Leader Technologies Inc. v. Facebook Inc.

Filing 605

OBJECTIONS by Facebook Inc. to 601 Jury Instructions Pursuant to Fed. R. Civ. P. 51(b) and 51(c)(2). (Caponi, Steven)

IN THE UNITED STATES COURT
FOR THE DISTRICT OF DELAWARE
LEADER TECHNOLOGIES, INC.,
a Delaware corporation,
Plaintiff and Counterdefendant,
v.
FACEBOOK, INC.,
a Delaware corporation,
Defendant and Counterclaimant.

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) CIVIL ACTION
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) No. 1:08-cv-00862-LPS
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FACEBOOK’S OBJECTIONS TO FINAL JURY INSTRUCTIONS
PURSUANT TO FED. R. CIV. P. 51(b), 51(c)(2)
Steven L. Caponi (DE Bar #3484)
BLANK ROME LLP
1201 N. Market Street, Suite 800
Wilmington, DE 19801
302-425-6400
Fax: [phone]
Attorneys for Defendant and
Counterclaimant Facebook, Inc.
OF COUNSEL:
Michael G. Rhodes (pro hac vice)
Heidi L. Keefe (pro hac vice)
Mark R. Weinstein (pro hac vice)
Jeffrey T. Norberg (pro hac vice)
Melissa H. Keyes (pro hac vice)
Elizabeth L. Stameshkin (pro hac vice)
COOLEY LLP
3000 El Camino Real
5 Palo Alto Square, 4th Floor
Palo Alto, CA 94306
Dated: July 27, 2010

Pursuant to Federal Rule of Civil Procedure 51(b)(2) and 51(c), Facebook respectfully
submits the following objections to the Final Jury Instructions issued by the Court on July 26,
2010 (D.I. 601). Pursuant to Rule 51(b)(2), after the Court informs the parties of its proposed
instructions and proposed actions on the jury instructions, it “must give the parties an
opportunity to object on the record and out of the jury's hearing before the instructions and
arguments are delivered.” Facebook submits these written objections on the record pursuant to
Rule 51(b)(2) and 51(c)(2).
A.

Jury Instruction 2.4 (“Statement of Undisputed Facts”)

Facebook respectfully objects to this instruction to the extent that it includes “Undisputed
Fact” number 5, that “Facebook provides a developer wiki at http://wiki.developers.
facebook.com/index.php/Main_Page and http://developers.facebook.com/ docs.” This fact was
only relevant to Leader’s claims for contributory and induced infringement. As the Court has
properly chosen not to instruct the jury on those claims because of the lack of any evidence to
support them, Facebook’s developer wikis are no longer relevant to any remaining issue.
C.

Jury Instruction 3.4 (“Claim Construction for the Case”)

Facebook respectfully objects to the Court’s instruction regarding claim construction for
not (1) informing the jury that “wherein” excludes “when;” or (2) informing the jury that a
temporal sequence is required by Judge Farnan’s claim construction of “dynamically,” and the
identity of the “preceding event.” Facebook incorporates by reference its arguments on the
record on July 23, 2010 and July 26, 2010.
As explained in Facebook’s revised Proposed Jury Instruction 3.4 filed on July 23, 2010,
throughout this trial Leader has improperly attempted to argue that the claim term “wherein”
means “when.” (D.I. 596). See, e.g., Tr. at 228:21-229:1, 232:13-19, 668:12-17, 669:13-17,
687:24-688:5, 708:16-21, 746:19-24. In not informing the jury that the term “wherein” excludes
“when,” which even Leader does not appear to dispute, the Court has not cured the prejudice
caused by Leader’s misleading arguments during opening statement and trial, nor prevented the

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risk that Leader may improperly continue to assert them in closing arguments. See O2 Micro
Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); American
Patent Dev. Corp., LLC v. Movielink, LLC, 637 F. Supp. 2d 224, 230 (D. Del. 2009).
E.

Jury Instruction 3.7 (“Direct Literal Infringement”)

Facebook respectfully objects to Jury Instruction 3.7 (“Direct Literal Infringement”) on
the ground that it does not state the law with respect to the “control or direction” standard for
direct infringement under the standards set forth in Muniauction, Inc. v. Thomson Corp., 532
F.3d 1318 (Fed. Cir. 2008) and BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed.
Cir. 2007). Facebook further objects to giving an instruction on “control or direction” only with
respect to claims 9, 11 and 16, and not the other asserted claims. Facebook objects to the Court’s
decision not to give Facebook’s proposed jury instruction on “control or direction” filed with the
Court on July 14, 2010 (D.I. 577).
The Court’s instruction identifies five factors the jury may consider. With respect to the
first factor, “whether the claims at issue require those third parties to take action for the claims to
be performed,” what the claims require is a pure question of law for the Court that should not be
submitted to the jury. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d at 1360
(“When the parties raise an actual dispute regarding the proper scope of these claims, the court,
not the jury, must resolve that dispute.”). Claims 9, 11 and 16 do, in fact, require third parties to
perform at least two claim steps in order for those claims to be satisfied. See Claim 9 (“creating
data within a user environment of a web-based computing platform via user interaction with the
user environment by a user using an application, the data in the form of at least files and
documents” and “the user employs at least one of the application and the data from the second
environment”). Inviting the jury to consider this as a factual issue would run afoul of O2 Micro.
With respect to the second factor, “whether the third parties merely activate functions
already present in the underlying invention,” Facebook respectfully submits that this factor does
not have any relevance to the determination of “control or direction” standard for a method
claim. The case from which a variant of this statement appears, Fantasy Sports Properties, Inc.
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v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002), involved infringement of an apparatus
claim. The statement in Fantasy Sports that “the user is only activating means that are already
present in the underlying software,” id. at 1118 (emphasis in original), refers to the court’s
holding that the apparatus in that case can be infringed by software that includes the claimed
means element, “regardless [of] whether that means is activated or utilized in any way.” Id.
Method claims such as claim 9 of the ’761 patent, on the other hand, are infringed only when
their steps are actually performed. See In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002) (“A
process, however, is a different kind of invention; it consists of acts, rather than a tangible item.
It consists of doing something, and therefore has to be carried out or performed.”). Fantasy
Sports is further distinguishable in that the claims in that case contained no step involving
participation or action by the user. 287 F.3d at 1119 (“[T]here is no ‘user participation’ or
‘control’ limitation in the claims of the ’603 patent requiring that an accused fantasy football
game be operated by any specific entity.”).

This second factor, which states a principle

applicable only to infringement analyses of apparatus claims, does not apply to the control or
direction analysis as applied to method claims.
The third factor, “whether there is a contractual relationship between Facebook and the
third parties,” is problematic because only certain types of contractual relationships are relevant
to “control or direction.”

The Federal Circuit has held, for example, that “arms-length

agreements” do not as a matter of law satisfy the control or direction standard, BMC Resources,
498 F.3d at 1380-81; Muniauction, Inc., 532 F.3d at 1329 (“At the other end of this multi-party
spectrum, mere ‘arms-length cooperation’ will not give rise to direct infringement by any
party.”). A “contractual relationship” is only relevant to the extent that relationship gives the
alleged direct infringer the ability to control the actions of another entity, for example “by
contracting out steps of a patented process to another entity.” BMC Resources, 498 F.3d at 1381.
Facebook objects to not giving further clarifying instructions that only such limited types of
contractual relationships may give rise to control or direction.

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With respect to the fifth factor, “whether Facebook supplies the instrumentalities, tools
and the website for the person using the website,” this factor is not relevant under Muniauction,
532 F.3d at 1329-30, which holds that providing a website, controlling access to it and
instructing users on its use is not relevant to determining control or direction.
Finally, Facebook respectfully objects to the Court’s decision not to give a “control or
direction” instruction with respect to the non-method asserted claims.

Each of the other

independent claims (e.g., claims 1, 21 and 23) include at least one explicit step that must be
performed by “the user,” implicating a third party’s actions and requiring Leader to show
“control or direction” over those third party actions.
B.

Jury Instruction 4.2 (“Prior Art”)

Facebook respectfully objects to this instruction for the reasons stated in its objections
dated July 25, 2010 (D.I. 600). The Hubert, Swartz, iManage, and Ausems prior art references
are undisputedly prior art under 35 U.S.C. § 102(b) and § 102(e). Facebook incorporates by
reference its objections filed on July 25.
D.

Jury Instruction 1.11, 2.3, 4.1, 4.4, 4.5, 4.6, 4.7, 4.9, and 4.10

Facebook respectfully renews its objection to each of these instructions to the extent they
require Facebook to show its invalidity defenses by “clear and convincing” evidence. Facebook
respectfully submits that a lesser burden of proof should be applied to Facebook’s invalidity
defenses because they are based on prior art references, prior offers for sale and prior public uses
that were never disclosed to or considered by the U.S. Patent and Trademark Office (“PTO”)
during the prosecution of the ’761 patent. Facebook submits this objection to preserve its right
to argue for the extension, modification or reversal of existing law on this subject, and Facebook
incorporates by reference its arguments made in its proposed jury instructions and during the
July 1 Pretrial Conference.

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Dated: July 27, 2010

By: /s/ Steven L. Caponi
Steven L. Caponi (DE Bar No. 3484)
BLANK ROME LLP
1201 Market Street
Wilmington, DE 19801
Phone: [phone]
Fax:
[phone]
Attorneys for Defendant and
Counterclaimant Facebook, Inc.

Of Counsel:
Heidi L. Keefe
Mark R. Weinstein
Jeffrey T. Norberg
COOLEY LLP
Five Palo Alto Square
3000 El Camino Real
Palo Alto, CA 94306
Phone: [phone]
Fax: [phone]

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