Timebase Pty Ltd v. Thomson Corporation, The

Filing 270

REPLY re 230 MOTION for Summary Judgment filed by Thomson Corporation, The, West Publishing Corporation, West Services. (Attachments: # 1 LR7.1 Word Count Compliance Certificate)(Wagner, Kevin) Modified text on 7/29/2011 (jz).

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
TIMEBASE PTY LTD.,

Civil No. 07-1687 (JNE/JJG)
Plaintiff,

vs.

DEFENDANTS’ REPLY
MEMORANDUM IN SUPPORT OF
DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT

THE THOMSON CORPORATION,
WEST PUBLISHING CORPORATION,
and WEST SERVICES, INC.,
Defendants.

TimeBase’s own words confirm that the Court should dismiss this case. The
Court should grant summary judgment of non-infringement on the ‘592 patent because
TimeBase concedes it cannot meet the Court’s claim construction of “each.” TimeBase
admits that there “may be millions” of portions of text in Westlaw and that the
requirement that “each” of those portions be encoded with linking means presents an
impossible burden for TimeBase to overcome. (TimeBase Br. at 2.) The Court should
grant summary judgment of non-infringement on the ‘228 patent because TimeBase
intentionally applies the wrong construction of “displaying.” TimeBase contradicts the
Court’s claim construction by asserting that “displaying means providing.” (Id. at 36.)
But the Court has held that “displaying” means “showing on an electronic video device”
(Dkt. 219 at 25), and there is no evidence that defendants perform or control the act of
showing on an electronic video device. Finally, on willfulness, TimeBase presents no
evidence that defendants’ non-infringement arguments are objectively unreasonable.
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A.

TIMEBASE HAS NO EVIDENCE THAT THE MILLIONS OF
PREDEFINED PORTIONS OF TEXT IN WESTLAW ARE EACH
ENCODED WITH LINKING MEANS.
TimeBase Cannot Rewrite the Claims. TimeBase admits that it is impossible to

show that the millions of predefined portions of text in Westlaw are each encoded with
linking means. Faced with this “impossibility” (id. at 2), TimeBase seeks to convert the
phrase “each predefined portion” into the phrase “each of a plurality (i.e., two or more) of
predefined portions” (id. at 1). The Court should reject TimeBase’s attempt to rewrite the
claims.
When TimeBase wanted to refer only to a plurality of predefined portions in the
claims of the ‘592 patent, it knew how to do so. Claim 1 specifies that “said plurality of
predefined portions” are organized in a multidimensional space. Claim 11 requires a first
database comprising “said plurality of predefined portions.” And claim 17 requires that
“each of said plurality of predefined portions” is a provision of legislation. But for
“linking means,” all of the ‘592 patent’s independent claims require that “each
predefined portion” be encoded with linking means. When some claims terms explicitly
refer to a plurality, but others do not, those claim terms “are presumed to have different
meanings.” Bd. of Regents v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008);
ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374, 1379, 1382 (Fed. Cir. 2003) (construing
the term “each field” to apply to all fields, but construing the term “each of a plurality of
fields” to apply to two or more fields).
Both the Federal Circuit and numerous district courts have read similar claim
terms as requiring proof that every item in the accused system meet the “each” limitation,
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whether or not a plurality is referenced elsewhere in the claims. These cases hold that if
any item in the accused system or device does not meet the claimed “each” limitation,
there is no infringement—every item in the system or device must satisfy the limitation.

Case
ResQNet.com
(Def. Br. 9; TB Br.
5-7)

Claim Language

“each field”

Meaning

every field in the image

Lucent Tech.
(Def. Br. 10; TB Br. “each successive iteration”
7)

every successive iteration
performed in the system

LG Elec.
(Def. Br. 10; TB Br. “each read address”
7)

every read address in the system

“one or more pre-programmed
Bd. of Regents
(Def. Br. 10-11; TB codes, each pre-programmed
Br. 7-10)
code”

every pre-programmed code in
the system

In re Skvorecz
“at least two … wire legs with
(Def. Br. 11; TB Br.
each wire leg”
10-14)

every wire leg of the device

Mangosoft
“a plurality of computers, each
(Def. Br. 11 n.3; TB
of said plurality of computers”
Br. 14-15)

every computer in the system

“a plurality of electrically
Seitz
(Def. Br. 12 n.3; TB powered heating elements each
Br. 15)
within the at least one
compartment”

every heating element in the
device

Bed Bath & Beyond
“a plurality of retail sites … each
(Def. Br. 12 n.3; TB
every retail site in the system
of said sites”
Br. 15-16)

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The only case TimeBase cites to support its reading of the claims used the word
“each” in close proximity to “plurality,” unlike the ‘592 patent’s “each predefined
portion” language. Bowers v. Baystate Tech., Inc., 320 F.3d 1317, 1330 (Fed. Cir. 2003)
(“a plurality of groups, one group of each”). And Bowers departed from a plain reading
of the claims for a very specific reason—reading the claims “strictly would exclude from
claim scope the preferred embodiment.” Id. at 1332. TimeBase has not shown that
applying the “each predefined portion” language of the ‘592 claims would exclude the
preferred embodiments, and there is no justification for departing from the clear language
of the claims requiring each predefined portion to be encoded with linking means.
TimeBase Has Presented No Evidence that the Millions of Predefined Portions
Are Each Encoded with Linking Means. Recognizing that its expert did not present
evidence showing that the millions of predefined portions of text within Westlaw are
each encoded with linking means (TimeBase Br. at 18), TimeBase tries to create an issue
of fact by pointing to documents and deposition testimony that it contends show that
some portions are encoded, or associated with, linking means. (Id. at 18-32.) Yet
TimeBase never explains through expert testimony or otherwise how any of these
documents or testimony actually involve “linking means” as construed by the Court.
More importantly, none of this evidence says that every one of the Westlaw portions is
encoded with linking means. In fact, TimeBase concedes that showing this would be an
“impossibility.” (Id. at 2.) Without such evidence, there is no genuine issue of fact.
Finally, TimeBase does not come close to refuting defendants’ specific examples
of statutory sections within Westlaw that clearly are not encoded with linking means.
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Rather than looking at the portions—as defined by TimeBase’s own expert—to
determine if they are encoded with linking means (which TimeBase’s expert testified
would appear as blue underlined text (Dkt. 233-1 at 143)), TimeBase instead
misleadingly shows a separate window on the screen—not the window with the statutory
portion—to assert that “[t]he blue underlined text is there, on the screen.” (TimeBase Br.
at 33.) Nowhere does TimeBase explain how this separate window demonstrates that this
statutory portion is encoded with linking means.
Because TimeBase lacks any evidence that “each predefined portion” in Westlaw
is encoded with linking means, and instead concedes that it would be impossible to do so,
no reasonable jury could find infringement of the ‘592 patent, and summary judgment of
non-infringement should be granted.
B.

TIMEBASE CANNOT AVOID SUMMARY JUDGMENT BY REWRITING
THE STEP OF “DISPLAYING” TO ONE OF “PROVIDING.”
Displaying Does Not Mean Providing. Recognizing that summary judgment of

non-infringement of the ‘228 patent is warranted because defendants do not perform the
step of “displaying” as defined by the Court —“showing on an electronic video
device”—TimeBase contradicts the Court’s claim language. TimeBase instead asserts
that “the claimed displaying means providing ‘text based’ data ‘to the user’ in a particular
configuration.” (Id. at 36 (emphasis added).) TimeBase then goes on to spend the next
several pages of its brief trying to demonstrate who controls what is being provided,
rather than establishing who is performing the step of showing on an electronic video
device. TimeBase repeatedly argues that defendants provide a “format” of text-based

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data to users. (TimeBase Br. at 36, 39, 40, 42.) But the inventors did not write this step
of the claims of the ‘228 patent as “providing” formatted text-based data to users.
Instead, they wrote the claims to require a party to actually perform the step—the act—of
showing text on an electronic video device. Although some of the ‘228 patent claims
also require that text be configured or formatted in a particular way or contain particular
content or links, that is not the step of “displaying” as defined by the Court. TimeBase
literally does not even mention the Court’s construction of “displaying” in its brief, much
less apply it.
TimeBase Has No Evidence that Defendants Perform or Control the Step of
Displaying. Because TimeBase rewrites the claims to substitute “providing” for
“showing on an electronic video device,” it has presented no evidence creating a factual
issue over who performs the “showing” steps. The uncontroverted evidence from
defendants’ expert, Dr. Stonebraker, establishes that it is the end users who perform the
step of “showing on an electronic video device” by operating the hardware and software
on their computers necessary to show the text provided by Westlaw. (Dkt. 234-2 at 33.)
TimeBase’s expert, Dr. Frieder, does not even address the issue, noting only that text “is
displayed” without offering any opinion on who performs or controls this step. (Dkt.
233-3 at 85.)
With no evidence establishing that defendants perform the step of “showing on an
electronic video device,” TimeBase instead alleges that a contractual relationship
demonstrating “a connection between Westlaw and its customers” is enough to create an
issue of fact. (TimeBase Br. at 44.) In making this argument, TimeBase contends that,
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as a result of the Federal Circuit’s vacating the Akamai and McKesson cases pending en
banc review, the standard for demonstrating direct infringement of method claims is now
“lower[].” (Id. at 42.) TimeBase is wrong on both counts.
Two Federal Circuit cases—BMC Resources, Inc. v. Paymentech L.P., 498 F.3d
1373 (Fed. Cir. 2007) and Muniauction Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir.
2008)—establish the standard: Where a single party does not perform every step, a claim
is directly infringed “only if one party exercises ‘control or direction’ over the entire
process such that every step is attributable to the controlling party.” Muniauction, 532
F.3d at 1329. The issue is “whether [defendant] sufficiently controls or directs other
parties . . . such that [defendant] itself can be said to have performed every step of the
asserted claims.” Id. It is not enough to show a party “controls access” to or “instructs”
others on how to use a system, id. at 1330, or that there is “arms-length cooperation,”
BMC Resources, 498 F.3d at 1381.
TimeBase does not discuss BMC Resources or Muniauction in its brief. Instead,
TimeBase relies on an unpublished earlier district court decision—Hill v. Amazon.com,
2:02cv186, 2006 WL 151911 (E.D. Tex. Jan. 19, 2006)—to argue that a “vendor and
customer” relationship between the operator of a website and an end user is sufficient to
create an issue of fact. Id. at *3. But the Federal Circuit in BMC Resources and
Muniauction made clear that the mere existence of a “vendor and customer” relationship
is insufficient as a matter of law to establish that one party exercises control or direction
over another. In Muniauction, the Federal Circuit held that an “arms-length”
relationship, or controlling access to content on a system or instructing others on how to
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use the system, “is not sufficient to incur liability for direct infringement.” Id. at 132930.
TimeBase has not pointed to a single piece of evidence establishing that
defendants control the step of “showing on an electronic video device” by contracting out
the step to users, requiring them to perform the step, or controlling or directing their
operation of the hardware, software, and video monitors required to show text from
Westlaw. In contrast, there is unrebutted expert testimony from Dr. Stonebraker that it is
the users of Westlaw, not defendants, who control and perform the step of showing on an
electronic video device by supplying and operating the hardware and software necessary
for this step. Under these circumstances, there is no direct infringement as a matter of
law, and summary judgment of non-infringement of the ‘228 patent should be granted.
C.

TIMEBASE HAS NO EVIDENCE THAT DEFENDANTS’ NONINFRINGEMENT ARGUMENTS ARE OBJECTIVELY UNREASONABLE.
TimeBase’s response on the willfulness issue clutters the record with conclusory

statements about defendants’ alleged conduct without once addressing the first prong of
the In re Seagate test. That prong requires the patent holder to “show by clear and
convincing evidence that the infringer acted despite an objectively high likelihood that its
actions constituted infringement of a valid patent.” 497 F.3d 1360, 1371 (Fed. Cir. 2007)
(emphasis added). Neither the state of mind of the accused infringer, id., nor evidence of
copying, Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1311 (Fed. Cir. 2011), are
relevant to this objective prong.

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Nowhere in its response does TimeBase attempt to show how any of the noninfringement defenses raised by defendants—all of which are supported by the expert
testimony of Dr. Stonebraker—are objectively unreasonable. TimeBase completely
ignores this requirement. Under these circumstances, TimeBase’s allegations of
willfulness fail as a matter of law. (Defendants’ Br. at 39.)

Respectfully submitted,

Dated: July 28, 2011

s/Calvin L. Litsey
David J.F. Gross (# 208772)
Calvin L. Litsey (# 153746)
Mary V. Sooter (pro hac vice)
Kevin P. Wagner (# 34008X)
Katherine S. Razavi (#388958)
Faegre & Benson LLP
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, Minnesota 55402
[e-mail];
[e-mail];
[e-mail];
[e-mail];
[e-mail]
Attorneys for Defendants The Thomson
Corporation, West Publishing Corporation,
and West Services, Inc.

fb.us.7092683.01

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