Function Media, L.L.C. v. Google, Inc. et al

Filing 246

RESPONSE to Motion re 200 MOTION in Limine No. Five: Motion to Admit Evidence Regarding the Reexamination of the Patents-In-Suit filed by Function Media, L.L.C.. (Attachments: # 1 Text of Proposed Order)(Grinstein, Joseph)

Function Media, L.L.C. v. Google, Inc. et al

Doc. 246

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FUNCTION MEDIA, L.L.C.
$ $ $ $ $ $ $ $ $

Plaintiff.
vs.

Civil Action No. 2007-CV-279

GOOGLE, INC. AND YAHOO, INC.
Defendants.

JURY TRIAL DEMANDED

PLAINTIF'F'S RESPONSE TO GOOGLE'S MOTION IN LIMINE NO. FIVE: MOTION TO ADMIT EVIDENCE REGARDING THE REEXAMINATION OF THE PATENTS.IN-SUIT
Nearly every month in this District patent cases go to trial in which the patents-in-suit are involved in reexamination proceedings, and every month courts in this District exclude mention

of those reexaminations from trial. Google proposes to rewrite those standards and force the
introduction of reexaminations in this case, although it has literally no authority to support such a
maneuver.

Nor is there anything unique about the facts of this case that would justify a departure
from the normal practice of excluding evidence of reexaminations. It is true that the claims of
the patents-in-suit currently stand rejected in non-final office actions by the PTO. But this is no

different than from any of the other cases this Court faces involving reexaminations. Indeed,

as

of the time of this Response, the probative value of the reexaminations is even less than usual,
given that the PTO issued its initial rejections before FM had a chance to comment on Google's reexamination requests. Since the time that FM has filed its response, the PTO has been silent.

This Court should therefore deny Google's motion to admit evidence of

the

reexaminations. Google may be trying to generate a point on appeal (although, as discussed

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below, the Federal Circuit

in

August endorsed this District's approach

of

excluding

reexamination evidence), but its motion before this Court has no merit.

ARGUMENT

L

Google May Not RebutÆreclude the Presumption of Validity

It is the universal

standard in this District not to permit introduction of evidence about

non-final, pending reexaminations. As Judge Davis recently explained:

Finally, Microsoft moves for a new trial on ground that the Court erroneously excluded evidence regarding the PTO's ex parte reexamination of the'449 patent. At the time of trial, the PTO had granted re-examination, necessarily finding that there was a "substantial new question of patentability" regarding the '449 palent. See 35 U.S.C' $ 312(a)(1). Microsoft's arguments are meritless. The simple fact that a reexamination decision has been made by the PTO is not evidence probative of any element regarding any claim of invalidity. Procter & Gamble Co., 549 F.3d at 848 ("As this court has observed, a requestor's burden to show that a reexamination order should issue from the PTO is unrelated to a defendant's bur-den to prove invalidity by clear and convincing evidence attrial."). Even if it was, its probative value is substantially outweighed by its prejudicial effect in suggesting to the jury that it is entitled to ignore both the presumption of validity and the defendant's clear and convincing burden af. ttial. See FED.R.EVID. 403. Microsoft's argument is overruled.

i4i Ltd. Partnershipv. Microsoft Corp.,2009WL2449024,*17 (E.D. Tex. Aug. 11,2009). And
the Federal Circuit agrees that
reexaminations:

it is proper for district

courts to exclude evidence of non-final

The non-final re-examination determinations were

of little relevance to the jury's

independent deliberations on the factual issues underlying the question of obviousness. In contrast, the risk of jury confusion if evidence of the non-f,rnal PTO proceedings were introduced was high. The district court did not abuse its discretion in concluding that the prejudicial nature of evidence concerning the ongoing parallel re-examination proceeding outweighed whatever marginal probative or corrective value it might have had in this
case.

Cøllaway Golf Co. v. Acushnet Co.,576F.3d1331,1343 (Fed. Cir. 2009).

Google argues, however, that

it

ought

to be able to introduce evidence of

the

reexaminations to rebut the presumption of validity. ,See Google Mtn., at3-4. Google's position

is short on case law, however -- it cites not a single example of a court's ever having admitted

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evidence of ongoing reexaminations. Indeed, Judge Davis in i4i prohibited mention of pending

reexamination proceedings precisely because they would contradict the patentholder's
presumption of validity. i4i,2009
Google responds that

wL 2449024,*17.

if it cannot mention the reexaminations, then FM should not be able

to invoke the presumption of validity. And it claims that the Federal Circuit in Calløuay Golf
,,implicitly endorsed" this approach. Google Mtn., at 4. But Callaway Golf
said no such thing.

As indicated above, the Callaway Golf court actually endorsed a district court's exclusion of
reexamination evidence. 576 F.3d at 1343. Nowhere did the Federal Circuit in Callaway Golf
say that its exclusion meant that the patents were not entitled to a presumption of validity.I It is

true that Callaway Golf nofed some concern in the plaintiffs opening statement argument that
,,three patent examiners" had looked at the plaintiff s patents and confirmed their validity. Id. at

l34Z-43. But the court did not use this argument

as a basis

for overturning the presumption of

validity. In any event, FM has not opened

the door to any reexamination evidence by so arguing

to this jury, nor has Google sought a more narrow limine preclusion for such an argument'

il.

The Reexaminations Are Not Relevant to Pre-Reexamination Willfulness

Google next argues that

it

ought

to be allowed to

introduce evidence

of

the

reexaminations to rebut FM's willfulness arguments. However, as set forth in FM's responses

to Google,s willfulness motions, in light of the Marlcrnan ruling FM will not assert that Google

willfully infringed the remaining two patents-in-suit. Accordingly, Google
introduce evidence of the reexaminations to rebut FM's willfulness claims'

does not need to

jury that To the contrary, the Federal Circuit quoted, without criticism, the district court's instruction to the the presumption of invalidity needed to be proven by "clear and convincing" evidence -- a necessary corollary to vatidþ. Calløway Golf,576 F.3d at 1337 n'4.
I

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Google's 6'Impeachment" Usage of the Reexaminations is Improper

Finally, Google suggests, in three sentences at the tail end of its motion, that it should be permitted

to introduce

evidence

of the

reexaminations

to impeach allegedly

"contradictory

statements or testimony at

trial." This supposed

exception to exclusion is so broad and ill-

defined, however, that Google will be able to fit nearly any usage of the reexaminations within it.

Giving Google carte blanche to emplo¡r the reexaminations in this manner will inevitably lead to
aggressive and repeated citation to the reexaminations, under the guise of "impeachment'" To justifu this exception, Google musters two examples of supposed FM testimony that

it

would need to impeach with the reexaminations: "Plaintiff may seek to contradict its earlier
characteúzations of the patented invention, or its attempts to distinguish the invention from the

prior

art."

Google Mtn., at

6. Neither of these justifies

usage of the reexaminations. As to the

former, the metes and bounds of the FM inventions have been determined by this Court's
Marlcrnan order. For Google to use the reexaminations to explore FM's "characterization of the patented invention"

will result in Google's improperly re-arguing Marlvnan before

the

jury. Søe

FM Motion in Limine No. 3. Nor should Google be able to use the reexaminations to impeach

FM's .,attempts to distinguish the invention from the prior art." The reexaminations expressly
employ a different claim construction standard than does this Court. In re Yamamoto,740 F.2d

1569,l57l (Fed. Cir. 1984). Accordingly, it is both confusing and misleading to contrast FM's
handling of the prior art before the PTO
the claims

- under a different standard of reading thal art against

-

with its handling of the prior art before this Court.
proposes no limitations on its usage

In any event, Google

of the reexaminations for

purposes of impeachment. After all,

if

the purpose of using the reexaminations in this maruler

were simply to contradict FM's testimony attrial, Google could confront FM's witnesses with

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,,statements FM made to the PTO"

-

without mentioning that those statements came from

a

reexamination in which the PTO initially rejected FM's patent claims (in a preliminary and non-

final office action, before FM had a chance to respond). That Google proposes no limits on its proposed impeachment use

of the reexaminations

demonstrates

that

it

wishes

to

use

impeachment simply as a hook to talk to the jury about the reexamination process.

IV.

Conclusion

This Court should deny Google's Motion in Limine No. 5 and preclude Google from
introducing evidence of the reexaminations. FM has filed a parallel Motion in Limine (FM No.

33) seeking to exclude reexamination evidence, and, for the reasons stated above, FM likewise
asks this Court to grant that motion.

Respectfully submitted,

/s/ Joseph S. Grinstein Max L. Tribble, Jr. State Bar No. 20213950 Email : [e-mail] SUSMAN GODFREY LLP 1000 Louisiana, Suite 5100 Houston, Texas, 77002 Telephone: [phone] Facsimile: (7 13) 654-6666 Lead Attomey for Plaintiff OF COTINSEL: Joseph S. Grinstein State Bar No. 24002188 Aimée Robert State Bar No.24046729 SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77 002-5096 Telephone: [phone]

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Fax: [phone]
j

grinstein@ susmaneodfrey. com arobert@ susman godfrey. com

Jeremy Brandon State Bar No. 24040563

SUSMAN GODFREY L.L.P.
Suite 5100 901 Main Street Dallas, Texas 7 5202-377 5 Telephone: (214) 7 54-t900 Fax: [phone] j brandon@susman godfreY. com

Justin A. Nelson State BarNo.24034766 SUSMAN GODFREY L.L.P. Suite 3800 1201 Third Avenue Seattle, Washington 98 1 01 -3000 Telephone: [phone] Fax: [phone] j nelson@ susmansodfrey. com Robert Christopher Bunt State Bar No. 00787165 Charles Ainsworth PARKER, BUNT & AINSV/ORTH, P.C. 100 East Ferguson, Suite 11 14 Tyler, TX 75702 Telephone: [phone] Fax: [phone] [e-mail] [e-mail]
S. Calvin State Bar Elizabeth State Bar Capshaw No. 037839000

L. DeRieux No. 05770585 D. Jeffrey Rambin CAPSHAW DERIEIIX, LLP
Energy Centre 1127 Judson Road, Suite 220 P.O. Box 3999 (75606-3999)

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Longview, TX 7 5601-5157 Telephone: [phone] Fax: [phone] ccap shaw@,capshawlaw. com ederieux@.capshawlaw. c om i rambin@cap shawlaw. com Otis Canoll State Bar No. 03895700 Collin Maloney State Bar No. 00794219 IRELAND, CARROLL & KELLEY, P.C. 6101 S. Broadway, Suite 500 Tyler, Texas 75703 Telephone: [phone] Fax: [phone] oti scarroll@icklaw. com [e-mail]

CERTIFICATE OF SERVICE I hereby certify that on November 3,2009,I electronically filed the foregoing document with the clerk of the court for the U.S. District Court, Eastern District of Texas, using the a "Notice of electronic filing system of the court. The electronic case filing system sent this Notice Electronic Filing,, to the attorneys of record who have consented in writing to accept
as service of this document by electronic means:

/s/ Joseph S. Grinstein Joseph S. Grinstein

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