Leader Technologies Inc. v. Facebook Inc.

Filing 666

REPLY BRIEF re 382 MOTION for Summary Judgment of Invalidity of Claims 1, 4, 7, 21, 23, 25 31 and 32 of U.S. Patent No. 7,139,761 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
)
)
)
)
)
)
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)

REPLY MEMORANDUM IN SUPPORT OF FACEBOOK, INC.’S
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF
CLAIMS 1, 4, 7, 21, 23, 25, 31 AND 32 OF U.S. PATENT NO. 7,139,761

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 30, 2010

TABLE OF CONTENTS
Page No.
I.

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

II.

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

The Method Step In The System Claims Is Not A “Functional Limitation”......... 2

C.

Leader’s Attempt to Treat “Wherein” As “When” Fails – Again ......................... 3

D.

Leader’s Distortion of the Prosecution History Is Without Merit ......................... 5

E.

Leader’s Attempt to Distinguish IPXL Is Unavailing ........................................... 7

F.

Leader’s “Evidence” Of Definiteness Raises No Issue of Material Fact............... 8

G.
III.

Leader’s “Engine” Analogy Supports the Invalidity of the Claims....................... 1

Leader’s “Waiver” Arguments Are Without Merit ............................................... 9

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

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TABLE OF AUTHORITIES
Page No.
CASES
Ariba, Inc. v. Emptoris, Inc.,
Civ. A. No. 9:07-CV-90, 2008 WL 3482521 (E.D. Tex. Aug. 7, 2008) ...................................5
Ex parte Lyell,
17 U.S.P.Q.2d 1548, 1550 (1990)..............................................................................................7
Harrah’s Entm’t, Inc. v. Station Casinos, Inc.,
321 F. Supp. 2d 1173 (D. Nev. 2004)......................................................................................10
Helmsderfer v. Bobrick Washroom Equip., Inc.,
527 F.3d 1379 (Fed. Cir. 2008)..............................................................................................4, 5
HTC Corp. v. IPCom GMBH & Co., KG,
Civ. A. No. 08-1897 (RMC), ___ F. Supp. 2d ____, 2010 WL 3338536 (D.D.C. Aug.
25, 2010) ....................................................................................................................................8
IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377 (Fed. Cir. 2005)........................................................................................ passim
Microprocessor Enhancement Corp. v. Texas Instruments Inc.,
520 F.3d 1367 (Fed. Cir. 2008)..............................................................................................2, 3
Rembrandt Data Techs., LP v. AOL, LLC,
673 F. Supp. 2d 420 (E.D. Va. 2009) ................................................................................5, 6, 8
Ricoh Co. v. Katun Corp.,
486 F. Supp. 2d 395 (D.N.J. 2007) ............................................................................................2
Sitrick v. Dreamworks, LLC,
516 F.3d 993 (Fed. Cir. 2008)....................................................................................................9
STATUTES
35 U.S.C. § 112................................................................................................................................7
Fed. R. Civ. P. 26(a)(2)....................................................................................................................9
Fed. R. Civ. P. 56.............................................................................................................................9

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I.

INTRODUCTION
Facebook’s motion presents the purely legal question of whether claims 1, 21 and 23 of

the ’761 patent (hereafter “the system claims”)1 improperly claim both a system and a method
step involving its use, rendering them invalid under IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377 (Fed. Cir. 2005) (“IPXL”). There is no genuine issue of material fact that could
preclude summary judgment because the only “fact” material to this motion is the undisputed
language of these claims, all of which recite a system and a method step in which the user
“accesses” or “employs” the data in a second context or user workspace. Because these claims
cover both a system and a method step involving its use, they are impermissible hybrid claims.
II.

ARGUMENT
A.

Leader’s “Engine” Analogy Supports the Invalidity of the Claims

Leader’s primary argument is that the method step in the system claims is merely “a
functional limitation” that describes a “capability” of the claimed system. Leader attempts to
supports this argument by comparing the system claims to an imaginary claim directed to “an
engine that starts when a user turns a key.” D.I. 652 at 2. “It does not matter,” Leader claims,
“whether a user actually turns the key, infringement is found as long as the engine is designed in
such a way that it starts when a key is turned.” Id. This analogy fails under scrutiny. The
asserted system claims plainly and affirmatively recite an act the user performs – not merely how
the claimed system would respond “when” that step is performed. Using Leader’s engine
example, a hypothetical claim that provides a closer analogy for the system claims would read:
“an engine, wherein the user turns a key to start the engine.” Such a claim would fail under
IPXL because it improperly claims both an apparatus (an engine) and the affirmative step in
1

Claims 1 and 23 of the ’761 patent are apparatus claims that cover a system “that facilitates
management of data.” Claim 21 covers a computer-readable medium for storing executable
instructions for a method of managing data. Because the legal indefiniteness issues as to claims
1, 21 and 23 are identical, for ease of reference and consistency, references to “the system
claims” in this reply brief are intended to refer collectively to claims 1, 21 and 23.
1

which the user turns a key to start it. The system claims of the ’761 patent are, in this respect, no
different because they cover both (1) a system for facilitating management of data and (2) the use
of that system through the user-performed act of accessing or employing the data from the
second context or user workspace. The Court should therefore declare the asserted system
claims, and all asserted claims that depend from them, indefinite and therefore invalid.
B.

The Method Step In The System Claims Is Not A “Functional Limitation”

Leader describes a functional limitation as “an attempt to define something by what it
does rather than by what it is,” D.I. 652 at 10 (quoting Ricoh Co. v. Katun Corp., 486 F. Supp. 2d
395, 402 (D.N.J. 2007)), but the method step in the system claims is not a functional limitation
under this definition. The method step neither defines what the claimed system “is” nor “what it
does.” It instead describes the performance of an actual step in which “the user accesses” or “the
user employs” data from the second context or user workspace.
The cases cited in Leader’s opposition all involve claim language that recites a capability
or function of a claimed apparatus. The rationale behind these cases is that a limitation merely
stating a capability or function does not require any step to be actually performed, and therefore,
does not run afoul of IPXL. See, e.g., Microprocessor Enhancement Corp. v. Texas Instruments
Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). This reasoning might have been relevant if the
asserted claims were drafted to recite a system “wherein the user can access the data from the
second context,” but they were not. These system claims plainly require a separate act in which
the user “accesses” or “employs” data. The use of active, present tense verbs clearly identifies
an action that the user performs, not an action to which the system is capable of responding.
Leader’s contention that the method step is “a functional limitation” is also inconsistent
with the prosecution history. Claim 21 recites a computer-readable medium with instructions for
“dynamically associating the data and the application . . . such that the user employs the
application and data.” That claim limitation originally said, “such that the user can employ the

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application and data,” but Leader struck “can employ” during prosecution and replaced it with
“employs,” explaining that its amendments were made “to more clearly recite the invention.”
Declaration of Mark R. Weinstein (“Weinstein Decl.”) Ex. A at 9 (showing amendments to claim
40, issuing as claim 21); id. at 12. This amendment not only demonstrates that Leader knew how
to draft a functional claim limitation, but chose to abandon it in favor of claim language
requiring actual action by the user.2
Claim 22 (which Leader did not assert) provides further evidence that the lack of
functional language in the system claims was a deliberate choice by Leader. Claim 22 recites “a
system that facilitates management of data” with means-plus-function elements that mirror the
functions in claims 1, 21 and 23. But claim 22 concludes with the step of updating the metadata
“such that the user can employ the application and data from the second user workspace,” which
stands in contrast the to the asserted system claims that say that “the user accesses” or “the user
employs” the data or the application. These differences confirm that had Leader intended to
merely claim a system for giving the user the capability to access or employ the data from a
second context or workspace, it certainly knew how to do so.
C.

Leader’s Attempt to Treat “Wherein” As “When” Fails – Again

Leader’s contention that the method step in the system claims is merely functional rests
on the now-familiar argument that it abandoned at trial – that the word “wherein” means “when.”
In at least ten places in its opposition brief discussing the language of the system claims, Leader
conspicuously substitutes “wherein” with “when.” See, e.g., D.I. 652 at 2 (“An infringing
tracking component is one that is built with this functionality, i.e., the ability to dynamically
2

Another example also appears in claim 21 within the claim element immediately following the
“user employs” method step. That element, “indexing the data created in the user workspace
such that a plurality of different users can access the data via the metadata,” was added in the
very same amendment in which Leader changed “the user can employ” to “the user employs.”
Weinstein Decl. Ex. A at 9. The addition of functional language to claim 21, immediately after
an explicit method step, provides further evidence that the method step is not a “functional
limitation” as Leader contends.
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update metadata when a user accesses data from a second context.”).3 Leader does not articulate
any rationale for these repeated substitutions, nor can it.
“Wherein” does not mean “when.” The Court construed “wherein” to mean “in which.”
D.I. 601, Jury Instruction 3.4, at 24. As the Court will recall, Facebook urged the Court to
construe “wherein” because Leader had improperly argued throughout trial that “wherein” meant
“when.” D.I. 596 at 4-6; see also Weinstein Decl. Ex. B at 1613:24-1618:12. Facebook argued
that “wherein” should be construed as “in which,” and should specifically exclude “when” to
preclude Leader from continuing to make that improper argument. Id. The Court specifically
asked Leader: “is it enough for me to construe wherein as in which and not go the extra mile and
say not when?” Id. at 1634:22-1635:2. Leader’s counsel represented to the Court that such a
clarification was unnecessary, and reassured the Court that: “I’m not going to argue when. I’m
arguing which. That’s been our position throughout this entire case. It is in which.” Id. at
1635:24-1636:3 (emphasis added). Despite this unequivocal representation, Leader is again
arguing that “wherein” means “when.” Leader’s attempt to rewrite its claims to say something
they do not should be rejected – again. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527
3

See also Leader’s Opposition, D.I. 652 at 2 (“[T]he tracking component of the ‘761 Patent is
one that dynamically updates metadata when a user accesses data from a second context.”); id. at
3 (“The tracking component tracks a user as they move between contexts and dynamically
updates the metadata when a user accesses data from a different context.”); id. at 9 (“In other
words, the tracking component of Claim 1 has the capability of updating the metadata when a
user accesses data from a second context with information about the second context.”); id. (claim
23 “requires the capability of storing change information as part of the metadata when a user
accesses data from another workspace.”); id. at 13 (“Instead, as written, these claims provide
functional language that describe two particular types of tracking components, one that
dynamically updates metadata when a user accesses data from a second context and the other
which dynamically stores change information when a user accesses data from a second user
workspace.”); id. (“Claim 21 describes a computer program that dynamically associates data
when a user employs data from a second workspace.”); id. at 15 (“the claims of the ’761 Patent
describe ‘the capability of the [tracking component],’ i.e., the ability to dynamically update
metadata when a user accesses data from a second context.”); id. at 19 (“Facebook makes a
system that contains a context component that captures context information and stores the
context information in metadata and a tracking component that tracks users and dynamically
updates the metadata when a user accesses data from a second context.”) (emphasis added).
4

F.3d 1379, 1383 (Fed. Cir. 2008) (“Courts cannot rewrite claim language.”); Rembrandt Data
Techs., LP v. AOL, LLC, 673 F. Supp. 2d 420, 426 (E.D. Va. 2009) (“Courts must construe the
claim as written, not as the patentees wish they had written it.”) (quotations omitted).
But even if Leader were entitled to ignore the plain language of the system claims and the
Court’s claim construction ruling, the intrinsic evidence plainly demonstrates that “wherein” and
“when” have different meanings. Claim 24, for example, depends from claim 23 and reads: “The
system of claim 23, wherein the tracking component automatically creates the metadata when
the user accesses the first user workspace.” This claim plainly uses “wherein” as “in which,” a
grammatical connector between the preamble of claim 24 and the additional limitation that
follows. The claim continues by using the phrase, “when the user accesses,” which is the exact
meaning Leader attributes – incorrectly – to the “wherein” clause in claim 23. This claim
language unambiguously demonstrates that Leader knew the differences between “wherein” and
“when,” and intentionally used them separately to convey different meanings.
The fact that the “wherein” clause adds a method step and is not merely functional
language is supported by the fact that the claim in IPXL was found invalid despite the fact that
the offending language was part of a wherein clause. 430 F.3d at 1384 (“The system . . .
wherein . . . the user uses the input means . . .”); see also D.I. 384, Ex. A, ’761 patent, claim 1
(“A computer-implemented system . . . wherein the user accesses the data . . .”). In each case, a
“wherein” clause in a system claim requires the user to perform an affirmative act, resulting in a
mixture of statutory classes that fails under IPXL. See Ariba, Inc. v. Emptoris, Inc., Civ. A. No.
9:07-CV-90, 2008 WL 3482521, at *7-8 (E.D. Tex. Aug. 7, 2008) (providing another example of
a system claim invalidated under IPXL where the offending method step was in a “wherein”
clause).
D.

Leader’s Distortion of the Prosecution History Is Without Merit

Leader also argues that Facebook’s motion should be denied because “it was the

5

Examiner who wrote the disputed claim language,” D.I. 652 at 8, but this contention is irrelevant
and factually incorrect. As explained above, the method step in claim 21 (“the user employs the
application and data”) was drafted solely by Leader in an amendment to its claims many months
before the Examiner’s Amendment.

The Examiner’s Amendment adopted this preexisting

language when it added a substantially similar limitation to claims 1 and 23. There is no
evidence to support Leader’s speculation that the method step in claims 1 and 23 was drafted or
even suggested by the Examiner.
The amendments that resulted in the “wherein” clauses in claims 1 and 23 were discussed
during an interview between Leader’s representative and the Examiner that took place two weeks
before the Notice of Allowability.

See Weinstein Decl. Ex. C (“Applicant and Examiner

discussed amending [the pending claims] to overcome the prior art by an Examiner’s
Amendment (attached)”). This interview came after “multiple interviews” between Leader and
the patent examiner earlier in 2006, and the prosecution history contains no record of the
substance of those interviews. See id. Ex. D at 10 (thanking patent examiner for the “courtesies
extended during multiple interviews regarding prosecution of the subject application.”). There
is nothing in the prosecution record to indicate who originally suggested the method step in
claims 1 and 23 – but considering that claim 21 already included substantially the same method
step, the more plausible explanation is that existing language was simply adapted to make claims
1 and 23 consistent with claim 21.
In any event, Leader’s attempt to shift the blame to the Examiner for the offending claim
language is legally irrelevant.

Leader does not claim that the Examiner’s Amendment or

anything in the prosecution history relating to it sheds light on the meaning of the method step in
the system claims. The only relevant question here is whether the asserted system claims include
a method step, not how that step came into existence. See Rembrandt, 673 F. Supp. 2d at 426-27
(invalidating apparatus claim under IPXL notwithstanding that all parties agreed that the method

6

step was the result of a drafting error).
Finally, Leader’s suggestion that the asserted system claims are not invalid because the
patent examiner allowed them is similarly unavailing. See D.I. 652 at 7-8. The same can be said
of any claim that is challenged on the grounds of indefiniteness in court – every claim found
indefinite by a district court was necessarily a claim previously allowed by a patent examiner.
The apparatus claim invalidated in IPXL, for example, was obviously found patentable by an
examiner, as it resulted in the infringement suit that produced the Federal Circuit’s opinion. In
the present case, the fact that the patent examiner allowed the system claims has no bearing on
whether those claims are indefinite under 35 U.S.C. § 112 ¶ 2 and IPXL. There is no evidence
that the examiner ever considered the indefiniteness issue presented in this motion.
E.

Leader’s Attempt to Distinguish IPXL Is Unavailing

Leader next argues that IPXL is distinguishable because its holding “is limited to a user
using components of a system.” D.I. 652 at 14. Leader reasons that the asserted system claims
do not implicate IPXL because they do not use the words, “the user uses the network-based
system” or “the user uses the computer-implemented system.” D.I. 652 at 13. Leader’s attempt
to limit or distinguish IPXL fails for two reasons.
First, the IPXL decision establishes the broader proposition that a single claim reciting
“the combination of two separate statutory classes of invention,” e.g., an apparatus claim that
includes a method step, is invalid. 430 F.3d at 1384 (citing Ex parte Lyell, 17 U.S.P.Q.2d 1548,
1550 (1990)). Any claim that results in such a combination is invalid no matter the specific
language the patentee used to express it. A system claim containing a method step is invalid
under IPXL regardless of whether the offending method step recites what Leader calls “a user
using components of a system” D.I. 652 at 14, or a user using the system as a whole. In fact,
IPXL does not even require that the method step involve user action at all – a method step
performed by the system itself, requiring no user involvement, invalidates a system claim. See,

7

e.g., Rembrandt, 673 F. Supp. 2d at 426-27 (invalidating apparatus claim under IPXL Holdings
because of method step performed by the claimed data transmitting device); HTC Corp. v.
IPCom GMBH & Co., KG, Civ. A. No. 08-1897 (RMC), ___ F. Supp. 2d ____, 2010 WL
3338536, at *25-26 (D.D.C. Aug. 25, 2010) (invalidating claim under IPXL Holdings because
“[t]he claim describes the apparatus as actually performing the method steps; it does not merely
define the apparatus as a structure has certain means enabling it to perform certain steps.”).
There is no support for Leader’s contention that IPXL is “limited to a user using components of a
system,” or for Leader’s attempt to limit it to claims employing certain magic words.
Second, even if Leader’s restrictive interpretation had merit, IPXL would still apply to the
asserted system claims. This is because the “user” recited in those claims is obviously a user of
the claimed system that “facilitates the management of data.” When a system user “accesses” or
“employs” the data from the system’s second context or user workspace, that user is
unquestionably using the claimed system in performing that act.
F.

Leader’s “Evidence” Of Definiteness Raises No Issue of Material Fact

Leader also argues that claims 1, 21 and 23 are not indefinite because these claims,
according to Leader, can be understood by those of skill in the art. Leader points to the fact that
Facebook’s invalidity expert, Dr. Saul Greenberg, “was able to prepare an invalidity expert
report applying several pieces of prior art to the claims.” D.I. 652 at 11. This argument misses
the point. The asserted system claims are indefinite because there is a fundamental flaw in the
structure of the claims and irreconcilable confusion as to what they cover – not because
individual words or phrases are unclear in isolation. Because these claims merge apparatus
components and method steps, a competitor cannot determine if those claims are infringed by the
mere manufacture, use or sale of the claimed system, or only if a user actually accesses or
employs the data from the second context or user workspace. No expert offered an opinion on
this issue during expert discovery, nor would such an opinion have served any purpose – the

8

applicability of IPXL presents a purely legal question of claim interpretation for which expert
testimony would not be helpful. And that legal question is entirely separate from (and irrelevant
to) the prior art invalidity issues that Dr. Greenberg and Leader’s invalidity expert testified about
at trial because it has no bearing on whether the claim elements can be mapped to the prior art.4
Leader’s related complaint that Facebook’s motion does not provide sufficient evidence
or argument on indefiniteness likewise fails. Leader does not suggest what additional evidence
or argument Facebook could have presented, nor could it. For example, the motion for summary
judgment filed by Amazon.com in the IPXL case that resulted in the Federal Circuit’s opinion
devoted only two pages to the indefiniteness issue and relied on nothing beyond the language of
the claim. See Weinstein Decl. Ex. E at 37-38. That motion was sufficient to result in the grant
of summary judgment by the district court, affirmed by the Federal Circuit, so there is no basis
for Leader to claim that Facebook has not met its burden under Fed. R. Civ. P. 56 through the
more extensive motion filed with this Court.
G.

Leader’s “Waiver” Arguments Are Without Merit

Finally, Leader argues that Facebook “waived” its indefiniteness arguments by offering
proposed constructions for terms in the ’761 patent. Leader complains that because Facebook

4

Leader filed a declaration from its invalidity expert, Dr. Herbsleb, containing previouslyundisclosed opinions relating to indefiniteness. See D.I. 653, ¶¶ 3-6. Dr. Herbsleb never
provided an opinion on indefiniteness in his expert report. See Weinstein Decl. Ex. F. His new
declaration should therefore be stricken as a violation of the Court’s scheduling order and the
expert disclosure requirements of Fed. R. Civ. P. 26(a)(2). Even if considered, however, Dr.
Herbsleb’s declaration would raise no genuine issue of material fact for two reasons. First, the
indefiniteness question presented by this motion is a pure question of claim construction, i.e.,
whether the system claims require the performance of a method step. Nothing in Dr. Herbsleb’s
declaration can change the claim language. Second, Dr. Herbsleb’s declaration does not address
whether the system claims include a method step. The declaration merely includes the naked
conclusion that Dr. Herbsleb was “able to determine that a person of ordinary skill in the art
would be able to understand the scope and bounds of the claims of the ‘761 Patent.” D.I. 653, ¶
3. This conclusory assertion raises no genuine issue of material fact to prevent summary
judgment. See Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir. 2008) (“Conclusory
expert assertions cannot raise triable issues of material fact on summary judgment.”).
9

offered constructions for “wherein” and the phrases “accesses the data” and “employs the
application and data,” Facebook “cannot now argue the terms are insolubly ambiguous and
incapable of being understood by one of skill in the art.” D.I. 652 at 19. Leader’s position is
without legal basis. See, e.g., Harrah’s Entm’t, Inc. v. Station Casinos, Inc., 321 F. Supp. 2d
1173, 1176 (D. Nev. 2004) (defendant’s submission of proposed construction for claim terms did
not waive argument that that those terms were indefinite).
Leader’s waiver arguments fundamentally misunderstand the nature of the indefiniteness
issue in this motion. Facebook is not arguing that individual terms or phrases in the method
steps are “insolubly ambiguous” when viewed in isolation. Rather, as the Federal Circuit made
clear in IPXL, the fatal lack of clarity in claims of this kind is created by their impermissible
mixing of system and method limitations, which renders them indefinite. 403 F.3d at 1384. The
fact that Facebook offered constructions for some of those terms and phrases has nothing to do
with whether they render the system claims “hybrid” claims invalid under IPXL.
III.

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

summary judgment of invalidity as to claims 1, 4, 7, 21, 23, 25, 31 and 32 of the ’761 patent.
Dated: September 30, 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