; Sjoberg's cablevision, Inc.; Loretel Cablevision; Arig Communications Systems; Cannon Valley Communications, Inc.; NPG Cable, Inc.; Coxcom, Inc.; Hospitality Network, Inc.; Ademia Multimedia LLC, ACMP, LLC, AEBN, Inc., Audio Communications, Inc., Club Jenna, Inc., Cyber Trend, Inc., Cybernet Ventures, Inc., Game Link, Inc., Global A VS, Inc., Inovative Ideas International, Lightspeed Media Group, Inc., National A-I Advertising, Inc., New Destiny Internet Group LLC; VS Media, Inc.; ICS, Inc.; AP Net Marketing, Inc.; International Web Inovations, Inc.; and Offendale Commercial BV, Ltd.
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373294.01

REPLY IN SUPPORT OF DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF INVALIDITY AND NON INFRIGEMENT OF ALL CLAIMS OF THE '702 PATENT CASE NO. C-05-01114 JW

1 Defendants' "redundant" motion. Opp. at I :3; I :21. But Acacia's motion is not "pending." The
2 Court denied Acacia's request for a Rule 54(b) certification, and then Acacia withdrew its
3 motion for parial summar judgment.
4 The only question now is whether there is any genuine dispute of material fact about
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the '702 patent are invalid and not infringed by the systems made, used or

6 sold by Defendants. The answer to that question could not be clearer, since Acacia has admitted
7 repeatedly-and admits again in its opposition-that there are no such disputes. Given the
8 absence of any dispute, the instructions of Rule 56 are clear: "the judgment sought shall be

10 ARGUMENT
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9 rendered forthwith." Fed. R. Civ. P. 56(c) (emphases added).

11 Acacia's opposition relies almost exclusively on a misinterpretation ofthis Cour's
12 statements at the February 24,2006 hearing-a misinterpretation that the Court corrected at that

hearing. Acacia interprets the Cour's refusal to grant Acacia's request for a Rule 54(b)

14 certification as a "decision to wait for claim construction to be completed before entering any
15 judgment on the '702 patent. .. ." Opp. at 2:19-20. But that is not what the Coursaid.

16 The Cour held that it would be inappropriate to certify ajudgment on the '702 patent for
17 appeal under Rule 54(b), noting that it would be better to have the constrctions for all claim
18 terms in the Yurt family of

patents, which share a common specification, going up to the Federal
have a package that wouldn't require the

19 Circuit at the same time "because then we would

20 Circuit to be looking at the same specification twice under circumstances which, which
21 essentially relate to the, to all of the patents that are involved." Tr. of

Februar 24,2006 Hrg.

22 ("Tr.") at 17:7-12. The Cour also stated that in addressing the remaining claim terms in the Yurt
23 patents, the Cour "may be persuaded to do something differently," and thus the Cour's

24 "inclination at this point is to not certify it for immediate appeaL." Id. at 35:22-23,36:21-22.
25 Acacia's counsel offered his opinion that "the logical conclusion" of

the Court's

26 comments "is that you don't want us to enter into a stipulation" of

invalidity and

27 noninfrngement. Id. at 37:15-17. But the Cour responded "No. . . if

my ruling on 54(b) affects
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your wilingness to enter into a stipulation, I can understand that but I'm not, I'm not expressing

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a preference one way or the other." Id. at 37:18,38:6-9. Acacia's counsel pressed the point
fuher, arguing-just as Acacia does in its opposition to the instant motion-that "there would
be no sense" in entering a parial sumary judgment if

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"the Cour is of

the view that it may, it

may, notwithstanding what has happened in the past, revisit these issues further in the context of

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the '992, unless there is going to be an immediate appeaL." Id. at 39:1-5. But the Cour
disagreed again:

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Well, no. Let me say it again. . .. Once the judgment is entered, that becomes the law ofthe case. Right now my constructions are out there. Nobody has asked me to enter a judgment based on them so I can change my constrction at this point. Once a judgment is entered, it becomes a parial judgment and it becomes the law ofthe case. . .. If you come to me and say, Judge, based upon what you said, we stipulate into a judgment, I'll enter that judgment pursuant to stipulation. But as I said to you, a different question is presented to me as to whether or not I would
certify that on appeaL. . .. The reason I mentioned law of the case is right now

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there is no judgment. Nobody has asked me to enter one yet and until they do, I won't enter one.

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Id. at 39:8-41 :12. In response, Acacia's counsel confirmed that given the Court's denial of
Acacia's 54(b) request, Acacia was "not asking (the Cour) to enter a

judgment," id. at 40:19-20,

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belying Acacia's present contention that its motion for such a

judgment is still "pending." Opp.

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at 1:3.

Thus, what actually happened at the February hearing is quite different from Acacia's
interpretation of

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that hearing. The Cour denied Acacia's Rule 54(b) request, but left open the

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possibility that Defendants would fie their own motion for partial summar judgment-indeed,

the Court essentially invited such a motion and expressed surprise that the issue was presented
on Acacia

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's motion, rather than Defendants' motion, or a stipulation. See Tr. at 5:10-18; 9:22-

11 :16; 41 :10-12. And the Cour explicitly rejected Acacia's contention-repeated in its
opposition here-that the Court's ruling implies that the Cour should not or would not enter

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parial sumary judgment. As the Cour explained, "I'm just addressing the request of the 54(b).
I'll wait on the stipulation or not and I'll wait on a motion or not." Id. at 41 :9-12. The Court did
not, therefore, decide "to wait for claim construction to be completed before entering any
3 REPLY IN SUPPORT OF DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF
INVALIDITY AND NON

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INFRIGEMENT OF ALL CLAIMS OF THE '702 PATENT CASE NO. C-05-01114 JW

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judgment on the '702 patent," as Acacia contends; nor is Acacia's motion stil "pending." Opp.
at 1:3,2:19-20. 2
Acacia's other argument is that it wil be "prejudiced" if

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the Cour grants Defendants'

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motion because Acacia is "agreeable to summary judgment on the '702 patent, but only ifthe

judgment is certified for immediate appeal pursuant to Rule 54(b)." Opp. at 3:17-20 (emphasis

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in original). That is certainly a novel gloss on the meaning of "prejudice." According to

Acacia's interpretation, a par is "prejudiced" simply because it doesn't get everything it asks
for. That is not what "prejudice" means.3
The only prejudice at issue here is the prejudice to Defendants if the ruling on their
motion is delayed as Acacia requests. Rule 56( c) clearly states that the "judgment sought shall

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be rendered forthwith ifthe pleadings. . . and admissions on file, together with the affidavits, if
any, show that there is no genuine issue as to any material fact and that the moving pary is

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2 Acacia also describes this Court's alleged "decision" not to enter judgment on the '702
patent-which is not what the Cour decided at all-as "eminently practicaL." Opp. at 2:20. This is in stark contrast to Acacia's earlier claims that the Cour's refusal to enter partial summar judgment and certify the judgment for appeal would be impracticaL. See Tr. at 22:12-

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26:9; Acacia's Jan. 20 and Feb. 10,2006 Mems. (Docs. 120 and 135). Acacia's assertion that Time Warer Cable, Inc. and CSC Holdings, Inc. (the "Round 3 Defendants") provides some reason to deny Defendants' motion is also incorrect, and selfcontradictory. The Round 3 Defendants have not stated that they wil ask for reconsideration of "sequence encoder," "identification encoder," or "transmission system at a first location," the terms on which Defendants' motion for parial sumary judgment is (and Acacia's was) based. Acacia's argument that a possible motion to reconsider the term "transmission system" should
the addition to this case of

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partial sumar judgment is flatly contradicted by Acacia's own argument to this Cour that the presence of the term "transmission system" in the '992 patent should not
preclude entry of

affect the Cour's decision to enter parial sumar judgment as to the '702 patent. See Tr. at
to propose a "transmission system" that would change this Court's construction of "transmission system at a first location," given that the Cour's construction renders Acacia incapable of proving infrngement, as Acacia concedes. 3 Acacia's argument that Defendants "are attempting to circumvent Acacia's motion and force
18:18-19:18. In any event, the Round 3 Defendants, as defendants, are unlikely construction of

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the Cour to enter judgment on the '702 patent before this Cour is able to consider Acacia's request for Rule 54(b) certification" is similarly absurd. Opp. at 3:24-27. Acacia abandoned its motion for parial sumary judgment. See Tr. at 37:15-41 :7. The Cour did consider Acacia's request for Rule 54(b) certification, and denied it. Tr. at 36:21-22. Defendants are not "circumventing" anything; they are moving for partial summary judgment, as both the Court and Acacia's counsel expected they would. See Tr. at 40:20-1:12.
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REPLY IN SUPPORT OF DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF INVALIDITY AND NONINFRIGEMENT OF ALL CLAIMS OF THE '702 PATENT

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CASE NO. C-05-01114 JW

I entitled to ajudgment as a matter oflaw." Fed. R. Civ. P. 56(c) (emphases added). Acacia does

2 not argue that there is any issue as to any material fact, or that Defendants are not entitled to

3 judgment as a matter of law-to the contrary, Acacia has conceded both of these points
4 repeatedly. See, e.g., Opp. at 1:13-17; Acacia's February 13,2006 Mem. at 1:10-2:11; Tr. at

5 6:22-7:23, 14:17-15:14. Acacia merely argues, based on its misinterpretation ofthis Cour's
6 statements, that judgment should not be rendered "forthwith," but delayed, contrary to the clear

7 instruction of Rule 56(c).
8 As the Supreme Cour held in Celotex Corp. v. Catrett, 477 U.S. 317 (1986), "Rule 56
9 must be construed with due regard. . . for the rights of

persons opposing such claims and

10 defenses to demonstrate in the manner provided by the Rule, prior to trial, that the claims and
1 i defenses have no factual basis." Id. at 327. Defendants have demonstrated, and Acacia has

12 conceded, that all claims ofthe '702 patent are invalid and not infringed. Acacia's request that
13 the Court delay partial summary judgment in the face of this admitted absence of any factual

14 dispute is simply a request that the Cour ignore Defendants' rights as set forth in Celotex, as

16 CONCLUSION
17 For the foregoing reasons, and those set forth in Defendants' opening brief, the Cour
18 should grant partial summar judgment of invalidity and noninfrngement in favor of Defendants
19 on all claims of

15 well as the plain text of

Rule 56(c).

the '702 patent.

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Dated: May 19,2006 KEKER & VAN NEST, LLP

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By: Isl Dan Jackson
DAN JACKSON Attorneys for Defendants COMCAST CABLE COMMUCATrONS, LLC and INSIGHT COMMUICATrONS, INC.

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REPLY IN SUPPORT OF DEFENDANTS' MOTION FOR

373294.01

PARTIAL SUMMARY JUDGMENT OF INVALIDITY AND NONINFRIGEMENT OF ALL CLAIMS OF THE '702 PATENT CASE NO. C-05-01114 JW