CROSS ATLANTIC CAPITAL PARTNERS, INC. v. FACEBOOK, INC. et al

Filing 82

RESPONSE in Opposition re 77 MOTION to Compel Further Responses to Interrogatories And Requests For Production of Documents filed by CROSS ATLANTIC CAPITAL PARTNERS, INC.. (Attachments: # 1 Exhibit (s) - A Through D in Support of Plaintiff's Opposition to Defendants' Motion to Compel Further Responses to Interrogatories And Production of documents)(TECCE, FREDERICK)

CROSS ATLANTIC CAPITAL PARTNERS, INC. v. FACEBOOK, INC. et al

Doc. 82

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA C R O S S ATLANTIC CAPITAL P A R T N E R S , INC., P l a i n t i ff, vs. F A C E B O O K , INC. and THEFACEBOOK, LLC D e fe n d a n t s . : : : : : : : : : :

C IV IL ACTION N O . : 07-CV-02768

ORDER A N D NOW this _______ day of March, 2008, upon consideration of defendants' M o tio n to Compel Further Responses to Interrogatories and Requests For Production of D o c u m e n ts (D.E. # 77), ("defendants' motion"), and the opposition thereto filed by p la in tiff, it is hereby O R D E R E D that defendants' motion is DENIED. B Y THE COURT:

_______________________________ HON. JOHN R. PADOVA U . S. District Court Judge

Dockets.Justia.com

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA C R O S S ATLANTIC CAPITAL P A R T N E R S , INC., P l a i n t i ff, vs. F A C E B O O K , INC. and THEFACEBOOK, LLC D e fe n d a n t s . : : : : : : : : : :

C IV IL ACTION N O . : 07-CV-02768 H O N . JOHN R. PADOVA

P L A IN T I F F 'S RESPONSE IN OPPOSITION T O DEFENDANTS' MOTION TO COMPEL F U R T H E R RESPONSES TO INTERROGATORIES A N D REQUESTS FOR PRODUCTION OF DOCUMENTS C O M E S NOW, the plaintiff, Cross Atlantic Capital Partners, Inc., by and through its undersigned counsel, and hereby requests this Court to deny the motion to Compel F u rth er Responses to Interrogatories And Requests For Production of Documents (D.E. # 7 7 ) filed by defendants Facebook, Inc. and Thefacebook, LLC. The grounds for this response are set forth in the accompanying brief, which is inco rpo rate d by reference as if fully set forth herein. In support of this response, plaintiff a ls o submits the declarations of Frederick A. Tecce, Esquire and Patrick J. Keenan, E s q u ire , the averments of which are incorporated by reference as if fully set forth herein.

W H E R E F O R E , plaintiff respectfully requests that this Court deny defendants' M o tio n to Compel Further Responses to Interrogatories and Requests For Production of D o c u m e n ts . R e sp e c tfu lly submitted, D a te d : March 3, 2008 /s/ Frederick A. Tecce Thomas J. Duffy, Esquire (PA ID # 34729) P a tric k J. Kennan, Esquire (PA ID # 53775) D uffy & Keenan O n e Liberty Place - 55 th Floor 1 6 3 5 Market Street P h ila d e lp h ia , Pennsylvania 19103 (2 1 5 ) 238-8700 (2 1 5 ) 238-8710 (Fax) p jk@ d u f fy ke e n a n . c o m and F r e d e r i c k A. Tecce, Esquire M CS HEA\T ECCE, P.C. T h e Bell Atlantic Tower - 28 th Floor 1 7 1 7 Arch Street P h ila d e lp h ia , Pennsylvania 19103 (2 1 5 ) 599-0800 (2 1 5 ) 599-0888 (Fax) f t e c c e @ m c s h e a -t e c c e . c o m C o u n s e l for plaintiff, C ro s s Atlantic Capital Partners, Inc.

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA C R O S S ATLANTIC CAPITAL P A R T N E R S , INC., P l a i n t i ff, vs. F A C E B O O K , INC. and THEFACEBOOK, LLC D e fe n d a n t s . : : : : : : : : : :

C IV IL ACTION N O . : 07-CV-02768-JP H O N . JOHN R. PADOVA

P L A IN T I F F 'S BRIEF IN SUPPORT OF ITS O P P O S I T I O N TO DEFENDANTS MOTION T O COMPEL FURTHER INTERROGATORY RESPONSES AND PRODUCTION OF DOCUMENTS I. IN T R O D U C T IO N H a d defendants Facebook, Inc. and Thefacebook, LLC (collectively "Facebook") c o m p lied with their obligations under Local Rule 26(f), they would have learned that to th e extent the instant motion to compel seeks the production of documents, that motion is m o o t. W ith respect to the issues raised in connection with the defendants' motion to c o m p e l supplemental interrogatory responses, Facebook's motion must be denied. The in te rro ga to ry responses provided by plaintiff Cross Atlantic Capital Partners, Inc. ("X A C P " ) are complete and proper. Moreover, Facebook's motion is nothing more than a thinly-veiled effort to shift the burden of proof from the defendants to the plaintiff in c o n n e c tio n with the requirement that the defendants establish any grounds of invalidity b y clear and convincing evidence and to avoid the consequences of having ignored their

d isco very obligations and violated this Court's discovery order. For these reasons, as well as those set forth below, Facebook's motion must be d en ied. II. B AC K GR O U N D A. P r oc e dur a l History

T h is case was commenced on July 3, 2007 when XACP filed its complaint for p a te n t infringement alleging that Facebook infringes the claims of United States Patent N o . 6,519,629 B2 ("`629 Patent"), entitled System for Creating a Community for Users w ith Common Interests to Interact In. On September 26, 2007 this Court held a Preliminary Pre-Trial conference. (D.E. # 32). Following that scheduling conference, this Court issued its scheduling order on O c to b e r 15, 2007. (D.E. #36). This Court's October 15, 2007 Scheduling Order required th a t all discovery be completed on or before March 26, 2008. On February 6, 2008, this C o u rt amended its Scheduling Order (D.E. # 66) to take into account the later Markman h ea rin g date. B. F a c tua l Background

T h e following facts are relevant in connection with this Court's determination of the instant motion. On September 14, 2007, Facebook served XACP with Defendants First Set of In ter ro gato rie s. On September 17, 2007, plaintiff XACP served defendants with P la in tiff's First Set of Interrogatories and First Set of Request for Production of -2-

D o c u m e n ts . XACP's Interrogatory No. 5 sought Facebook's contention regarding d e fe n d a n ts' invalidity contentions. On September 26, 2007, Facebook served XACP with D efe n d an ts Second Set of Interrogatories. On October 17, 2007, Facebook served its Responses and Objections to the P lain tiff XACP's First Set of Interrogatories. (A copy of the relevant portions are attac h ed hereto as Exhibit A). Defendants' response to XACP's Interrogatory No. 5 re ga rd in g Facebook's invalidity contentions was inadequate. On November 25, 2007, X AC P was forced to file a motion to compel "full and complete responses" to, inter alia, In terrogato ry No. 5. (D.E. # 42). On December 20, 2007, this Court granted XACP's m o tio n and compelled Facebook to provide full and complete answers to enumerated interrogato ries served by XACP, including Interrogatory No. 5. (D.E. #53 at ¶ 3). On January 3, 2008, Facebook served XACP with Defendants' Supplemental R e sp o n s e s to Plaintiff's Interrogatories Nos. 3, 5 & 12. Copies of the relevant responses a re attached hereto as Exhibit B.1 O n February 15, 2008 the parties conducted a telephone conference to resolve variou s discovery disputes. (See, Declaration of Frederick A. Tecce in Opposition to D e fe n d a n ts' Motion to Compel at ¶ 1 - Exhibit C; Declaration of Patrick J. Keenan in

Facebook's Second Supplemental Responses were designated "Attorneys Eyes Only." The attached portions do not contain Facebook Confidential Material and are therefore not filed under seal. -3-

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O p p o sition to Defendants' Motion to Compel at ¶ 2 - Exhibit D).2 Although the primary p u rpo se of that telephone conference was to address Facebook's objections to XACP's R u le 30(b)(6) deposition notice topics, various discovery issues were discussed. (Tecce D ec l. at ¶¶ 3 & 5; Keenan Decl. at ¶¶ 3 & 5). At that time, both Mr. Tecce and Mr. K e e n an inquired as to whether there were any other discovery issues which needed to be ad d resse d between Facebook and XACP. Id. In response, Mr. Weinstein indicated that F a c e b o o k was still awaiting documents from some of the other named inventors including R o b e rt Decklebaum. (Tecce Decl. at ¶ 6; Keenan Decl. at ¶ 6). Thereafter, XACP p rod u ce d to Facebook documents from Mr. Decklebaum. Id. At that time, Mr. W e in ste in raised no other issues concerning XACP's document production. (Tecce Decl. at ¶ 7; Keenan Decl. at ¶ 7). Had Facebook complied with its obligations to meet and confer, they would have lea rn e d that to the extent the instant motion seeks documents, it is moot. For example an d by no means exclusive, virtually every non-privileged document in XACP's p o s s e ss io n which relates to iKimbo and the subject matter of this litigation has been p rod u ce d . (Tecce Decl. at ¶ 12).

Citations to the Declaration of Frederick A. Tecce, Esq. in Opposition to Defendants' Motion to Compel (Exhibit C) and the Declaration of Patrick J. Keenan in Opposition to Defendants' Motion to Compel (Exhibit D) will be "Tecce Decl. at ¶ __" and Keenan Decl. at ¶ __." -4-

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A R GU M E N T I. D E F E N D A N T S HAVE IGNORED THEIR OBLIGATIONS TO CONFER In support of their motion to compel, Defendants submitted the Declaration of H e id i Keefe, Esquire. Noticeably absent from Ms. Keefe's declaration is any mention of th e extended telephone conference between counsel for the parties specifically to address va rio u s discovery issues on the very day defendants filed the instant motion, February 15, 2 0 0 8 . Local Rule 26.1(f) states: N o motion or other application pursuant to the Federal Rules of Civil Procedure go ve r n in g discovery or pursuant to this rule shall be made unless it contains a c e rtifica tio n of counsel that the parties, after reasonable effort, are unable to re so lve the dispute. LOC.R .C IV.P . 26.1(f). Local Rule 26.1(f) "imposes a substantial obligation on counsel to re so lve discovery problems before bringing them to the attention of the Court." Gardella v . Prodex Int'l, Inc., 2007 WL 710289 (E.D.Pa., March 5, 2007, Surrick, J.) (citing, D iS a n tis v. Kool Vent Aluminum Prods., Inc., No. Civ. 97-5434, 1998 WL 472753 at *1 (E .D .P a ., Aug. 12, 1998)). Specifically, the courts have found that there must be such seriou s differences between counsels that further efforts of negotiation are pointless. Id. (c itin g , Crown, Cork & Seal Co. v. Chemed Corp., 101 F.R.D. 105, 106 (E.D. Pa. 1984)). At no time during the February 15, 2008 conference did Facebook's counsel ever raise a single issue regarding the documents sought in connection with the instant motion. (Tecce Decl. at ¶ 7; Keenan Decl. at ¶ 7). Had he done so, he would have been

s p e c ific a lly advised that virtually every non-privilege document regarding iKimbo that -5-

w a s in XACP's possession and control have been provided. (Tecce Decl. at ¶ 9). He w o u ld have been further advised the XACP is willing to produce documents relating to its c o rp o ra te structure (Tecce Decl. at 13). Those facts alone would have rendered moot F a c e b o o k' s motion to the extent it seeks production of documents. II. F A C E B O O K ' S MOTION TO COMPEL SUPPLEMENTAL RESPONSES TO INTERROGATORY NO. 5 MUST BE DENIED A. I nt r oduc ti on

F a c e b o o k's motion seeks to compel XACP to provide a supplemental response to In terrogato ry No. 5. (Facebook Memo. at 7-9). Facebook's Interrogatory No. 5 re q u e ste d : F o r each claim of the `629 Patent that you contend is entitled to the benefit of the filin g date of U.S. Patent Application Ser. No. 09/264,988 (filed September 15, 1 9 9 8 )("`9 8 8 Application"), identify with particularity any and all portions of the `98 8 Application that you contend disclose each limitation of each such claim. See, Facebook Appendix at 19. In so doing, Facebook raises two issues. First, Facebook objects to XACP's "q u a lifie d response" to Interrogatory No. 5. (Facebook Memo. at 8). Secondly, F a c e b o o k contends that XACP does not cite or otherwise identify any portions of the o riginal application that support claims 7, 8, 15, 16, 23, 24, 31 and 32. For the set forth below, both of Facebook's contentions lack merit and must be d e n ie d .

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B.

X A C P 's Response is Appropriate

In its motion, Facebook objects to XACP's statement in its response that the e vide n c e provided is "[r]epresentative (but not exclusive) support." (Keefe Decl., Exhibit N at p. 3). Defendants contend that XACP's response is improper and that "[I]f XACP h a s additional support for any of the asserted claims, it is obligated to provide it in its re s p o n s e ." (Facebook Memo. at 8). This contention is wholly belied by Facebook's own d isco very responses. On December 20, 2007, this Court ordered Facebook to provide "full and co m p lete" answers to Plaintiff's Interrogatories Nos. 3, 5 & 11. (D.E. # 53 at ¶ 3). XACP's Interrogatory No. 5 requested Facebook's invalidity contentions and the factual s u p p o rt for those contentions. Facebook's response included the following language: W ith respect to claims 8, 16, 24 and 32, these claims are indefinite under 35 U .S.C . § 112 ¶ 2 because it cannot be determined from the claims in light of the w ritten description, for example . . . The alleged invention of those claims is anticipated or obvious in view of at least the following prior art . . . Facebook's January 3, 2008 Second Supplemental Response to XACP's Interrogatory N o . 5 at 4 & 6 (emphasis added) - Exhibit B. In addition, in Defendants' Prior Art Chart a ttac h e d to their Second Supplemental Interrogatory Responses, Facebook cites to n u m e r o u s non-exclusive contentions (designated as "e.g.") within the alleged prior art refere n ce s for support of defendants' invalidity claims. This Court ordered Facebook to provide "full and complete" interrogatory

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resp o n ses. (December 20, 2007 Order at ¶ 3 (D.E. # 53)). In response to that Order, F a c e b o o k has provided "non-exclusive" responses. Having done so, their contention that X AC P 's response are inappropriate is baseless. Otherwise, Facebook and its counsel are in contempt of this Court's December 20, 2007 Order.3 F o r these reason, Facebook's motion to compel supplemental responses to D efe n d an ts' Interrogatory No. 5 must be denied. C. I n Accordance With This Court's Scheduling Order And Federal Circuit P re ce d en t, XACP's Response Is Complete

F a c e b o o k' s second contention with regard to XACP's response to Defendants' In te rro ga to ry No. 5 is that XACP does not cite or otherwise identify any portions of the o rigin a l application that support claims 7, 8, 15, 16, 23, 24, 31 and 32. (Facebook Memo. at 8). Facebook's contentions ignore Federal Circuit precedent on this point, XACP's resp o n se and this Court's Scheduling Order. O n September 15, 1998, Jamey Harvey and others filed United States Patent A p p lic a tio n Serial No. 09/264,988 ("`988 Application"). Thereafter, on February 25, 2 0 0 0 , iKimbo filed a related application as a continuation-in-part application. The c o n tin u a tio n -in -p a rt application was awarded Application Serial No. 09/513,844 ("`844 A p p lic a tio n " ). The disclosure in the subsequent `844 Application was more general and

As this Court expressly recognized during a September 2007 telephone conference with the parties, the purpose of the discovery process is to allow the parties to state their contentions in their written discovery responses, conduct discovery surrounding those contentions, and amend or supplement their previous responses as necessary. -8-

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m o re detailed than the disclosure in the `988 Application. In order for the claims of the `6 2 9 Patent to qualify for the benefit of the earlier effective filing date, 35 U.S.C. § 120 re q u ire s that the earlier filed patent application contains a disclosure which complies with the provisions of 35 U.S.C. § 112, ¶ 1. Studiengesellschaft Kohle, M.B.H. v. Shell Oil C o ., 112 F.3d 1561, 1564 (Fed. Cir. 1997). In its Supplemental Response to Interrogatory No. 5, XACP provided Defendants w ith a twenty-nine page recitation of the express support for the claim elements of the `6 2 9 Patent in the original `988 Application filed in September 1998. However, the su p p o rt for the claim need not be expressly in the earlier filed application. Tronzo v. B io m e t, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998)(citing, Vas-Cath, Inc. v. Mahurkar, 9 3 5 F.2d 1555, 1563-64 (Fed. Cir. 1991)). A claim element may find support in an e a rlier application, even if not expressly recited, if the subject matter was inherent: In order for a disclosure to be inherent, however, the missing descriptive matter m u s t necessarily be present in the parent application's specification such that one skill ed in the art would recognize such a disclosure. Tronzo, 156 F.3d at 1159 (citing Continental Can Co., USA v. Monsanto Co., 948 F.2d 1 2 6 4 , 1268 (Fed. Cir. 1991)). Specifically, in order to benefit from the earlier priority d a te, the features of the invention that are not explicitly disclosed may be inherently d isclo sed in the earlier application. State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1 2 2 6 , 1233 (Fed. Cir. 1985); In re Fisher, 427 F.2d 833, 836 (C.C.P.A. 1970); Chiron C o r p o r a tio n v. Genentech, 268 F.Supp. 2d 1148, 1165 n. 11 (E.D. Ca. 2002). "By d i sc lo s in g in a patent application a device that inherently performs a function or has a -9-

p ro p e rty , operates according to a theory or has an advantage, a patent application n e c es s a rily discloses that function, theory or advantage, even though it says nothing e x p lic it concerning it. The application may later be amended to recite the function, th e o ry or advantage without introducing prohibited new matter." Manual of Patent E x a m in in g Procedure at 2163.07(a); In re Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973). An element or the entire invention is inherent if it is the "natural result flowing from " the explicit disclosure of the parent application. Schering Corporation v. Geneva Ph a r m a c e u tic a ls , Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Recognition by a person of o rd in a ry skill in the art at the time of the earlier application is not required to show an inh ere n t disclosure. See Schering Corporation, 339 F.3d at 1379. Rather, inherency may b e shown by evidence of "later recognition" of the inherent characteristics of the earlier ap p lica tio n . Id. A s noted by the Federal Circuit in Tronzo, a disclosure is inherent if one of skill in the art would recognize such a disclosure. Id. 4 As such, XACP's expert ­ in response to F a c e b o o k's expert opinion regarding the support in the original application, will provide ex p ert testimony regarding the inherent disclosure. This was clearly stated in XACP's This is consistent with the well settled law that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005). As this Court has previously held in connection with claim construction, "a person of ordinary skill in the art is deemed to read the claim terms not only in the context of the particular claim, but in the context of the entire patent, including the specification and the prosecution history. .'" Heraeus Electro-Nite Co. v. Midwest Instrument Company, Inc., 2007 WL 3274147 at *2 (E.D. Pa., Nov. 1, 2007) (Padova, J)(citing, Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005)). -104

s u p p le m e n ta l response: X A C P further objects to the subject interrogatory as premature to the extent the resp o n se includes expert testimony, including, but not limited to, whether support fo r the claims of the `629 Patent are inherently found in the `988 Application. The e x te n t to which any inherent support from the `988 Application for the elements of the claims of the `629 Patent will be the subject of expert testimony, it will be d i sc lo s e d by XACP on or before the February 28, 2008 deadline for expert d is c lo s u r e s set forth in the Court's Scheduling Order. See, Keefe Decl., Exhibit N at 2-3 (emphasis added). This Court's February 6, 2008 Scheduling Order (D.E. # 66) requires that on or b e fo re March 10, 2008, the parties exchange expert witness reports on this issues upon w h ic h they bear the burden of proof. 5 The Scheduling Order further requires the parties to exchange rebuttal reports on or about March 24, 2008. In accordance with the Court's O rd e r, XACP will provide its expert testimony regarding the inherent disclosure as to the e n u m e r a te d claims. A c co rd in gly , the Defendants' motion to compel seeking this information, must be d en ied. D. F a ce b ook 's Motion is A Thinly-Veiled Effort to S hift The Burden of Proof And Avoid The Consequences of Defendants' Failure to Comply With Their Discovery Obligations and This Court's Order

In their motion, Defendants seek to compel XACP to provide "threshold in fo rm a tio n concerning whether the asserted claims of the `629 Patent are entitled to the

Facebook agreed to extend this date for XACP's expert reports because of issues surrounding deposition scheduling. -11-

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filin g date of the original application or the CIP application." (Facebook Memo. at 8). As admitted by Facebook: "This issue must be resolved in order to determine the scope a n d content of the prior art, which in turn will bear on the invalidity of the `629 Patent. (Facebook Memo. at 8-9 (emphasis added)). The instant motion is an effort by the D efe n d an ts to avoid the consequences of their refusal to comply with their discovery o b liga tio n s in responding to XACP's contention Interrogatory No. 5. 6 In addition, F a c e b o o k is in violation of this Court's December 20, 2007 Order compelling a "full and co m p lete" response to Interrogatory No. 5. 1. F a c e book Refused To Answer X A C P 's Contention Interrogatory No. 5

X A C P served defendants with a specific contention interrogatory regarding F a c e b o o k's invalidity contentions. XACP's Interrogatory No. 5 sought: If you contend that any claim of the `629 Patent is invalid or unenforceable fo r any reason, including, but not limited to, obviousness, provided the complete le ga l basis, including Facebook's proposed claim construction and factual basis for e a ch such contention, including, but not limited to (if applicable), the level of o rdin ary skill in the art and the definition of the person of ordinary skill in the art a t the time the invention was made and all prior art upon which Facebook relies, or inten d s to rely, in support of each such contention, including, but not limited to, a c h a rt identifying specifically where each element of each claim of the `629 Patent is found in each prior art reference upon which Facebook intends to rely, and id e n tify all documents in the possession, custody or control of, or available to,

Facebook is aware of XACP's contentions regarding the inadequacy of their response. XACP's Supplemental Response to Facebook's related Interrogatory No. 5 specifically stated "Lastly, XACP objects and reserves its right under Rule 37(c) to move to strike defendants' claims for failure to provide a substantive response to plaintiff's contention interrogatories regarding the validity of the claims of the `629 Patent." See, Keefe Decl., Exhibit N at p. 2. -12-

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F ac eb o o k .or any of its agents, which relate thereto. XACP Interrogatory No. 5 - Exhibit A at p. 6. 7 In response to that Interrogatory, Facebook refused to supply full and complete fac ts or information in support of their allegation that no "claims of the `629 patent are su p p o rte d by the original application[.]" (Facebook Memo. at 8). This is true despite re p e ate d requests from XACP's counsel as well as this Court's December 20, 2007 Order co m p elling Facebook to provide "full and complete answers" to, inter alia, XACP's In te rro ga to ry No. 5.8 2. F a c e book Bears The Burden of Proof O f Establishing The Effective Filing Dates

F a c e b o o k, as the party seeking to invalidate each and every claim of the `629 P a te n t, bears the burden of establishing the effective filing date for each element of each claim of the `629. The `629 Patent identifies that it is a "[d]ivision of application No. 09/513,844 file d on February 25, 2000, which is a continuation-in-part of application No. 0 9 /2 6 4 ,9 8 8 , filed on Sep. 15, 1998." Thus, the `629 Patent is presumptively entitled to the application date of September 15, 1998. Ralston Purina Company v. Far-Mar-Co,

XACP's Interrogatory No. 5 is not to be confused with Facebook's Interrogatory No. 5 at issue in the instant motion. Although Facebook's Second Supplemental Responses served January 3, 2008 provided some additional information - those responses failed to provide the element-by-element analysis sufficient to support Facebook's burden at all, let alone by the required clear and convincing standard. -138

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In c ., 772 F.2d 1570, 1573-1574 (Fed. Cir. 1985); State Industries, Inc. v. A.O. Smith C o r p ., 751 F.2d 1226, 1233 (Fed. Cir. 1985); Itron, Inc. v. Benghiat, 2003 U.S. Dist. LE X IS 15039 at *8, 10-11 (D. Minn. Aug. 29, 2003). As the party challenging the va lid ity of the `629 Patent, Facebook has the burden of proving by clear and convincing e vide n c e that the newly added matter in the C-I-P application was not adequately d isclo sed in the earlier application in the manner required by the first paragraph of §112. Id. 9 "A party asserting invalidity based on 35 U.S.C. §112 bears no less a burden and no fe w e r responsibilities than any other patent challenger." Ralston Purina Company, 772 F .2 d at 1574. In order to determine whether a prior application meets the "written d e sc rip tio n " requirement with respect to later-filed claims, the prior a p p lic a tio n need not describe the claimed subject matter in exactly the same te rm s ; it must simply indicate to persons skilled in the art that as of the e a rlie r date the applicant had invented what is now claimed. E is e ls te in v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995); In re Edwards, 568 F.2d 1349, 1 3 5 1 (C.C.P.A. 1978)( "To comply with the description requirement it is not necessary th a t the application describe the claimed invention in ipsi verbis."); Union Oil Company o f California v. Atlantic Richfield Company, 208 F.3d 989, 997 (Fed. Cir. 2000)("The w ritte n description does not require the applicant `to describe exactly the subject matter c laim e d .. .. '" ); Kennecott Corp. v. Kyocera International, Inc., 835 F.2d 1419, 1422 (Fed. C ir. 1987)("[A]n invention may be described in different ways and still be the same

Failure to support the claim element will not invalidate the claim. It will, however, result in that claim element being provided an effective filing date of the later-filed application. -14-

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in ven tio n ." ); Vas-Cath, Inc., 935 F.2d at 1563 ("The test for sufficiency of support in a p a re n t application is whether the disclosure of the application relied upon `reasonably c o n ve y s to the artisan that the inventor had possession at that time of the later claimed s u b je c t matter.'"). Any portion of the application may be relied upon to satisfy the d isclo su re requirement, including the words, structures and drawings. Vas-Cath, Inc., 9 3 5 F.2d at 1564; Oakwood Laboratories, L.L.C. v. TAP Pharmaceutical Products, Inc., 2 0 0 3 U.S. Dist. LEXIS 18712 at *45 (N.D. Ill. Oct. 23, 2003). As such, Facebook was required to provide on an element-by-element basis all fa c ts supporting its contention that each element of the claims of the `629 Patent are only en titled to the later filing date. This, they refused to do. 3. F a c e b ook is In Contempt of This Court's Order, Has Violated Its Discovery Obligations, And Should Be Precluded From Offering A ny Evidence in Support of Its Contentions Regarding the Effective Filing Dates

Facebook has failed to comply with its discovery obligations. Under these c irc u m sta n c es , the Federal Rules prohibit parties, such as Facebook, from asserting at trial, at a hearing, or in a motion, any evidence which was not disclosed during discovery in general, and in response to interrogatories in particular. FED. R. CIV. P. 37(c)(1) p ro vide s in pertinent part: (c ) Failure to Disclose; False or Misleading Disclosure; Refusal to A d m it. (1) A party that without substantial justification fails to disclose in fo rm a tio n required by Rule 26(a) or 26(e)(1), or to amend a prior -15-

re sp o n s e to discovery as required by Rule 26(e)(2), is not, unless such failu re is harmless, permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed. (E m p h a sis added.) Rule 37(c)(1) thus precludes the use by Facebook of any facts or in fo rm a tio n supporting their invalidity contentions which have not been disclosed in re sp o n s e to XACP's contention interrogatory. That is, Facebook cannot use any evidence w h ich goes beyond the scope of their own interrogatory answers and other discovery resp o n ses. See generally Smith v. Crown Equip. Corp., No. Civ. A. 97-541, 1998 WL 6 3 3 9 8 2 , *3 (E.D. Pa. Aug. 21, 1998) ("it was not error for this Court to preclude p lain tiffs' expert from testifying as to any undisclosed design theories"), aff'd, Table No. 9 8 -1 8 3 6 (3d Cir. 1999); Holiday Inns, Inc. v. Robertshaw Controls Co., 560 F.2d 856, 8 5 8 (7th Cir. 1977) (exclusion of evidence relating to an "alternative theory for recovery" n o t disclosed in response to an interrogatory affirmed); Weiss v. Chrysler Motors Corp., 5 1 5 F.2d 449, 455-57 (2d Cir. 1975) (district court's refusal to grant preclusion sanction o n account of "Chrysler's failure to disclose the theory of its potential expert testimony" in response to a "properly framed interrogatory" reversed). "It is well settled that Rule 33 interrogatories are to facilitate trial preparation, to o b ta in facts, to narrow issues, and to reduce the chance of surprise." United States v. A r tic le of Drug., Etc., 43 F.R.D. 181, 188 (D. Del. 1967) (citing Hickman v. Taylor, 329 U .S. 495, 501 (1946) and Stonybrook Tenants Ass'n., Inc., v. Alpert, 29 F.R.D. 165, 167 (D .C . 1961)); accord Rogers v. Tri-State Materials Corp., 51 F.R.D. 234, 241 (N.D. W. V a . 1970) ("interrogatories are useful chiefly to obtain simple facts, to narrow the issues -16-

b y obtaining admissions from the adverse party, and to obtain information needed in o rd e r to make use of other discovery procedures") (quoting 2A BARRON AND HOLTZOFF, F ED. PRAC. & PROC. § 763 (1961)); Pierce v. Pierce, 5 F.R.D. 125, 125 (D.D.C. 1946) ("O n e of the purposes of interrogatories is to narrow the issues and to enable the interrogatin g party to ascertain precisely what he will have to meet at the trial."). See a l so 8A WRIGHT& MILLER, FEDERAL PRACTICE & PROCEDURE CIV. 2D § 2163 (1994) ("In te rro ga to rie s are an effective way to obtain simple facts, to narrow the issues by se c u rin g admissions from the other party, and to obtain information needed in order to m ake use of the other discovery procedures."). H a ving failed to provide in their interrogatory responses the full and complete fa c tu a l basis supporting their contention that the claims of the `629 Patent are not entitled to their original filing date, despite having been ordered by this Court to do so, Facebook m u s t be precluded from asserting that the claims of the `629 Patent are not to be afforded th e ir original filing date. II. F A C E B O O K 'S MOTION TO COMPEL SUPPLEMENTAL R E S P O N S E S TO INTERROGATORY NO. 2 MUST BE DENIED A. I nt r oduc ti on

F a c e b o o k's motion seeks to compel additional responses from XACP based upon in f o r m a tio n in the possession of third parties, NOT under XACP's control. Further, these w itn e ss e s are readily available to Facebook and in fact have been made available for d ep o sition at Facebook's counsels' offices in Washington, D.C. Moreover, XACP's

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c o u n se l has coordinated and obtained documents from these individuals and produced th e m to Facebook without objection F o r these reasons, Facebook's motion must be denied. B. F a c e book Cannot Compel XACP to Adopt T he Testimony of Non-Parties to the Action

F a c e b o o k contends that XACP must supplement its response to Interrogatory No. 2 to provide information from third parties, not under XACP's control. Facebook's In te rro ga to ry No. 2 requested: Id e n tify and describe the circumstances surrounding any alleged invention of U n ite d States Patent No. 6,519,629 B2, including the precise date of conception, th e person involved and the nature of their involvement, the date of actual or c o n stru c tive reduction to practice, the date and circumstances of first public d is c lo s u re , the date and circumstances of the first offer to sell or sale, and the steps c o n stitu tin g diligence from conception to actual or constructive reduction to p r a c ti c e . D efe n d an ts' Appendix at 18. Although XACP does not have any knowledge regarding the conception and re d u c tio n to practice of the invention beyond what was stated in its prior answer to this In te rro ga to ry , Facebook erroneously claims that XACP is somehow bound by the kn o w led ge of the named inventors because they have agreed to provide it with in d e p e n d e n t consulting services in this matter. However, it is well settled in this Circuit th a t a party is not bound by the statements or admissions of its retained consultants or ex p erts. Kirk v. Raymark Industries, Inc., 61 F.3d 147, 164 (3d Cir. 1995) ("Because an e x p e rt witness is charged with a duty of giving his or her expert opinion regarding the

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m a tte r before the court, we fail to comprehend how an expert witness, who is not an a ge n t of the party who called him, can be authorized to make an admission for that p a rty ." ); Bostick v. ITT Hartford Group, Inc., 82 F. Supp. 2d 376, 379 (E.D. Pa. 2000); S t. Paul Fire & Marine Ins. Co. v. Nolen Group, Inc., 2007 U.S. Dist. LEXIS 64603 at * 7 , 74 FED. R. EVID. Serv. (CBC) 461 (E.D. Pa. Aug. 31, 2007). Therefore, it is im p ro p e r for Facebook to insist that XACP answer Interrogatory No. 2 based, not on its o w n knowledge, but upon the independent knowledge of the named inventors over whom X AC P has no control. Additionally, this Court has specifically held in a patent case that a party to the litiga tio n cannot be compelled to produce evidence from third parties NOT under the litigatin g party's control. Heraeus Electro-Nite Co.v. Midwest Instrument Co., Inc., No. 0 6 -3 5 5 , 2006 WL 3004877, *2 -3 (E.D. Pa. Oct. 18, 2006) (Padova, J.)(citing Gerling Intern . Ins. Co. v. C.I.R., 839 F.2d 131, 140-41 (3d Cir.1988)). In that case, this Court d e n ied the accused infringer's motion to compel the patentee to produce documents p o s s e ss e d by related corporations because the accused infringer failed to show that these re la te d corporations were alter egos of the patentee, functioned with the patentee as one en tity or that the patentee had control over the related corporations. Id. Here, defendants had the opportunity to depose Mr. Harvey. Although Mr. H a rve y has agreed to cooperate with XACP and to make himself available in connection w ith the litigation, at no time did Mr. Harvey provide any testimony which would in any w a y support the contention that he is under XACP's control. As such, XACP cannot be -19-

fo rc e d to adopt his testimony as a party admission in the form of a response to F ac eb o o k's Interrogatory No. 2. C. T he Requested Information Is Readily Available to Facebook

N o t only is Facebook's motion silent as to defendants' ability to obtain the re q u e ste d information from these third parties, it clearly and unequivocally establishes th a t Facebook can and has already obtained the information from at least one of the n a m e d inventors and can easily do so with respect to the other named inventors. In the H e ra e u s Electro-Nite Co. case, this Court noted that accused infringer had not certified th a t it was not able to get the information directly from third parties pursuant to F ED.R .C IV.P . 34(c) and 45. Here, the circumstances are to the contrary. XACP's c o u n se l has assisted in making these individuals available and collecting documents for p ro d u c tio n to Facebook. As admitted by Facebook, they have had the opportunity to d ep o se at least one of the named inventors, Jamey Harvey. Specifically, some time in late 2007, Facebook's attorneys hired a private in ve stiga to r and found at least two of the named inventors, Jamey Harvey and Andrew F egley . (Tecce. Decl. at ¶ 16). Shortly thereafter, Facebook's attorneys, including Mr. W e in s te in , called Messrs. Harvey and Fegley and "threatened" that if they did not c o o p e ra te and answer his questions on the phone, Facebook would send a process server to their house and subpoena them. (Tecce. Decl. at ¶ 17). Both Mr. Fegley and Mr. H a rve y felt threatened by Mr. Weinstein's conduct and sought assistance from XACP and

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its counsel. (Tecce. Decl. at ¶ 18) In December 2007, undersigned counsel were retained to represent all of the n a m e d inventors. (Tecce. Decl. at ¶ 19). In a December 21, 2007 letter (Keefe Decl. at E x h ib it H), XACP's counsel advised Facebook that they would be representing the n a m e d inventors and were authorized to accept service of subpoenas for the four named in ve n to rs . (Tecce. Decl. at ¶ 20). Since then, Facebook has served subpoenas on all four n a m e d inventors. (Tecce. Decl. at ¶ 21). Further, XACP's counsel has coordinated with th e inventors to make them available for deposition at defendants' counsels' offices in W a sh in gto n D.C. at mutually convenient dates and times and has collected the requested d o c u m e n ts from the inventors and produced them to Facebook without objection. (Tecce. D ec l. at ¶ 22). D. T he Cases Relied Upon By F a c e book Do Not Support Their C ontentions And Are Distinguishable

In support of their motion, defendants relied upon two unreported decisions. (Facebook Mem. at 10). However, those cases do not contradict this Court's specific h o ld i n g and the law in this Circuit that in order to compel discovery from third parties, th e third parties must be under the control of the litigating party. In Hitachi, Ltd. v. A m T R A N Technology Co. Ltd., No. C-05-2301, 2006 WL 2038248, *3 (N.D. Cal. Jul 18, 2 0 0 6 ), the Northern District of California recognized that a corporation need only supply in f o r m a tio n in the hands of its agents and others within its control. Id. (citing, Milnerv. N a tio n a l School of Health Technology, 73 F.R.D. 628, 632-633 (E.D.Pa.1977). -21-

T h is is also true in the Northern District of Ohio case cited by Facebook. Invacare C o r p . v. Sunrise Med. Holdings, Inc., No. 2005 WL 1750271, *3-4 (N. D. Ohio Jan. 21, 2 0 0 5 ). There, the court also noted that a corporation must furnish information available from the corporation itself or from entities under its control. In re ATM Fee Antitrust L itig a tio n , 233 F.R.D. 542, 545 (N.D.Cal.2005) (quoting Brunswick Corp. v. Suzuki M o to r Co., Ltd., 96 F.R.D. 684, 686 (D.C.Wis.1983). The Ohio Court went on to hold th a t "Information readily obtainable from a third-party is discoverable through an in te rro ga to ry , but those seeking information `peculiarly within the knowledge of in d ivid u a ls , and not chargeable to [the requested party]' may be struck down." Id. (c itin g , Ballard v. Allegheny Airlines, Inc. 54 F.R.D. 67, 69 (E.D.Pa.1973)). F u r th e r, those cases are distinguishable on their facts. In the Hitachi case, the in fo rm a tio n was sought from the litigating party's licensing agent whose agreement sp ec ifically allowed the acquisition of the requested information. Id. at *3. Moreover, the agent was "already actively involved in the litigation. Id. In the Invacare case, the in ven to r resided in Australia, was "under the control" of the patentee, and was not readily availab le to the accused infringer. Id. at *1. Not the case here. Ac co rd in gly , the Defendants' motion must be denied. III. H A D FACEBOOK COMPLIED WITH ITS C O N F E R OBLIGATIONS, DEFENDANTS WOULD H A V E KNOWN THERE ARE NO ADDITIONAL DOCUMENTS The second half of Facebook's motion seeks to compel the production of a d d itio n a l documents. As noted above, had Facebook complied with its confer -22-

o b liga tio n s under the Local Rules, it would have known that there are no additional d o c u m e n ts that have been withheld. To that end, the documents sought by Facebook h a ve already been produced or are no longer in existence due to the dissolution of iKimbo y ea rs ago. Specifically, documents concerning XACP's damages to the extent that they exist h ave already been produced. As such the following requests are moot. · D a m a ge s allegedly suffered as the result of Facebook's alleged in frin gem en t (Request No. 41); C o sts and/or expenditures XACP has incurred as the result of Facebook's alleg ed infringement (Request No. 42); A n y available substitute or noninfringing alternatives to the technology c laim e d in the `629 Patent (Request 43) and the cost associated with imp lem en tin g those alternatives (Request No. 44); R e ve n u e XACP purports to have lost as a result of Facebook's alleged in frin gem en t (Request No. 58).

·

·

·

D o c u m e n ts concerning XACP and its business activities related to the `629 Patent h a ve already all been produced or simply do not exist. As such the following requests fro m Facebook are also moot. · · X A C P 's organizational structure (Request 45);10 A n y lawsuit, arbitration or other legal proceeding involving the `629 Patent o r any related patents (Request 10); A ll documents that refer or relate to any alleged infringement by any third

·

XACP is willing to produce a document which sets forth its organizational structure. Had Facebook complied with its confer obligations, they would have known that. -23-

10

p a rty of the `629 Patent including, but not limited to, any infringement an aly s es (Request 12); · T h e identity of customers to whom sales or offers to sell the alleged in v en tio n of the `629 Patent have been made (Request 24); A ll efforts to sell, assign, transfer, or license the `629 Patent (Request 30); A ll licenses granted under the `629 Patent (Request 31); A ll offers to sell any interest in the `629 Patent (Request 32); and A n y investigation of the `629 patent (Request 17).

· · · ·

D o c u m e n ts concerning XACP's contentions in its Complaint have also been p ro d u c e d . As such the following requests are also moot. · X A C P ' s contention that it is entitled to a permanent injunction against F ac eb o o k (Request 57); X A C P 's contention that Facebook has been using and marketing systems a n d methods for creating online communities covered by the claims of the `6 2 9 Patent (Requests 14 and 15); X A C P 's contention that the Facebook website targets Pennsylvania resid e n ts (Request 18); X A C P ' s contention that Facebook has entered into commercial agreements, c o lla b o ra tio n s , joint ventures, and/or partnerships with residents of P en n sy lvan ia (Request 19); X A C P ' s contention that Facebook has willfully infringed the `629 Patent (R eq u est 50); X A C P ' s contention that Facebook had notice of the `629 prior to the filing o f the Complaint (Request 51); X A C P 's contention that notice of the `629 Patent had been given to F ac eb o o k (Request 52);

·

·

·

·

·

·

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·

X A C P ' s contention that Facebook has knowingly and intentionally induced o th ers to infringe the `629 Patent (Requests 53 and 55); X A C P ' s contention that Facebook is contributorily infringing the `629 P a te n t (Request 54); and X A C P 's contention that Facebook continues to aid and abet others to in frin ge the `629 Patent (Request 56).

·

·

F in a lly , documents concerning Facebook in the present litigation have all been p ro d u c e d or are privileged or attorney-client work product. As such they have all been p ro d u c e d . · A ll documents that contain, refer, relate or reflect any communications to or fro m XACP to or from any other person regarding Facebook (Request 3); A ll documents that contain, refer, relate or reflect any communications to or f ro m XACP to or from any other person regarding this Litigation (Request 4 ); A ll documents that refer or relate to the decision by XACP to commence litigatio n against Facebook (Request 5); A ll documents relating to any claimed infringement of the `629 patent by F a c e b o o k, including, but not limited to, any infringement analyses (Request 1 3 ).

·

·

·

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IV .

C O N C L U SIO N F o r the foregoing reasons, this Court should deny defendants' Motion to Compel

F u r th e r Response to Interrogatories and Production of Documents. R e sp e c tfu lly submitted,

D a te d : March 3, 2008

/s/ Frederick A. Tecce Thomas J. Duffy, Esquire (PA ID # 34729) P a tric k J. Kennan, Esquire (PA ID # 53775) D uffy & Keenan O n e Liberty Place - 55 th Floor 1 6 3 5 Market Street P h ila d e lp h ia , Pennsylvania 19103 (2 1 5 ) 238-8700 (2 1 5 ) 238-8710 (Fax) p jk@ d u f fy ke e n a n . c o m and F r e d e r i c k A. Tecce, Esquire M c S he a \T ec c e , P.C. T h e Bell Atlantic Tower - 28 th Floor 1 7 1 7 Arch Street P h ila d e lp h ia , Pennsylvania 19103 (2 1 5 ) 599-0800 (2 1 5 ) 599-0888 (Fax) f t e c c e @ m c s h e a -t e c c e . c o m C o u n s e l for plaintiff, C ro s s Atlantic Capital Partners, Inc.

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CERTIFICATE OF SERVICE T h is is to hereby certify that on this 3 r d day of March, 2008, I caused true and c o rre c t copies of the foregoing Plaintiff's Response in Opposition to Defendants' Motion to Compel Further Interrogatory Responses and Production of Documents to be served v ia this Court's Electronic Filing ("ECF") System, upon the following: H eid i L. Keefe, Esquire M ark R. Weinstein, Esquire S am C. O'Rourke, Esquire W hite & Case LLP 3 0 0 0 El Camino Real 5 Palo Alto Square, 9 th Floor P a lo Alto, California 94306 A lfred W. Zaher, Esquire D en n is P. McCooe, Esquire Jo el L. Dion, Esquire B la n k Rome O n e Logan Square 1 3 0 North 18 th Street P h ila d e lp h ia , PA 19103 C o u n se l for defendants F a c e Book, Inc. and Thefacebook, LLC

/s/ Frederick A. Tecce Frederick A. Tecce, Esquire