Leader Technologies Inc. v. Facebook Inc.

Filing 635

MEMORANDUM in Support re 631 MOTION for Judgment as a Matter of Law of Invalidity filed by Facebook Inc.(a Delaware corporation).Answering Brief/Response due date per Local Rules is 9/13/2010. (Attachments: # 1 Exhibit Exhibit A to Memorandum in Support of Defendant Facebook's Renewed Motion for Judgment as a Matter of Law of Invalidity)(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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MEMORANDUM IN SUPPORT OF DEFENDANT FACEBOOK, INC.’S
RENEWED MOTION FOR
JUDGMENT AS A MATTER OF LAW (JMOL) OF INVALIDITY
[MOTION NO. 4 OF 4]
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:
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
Five Palo Alto Square
3000 El Camino Real
Palo Alto, CA 94306
Phone: [phone]
Fax: [phone]

Dated: August 25, 2010

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TABLE OF CONTENTS
Page No.
I.

INTRODUCTION ......................................................................................................... 1

II.

SWARTZ ANTICIPATES CLAIMS 1, 4, 7, 9, 11, 21, 23, 31 AND 32.......................... 1
A.
B.

Facebook Provided Clear and Convincing Evidence that Independent
Claims 9, 21, and 23 of the ’761 Patent are Also Anticipated by Swartz. ............ 5

C.

III.

Facebook Provided Clear and Convincing Evidence that Independent
Claim 1 of the ’761 Patent is Anticipated by Swartz ........................................... 2

Facebook Provided Clear and Convincing Evidence that Dependent
Claims 4, 7, 11, 25, 31 and 32 of the ’761 Patent are Anticipated by
Swartz ................................................................................................................ 6

IMANAGE ANTICIPATES ALL ASSERTED CLAIMS ............................................. 7
A.
B.

iManage Anticipates Independent Claims 9, 21 and 23 of the ’761 Patent........... 8

C.
IV.

iManage Anticipates Claim 1 of the ’761 Patent ................................................. 8
iManage Anticipates Dependent Claims 4, 7, 11, 16, 25, 31 and 32 of the
’761 Patent ....................................................................................................... 10

HUBERT ANTICIPATES CLAIMS 1, 4, 7, 9, 11, 21, 23, 31 AND 32 ........................ 11
A.

Hubert Anticipates Independent Claim 1 of the ’761 Patent .............................. 11

B.

Hubert Anticipates Independent Claims 9, 21 and 23 of the ’761 Patent ........... 12

C.

Hubert Anticipates Dependent Claims 4, 7, 11, 25, 31 and 32 of the ’761
Patent ............................................................................................................... 13

V.
ALL ASSERTED CLAIMS ARE OBVIOUS IN LIGHT OF SWARTZ,
IMANAGE, HUBERT AND AUSEMS ....................................................................... 14
VI.

CLAIMS 1, 4, 7, 21, 23, 25, 31 AND 32 ARE INVALID AS INDEFINITE
UNDER IPXL.............................................................................................................. 16

VII.

IN THE ALTERNATIVE, A NEW TRIAL ON INVALIDITY BASED ON
SWARTZ WOULD BE REQUIRED IF THE COURT WERE INCLINED TO
ENTER JUDGMENT FOR LEADER.......................................................................... 17

VIII.

CONCLUSION............................................................................................................ 18

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TABLE OF AUTHORITIES
Page No.
CASES
Dann v. Johnston,
425 U.S. 219 (1976)........................................................................................................... 14
Fineman v. Armstrong World Industries, Inc.,
980 F.2d 171 (3rd Cir. 1992).............................................................................................. 18
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
340 U.S. 147 (1950)........................................................................................................... 16
In re Self,
671 F.2d 1344 (C.C.P.A. 1982)............................................................................................ 4
IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377 (Fed. Cir. 2005) ...................................................................................... 1, 16
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007)..................................................................................................... 15, 16
Sakraida v. Ag Pro, Inc.,
425 U.S. 273 (1976)........................................................................................................... 14
STATUTES
35 U.S.C. § 102 ......................................................................................................................... 1
35 U.S.C. § 103(a)................................................................................................................... 14
Federal Rule of Civil Procedure 50(a)...................................................................................... 17
Federal Rule of Civil Procedure 50(b) ................................................................................. 1, 17

-ii-

I.

INTRODUCTION
Pursuant to Federal Rule of Civil Procedure 50(b) and the Court’s August 5, 2010 Order

regarding post-trial motions, Facebook respectfully renews its motions for judgment as a matter
of law as to invalidity of the asserted claims of U.S. Patent No. 7,139,761 on the grounds set
forth below. At trial Facebook presented clear and convincing evidence that each of the asserted
claims is anticipated by the Swartz, iManage and/or Hubert references.

Facebook further

presented clear and convincing evidence that these references, alone or in combination with each
other and the Ausems reference, render all of the asserted claims obvious. In response, Leader
provided only conclusory and inapposite expert testimony that is directly contradicted by the text
of the prior art references themselves. Judgment as a matter of law is therefore appropriate on
these issues.
Facebook also seeks judgment as a matter of law as to the invalidity of the asserted
apparatus claims for the additional reasons set forth in Facebook’s Motion for Summary
Judgment No. 1 (D.I. 384). See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377
(Fed. Cir. 2005).
In the alternative, Facebook moves for a new trial on these limited issues of invalidity
pursuant to Rule 59 based on the misconduct of Leader’s counsel during the testimony of Dr.
Saul Greenberg. Leader’s statements to the jury, in direct defiance of this Court’s orders,
severely prejudiced Facebook by repeatedly making the false claim to the jury that the Swartz
reference was considered by the United States Patent and Trademark Office (“PTO”) during the
prosecution of the ’761 patent. Subsequent developments at the PTO – developments that
Facebook was not allowed to present to the jury – confirm that the Swartz reference was not
considered by the PTO. The Court’s curative instruction on this issue, buried deep within
numerous other jury instructions, cannot undo this prejudice. A new trial on this limited issue is
therefore appropriate.
II.

SWARTZ ANTICIPATES CLAIMS 1, 4, 7, 9, 11, 21, 23, 31 AND 32.
Facebook’s defense of anticipation is based 35 U.S.C. § 102, which requires that
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Facebook show that each element of each asserted claim is disclosed, either explicitly or
inherently, by the prior art references upon which Facebook relies. U.S. Patent No. 6,236,944
(“Swartz”), entitled “Method and Apparatus for the Integration of Information and Knowledge,”
discloses a concept called knowledge integration, as explained by Dr. Greenberg at trial:
So [Swartz’s] concept was to trying to integrate the systems by this
thing called knowledge integration, which would monitor what
people could do within a particular context or system, track as they
move between them, essentially, to use Swartz's term, to create a
knowledge path of all the things they did across the systems.
Declaration of Elizabeth Stameshkin in Support of Facebook, Inc.’s Renewed Motions for
Judgment as a Matter of Law (“Stameshkin Decl.”) Ex. 1 at 1453:2-9. Facebook provided clear
and convincing evidence at trial that Swartz anticipates all of the asserted claims of the ’761
patent except for claim 16, which as discussed below is rendered obvious by various disclosures.
Leader failed to rebut this evidence, providing only conclusory expert testimony that did not
address the specific limitations of the asserted claims. As such, there is no legally sufficient
basis on which a jury could find that the asserted claims of the ’761 patent are valid over Swartz,
and judgment as a matter of law is appropriate.
A.

Facebook Provided Clear and Convincing Evidence that Independent Claim
1 of the ’761 Patent is Anticipated by Swartz.

The testimony of Dr. Greenberg, along with exhibit DTX 919, established that each and
every element of claim 1 of the ’761 patent is present and thereby anticipated by Swartz, as
shown in the chart set forth in Appendix A at page 1.
In response, Leader’s expert, Dr. Herbsleb, alleged without support that Swartz somehow
lacked the “context component” and the “tracking component.” Stameshkin Decl. Ex. 1 at
1821:13-1838:20. Dr. Herbsleb also attempted to draw a distinction between Swartz and the
asserted claims by pointing to an alleged difference in the way in which one of the preferred
embodiments of Swartz stored files. Id. at 1823:3-24. No reasonable jury could find that these
unsupported and/or irrelevant opinions render Swartz non-anticipatory.

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With regard to the context and tracking components, Dr. Herbsleb’s conclusory
testimony is contradicted by the Swartz reference itself. The Swartz patent itself establishes the
existence of a tracking component: “More specifically, knowledge integration middleware is
preferably employed to identify (including tracking, monitoring, analyzing) the context in which
information is employed so as to enable the use of such context in the management of
knowledge.” Stameshkin Decl. Ex. 22 at col. 6:22-26 (emphasis added). See also id. at col.
8:56-60 (“Such a system also preferably captures metadata associated with the information
shared, stored and accessed by the users of the data so as to characterize the ‘context’ in which
the information is being used.”) (emphasis added).
Despite this clear teaching, Dr. Herbsleb tried to contend:
It [Swartz] doesn’t have a context component. There’s nothing
like an environment. There’s nothing like a user workspace. And
so it can’t do any of the things, you know, described in here
because it doesn’t have user workspace.
…
The tracking component element of Claim 1 is essentially in the
same story, it does not track users as they move from any context
to any other context. It’s not centered around users. It doesn’t
track users at all.
Stameshkin Decl. Ex. 1 at 1833:18-1834:1. Nothing further was stated or pointed to that would
contradict the plain teaching of Swartz. As such, no reasonable jury could conclude that Swartz
does not disclose tracking in light of the above.
Dr. Herbsleb’s argument that Swartz does not disclose workspaces, environments or
contexts is similarly contradicted by the text of Swartz itself. See Stameshkin Decl. Ex. 22 at
col. 4:55-58 (“Alternative or improved embodiments of the invention will enable users to define
and execute multiple tasks to be performed by one or more applications from anywhere within a
document.”); see also id. at col. 9:31-33 (one preferred embodiment, “using stored context
information, provides access to historical information about how a report was created, who did
the work, and when it was completed….”); id. at col. 8:56-60 (quoted above). Once again,

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notwithstanding Dr. Herbsleb’s conclusory testimony to the contrary, no reasonable jury could
find that contexts1 are not disclosed in the Swartz reference.
Dr. Herbsleb’s statement that Swartz is “not centered around users” is not relevant to the
issue of whether Swartz includes the tracking component disclosed in the asserted claims. To
show anticipation, Facebook need only show that the invention disclosed in Swartz includes a
tracking component (along with all of the other elements of the asserted claims), not that tracking
user movement is somehow “central” to the Swartz invention.
Similarly, Dr. Herbsleb’s testimony regarding the alleged differences in file structures
between Swartz and the ’761 patent is not relevant to the issue of whether any of the asserted
claims is anticipated by Swartz because Dr. Herbsleb does not tie this alleged difference to any
required element of any of the asserted claims. At trial, Dr. Herbsleb described one of the
problems the ’761 patent was attempting to solve as the hierarchical storage of data within
folders, which Dr. Herbsleb then attempted to use to differentiate the ’761 patent from Swartz,
pointing to one of the figures in Swartz that includes an allegedly hierarchical file structure.
Stameshkin Decl. Ex. 1 at 1789:13-1790:5, 1824:1-16. This ignores the fact that none of the
asserted claims discloses or requires an alternative to traditional hierarchical file storage
structures. It further ignores the fact that the tool described as a preferred embodiment of the
invention of the ’761 patent also relies on the same traditional hierarchical file structure. See
Stameshkin Decl. Ex. 4 at Fig. 16. Finally, the problem to be solved by the inventors is
irrelevant to the question of anticipation. In re Self, 671 F.2d 1344, 1350-1351 (C.C.P.A. 1982).
Dr. Herbsleb’s testimony thus alleges an irrelevant (and inapt) distinction that has
nothing to do with what is actually claimed, and should be disregarded. None of Dr. Herbsleb’s

1

This Court’s claim construction order defines “context” as “environment,” and during trial
Leader’s infringement expert defined “workspace” as “sort of like a subset of the context or
environment where the user is operating.” D.I. 281; Stameshkin Decl. Ex. 1 at 723:6-10.
Despite this alleged difference, Leader’s infringement expert used the terms interchangeably
when describing the Facebook system. Compare, e.g., Stameshkin Decl. Ex. 1 at 723:18-23 and
665:24-666:8.
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conclusory testimony provides any basis for distinguishing the identity of the disclosures of
Swartz from claim 1 of the ’761 patent, and thus no reasonable jury could fail to find that claim 1
of the ’761 patent is anticipated by Swartz.
B.

Facebook Provided Clear and Convincing Evidence that Independent Claims
9, 21, and 23 of the ’761 Patent are Also Anticipated by Swartz. 2

With respect to claim 9, Dr. Greenberg and Dr. Herbsleb agreed that there are two
limitations that are different from and in addition to the limitations of claim 1: 1) claim 9
requires a web-based computing platform rather than a network-based system, and 2) claim 9
requires user environments rather than contexts. As to the first, Dr. Greenberg testified about
several disclosures of a web-based computing platform within Swartz:
Then it says of a web-based computing platform. And this is also
another difference from claim one, and I identified parts in the
patent that shows Swartz discloses the web-based computing
platform.
Q. This one of those?
A. Yes, it is. Here's an excerpt from Swartz.
He says, "Knowledge management level also includes data docket
web-based knowledge reporter." So clearly this is a web-based
system or it has capabilities of a web-based system, so this is a
web-based platform.
At the bottom we see the data docket being accessed by the
web browser. Clearly this is a web-based platform.
Stameshkin Decl. Ex. 1 at 1477:6-22. With regard to user environments, Dr. Greenberg noted
that “[t]he Court has actually construed context to be the same as environment,” and thus this
element would be anticipated for the same reasons as Claim 1. Id. at 1476:22-23. He goes on to
note that “[m]ore generally, Swartz is describing all the stuff people are doing in a system, so
that’s their environment for doing their work, so that’s all satisfied by Swartz.” Id. at 1477:2-5.
Dr. Herbsleb’s rebuttal to these statements consisted solely of the conclusory opinion that “for all
the same reasons that I have discussed, [Swartz] does not anticipate any of the elements of Claim

2

Both Dr. Greenberg and Dr. Herbsleb testified that the independent claims of the ’761 patent
contain many common limitations, see, e.g., Stameshkin Decl. Ex. 1 at 1476:4-11; 1768:4-17,
and thus, in analyzing claims 9, 21, and 23 both experts focused on the differences between these
claims and claim 1.
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9.” Id. at 1835:14-16. As Leader provided no evidence to contradict Dr. Greenberg’s testimony,
no reasonable jury could fail to find that Swartz anticipates claim 9.
With respect to claim 21, Dr. Greenberg and Dr. Herbsleb agreed that there is one
substantive limitation different from and in addition to claims 1, 4, 9 and 11: claim 21 requires
user workspaces rather than contexts or user environments. Id. at 1528:3-4 (“The only difference
is that it’s a user workspace.”); id. at 1804:16-1805:22.

Dr. Greenberg testified that user

workspaces are equated with contexts and user environments in the ’761 patent and in addition,
Swartz “is describing a system where people are working within that system, so that’s their using
[sic] workspace.” Id. at 1483:3-13. In response, Dr. Herbsleb merely claims that “there is, you
know, no user workspace in the technology of Swartz disclosure.” Id. at 1836:17-20. As
discussed above, this conclusory statement is contradicted by the text of Swartz. Therefore, no
reasonable jury could fail to find that Swartz anticipates claim 21.
With respect to claim 23, Dr. Greenberg and Dr. Herbsleb agreed that all substantive
limitations of the claim are disclosed in the other independent claims of the ’761 patent. Id. at
1530:13-1532:7, 1806:8-16. Therefore, for all the reasons that no reasonable jury could fail to
find that Swartz anticipates claims 1, 9 and 21, no reasonable jury could fail to find that Swartz
anticipates claim 23.
C.

Facebook Provided Clear and Convincing Evidence that Dependent Claims
4, 7, 11, 25, 31 and 32 of the ’761 Patent are Anticipated by Swartz

The testimony of Dr. Greenberg, along with exhibit DTX 919, established that additional
limitations disclosed by claims 4, 7, 11, 25, 31 and 32 of the ’761 patent are literally present in
and thereby also anticipated by Swartz, as shown in the chart set forth in Appendix A.
In response to Dr. Greenberg’s testimony regarding claims 4 and 7, Dr. Herbsleb’s only
opinion was that somehow Swartz does not disclose “context information” or “context.”
Stameshkin Decl. Ex. 1 at 1834:14-1835:6. However, as discussed above, Swartz does disclose
context information, as set forth specifically in the text of Swartz. See id. Ex. 22 at col. 8:56-60
(“Such a system also preferably captures metadata associated with the information shared, stored

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and accessed by the users of the data so as to characterize the ‘context’ in which the information
is being used.”) (emphasis added). With regard to claim 11, Dr. Herbsleb attempted to argue that
because Swartz does not disclose a “user environment,” it does not anticipate claim 11.
Stameshkin Decl. Ex. 1 at 1835:22-23. As discussed supra with regard to claim 9, however,
Swartz does in fact disclose a user environment. Finally, Dr. Herbsleb conclusorily testified that
claims 25, 31 and 32 were not met because they are dependent on claim 23. Id. at 1837:10-19.
However, as the evidence clearly contradicts his only arguments regarding claim 23, which is
clearly anticipated, Dr. Herbsleb’s arguments for claims 25, 31 and 32 must similarly fail.
Because Dr. Greenberg’s testimony, along with exhibit DTX 919, established by clear
and convincing evidence that Swartz anticipates claims 4, 7, 11, 25, 31 and 32 of the ’761 patent,
and because Leader failed to present any evidence to the contrary, no reasonable jury could fail
to find that Swartz anticipates claims 4, 7, 11, 25, 31 and 32 of the ’761 patent.
III.

IMANAGE ANTICIPATES ALL ASSERTED CLAIMS

The iManage DeskSite 6.0 system and the iManage DeskSite 6.0 User Reference Manual
(2001) (collectively, “iManage”) disclose a large-scale, network-based document management
system that tracks users’ interactions with documents for the purpose of facilitating the
collaboration across an enterprise.

Stameshkin Decl. Ex. 1 at 1495:16-1497:4.

Facebook

provided clear and convincing evidence at trial that iManage anticipates all of the asserted claims
of the ’761 patent. Leader failed to rebut this evidence, providing only conclusory expert
testimony that did not address the specific limitations of the asserted claims. As such, there is no
legally sufficient basis on which a jury could find that the ’761 patent is valid over iManage, and
judgment as a matter of law is appropriate.
A.

iManage Anticipates Claim 1 of the ’761 Patent

The testimony of Dr. Greenberg, along with exhibit DTX 925E, established that every
limitation of each and every element of claim 1 of the ’761 patent is present in and thereby
anticipated by iManage, as shown in the chart set forth in Appendix A.

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In response, Leader’s expert Dr. Herbsleb testified in terms of generalities and addressed
aspects of the ’761 patent that do not constitute limitations of any asserted claim. First, Dr.
Herbsleb testified that iManage operates within a traditional hierarchical system. Stameshkin
Decl. Ex. 1 at 1794:19-1795:17. As discussed above, operating outside a hierarchical file system
is not a limitation of any asserted claim. Second, Dr. Herbsleb testified that the iManage system
is document-centric rather than user centric. Id. at 1796:11-1797:2. Again, as discussed above,
user-centricity is not a limitation of any claim of the ’761 Patent.
Finally, Dr. Herbsleb argued that somehow iManage does not disclose contexts, a context
component or tracking users between contexts because it does not generate contexts. Id. at
1798:14-1799:9. Again, however, generating contexts is not a requirement of any asserted claim
of the ’761 Patent. As shown in Appendix A, iManage captures and stores context information
reflecting the applications and locations – i.e., contexts – in which users create data, which is
sufficient to anticipate claim 1. Also, as in seen in Figure 3.26, reproduced in Appendix A,
iManage specifically discloses tracking the movement of a user from a first context
(“WINWORD”) to a second context (“MANAGE32”). Therefore, Dr. Herbsleb’s testimony
regarding contexts is both irrelevant to the limitations of claim 1 and supported by no evidence.
Because Dr. Greenberg’s testimony, along with exhibit DTX 925E, established by clear
and convincing evidence that iManage anticipates claim 1 of the ’761 patent, and because Dr.
Herbsleb failed to identify any limitation of claim 1 that is not met by iManage, no reasonable
jury could fail to find that iManage anticipates claim 1.
B.

iManage Anticipates Independent Claims 9, 21 and 23 of the ’761 Patent3

With respect to claim 9, Dr. Greenberg testified about several disclosures of a web-based
computing platform within iManage:
“Chapter three, page three.

3

Again, both experts focused on the differences between claims 9, 21, and 23 and claim 1 in
their analyses of the additional independent claims.
8

It says ‘In order to send a document URL link, your system
must include an iManage worksite web component server.’ So this
illustrates that iManage has web capabilities. It’s a web platform.
If we can go on, and there’s another one where it says here, on
page seventy-four, it says you can send a copy of a document, a
link of a document, or URL link of a document through e-mail
from iManage desk site. The fact that you can send a URL to a
document also says that iManage must be web-based.
Q. Anything else?
A. I believe there’s one more, and here it says – in chapter six,
page fifty-seven, it says in the worksite box, you can enter the
URL for accessing the iManage worksite in the base path field, and
there’s further things that talk about sending document to URL link
or sending folder to URL link.
Q. Was there a figure that showed that in the reference
manual?
A. Yes. Well, it doesn’t show this. It shows another
capability where we see that iManage itself, in fact, has an address
bar, and this is where it says web URL. That’s directly from their
image, so you can access things from the web, so yet again shows
capabilities of a web-based platform.”
Stameshkin Decl. Ex. 1 at 1519:19-1520:23. Dr. Herbsleb’s sole rebuttal to this was that the
references to web-based computing in iManage were “oblique,” id. at 1803:2-3, an assertion that
does nothing to refute Dr. Greenburg’s showing that iManage explicitly discloses this element of
claim 9. Dr. Greenberg also testified that the Court’s claim construction order, which equates
contexts with environments, means that iManage discloses user environments in the same
manner it discloses contexts. Id. at 1521:7-13. Dr. Herbsleb offered only conclusory testimony
that iManage does not have environments, without addressing Dr. Greenberg’s clear testimony
that demonstrated that iManage includes contexts (defined by the Court as environments), and
updates metadata with context information. Id. at 1803:7-11. Therefore, no reasonable jury
could fail to find that iManage anticipates claim 9.
With respect to claim 21, Dr. Greenberg testified that user workspaces are equated with
contexts and user environments in the ’761 patent, Stameshkin Decl. Ex. 1 at 1483:3-8, and that
the plain meaning of the term “user workspace” necessitates a finding of anticipation by
iManage. Id. at 1528:4-6 (“IManage gives a place for people to do their work, so by definition it

9

gives them a user workspace, so that’s covered.”) In response, Dr. Herbsleb repeated his
conclusory statements that in his opinion iManage does not use workspaces, and does not update
metadata. Id. at 1800:3, 1805:9. Again, Dr. Herbsleb’s testimony is directly contradicted by the
disclosures of the iManage desk reference manual. See id. Ex. 23, Fig. 3.26. Therefore, no
reasonable jury could fail to find that iManage anticipates claim 21.
With respect to claim 23, Dr. Greenberg and Dr. Herbsleb agreed that all substantive
limitations of the claim are disclosed in the other independent claims of the ’761 patent.
Stameshkin Decl. Ex. 1 at 1530:13-1532:7, 1806:8-16. Therefore, for all the reasons that no
reasonable jury could fail to find that iManage anticipates claims 1, 9 and 21, no reasonable jury
could fail to find that iManage anticipates claim 23.
C.

iManage Anticipates Dependent Claims 4, 7, 11, 16, 25, 31 and 32 of the ’761
Patent

The testimony of Dr. Saul Greenberg, along with exhibit DTX 925E, established that the
additional limitations disclosed by claims 4, 7, 11, 16, 25, 31 and 32 of the ’761 patent are
literally present in and thereby also anticipated by iManage, as set forth in the chart in Appendix
A.
In response, Dr. Herbsleb testified that iManage could not anticipate claims 4, 7 and 11
because it does not disclose contexts or user environments. See, e.g., Stameshkin Decl. Ex. 1 at
at 1800:22-24, 1803:23-1804:1. However, as shown in Appendix A, iManage does disclose both
contexts and user environments. With regard to claim 16, Dr. Herbsleb merely testified that
“there’s really nothing at all in there about portable wireless devices” (id. at 1804:5-6), which is
directly contradicted by both Dr. Greenberg’s testimony and the plain text of the iManage
reference. See Stameshkin Decl. Ex. 23 at 173. Finally, Dr. Herbsleb merely testified that
claims 25, 31 and 32 were not met because they are dependent on claim 23. Id. Ex. 1 at 1806:1724. However, as the evidence clearly contradicts his only arguments regarding claim 23, Dr.
Herbsleb’s arguments for claims 25, 31 and 32 must similarly fail.

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Because Dr. Greenberg’s testimony, along with exhibit DTX 925E, established by clear
and convincing evidence that iManage anticipates claims 4, 7, 11, 16, 25, 31 and 32 of the ’761
patent, and because Leader failed to present any evidence to the contrary, no reasonable jury
could fail to find that iManage anticipates claims 4, 7, 11, 16, 25, 31 and 32.
IV.

HUBERT ANTICIPATES CLAIMS 1, 4, 7, 9, 11, 21, 23, 31 AND 32
Published European Patent Application No. EP 1 087 306 A2 to Laurence Hubert et al.

and U.S. Patent No. 7,647,349 to Laurence Hubert et al. (which contains the disclosures of EP 1
087 306 A2) (collectively, “Hubert”) disclose an Internet-based system for managing documents
in which metadata about a document is attached to and travels with the document throughout the
system.
“[T]he idea in Hubert is that you have those documents, a thing called the
metadocument. . . . And the idea is that the metadocument would contain data, but
it would also contain metadata as well as the processing information, which is yet
another form of metadata that captures all the things that people are doing to that
document over time, and that information would be stored. . . . He had this idea
that the document would see all the things that would happen to it, would capture
all the things happening to it in a certain source [or] environment, and move it
across the network from one environment to another or from one context to
another, that that information would spread to other places.”
Stameshkin Decl. Ex. 1 at 1541:8-1542:10.
At trial Facebook provided clear and convincing evidence that Hubert anticipates claims
1, 4, 7, 9, 11, 21, 23, 25, 31 and 32 of the ’761 patent. By contrast, Leader failed to rebut this
evidence, providing only vague and conclusory expert testimony that did not address the specific
limitations of the asserted claims. As such, there is no legally sufficient basis on which a jury
could find that the ’761 patent is valid over Hubert.
A.

Hubert Anticipates Independent Claim 1 of the ’761 Patent

The testimony of Dr. Saul Greenberg, along with exhibits DTX 0922 and DTX 0604,
established that every limitation of each and every element of claim 1 of the ’761 patent is
literally present in and thereby anticipated by Hubert, as shown in the chart set forth in Appendix
A.

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Leader’s expert witness, Dr. Herbsleb, testified only in terms of generalities, failing to
address the many required limitations of claim 1 and thereby failed to rebut the clear and
convincing evidence of anticipation proffered through Dr. Greenberg’s testimony.

Dr.

Herbsleb’s opinion regarding Hubert was limited to two aspects of the reference. First, Dr.
Herbsleb claimed that Hubert is document-centric whereas the ’761 patent is user-centric.
Stameshkin Decl. Ex. 1 at 1809:1-19. However, even were this true, this difference would not
prevent Hubert from anticipating the ’761 patent because being “based around users and users’
workspaces”, id. at 1809:10-11, is not a limitation of any asserted claim of the ’761 patent. In
fact, Hubert does meet all the actual limitations of claim 1 of the ’761 patent, as testified to by
Dr. Greenberg and as shown in Appendix A. Thus, Dr. Herbsleb’s “general sense” of the
reference should therefore be disregarded. Second, Dr. Herbsleb claimed that Hubert could not
anticipate any claim that required the existence of a context, environment or workspace because,
“[t]here just is no context. In the sense of an environment or user environment, there’s nothing
like that in the system.” Id. at 1815:4-8. However, the Court construed context to mean
environment (D.I. 281), and Hubert specifically discloses “source[s] or environment[s]” in which
users can access documents. See, e.g., Stameshkin Decl. Ex. 24, Abstract, ¶ 0009, 0012-14. Dr.
Herbsleb’s testimony is once again directly contradicted by the prior art reference itself, and
should therefore be disregarded.
Because Dr. Greenberg’s testimony, along with exhibits DTX 0922 and DTX 0604,
established by clear and convincing evidence that Hubert anticipates claim 1 of the ’761 patent,
and because Dr. Herbsleb failed to identify any limitation of claim 1 that is not met by Hubert,
no reasonable jury could fail to find that Hubert anticipates claim 1.
B.

Hubert Anticipates Independent Claims 9, 21 and 23 of the ’761 Patent4

With respect to claim 9, Dr. Greenberg testified that Hubert discloses both a method that
operates over the Internet, (Stameshkin Decl. Ex. 1 at 1546:5-9; 1552:10-22), and a method that
4

Again, both experts focused on the differences between claims 9, 21, and 23 and claim 1 in
their analyses of the additional independent claims.
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includes user environments, (id. at 1552:6-9). Dr. Herbsleb addressed only the latter of these
two differences—as noted above in claim 1—and testified without support and contrary to the
plain language of the Hubert reference. Id. at 1817:11-20. Cf. Stameshkin Decl. Ex. 24, ¶ 0023.
See also supra at IV.A. Therefore, no reasonable jury could fail to find that Hubert anticipates
claim 9.
With respect to claim 21, Dr. Greenberg testified that user workspaces are equated with
contexts and user environments in the ’761 patent, (Stameshkin Decl. Ex. 1 at 1483:3-8), and
that the plain meaning of the term “user workspace” necessitates a finding of anticipation by
Hubert. Id. at 1555:21-23 (“This is a place where people are supposed to do their work. So, by
definition, this is a user workspace.”) In rebuttal, Dr. Herbsleb testified only with circular
statements, entirely without evidentiary support.

Id. at 1818:21-1819:2.

Therefore, no

reasonable jury could fail to find that Hubert anticipates claim 21.
With respect to claim 23, Dr. Greenberg and Dr. Herbsleb agreed that all substantive
limitations of the claim are disclosed in the other independent claims of the ’761 patent.
Stameshkin Decl. Ex. 1 at 1558:1-1559:14, 1819:6-21. Therefore, for all the reasons that no
reasonable jury could fail to find that Hubert anticipates claims 1, 9 and 21, no reasonable jury
could fail to find that Hubert anticipates claim 23.
C.

Hubert Anticipates Dependent Claims 4, 7, 11, 25, 31 and 32 of the ’761
Patent

The testimony of Dr. Saul Greenberg, along with exhibits DTX 0922 and DTX 0604,
established that the additional limitations disclosed by claims 4, 7, 11, 25, 31 and 32 of the ’761
patent are literally present in and thereby also anticipated by Hubert, as shown in the chart set
forth in Appendix A.
Unlike Dr. Greenberg’s specific citations, Dr. Herbsleb again provided only generalities,
testifying that Hubert could not anticipate claims 4, 7 and 11 because it does not disclose
contexts or user environments.

Stameshkin Decl. Ex. 1 at 1816:2-14, 1817:24-1818:6.

However, as discussed supra, Hubert does disclose both contexts and user environments; in fact,

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it uses the specific term “environment.” With regard to claims 25, 31 and 32, Dr. Herbsleb
merely stated, without analysis or evidentiary support, that “the Hubert reference does not
anticipate any of these claims.” Id. at 1820:6-14.
Because Dr. Greenberg’s testimony, along with exhibits DTX 0922 and DTX 0604,
established by clear and convincing evidence that Hubert anticipates claims 4, 7, 11, 25, 31 and
32 of the ’761 patent, and because Leader failed to present any evidence to the contrary, no
reasonable jury could fail to find that Hubert anticipates claims 4, 7, 11, 25, 31 and 32.
V.

ALL ASSERTED CLAIMS ARE OBVIOUS IN LIGHT OF SWARTZ, IMANAGE, HUBERT AND
AUSEMS
Facebook’s defense of obviousness of the ’761 patent is governed by 35 U.S.C. § 103(a)

and the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Obviousness is a question of law based on underlying facts. Under binding Supreme Court
precedent, when a patent simply combines known elements, each performing the same function
it was already known to perform, and yields what a person of ordinary skill would expect from
such a combination, the combination is obvious as a matter of law. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007); see also Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). On
the record here, obviousness was clearly and convincingly established as a matter of law by the
prior art presented by Dr. Greenberg. See id at 426-27. The factors for the court to consider in
making this legal determination include the scope and content of the prior art, the differences
between the prior art and the claims of the patent, and the level of ordinary skill in the art. Id. at
406. When considering obviousness in the software context, the Supreme Court has thus looked
to whether the prior art software showed “analogous” features and similar “characteristics and
capabilities.” Dann v. Johnston, 425 U.S. 219, 229 (1976). As this record shows, even if there is
no anticipation, all the prior art relied on here was directed to computer systems that did the same
thing in ways that were at least analogous the claimed invention.
With respect to claim 16, which adds only a method step of accessing an environment
using a portable wireless device, it is rendered obvious as a matter of law in light of the

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combination of Swartz ’994 and U.S. Patent No. 6,434,403 to Ausems, the combination of either
Hubert ’306 or Hubert ’349 with Ausems, or the combination of iManage with Ausems, as
detailed during the testimony of Professor Greenberg. Stameshkin Decl. Ex. 4; id. Ex. 1 at
1566:11-1567:14, 1570:1-22. iManage and Ausems, both prior art, disclose the use of a portable
wireless device in connection with the disclosed systems and methods. See Stameshkin Decl.
Ex. 23 at 173; id. Ex. 25. Portable wireless devices were in wide use when the ’761 patent was
conceived, and Dr. Greenberg testified that accessing the inventions described in the prior art
references via a portable wireless device would have been obvious to one of ordinary skill in the
art at the time the patent was issued. Stameshkin Decl. Ex. 1 at 1568:3-1569:16. Leader did not
seriously dispute this testimony, instead choosing to rely on its theory that other aspects of the
asserted claims are not disclosed by Facebook’s proffered prior art references. On this record,
therefore, claim 16 is obvious as a matter of law.
With respect to all asserted claims, no reasonable jury could fail to find that these claims
are obvious in view of the combination of Swartz ’994, the Hubert references, or iManage and
the other combinations explained by Professor Greenberg. Stameshkin Decl. Ex. 1 at 1564:5-23,
1566:11-1567:14, 1570:1-22, 1572:9-18.

In response, Leader provided only conclusory

testimony from Dr. Herbsleb that:
I haven’t seen any reference that anyone has offered as to why
someone would think to combine them anyway. There has really
been no reason offered as to why we should do that. But even if
we did, all suffer from the same problems as we’ve seen. I was
saying the same thing over and over again, if you can combine
them all, none of them has a context. None of them has a tracking
component. None of them invalidates any single element of any of
the claims. If you put them all together, they still don’t invalidate
any of the elements of any of the claims.
Id. at 1838:24-1839:16. However, as discussed supra, there is no support for Dr. Herbsleb’s
claims that these references do not disclose context or tracking components. Further, the law
does not require a motivation to combine two references in order to find obviousness. See KSR,
550 U.S. at 402 (“The diversity of inventive pursuits and of modern technology counsels against

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confining the obviousness analysis by a formalistic conception of the words teaching, suggestion,
and motivation.”). To the contrary, the combination of known prior art elements performing
known functions is obvious as a matter of law: “For over a half century, the Court has held that
a ‘patent for a combination which only unites old elements with no change in their respective
functions ... obviously withdraws what is already known into the field of its monopoly and
diminishes the resources available to skillful men.’” Id. at 415-16 (quoting Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950)).
Regardless, Dr. Greenberg testified that Xerox would have been motivated to combine
Swartz and Hubert because Xerox is the assignee of both patents, that iManage was a competitor
in the field at the time and therefore the iManage reference would have been known to one of
ordinary skill in the art, and that all of the prior art references relate to “the same thing.”
Stameshkin Decl. Ex. 1 at 1564:24-1566:4, 1565:10-16. As Dr. Greenberg put it:
“[T]hey all deal with the same thing. As I’ve mentioned,
they’re all about, you know, what is a person doing in a certain
context? Can we capture that?
Can we store that? Can we track what they do when they
move between context? Can we capture and store that as well?
Can we revise that at a later time? Can we access that? Can
a person review what has happened to all these documents, all this
information across these contexts?
So that’s another reason it would be obvious to combine in
these three references.
Id. at 1565:15-1566:4. Again, no reasonable jury could conclude on this record that the asserted
claims are not obvious in light of the testimony of Dr. Greenberg, and judgment as a matter of
law is appropriate.
VI.

CLAIMS 1, 4, 7, 21, 23, 25, 31 AND 32 ARE INVALID AS INDEFINITE UNDER IPXL
Facebook also moves for judgment as a matter of law with respect to claims 1, 4, 7, 21,

23, 25, 31 and 32 on the ground that these claims are invalid as indefinite under IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), because these claims impermissibly
attempt to claim an apparatus or computer-readable medium, as well as an explicit step that must
be performed by a user. These grounds are set forth in the pending motion for summary
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judgment of invalidity that has been deferred until after the completion of phase 1, which is
herein incorporated by reference, but judgment as a matter of law is also sought and is also
appropriate on this legal question pursuant to Fed. R. Civ. P. 50(a) and (b).
VII.

IN THE ALTERNATIVE, A NEW TRIAL ON INVALIDITY BASED ON SWARTZ WOULD BE
REQUIRED IF THE COURT WERE INCLINED TO ENTER JUDGMENT FOR LEADER
As the Court is aware, Facebook prevailed at trial on the on-sale bar and prior-use

defenses. If the Court were nonetheless inclined to enter judgment in favor of Leader for any
reason or grant any request by Leader for a new trial on the prior use and on-sale bar defenses,
Facebook respectfully submits that it would be entitled to a new trial on the question of
anticipation and obviousness with regard to the Swartz reference, based on the improper and
prejudicial comments of Leader’s counsel regarding the prosecution history of the ’761 patent.
During trial, counsel for Leader asked Facebook’s expert Dr. Greenberg several improper
questions, implying – and then stating – the untrue contention that the Swartz patent was
considered by the PTO during the prosecution of the ’761 patent. Stameshkin Decl. Ex. 1 at
1581:13-1583:14.

Leader’s counsel made these comments even after having been warned

repeatedly by the Court during pretrial proceedings and again during Dr. Greenberg’s crossexamination that such comments were prohibited. See D.I. 599. By disregarding this Court’s
explicit order, Leader created a substantial danger that the jury came to believe that the Swartz
reference was considered by the PTO during the prosecution of the ’761 patent when, in fact, it
was not. This impropriety was severely prejudicial because it is likely to have caused the jury to
lend less weight to the Swartz reference due to an erroneous belief that Swartz had previously
been considered and found not to be anticipatory by the PTO.
The Court’s limiting instruction on this issue did not effectively remedy the prejudice to
Facebook because Facebook still had no opportunity to present to the jury the PTO’s subsequent
statements that, in fact, the Swartz reference was not considered during the prosecution of the
’761 patent. On September 25, 2009, the PTO granted Facebook’s request for reexamination of
the asserted claims, noting that the Swartz reference was not considered during the prosecution

17

of the ’761 patent and presented a substantial new question of patentability. D.I. 599 and D.I.
599-1. The PTO’s own statements regarding whether the Swartz patent was considered during
prosecution are dispositive of what the PTO actually considered and Facebook should have been
allowed to present this evidence to the jury to remedy Leader’s highly prejudicial false
statements. Thus, were the Court to grant judgment for Leader or grant any request for a new
trial by Leader, Facebook would be entitled to a new trial limited to the issue of whether Swartz
is anticipatory prior art. See Fineman v. Armstrong World Industries, Inc., 980 F.2d 171, 208
(3rd Cir. 1992) (new trial granted based on prejudicial misconduct by counsel where curative
instruction did not remedy prejudice).
VIII. CONCLUSION
For the foregoing reasons, Facebook’s motion for judgment as a matter of law as to
invalidity should be granted. In the alternative, if the Court were inclined to enter judgment in
favor of Leader notwithstanding the jury’s finding of invalidity, a new trial should be ordered.

Dated: August 25, 2010

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
Five Palo Alto Square
3000 El Camino Real
Palo Alto, CA 94306
Phone: [phone]
Fax: [phone]

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.

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