Leader Technologies Inc. v. Facebook Inc.

Filing 662

REPLY BRIEF re 629 MOTION for Judgment as a Matter of Law of No Literal Infringement and No Infringement Under the Doctrine of Equivalents filed by Facebook Inc.(a Delaware corporation). (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.

)
) CIVIL ACTION
)
)
) No. 1:08-cv-00862-LPS
)
)
)
)
)
)
)
)

REPLY MEMORANDUM IN SUPPORT OF DEFENDANT FACEBOOK, INC.’S
RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW (JMOL)
OF NO LITERAL INFRINGEMENT AND NO INFRINGEMENT
UNDER THE DOCTRINE OF EQUIVALENTS
[MOTION NO. 2 OF 4]
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 Norberg (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: September 27, 2010

TABLE OF CONTENTS
Page No.
I.

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

II.

ARGUMENT..................................................................................................................... 1
A.

JMOL of No Literal Infringement Must be Entered.............................................. 1
1.

Facebook Does Not Update “The Stored Metadata” ................................. 2

2.

Facebook Indisputably Does Not “Dynamically Update” Metadata ......... 4

B.

JMOL Should Be Entered on the Doctrine of Equivalents.................................... 5

C.

A Conditional New Trial Should Be Granted on Infringement if the Court
Does Not Grant JMOL of Non-Infringement ........................................................ 6
1.
2.

Dr. Vigna Exceeded His Expert Report at Trial ........................................ 7

3.
III.

The Jury Resolved a Legal Claim Construction Issue, and Did So
Contrary to Judge Farnan’s Order.............................................................. 6
The Verdict Was Against The Great Weight of the Evidence................... 9

CONCLUSION................................................................................................................ 10

-i-

TABLE OF AUTHORITIES
Page No.
CASES
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986)...................................................................................................................2
Gen. Mills, Inc. v. Hunt-Wesson, Inc.,
103 F.3d 978 (Fed. Cir. 1997)................................................................................................1, 2
K-2 Corp. v. Salomon S.A.,
191 F.3d 1356 (Fed. Cir. 1999)..................................................................................................1
Lear Siegler, Inc. v. Sealy Mattress Co.,
873 F.2d 1422 (Fed. Cir. 1989)..................................................................................................6
Motionless Keyboard Co. v. Microsoft Corp.,
486 F.3d 1376 (Fed. Cir. 2007)..................................................................................................6
MyMail, Ltd. v. Am. Online, Inc.,
476 F.3d 1372 (Fed. Cir. 2007)..................................................................................................1
PC Connector Solutions LLC v. SmartDisk Corp.,
406 F.3d 1359 (Fed. Cir. 2005)..................................................................................................6
Reeves v. Sanderson Plumbing Prods., Inc.,
530 U.S. 133 (2000)...................................................................................................................2
OTHER AUTHORITIES
Federal Rules of Civil Procedure 26(a) ...........................................................................................8
Federal Rules of Civil Procedure 50(a) ...........................................................................................3

-ii-

I.

INTRODUCTION
Facebook’s opening brief established that the accused Facebook website lacks at least

two elements present in each independent claim: (1) Facebook does not update “the stored
metadata,” and (2) Facebook does not update any metadata (the stored metadata or otherwise)
“dynamically” based on the user’s change from a first context, environment or workspace to
another. Judgment as a matter of law of no literal infringement or infringement under the
doctrine of equivalents should therefore be entered. In the alternative, should the Court deny
Facebook’s motion for judgment as a matter of law, a new trial on infringement should be
granted in light of Leader’s misconduct at trial as detailed below.
II.

ARGUMENT
A.

JMOL of No Literal Infringement Must be Entered

Leader’s arguments regarding literal infringement rest on the false premise that the jury
resolved a factual dispute concerning operation of the Facebook website, but nothing could be
further from the truth. Unlike most patent cases, the jury here was not asked to choose between
two competing accounts of how the accused product works because the operation of the accused
Facebook website was, for all relevant purposes, not in dispute. Leader’s opposition does not
take issue with Facebook’s technical description of its product as Facebook relied on the
uncontested testimony of Leader’s own expert. The only relevant question, then, is whether the
asserted claims of the ’761 patent cover that undisputed operation. Federal Circuit law is clear
that, in this situation, the question of literal infringement collapses into claim construction and
can be resolved as a matter of law. See, e.g., MyMail, Ltd. v. Am. Online, Inc., 476 F.3d 1372,
1378 (Fed. Cir. 2007) (“Because there is no dispute regarding the operation of the accused
systems, that issue [of literal infringement] reduces to a question of claim interpretation and is
amenable to summary judgment.”); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362 (Fed. Cir.
1999) (“Because the relevant aspects of the accused device’s structure and operation are
undisputed in this case, the question of whether [the accused product] literally infringes the
asserted claims of the [patent-in-suit] turns on the interpretation of those claims.”); Gen. Mills,
1

Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997) (“Where the parties do not dispute
any relevant facts regarding the accused product . . . but disagree over possible claim
interpretations, the question of literal infringement collapses into claim construction and is
amenable to summary judgment.”); see also Reeves v. Sanderson Plumbing Prods., Inc., 530
U.S. 133, 150 (2000) (“And the standard for granting summary judgment ‘mirrors’ the standard
for judgment as a matter of law, such that ‘the inquiry under each is the same.’” (quoting
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-51 (1986))). Leader never provided any
evidence, let alone substantial evidence, that Facebook practiced the elements, “updating the
stored metadata” and “dynamically,” as properly understood.
1.

Facebook Does Not Update “The Stored Metadata”

In its opposition, Leader again tries to blur the identification of the metadata stored in the
first context in order to try to obscure the fact that metadata is never updated in the second
context. It is undisputed that, at trial, Leader pointed to the row of the photo table stored when
the user uploads a photo to Facebook as the “context information” that is stored “in metadata” in
the first context. See, e.g., D.I. 633 at 5; D.I. 637, Ex. 1 at 798:3-11. Leader does not dispute
that that photo table row is never updated, modified or changed in any way whatsoever under
any of its infringement theories.
Leader instead responds with a claim construction argument that the element, “updating
the stored metadata,” does not require an update to the actual metadata that was stored in the
first context, as the claim clearly requires. Leader’s basic argument is that any previously-stored
metadata, even if it has nothing to do with the photo table row stored in the first context, can
qualify as “the stored metadata” for purposes of the ’761 patent. Leader goes as far as to argue
that “the metadata includes all of the information maintained in the user database,” and therefore,
“as long as the user database is updated when a user accesses data from a second context,
Facebook satisfies this claim element.” D.I. 643 at 9. The Facebook user database, however,
comprises thousands of servers and hundreds of different tables. See Supplemental Declaration
of Elizabeth Stameshkin in Support of Reply Memorandum in Support Facebook’s Inc.’s
2

Renewed Motion for Judgment as a Matter of Law (“Stameshkin Supp. Decl.”) Ex. A at 918:19919:2 (Wiseman redirect). Arguing that “the stored metadata” of a single row of a single photo
table in a massive user database is “updated” when something is added to a different table, used
for a different purpose, on a different server ignores the plain language of the claim.
All of the asserted claims clearly require updating of the same metadata that was created.
Claim 1, for example, expressly requires updating of “the stored metadata,” referring back to the
“metadata stored on a storage component” recited earlier in the claim – here the photo table row.
Had Leader intended to broadly cover updates to any stored metadata, it would not have used the
definite article “the.” Leader’s attempt to rewrite its claim language should be rejected.
Leader also relies on a supposed “admission” by Facebook’s expert, Professor Kearns,
that one can update metadata by adding new data to that metadata. See D.I. 643 at 6. But Leader
ignores Dr. Kearns’s testimony that updating the metadata in the context of the claims meant
actually changing the previously-stored data. See Stameshkin Supp. Decl. Ex. A at 1140:201141:5. That, Dr. Kearns opined, was the “most natural interpretation.” Id. at 1141:2-3. The
supposed admission came only when Dr. Kearns considered a broader definition of metadata and
data that was “very, very inclusive.” Id. at 1141:15-22. This testimony has nothing to do with
whether the specific metadata identified in the claims, “the stored metadata,” was updated.
Leader’s arguments that Facebook is attempting to “recapture” its earlier proposed
construction of “metadata,” or propose an untimely new construction of “updating the stored
metadata,” are meritless distractions.

See D.I. 643 at 8-10.

Facebook’s non-infringement

arguments do not turn on “metadata” meaning anything other than “data about data,” as
construed by the Court. Nor do Facebook’s arguments depend on giving “updating” or “storing”
anything other than their plain and ordinary meanings. Those plain and ordinary meanings
mandate that “the” metadata updated in the second context be the same metadata that was stored
in the first context – and that does not happen in Facebook’s system as explained above. None
of Leader’s attempts to conjure supposed procedural defaults or waivers on Facebook’s part can
change that. Facebook properly raised these arguments in its Rule 50(a) motion before the case
3

was submitted to the jury. D.I. 606 at 4.
2.

Facebook Indisputably Does Not “Dynamically Update” Metadata

Each asserted claim also requires that the stored metadata be “dynamically” updated. As
construed by the Court, that means that the metadata has to be updated automatically and in
response to the user’s movement to a second context, user environment or user workspace. See
D.I. 633 at 7-8. There is no dispute that Facebook does not operate in this manner. The only
disputes relate to claim construction issues that are the province of the Court, not the jury.
Leader’s opposition acknowledges that the alleged metadata update it relies upon occurs
not in response to the user’s movement to a second context, but in response to a subsequent and
separate action by the user – such as the user typing “How are you?” then pressing “Share” on
another user’s Profile page. See D.I. 643 at 6-7; D.I. 633 at 9-10. Leader openly admits as much
in its opposition by arguing that “the Facebook Website meets this claim element because it
tracks as a user moves from one environment to another and performs an action in the second
environment, and then updates the metadata…” D.I. 643 at 7 (emphasis added). Leader’s
argument that the newly-created metadata “takes into account” the fact that the user moved to a
second context, id. at 6-7, has nothing to do with when or how the metadata update occurs.
There is simply no dispute that a Facebook user’s movement to a second context does not itself
result in the update of the stored metadata required by the claims.
Leader responds by arguing, as it did in closing argument, that the “preceding event” in
Judge Farnan’s construction of “dynamically” does not refer to the preceding event recited in the
claim (i.e., the user’s movement to a second context), but rather to some other unnamed and
unclaimed event in the accused technology. See D.I. 643 at 10-11. Leader argues that it is
Facebook that is seeking to change the construction of “dynamically,” id., but this argument has
no merit. The Memorandum Opinion issued by Judge Farnan clearly identified the “preceding
event” as “the user creating a context or moving from one context to another,” which is the
preceding event recited in the claims. D.I. 280 at 25-26. Leader’s claim construction briefing,
arguing against the very construction proposed by Facebook and adopted by Judge Farnan,
4

acknowledged that the “preceding event” was the preceding event in the claim. For example,
Leader admitted that “Facebook’s proposed construction requires that one must look to the
preceding limitation as the ‘preceding event.’” D.I. 179 at 25 (emphasis added). Leader’s
arguments to the contrary should be rejected, as even Leader used this understanding of the term
“the preceding event” throughout claim construction. It is Leader, not Facebook, who refuses to
acknowledge the Court’s claim construction.
Leader also argues in a footnote that Judge Farnan’s explanation of “dynamically” in his
Memorandum Opinion has no significance because he issued a separate claim construction order
the same day. See D.I. 643 at 11 n.4 (citing D.I. 280 and D.I. 281). However, the “actual claim
construction order,” as Leader calls it, adopted its constructions “for the reasons discussed in the
Memorandum Opinion issued this date,” (D.I. 281 at 1). That Memorandum Opinion is law of
the case and Leader was not permitted to ignore it.
Leader’s final argument is that the accused Facebook website satisfies the “dynamically”
claim element even under Facebook’s (and Judge Farnan’s) construction. See D.I. 643 at 11-12.
Leader relies primarily on deposition testimony of a Facebook marketing director, Dan Rose, for
the unremarkable proposition that Facebook (like all websites) logs activities visitors take on the
site.

Leader provides no explanation as to how a generic activity log could satisfy the

requirement of updating stored metadata in a second context. These logs could only relate, at
most, to the “tracking” step in the asserted claims and not the separate elements addressing the
storage and update of metadata.

Even Leader’s own infringement expert, despite having

extensively reviewed the Facebook source code and deposition transcripts, never suggested at
trial that this activity log could satisfy the metadata update limitations in the claims.
B.

JMOL Should Be Entered on the Doctrine of Equivalents

The fact that the jury did not reach Leader’s claim under the doctrine of equivalents does
not render Facebook’s motion “moot,” as Leader argues. See D.I. 643 at 12. Facebook’s motion
would only be “moot” if there was no possibility of the doctrine of equivalents rearing its head
again in this case. The fact that Leader does not simply stipulate to the dismissal of its doctrine
5

of equivalents claim demonstrates that the issue is not moot. If the Court grants JMOL of no
literal infringement, for example, it should also grant JMOL on the doctrine of equivalents to
foreclose any possibility that Leader could argue for entitlement to a new trial on that issue.
Dr. Vigna’s verbatim repetition of claim language and empty assertions of substantial
similarity do not provide the “particularized evidence and linking argument” required to sustain a
claim under the doctrine of equivalents. See Motionless Keyboard Co. v. Microsoft Corp., 486
F.3d 1376, 1382 (Fed. Cir. 2007). Dr. Vigna’s doctrine of equivalents testimony also ran afoul
of the principle that “‘[t]he evidence and argument on the doctrine of equivalents cannot merely
be subsumed in plaintiff’s case of literal infringement,’” PC Connector Solutions LLC v.
SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005) (quoting Lear Siegler, Inc. v. Sealy
Mattress Co., 873 F.2d 1422, 1425 (Fed. Cir. 1989)), a point reinforced by Leader’s opposition.
See D.I. 643 at 13 (“To support his opinion, Dr. Vigna relied upon the same evidence that he did
for literal infringement.”). Moreover, Leader does not even attempt to respond to Facebook’s
arguments that the doctrine of equivalents is legally unavailable based on prosecution history
estoppel and claim element vitiation. See D.I. 633 at 13-14. Judgment as a matter of law should
therefore be entered as to the doctrine of equivalents.
C.

A Conditional New Trial Should Be Granted on Infringement if the Court
Does Not Grant JMOL of Non-Infringement
1.

The Jury Resolved a Legal Claim Construction Issue, and Did So
Contrary to Judge Farnan’s Order

The question of literal infringement ultimately turned on whether the jury believed
Leader’s or Facebook’s interpretation of “the preceding event” in Judge Farman’s construction
of “dynamically.” As explained in Part II.A.2 above, Leader’s infringement case as to the
“dynamically updating” element rested on Leader repeatedly urging the jury to reject the
interpretation that Judge Farnan, Facebook – and even Leader – always understood it to mean.
Leader acknowledged in its claim construction brief that the construction adopted by Judge
Farnan “requires that one must look to the preceding limitation as the ‘preceding event,’” (D.I.
179 at 25), but then at trial, argued that the preceding event could be found outside the claim

6

limitations and within the accused technology. See D.I. 637, Ex. 1 at 1966:5-8 (Leader closing:
“[T]he preceding event was happening in the technology. That’s what the claims are about. It’s
not a preceding event in the sentence.”). The verdict of literal infringement was tainted by
Leader’s misconduct and improper claim construction arguments, requiring a new trial.
2.

Dr. Vigna Exceeded His Expert Report at Trial

The Court warned both parties at the outset of the trial that they could not exceed the
scope of their expert reports – and that if a party did, it would pay the costs of a new trial. The
Court established this procedure as a prophylactic measure to ensure fairness and compliance
with the expert disclosure rules. Facebook abided by these rules. Leader did not. Dr. Vigna’s
testimony exceeded the scope of his report because: (1) he testified about a Facebook API
application he created months after the close of expert discovery and several documents that
pertained to the API; and (2) he presented several videos shown at trial and depicting an analysis
using interceptor tools (“Burp” and “Firebug”) that were never disclosed in the report. Either
one of these two transgressions would be sufficient to warrant a new trial. Leader’s attempts to
minimize its violations of the Court’s directive should be rejected.
First, Leader attempts to minimize the significance of the testimony about the API
application Dr. Vigna created by arguing that it was only a “snippet” of testimony. See D.I. 643
at 15. That so-called “snippet” spanned more than ten pages of Dr. Vigna’s direct testimony, and
included explanations of technical documents that were never discussed in the report. See D.I.
637, Ex. 1 at 693:2-703:24. Leader’s suggestion that this testimony is subsumed into the
generic discussion of Facebook’s API contained in the background section of Dr. Vigna’s report
is unavailing.

This testimony was clearly derived from Dr. Vigna’s experience using the

Facebook API to build his application – a task he did not begin until July 2010.
Leader’s claim that Facebook had notice of this testimony because Dr. Vigna’s expert
report “disclosed his intent to create an application based on the API,” at some point in the
future, is also without merit. See D.I. 643 at 17. Leader’s arguments ignore the rule requiring
that Dr. Vigna’s expert report contain “a complete statement of all opinions the witness will
7

express and the basis and reasons for them,” Fed. R. Civ. P. 26(a)(2)(B)(i) (emphasis added).
Under Leader’s view of the rules, any expert could comply with this requirement by submitting a
“placeholder” report vaguely referencing future analyses that might yield undisclosed future
opinions. This obviously is not the law.
Nor is there any merit to Leader’s argument that these new opinions were not prejudicial
because they related only to Leader’s failed indirect infringement claim. Leader never limited or
qualified this testimony, and presented it as an integrated part of its case. Leader’s suggestion
that this improper testimony had no impact on the jury’s verdict is pure speculation.
Second, a new trial would be warranted because of Leader’s extensive video depictions
of the current Facebook website (not the one from April 2010) and an undisclosed analysis of
that website using interceptor tools. These videos were created the day after the Court warned
Leader: “You’ll present your case based on some sort of fixed data that has been produced and
is part of this case.” D.I. 633 at 19 (quoting D.I. 637, Ex. 21 at 69:8-11) (emphasis added).
These videos and Dr. Vigna’s discussion of them consumed hours of his direct testimony.
Leader speciously asserts that Facebook had adequate notice of the videos because Dr.
Vigna’s report “specifically disclosed … that he would create a demonstrative using these tools,”
D.I. 643 at 20 (emphasis added), sometime in the future. Leader even claims that Facebook had
“three months before trial” to respond to these disclosures, id., but never explains how Facebook
could respond to disclosures that it had never received (because they did not even exist).
Facebook attempted to discover what these demonstrations might contain during Dr. Vigna’s
deposition, but he evaded each question, insisting that he could not answer about something that
did not exist. Facebook’s concern about the possibility of being sandbagged at trial prompted its
pre-trial motion in limine to limit Dr. Vigna’s testimony to what was explicitly contained in his
report. D.I. 415 at 3-5. The Court’s warning that any party exceeding its expert report would
pay the costs of a new trial was in response to that motion. See D.I. 637, Ex. 13 at 4:18-5:4.
Leader does not explain its assertion that Dr. Vigna’s use of the “Burp” and “Firebug”
interceptor tools was fully disclosed in the expert report. The most Leader can claim is that some
8

of the results of Dr. Vigna’s use of those tools may have appeared in the report. But that is a far
cry from the lengthy and detailed video presentation, including the analysis and use of the
interceptor tools, that the jury saw for hours at trial. Leader claims that “[t]he use of these tools
is prevalent throughout Dr. Vigna’s expert report,” D.I. 643 at 19, but if that was true, then why
did Leader wait until trial to capture the use of those tools in video form, and why were the tools,
or the names of those tools, not provided to Facebook? When asked at his deposition what tools
he had used or was planning to use, Dr. Vigna’s only response was a “web browser,” and he
refused to identify any other tools claiming “it would be premature” to do so. See Stameshkin
Supp. Decl. Ex. B at 24:22-26:3. Leader either did not perform the interceptor tool analysis until
the videos were recorded months after expert discovery, or chose to sandbag Facebook at trial.
In either case, Leader violated the Court’s directive and a new trial is warranted.
3.

The Verdict Was Against The Great Weight of the Evidence

As explained above and in Facebook’s opening brief, the verdict of literal infringement was
against the clear weight of the evidence, which established that Facebook does not “dynamically
updat[e] the stored metadata” as required by all claims. For this additional reason, a new trial on
infringement would be required.
///
///

9

III.

CONCLUSION
For the reasons stated above, Facebook respectfully requests that this Court grant

judgment as a matter of law of non-infringement as to all asserted claims of the ’761 patent.

Dated: September 27, 2010

OF COUNSEL:
Michael G. Rhodes (pro hac vice)
Heidi L. Keefe (pro hac vice)
Mark R. Weinstein (pro hac vice)
Jeffrey Norberg (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

By: /s/ Steven L. Caponi
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-Counterclaimant
Facebook, Inc.

10