Hovsepian v. Apple, Inc.

Filing 307

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Hovsepian v. Apple, Inc. Doc. 307 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae HENNIGAN, BENNETT & DORMAN LLP Roderick G. Dorman (SBN 96908) dormanr@hbdlawyers.com Alan P. Block (SBN 143783) blocka@hbdlawyers.com 865 South Figueroa Street, Suite 2900 Los Angeles, California 90017 Telephone: (213) 694-1200 Fax: (213) 694-1234 Attorneys for Plaintiff ACACIA MEDIA TECHNOLOGIES CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION In re ACACIA MEDIA TECHNOLOGIES CORPORATION, ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No.05 CV 01114 JW PLAINTIFF ACACIA MEDIA TECHNOLOGIES CORPORATION'S OPPOSITION TO DEFENDANTS' MOTION TO CONTINUE HEARING DATE (CIVIL L.R. 7-11) DATE: TIME: CTRM: JUDGE: N/A N/A Ctrm 8, 4th Floor Hon. James Ware 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 06-CV-07336-PJH PLAINTIFF'S OPPOSITION TO MOTION TO CONTINUE HEARING ets.Justia.com Dock DATE 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae I. INTRODUCTION It is indisputable that, as a result of the Court's claim construction rulings, all of the asserted claims in the patents-in-suit are indefinite and, therefore, invalid. As a result, there is and cannot be a case or controversy relating to infringement of these claims, because it is legally impossible to infringe an invalid claim. Acacia filed the Motion For Summary Judgment For Invalidity ("Acacia's Motion") against itself, not as a ploy as defendants suggest, but as one last attempt to avoid an impermissible advisory opinion, and the concomitant waste of resources associated with the response to and consideration of defendants' summary judgment motions which are cumulatively more than 80 pages in length (without attachments). The issues presented in the Motion were not "hand picked" by Acacia as defendants repeatedly assert, but are the direct consequence of, and defined by, the Court's determination that certain claim terms were indefinite. The Court should not continue the October 20, 2008 hearing date now set for Acacia's Motion. If granted, the ruling on the Motion is in the interest of judicial economy and will save the parties great time and expense associated with defendants' pending motions, which benefits will be lost if the Motion decided at the same time that defendants' motions are considered. II. BACKGROUND FACTS From July 12, 2004 through February 13, 2008, the Court has issued a series of six Claim Construction Orders, construing nearly every claim term that the parties to this MDL proceeding have requested that the Court construe, while at the same time, staying all discovery in the case. As a result of these six Claim Construction Orders, all of the remaining claims asserted by Acacia are invalid as being indefinite: (1) the Court held that the terms "sequence encoder" and "identification encoder" are indefinite (2nd CCO, at 18); (2) the Court construed the term "transmission system" to include an "identification encoder" (6th CCO, at 9, 11); and (3) the Court construed the term "central processing location" to require a "transmission system." (4th CCO, at 6). Each remaining asserted claim contains one or more of these terms, and therefore, pursuant to the Court's Claim Construction Orders, each asserted claim is indefinite and therefore invalid. Acacia has stipulated to the indefiniteness of each asserted claim based on the Court's Claim -1Case No. 06-CV-07336-PJH PLAINTIFF'S OPPOSITION TO MOTION TO CONTINUE HEARING DATE 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae Construction Orders. The invalidity of each asserted claim is a fact that is not disputed by any defendant. On May 27, 2008, the Court issued its Order adopting the parties' briefing schedule for the defendants' Section 112 motions (the Court having directed the parties to agree on a schedule at the May 9 Case Management Conference) (Doc. No. 282). The intent of this schedule was to provide a time by which Acacia would identify all Section 112 issues raised by defendants to which it could stipulate so as to reduce the number of disputed issues and thereby reduce the number of Section 112 motions which defendants would be required to bring. Thus, consistent with this intent, the Court's scheduling Order required Acacia to notify defendants of any motions to which it would stipulate and required defendants to file dispositive motions on only the disputed issues by July 11. (Doc. No. 282, at 1:21-23). As Acacia had already stipulated that all of the asserted claims were invalid as being indefinite based on the Court's Claim Construction Orders, these issues were not "disputed." Accordingly, on June 17, 2008 (shortly after the Court had entered all of the covenant not sue stipulations filed by Acacia), Acacia filed the Motion. (Doc. No. 287). Acacia's Motion seeks entry of judgment in favor of defendants on Acacia's patent infringement claims and in favor of defendants on defendants' invalidity counterclaims. (Doc. No. 287). Nothing in the Court's Orders prohibited Acacia from seeking such relief. By Court Order dated June 18, 2008, the Court reset the Motion for hearing on October 20, 2008. (Doc. No. 290). III. ARGUMENT A. Defendants Agree That Acacia Is Entitled To The Relief It Seeks In The Motion And Therefore Defendants Have No Substantive Ground On Which To Oppose Acacia's Motion 2 1 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 One reason defendants are requesting a continuance of Acacia's Motion is that defendants 1 Acacia expressly reserved all rights on appeal and stated that its stipulation and Motion shall not serve as a waiver of any right that Acacia may have to object to or appeal from any of the abovementioned rulings or any other finding or ruling set forth in the Court's 1st CCO, 2nd CCO, 3rd CCO, 4th CCO, 5th CCO, or 6th CCO that is not the subject of the stipulation or Motion. When it filed the Motion, Acacia set the hearing for July 7, 2008. The Court, however, sua sponte issued an Order resetting the hearing date to October 20, 2008. (Doc. No. 290). -2Case No. 06-CV-07336-PJH PLAINTIFF'S OPPOSITION TO MOTION TO CONTINUE HEARING DATE 2 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae have no substantive grounds on which to oppose it. All defendants agree that all of the asserted claims are invalid as being indefinite based on the Court's Claim Construction Orders. As discussed in Acacia's Motion, defendants sought the same relief with respect to claims 1-42 of the `702 patent in their own summary judgment motion and, as part of the motion process, defendants proposed bringing dispositive motions on the indefiniteness of all of the asserted claims. Acacia stated it would not oppose defendants proposed motion and, in fact, Acacia stipulated to such indefiniteness of the claims. Even in his letter of September 15, Mr. Benyacar stated that "as set forth in defendants' pending motions , the Yurt patents are invalid for many reasons in addition to those relied on in Acacia's motion." (Exhibit 1 to Silbert Decl.) Thus, defendants fear that, if Acacia's motion is heard on October 20, then on September 29 (the opposition due date), defendants will have to file an opposition to Acacia's Motion in which they must agree with Acacia that the asserted claims are invalid as being indefinite, making it likely that the Court will grant Acacia the relief it seeks on October 20. B. The Fact That All Of The Asserted Claims Are Invalid As Being Indefinite Means That The Court No Longer Has Any Jurisdiction To Consider Any Other Grounds Of Invalidity 3 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 In their motion, defendants a number of times accuse Acacia of "hand-selecting" and "strategically selecting" the grounds for invalidity of the asserted claims. Acacia has not "hand selected" or "strategically selected" anything; the Court's Claim Construction Orders have invalidated every claim as being indefinite. Having found that all of the claims are invalid as being indefinite, the Court no longer has any jurisdiction to consider any other grounds of invalidity, as the Court would be improperly issuing an advisory opinion as to the validity of claims already held to be invalid. Neither Acacia, nor defendants, can contend that any other ground of invalidity exists, as the Court has not found that any claim is invalid for any other reason. The Federal Circuit, on July 15, 2008 (after the Case Management Conference and Acacia In their Section 112 motions, defendants included sections seeking rulings from the Court that all of the asserted claims are invalid as being indefinite for the exact same reasons as those set forth in Acacia's Motion. Defendants' inclusion of these invalidity issues is a clear attempt to circumvent both Acacia's Motion and the Court's Scheduling Order. The Court's Order is clear defendants are only to bring motions "on the disputed issues identified in the Defendants' letters." (Doc. No. 282). -3Case No. 06-CV-07336-PJH PLAINTIFF'S OPPOSITION TO MOTION TO CONTINUE HEARING DATE 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae had filed its Motion), again made clear in Jang v. Boston Scientific Corp., 532 F.3d 1330, 1336 (Fed. Cir. 2008) that it will not render any advisory opinions. In Jang, it was unclear to the Federal Circuit which of the district court's claim constructions would actually affect the issue of infringement on appeal. Thus, rather than risk issuing an advisory opinion as to the construction of any claim term having no bearing on the infringement issues, the court remanded the case for clarification of the stipulated judgment. Jang, 532 F.3d at 1336. Defendants complain that, if Acacia's Motion were granted, and if Acacia were permitted to appeal only the invalidity of the asserted claims based on the Court's indefiniteness rulings, then there would be a waste of judicial resources. But, as the Jang case emphasizes, whether a court has jurisdiction to adjudicate a matter takes precedence over inefficiencies and judicial resources. In Jang, the claim construction issue was before the court, but, rather than even risk issuing an advisory opinion, the court decided to remand to the district court for clarification. In any event, there is more risk associated with defendants' proposal that judicial resources will be wasted. For example, if the appellate court agrees with Acacia that any further proceedings would constitute an advisory opinion, all of the work associated with the resolution of defendants lengthy and complicated motions will be lost. All that will be accomplished is the parties and the Court will be required to deal with a multitude of complicated issues which will be moot in the end. The asserted claims are already legally dead, killing them again achieves nothing. C. Defendants Would Not Be Prejudiced If The Court Were To Grant Acacia's Motion On October 20, 2008 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 There is absolutely no prejudice to defendants with proceeding on Acacia's Motion as currently scheduled. If granted, the case is over at the trial court. The matter would then be appealed. If defendants prevail, the case is over completely. If Acacia prevails on appeal, the reasoning and description of the patented invention and the specification's teachings provided by the Federal Circuit in connection with its ruling would potentially render moot the additional invalidity arguments asserted by defendants in this proceeding. Even if they were not mooted in their entirety, any remaining invalidity issues would be significantly narrowed and proscribed. -4Case No. 06-CV-07336-PJH PLAINTIFF'S OPPOSITION TO MOTION TO CONTINUE HEARING DATE 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae D. Further Consideration By This Court Of Additional Invalidity Arguments Will Be A Burden In This Court And A Colossal Waste Of Time The additional invalidity issues that are the subject of defendants' new motion are all fact intensive, focusing on what one of ordinary skill in the art would have understood from the patent, whether the patent specification is sufficiently complete to enable a skilled artisan to make and use the claimed invention, and whether or not undue experimentation would be required to practice the claimed invention. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986). For each issue Acacia will demonstrate through expert testimony that each asserted claim meets the definiteness, enablement, and written description requirements. The most that defendants will demonstrate is the existence of a material fact dispute which, of course, will preclude the entry of summary judgment on these new and completely necessary invalidity issues. If we proceed, we are all about the spend an enormous amount of time and energy for nothing. Compounding the problem is the resignation of the Court's technical advisor, Rainer Schulz. Acacia cannot afford the delay occasioned by the process of his replacement and the subsequent review of fact intensive, unnecessary additional invalidity motions. Patents are a wasting resource. The patents in suit here will expire in less than three years--June 7, 2011. We have been in the claim construction, pre-discovery stage of this case for nearly six years--since November 8, 2002 when the first case was filed. It is simply not fair to Acacia for this case to remain at the trial level when all the asserted claims have been adjudged invalid based on indefiniteness. IV. CONCLUSION For the foregoing reasons, the Court should deny defendants' request to continue the hearing date on Acacia's Motion for Summary Judgment. DATED: SEPTEMBER 26, 2008 Respectfully submitted, HENNIGAN, BENNETT & DORMAN /S/ Roderick G. Dorman Roderick G. Dorman Alan P. Block Attorneys for Plaintiff ACACIA MEDIA TECHNOLOGIES CORPORATION -5Case No. 06-CV-07336-PJH PLAINTIFF'S OPPOSITION TO MOTION TO CONTINUE HEARING DATE 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 By: 1 2 3 4 5 6 7 8 9 10 11 12 @Zcc^\Vc( :ZccZii $ <dgbVc aae PROOF OF SERVICE I declare as follows: I am a resident of the State of California and over the age of eighteen years, and not a party to the within action; my business address is 865 South Figueroa Street, Suite 2900, Los Angeles, California 90017. On September 26, 2008, I served a copy of the within document described as PLAINTIFF ACACIA MEDIA TECHNOLOGIES CORPORATION'S MOTION FOR ADMINISTRATIVE RELIEF TO FILE SUPPLEMENTAL BRIEF IN SUPPORT OF ACACIA'S PENDING MOTION FOR SUMMARY JUDGMENT ON ACACIA'S PATENT INFRINGEMENT CLAIMS AND ON DEFENDANTS' COUNTERCLAIMS FOR PATENT INVALIDITY on the interested parties in this action by transmitting via the Electronic Case Filing Program of the United States District Court for the Northern District of California, the document listed above by uploading the electronic file for the above listed document on this date. The ECF Program will send an e-notice of the electronic filing to the parties listed on the attached Service List. I also placed the document listed above in a sealed envelope and affixing a pre-paid air bill, and causing the envelope to be delivered to a FedEx agent for Delivery as follows: Chambers of the Hon. James Ware Attn: Regarding Acacia Litigation 280 South First Street San Jose, CA 95113 3 copies 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Executed on September 26, 2008 at Los Angeles, California. I declare that I am employed in the office of a member of the bar of this court at whose direction the service was made. /S/ Lisa McCorry Lisa McCorry 1 2 3 4 5 6 7 8 9 10 11 @Zcc^\Vc( :ZccZii $ <dgbVc aae SERVICE LIST Juanita R. Brooks Todd G. Miller Fish & Richardson 12390 El Camino Real San Diego, California 92130-2081 Counsel for: ACMP LLC;Ademia Multimedia LLC; Adult Entertainment Broadcast Network; Adult Revenue Services; Audio Communications; CJ Inc.; Club Jenna Inc.; Cyber Trend Inc.; Cybernet Ventures Inc.; Game Link Inc.; Global AVS Inc.; Innovative Ideas International; Lightspeedcash; National A-1 Advertising Inc.; New Destiny Internet Group LLC; VS Media Inc. Victor De Gyarfas William J. Robinson Foley & Lardner 2029 Century Park E, 35th Floor Los Angeles, California 90067 Counsel for: International Web Innovations, Inc. Mark D. Schneider Gifford, Krass, Groh, Sprinkle, Anderson and Citkowski 280 N. Old Woodward Avenue, Suite 400 Birmingham, Michigan 48009-5394 Counsel for: Askcs.com Inc. Jonathan E. Singer William R. Woodford Fish & Richardson 60 South Sixth Street, Suite 3300 Minneapolis, Minnesota 55402 Counsel for: ACMP LLC;Ademia Multimedia LLC; Adult Entertainment Broadcast Network; Adult Revenue Services; Audio Communications; CJ Inc.; Club Jenna Inc.; Cyber Trend Inc.; Cybernet Ventures Inc.; Game Link Inc.; Global AVS Inc.; Innovative Ideas International; Lightspeedcash; National A-1 Advertising Inc.; New Destiny Internet Group LLC; VS Media Inc. Gary A. Hecker James Michael Slominski Hecker Law Group 1925 Century Park East, Suite 2300 Los Angeles, California 90067 Counsel for: Offendale Commercial Limited BV Alfredo A. Bismonte Daniel H. Fingerman Bobby T. Shih Mount & Stoelker, P.C. River Park Tower, 17th Floor 333 W. San Carlos St. San Jose, CA 95110 Counsel for: Askcs.com Inc. Rachel Krevans Jason A. Crotty Paul A. Friedman Morrison & Foerster LLP 425 Market Street San Francisco, California 94105-2482 Counsel for: Satellite LLC; Echostar Technologies Corporation; Echostar Communications Corporation 12 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Adam Robert Alper David Allen York Latham & Watkins 135 Commonwealth Drive Menlo Park, California 94025 Counsel for: AP Net Marketing Inc.; ICS Inc. David C. Doyle Morrison & Foerster LLP 3811 Valley Centre Dr., Suite 500 San Diego, California 92130 Counsel for: Echostar Technologies Corporation 1 2 3 4 5 6 7 8 9 10 11 @Zcc^\Vc( :ZccZii $ <dgbVc aae Annemarie A. Daley Stephen P. Safranski Robins Kaplan Miller & Ciresi LLP 2800 LaSalle Plaza 800 LaSalle Avenue Minneapolis, Minnesota 55402 Counsel for: Coxcom, Inc.; Hospitality Network, Inc. Jeffrey H. Dean Kevin D. Hogg Bradford P. Lyerla Carl E. Myers Marshall Gerstein & Borun LLP 6300 Sears Tower 233 South Wacker Drive Chicago, Illinois 60606 Counsel for: Armstrong Group; Arvig Communication Systems; Charter Communications, Inc.; East Cleveland TV and Communications LLC; Massillon Cable TV, Inc.; Wide Open West LLC Daralyn J. Durie Joshua H. Lerner David J. Silbert Keker & Van Nest LLP 710 Sansome Street San Francisco, California 94111 Counsel for: Comcast Cable Communications, LLC; Insight Communications, Inc. Stephen E. Taylor Jan J. Klohonatz Taylor & Co. Law Offices, Inc. One Ferry Building, Suite 355 San Francisco, California 94111 Counsel for: Mediacom Communications Corporation Jeffrey D. Sullivan Michael J. McNamara Baker Botts L.L.P. 30 Rockefeller Plaza New York, New York 10112 Counsel for: Mediacom Communications Corporation; Bresnan Communications Richard R. Patch J. Timothy Nardell Coblentz, Patch, Duffy & Bass LLP One Ferry Building, Suite 200 San Francisco, California 94111-4213 Counsel for: Coxcom, Inc.; Hospitality Network, Inc. William R. Overend Morgan D. Tovey Reed Smith Crosby Heafey Two Embarcadero Center, Suite 2000 San Francisco, California 94111 Counsel for: Charter Communications, Inc. 12 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Victor G. Savikas Kevin G. McBride Maria K. Nelson Marsha E. Mullin Jones Day 555 South Flower Street, 50th Floor Los Angeles, California 90071 Counsel for: DirecTV Group, Inc. Mitchell D. Lukin Baker Botts L.L.P. One Shell Plaza 910 Louisiana Houston, Texas 77022 Counsel for: Mediacom Communications Corporation; Bresnan Communications Rebecca Anne Bortolotti John Christopher Reich Albert L. Underhill Merchant & Gould 80 S. 8th Street, Suite 3200 Minneapolis, Minnesota 55402 Counsel for: Arvig Communications Systems; Cannon Valley Communications, Inc.; Loretel Cablevision; Mid-Continent Media, Inc.; Savage Communications, Inc.; Sjoberg's Cablevision, Inc.; US Cable Holdings LP 1 2 3 4 5 6 7 8 9 10 11 @Zcc^\Vc( :ZccZii $ <dgbVc aae Sean David Garrison Robert Francis Copple Lewis & Roca LLP 40 N. Central Avenue Phoenix, Arizona 85004-4429 Counsel for: Cable America Corp. Troy Blinn Forderman George Chun Chen Bryan Cave LLP 2 N. Central Avenue, Suite 2200 Phoenix, Arizona 85004-4406 Counsel for: Cable System Service Inc. Patrick J. Whalen Spencer Fan Britt & Brown LLP 1000 Walnut Street, Suite 1400 Kansas City, Missouri 64106 Counsel for: NPG Cable Inc. Clay K. Keller Buckingham, Doolittle & Burroughs 50 South Main Street Akron, Ohio 44308 Counsel for: Nelsonville TV Cable, Inc. C. Mark Kittredge Perkins Coie Brown & Bain PA P.O. Box 400 Phoenix, Arizona 85001-0400 Counsel for: Cable One Inc. Gregory T. Spalj Fabyanske Westra & Hart PA 800 LaSalle Avenue, Suite 1900 Minneapolis, Minnesota 55402 Counsel for: Cable System Service, Inc. Fritz Byers 824 Spitzer Bulding 520 Madison Avenue Toledo, Ohio 43604 Counsel for: Block Communications, Inc. Melissa G. Ferrario Barry S. Goldsmith Gary H. Nunes Womble Carlyle Sandridge & Rice 8065 Leesburg Pike, Fourth Floor Tysons Corner, VA 22182 Counsel for: Nelsonville TV Cable, Inc. Stephen S. Korniczky James V. Fazio Paul Hastings Janofsky & Walker LLP 3579 Valley Centre Drive San Diego, CA 92130 Counsel for: Cebridge Connections David S. Benyacar Daniel Reisner Kaye Scholar LLP 425 Park Avenue New York, NY 10022 Counsel for: Time Warner Cable, Inc. 12 13 aVlnZgh adh Vc\ZaZh( XVa^[dgc^V 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Christopher B. Fagan Fay Sharpe Fagan Minnich & McKee 1100 Superior Avenue, Seventh Floor Cleveland, Ohio 44114-2518 Counsel for: Armstrong Group; East Cleveland TV and Communications LLC; Massillon Cable TV, Inc.; Wide Open West, LLC Benjamin Hershkowitz Gibson, Dunn & Crutcher LLP 200 Park Avenue New York, NY 10166 Counsel for: CSC Holdings, Inc.

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