Polaris IP, LLC v. Google Inc. et al

Filing 465

REPLY to Response to Motion re 391 SEALED MOTION for Summary Judgment on Google's Affirmative Defenses and Counterclaims, 389 SEALED MOTION for Summary Judgment on Defendant AOL's Affirmative Defenses and Counterclaims, 390 SEALED MOTION for Summary Judgment on Defendant Yahoo filed by Bright Response LLC. (Attachments: # 1 Affidavit Wiley Declaration, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H)(Wiley, Elizabeth)

Polaris IP, LLC v. Google Inc. et al

Doc. 465

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION BRIGHT RESPONSE, LLC, Plaintiff, v. GOOGLE INC., et al., Defendants. § § § § § § § § §

Civil Action No. 2:07-cv-371-ce JURY TRIAL DEMANDED

BRIGHT RESPONSE, LLC'S REPLY TO DEFENDANTS RESPONSE TO BRIGHT RESPONSES MOTIONS FOR SUMMARY JUDGMENT ON EACH DEFENDANTS AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

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Plaintiff Bright Response, LLC files this reply in support of its motions for summary judgment on each Defendants` counterclaims and affirmative defenses (D.I. 389, 390, 391). Because Defendants file a global response to Plaintiffs` Motions for Summary Judgment (D.I. 423; D.I. 425 (notice of errata/corrected brief)), Bright Response responds with this single reply that addresses the common invalidity argument as to each Defendant. I. INTRODUCTION AND SUMMARY Bright Response challenged all those defenses and counterclaims except for each Defendant`s counterclaim for a declaration of non-infringement. Defendants` burden was to demonstrate that evidence does exist to support their affirmative defenses and counterclaims. Defendants` response does describe evidence purporting to support the challenged claims, but it is not evidence on which Defendants may rely. Plaintiff has moved to strike and preclude any reliance or reference by Defendants to those prior art references that Defendants never charted in the two years this case has been on file. Specifically, as set forth in Plaintiff`s Motion to Strike (D.I. 415) and Plaintiff`s Motion in Limine No. 1, Defendants may not rely on (i) the EZ Reader system or (ii) the EZ Reader Manual because Defendants have never charted those references. Defendants failed to do so despite an extensive period of time--two years--and three iterations for invalidity contentions given Defendants` supplementing them twice, without any opposition by Bright Response. Nor may Defendants rely on the CBR Express Manuals for any Section 102 theory (e.g., Mtn. at 10) because Defendants never charted those manuals as separate anticipatory references. Defendants may not use the stratagem of using an expert report to provide the necessary quantum of evidence and avoid summary judgment when the expert report manifests blatant non-compliance with the notice requirements of the local Patent Rule 3-3. Once the Court disregards the improper evidence upon which Defendants may not rely at trial--

or for summary judgment purposes either--there is insufficient evidence to justify a jury trial on invalidity. II. ARGUMENT A. Defendants May Not Rely On The EZ Reader System (Or Manual) For §102(b) Anticipation EZ Reader System and EZ Reader Manual Not Charted In All The Years This Case Has Been On File.

Each anticipatory prior art reference is distinct. Each reference must be charted. P.R. 33. Defendants cannot rely on charting one and only one reference--the EZ reader article

published at the August 5, 1996 conference--and extrapolate any number of other anticipation theories based on the EZ Reader such as the EZ Reader system. It is the EZ Reader system, and in part the EZ Reader Manual, on which Defendants rely for suggesting they have evidence to justify a jury trial on whether certain claims of the 947 patent are anticipated. Resp. at 4-7 (Argument: I-A). Neither of these references have been charted: both of these references are the subject of Bright Response`s Motion to Strike (D.I. 415) and Motion in Limine No. 1 to be filed concurrently with this reply. Defendants therefore cannot rely for any invalidity arguments how the system anticipates, and how it was used or when and in what iteration with what functionality. Nor can Defendants rely on the EZ Reader manual, entitled EZ Reader User`s Guide and Reference Manual--which Defendants` response refers to as the EZ Reader User`s Guide. Defendants rely on a statement in the User`s Guide (manual) that the system is currently in use. Resp. at 5. Indeed, Defendants rely on for their copious evidence (Resp. at 6) the report of their invalidity expert Dr. Branting, but Dr. Branting`s opinion must be struck insofar as he relies for his opinion the uncharted references of the EZ Reader system and the EZ Reader User Guide/Manual, which Defendants failed to chart despite three iterations of invalidity contentions in two years. 2

Simply ignoring the meaning and purpose of charting prior art references to provide the notice that P.R. 3-3 requires, Defendants cite to Chart A-4 to demonstrate how the EZ Reader system was in use. There is nothing in that chart that provides the required notice of how the system allegedly anticipates in terms of claim step by claim step and timing. See generally Plaintiff`s Motion in Limine No. 1 (incorporated by reference for all purposes); Plaintiff`s Motion to Strike (D.I. 415). The chart is re-created below in part and attached in full to this Reply: Chart A-4 Claim Chart of "EZ Reader: Embedded AI for Automatic Electronic Mail Interpretation and Routing" ("EZ READER") ,,947 Patent EZ READER

A method for automatically processing a non-interactive electronic message using a computer, comprising the steps of: (a) Receiving the electronic message from a source; (b) Interpreting the electronic message using a rule base and case base knowledge engine; and (c) Retrieving one or more predetermined responses corresponding to the interpretation of the electronic message from a repository for automatic delivery to the source. Wiley Decl. Ex. A (emphasis added).

EZ READER 1507, 1510

EZ READER 1507, 1509 EZ READER 1507, 1509-13

EZ READER 1509-11.

The one and only reference that is charted ­ as the title of the chart reflects--is the EZ Reader: Embedded AI for Automatic Electronic Mail Interpretation and Routing. This is the EZ Reader article. Wiley Decl. Ex. B (article). 3

Defendants` invalidity expert Dr. Branting departs radically from this limited universe of Defendants` invalidity contentions and charts, however, and includes specific references to the system for purposes of Section 102, though also fails to actually chart the system. Dr. Branting`s charts, Exhibit 2 to his report, do not even rely on just one of those impermissible references for an anticipation opinion concerning the EZ Reader system. He compounds his error by

combining two references--the system and the manual--both of which were never charted separately--and opines that there is anticipation. The chart is re-created below in part and attached in relevant part to this Reply: Anticipation under 35 U.S.C. § 102 and Obviousness under 35 U.S.C. 203 by EZ Reader
Claim Language from US 6,411,947 26. A method for automatically processing a noninteractive electronic message using a computer, comprising Disclosure in EZ Reader

The EZ Reader system, as described in the Rice paper and the EZ Reader Manual, automatically processed non-interactive electronic messages, e.g. email. Lotus Notes is Chase Manhattan Bank's corporate email standard; Chase's corporate email router mutes emails to and from the Internet domain and Lotus Notes databases. Accordingly, EZ. Reader was built to operate continuously and automatically in conjunction with Lotus Notes mail functions. (BR 001255, p .1510.) EZ Reader is an intelligent electronic mail (email) tender that employs a unique combination of rule based parsing and case-based reasoning to automatically and with a high level of accuracy classify and respond to large volumes of incoming email. EZ Reader reduces the time and human resources required to handle incoming email by selecting responses and adding attachments and advice to each incoming message based on how previous similar messages were handled. (BR 001252, p .1507, Abstract.)

the steps of:

Wiley Decl. Ex. C (excerpts Dr. Branting Charts, Ex. 2 to Branting Report). The jury cannot and should not even hear any such opinion. An opinion that relies on the system and the manual for anticipation is legally non-probative, wrong as a matter of law, and far from assisting the trier of fact--as reliable expert testimony is supposed to. The opinion is 4

improper with no basis in law or fact (given that the references should be excluded). Therefore, it is not reliable or admissible opinion evidence, and it cannot be used to avoid summary judgment. In short, Defendants have no competent, admissible or probative evidence of

anticipation concerning the EZ Reader. Bright Response is entitled to summary judgment of no anticipation under any of the theories that Defendants proffer premised based on the uncharted system or the uncharted Users` Guide/Manual. B. Defendants May Not Rely For §102 Anticipation On Uncharted CBR Express References and/or CBR as a Product. Just as Defendants cannot rely on Dr. Branting`s opinion testimony on anticipation concerning the EZ Reader, they cannot rely on his opinion concerning Section 102 arguments based on the CBR reference manuals (or CBR as a product that anticipates). Resp. at 9-10. The CBR manuals on which Dr. Branting relies are charted solely in terms of how it in validates in connection with the Allen patent and a number of other references. E.g., Chart A-69 (Wiley Decl. Ex. D). Defendants rely expressly in the main on the CBR manuals and Defendants` Chart A-69 and Exhibit 1 to Dr. Branting`s report, which is only the materials considered for the report. Wiley Decl. Ex. E (first page of Branting Ex. 1). Chart A-69, however, does not chart these manuals, as the title alone of the chart reflects: Chart A-69 U.S. Pat. No. 5,581,664 to Allen with the CBR Express Reference Manual as prior art to Asserted Claims of U.S. Patent No. 6,411,947 ("947 Patent") Wiley Decl. Ex. D (emphasis added). Defendants` own citations for what they consider Dr. Branting`s anticipation opinion on the (uncharted) CBR reference manuals proves Dr. Branting in fact has no such anticipation opinion. The only support for this proposition is Dr. Branting opinion and charts as to

obviousness under Section 103. See id. Bright Response is therefore entitled to summary 5

judgment that the CBR Manuals are no basis for anticipation and neither of the two (uncharted) manuals support an anticipation opinion on Section 102(a) from Dr. Branting. Similarly, Defendants cannot merely point to the vast majority of the Section 102(b)( and 102(e) prior art references from Defendants` Invalidity Contentions as also invalidating under Section 102(a). Resp. at 10. This does not fulfill Defendants` burden of identifying and bringing forward for the Court`s consideration the evidence on which they intend to rely for any anticipation theory or arguments for Sections 102(b) or 102(e). Bright Response is entitled to summary judgment on these statutory grounds for anticipation. C. The Allen Patent Does Not Anticipate. As shown in Bright Response's to Response to Defendants' motion for summary

judgment regarding invalidity in light of 35 USC §§ 102 and 103 (D.I. 419), Defendants have their burden of showing by clear and convincing evidence that Allen anticipates the claims asserted by Bright Response. For example, the Allen patent fails to disclose the non-interactive electronic message required by claim 26. Because all of the asserted claims rely on claim 26, the Allen patent cannot anticipate the asserted claims. Although Defendants have now served their expert report (and rely on a declaration from Dr. Branting in their response?), as opined by Dr. Rhyne in his rebuttal expert report, Defendants and Dr. Branting fail to consider the complete disclosure in the Allen patent that requires an interactive electronic message where the user can provide answers to questions posed by the system described in the Allen patent. (Wiley Decl. Ex. F) (Rebuttal Expert Report of Dr. V. Thomas Rhyne ¶52).. D. Defendants Misstate Bright Responses Burden in Challenging Defendants Seeking a Declaration of Invalidity under Section 103. Defendants fault Bright Response for not expanding on why particular combinations set forth in the contentions could not raise a genuine issue of material fact, but that was not Bright 6

Response`s burden. Bright Response was entitled to challenge how Defendants could actually meet an evidentiary burden at trial on the necessary factual underpinnings of an obviousness invalidity defense. Having done so, the burden shift to Defendants to produce evidences that consider adequate to raise a jury issue and support their pleaded counterclaims and defenses. On the merits, however, Defendants` response ignores the fact that invalidity is a matter over which they bear the evidentiary burden of proof--and on the higher threshold of clear and convincing evidence. Of note, In re Kubin, on which Defendants rely, addresses a situation in which the Federal Circuit was reviewing factual findings of the PTO for substantial evidence, and ultimately agreed that substantial evidence supporting a finding of obviousness was presented. 561 F.3d 1351, 1356. In contrast, Defendants here have not cited any evidence for their assertion that one of skill in the art would find it obvious to use Allen to receive, interpret, and respond to non-interactive electronic messages instead. (Response at 11).

E. Defendants Written Description Argument Shows Bright Response Is Itself Entitled To Summary Judgment On The Written Description--No Fact Questions Are Even Relevant. Yahoo filed a motion for summary judgment on the written description requirement in which neither Google nor AOL joined. Yet Defendants respond on this point with the same type of argument that in fact entitles Bright Response to summary judgment. See D.I. 420 (Bright Response Opposition To Yahoo! Inc.'s Motion for Summary Judgment re Written Description). In response Defendants make Yahoo`s same incorrect argument: that claim 26 and the asserted claims 28, 30, 31, 33, and 38 are invalid for lack of written description because the specification expressly discloses a non-interactive electronic message in the form of email messages only, and the claim language is broader. Mtn. at 3-9; Resp. at 14 (In short, while the Patent attempts

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to claim the genus of non-interactive electronic messages ­ and Plaintiff argues that search queries fit within that genus ­ the specification only discloses a select few species of messages.). Defendants ignore that the Rice patent discloses that other types of electronic

messages are contemplated as being within the scope of the invention (4:10-13) and describes other types of electronic messages, including email but also including a variety of digital format--such as voice data, dual tone multi-frequency (DTMF) tones, or the like. 11:28-24. It also discloses applications including internet communications and promotional content and product sales. Regarding the legal requirement for Section 112, Yahoo--and Defendants--reframe the dispositive legal question, which is nevertheless irrelevant because even that incorrect legal question is answered against them. Defendants frame the question as simply looking for whether the 947 patent`s disclosures expressly disclose embodiment other than email. This is a far different question than the controlling inquiry for Section 112: whether the disclosures of the Rice patent provisional and patent applications convey to those of ordinary skill in the art that as of the filing date, the inventor had possession of the claimed subject matter. See Lampi Corp. v. Am. Power Prods., 228 F.3d 1365, 1378 (Fed. Cir. 2000) (In order to satisfy the written description requirement, the disclosure as originally filed need not provide in haec verba support for the claimed subject matter at issue....The requirement is met if the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.). Defendants` reliance on Lizardtech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005), even by analogy, is incorrect as that case is not fully applicable (Resp. at 15). As a threshold matter, the question of whether there is adequate written description is a

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factual one and must be assessed on a case-by-case basis. Lampi Corp., 228 F.3d at 1378. The technology, state of the art, and timeframe for the patent in Lizardtech are different from those with the 947 patent. See Lizardtech, 424 F.3d at 1337-39. The patent itself is completely and dispositively different. As Bright Response demonstrated in its response and cross-motion on that very point, the challenged claims in Lizardtech were very broad, broad enough to cover processes not disclosed in the specification. 424 F.3d at 1344-45. The 947 patent, by contrast, discloses a process that applies equally to any type of non-interactive electronic message. Regardless of the digital form of the message, the message is received from a source, interpreted with a rule base and case base knowledge engine by comparing text and attributes of a case model generated from the electronic message with stored cases models of a case base, and retrieving a predetermined response corresponding to the interpretation of the electronic message for automatic deliver to the source. Additionally, the patent in Lizardtech disclosed only one specific embodiment and lacked support for any other embodiments of the genus claim. Id. at 1344. Here, the 947 patent and provisional applications expressly indicate that the scope is not limited to the preferred embodiment of email and includes other digital formats relating to World Wide Web and internet communications--the same types of formats that Defendants use in this case. Lastly,

Defendants in fact are relying on dicta in using Lizardtech as their hallmark case. There, the court found invalidity bases on lack of enablement, an argument not raised in this case. Id. at 1345.1

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The premise for Defendants` argument here has changed dramatically. Defendants did not focus on this issue at all but previously argued in claim construction that the term non-interactive electronic message is insolubly ambiguous because neither the claim nor specification provides any guidance as to which of the many possible interpretations of this term is correct. D.I. 369 at 8. This Court rejected the argument and construed the claim term appropriately. Yahoo in its motion for summary judgment on written description, and Defendants in their response, have changed their position to argue that the specification

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F. No Clear And Convincing Evidence To Support Unenforceability Or Improper Inventorship. Defendants have failed to provide any evidence of intent to deceive, and certainly not the threshold level of intent required in the two-step inequitable conduct analysis. Defendants cannot. There is no possible benefit for inventors to include non-inventors. Unlike the situation in Defendants` sole cited case, which dealt with an omitted inventor, the allegation here is that the three inventors were intentionally falsely included. The undisputed fact is that all five inventors were listed on the parent application, which issued as US Pat no 6,182,059, and the three inventors missing from the continuation application that led to the 947 patent were added as a matter of course with a certificate of correction. There is no evidence of intent to deceive the PTO (Wiley Decl. Ex. G) (Manbeck Report at ¶59-65), and Defendants` expert says nothing about intent to deceive with respect to the inventorship issue. There is no intent to deceive, and Defendants` evidence on summary judgment, like at trial, must reach this extremely high threshold. Their evidence and arguments in support show they cannot do so. Defendants mistake statements from Dippin Dots v. Mosely as supporting the ridiculous notion that they need not offer any evidence of intent to establish inequitable conduct. (Opposition at 18). Defendants` sole basis for arguing intent is an inference drawn from an alleged failure to disclose statements demonstrating that the EZ Reader was deployed in the first quarter of 1996. (Opposition at 18). However, Defendants spurious allegation is demonstrably false. In provisional application 60/042,494, Applicants disclosed an article authored by two of the co-inventors, which specifically (but incorrectly) states that Phase 1 of EZ Reader was deployed in the first quarter of 1996 ... (Wiley Decl. Ex. H).
only discloses email as the claimed non-interactive electronic message. Yahoo`s changing positions on the meaning of non-interactive electronic message and its support in the specification suggest arguments made solely as litigation tactics, without underlying substance.

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Defendants` evidence of intent regarding the Allen patent is equally deficient. Specifically, Defendants only point to the lack of an explanation offered by only two of the numerous patent attorneysthat participated in the prosecution. However, they offer nothing to

explain why they continue to insist that there was intent to deceive the Examiner when the Applicants identified the Allen patent by its full patent number no fewer than three times in the specification of the 947 Patent. In addition, Defendants fail to provide any evidence of intent to deceive the U.S. PTO regarding inventorship of the patent, let alone evidence of intent sufficient to meet the threshold required in the inequitable conduct analysis. Defendants cannot. That there is no possible intent to deceive is evidenced by the fact that all five inventors were listed on the parent application (which issued as U.S. Patent No. 6,182,059), and the missing inventors were added to the 947 patent as a matter of course by a certificate of correction. Defendants` only cited case on this issue addresses an omitted inventor. Unlike the situation where an inventor is intentionally omitted, the inventors of the 947 patent have nothing to gain by including non-inventors. Defendants provide no evidence of intent to deceive by including the Chase inventors, and summary judgment on this issue is appropriate. In addition, Defendants rely on their own interpretation of the evidence, omitting that the standard for what constitutes adequate evidence for the extreme relief of declaring a patent unenforceable is finding that one reasonable inference is of inequitable conduct. What

Defendants describe pejoratively as a charade cannot substitute for clear and convincing evidence of inequitable conduct.

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G. Prosecution History Estoppel: The Doctrine Of Equivalents Theory is Permissible Pursuant to the Courts Order of July 22, 2010. As set forth in Bright Response`s response to Google/AOL`s Motion for Summary Judgment of Non-Infringement, Defendants are incorrect that any doctrine of equivalents argument is not available to Bright Response. See Bright Response`s Response at 12-13 (D.I. 418). Bright Response`s response applies here as well. Google provides a quote from the file history distinguishing an Outlook reference that allegedly taught using folders to hold e-mails, which does not address anything about aggregate data. (Resp. at 24). Instead, this passage explains, as Bright Response has long maintained and with which this Court has agreed, that the case base knowledge engine must compar[e] a set of facts corresponding to an incoming message to each of a stored set of exemplar cases. Resp. at 24 (quoting August 16, 2000 Amendment and Response to Office Action). This interpretation is consistent with both the literal infringement and equivalents-based infringement evidence proffered by Dr. Rhyne in his declaration that Bright Response submitted in response to Google/AOL`s motion. Defendants` evidence is not probative and inconsistent with the Court`s claim construction. H. Defendants Identify Insufficient Evidence To Justify A Laches Defense. The ultimate question of whether laches applies is for the Court, even if it is appropriate to present these facts for the jury for consideration of (i) unreasonable delay and (ii) prejudice. Although Bright Response contends that there is no basis for the Court`s to exercise its equitable powers to find that laches precludes Bright Response`s recovery for certain damages, Defendants fail to bring forth adequate evidence to support the undergoing factual determinations for that defense. The first element for a laches defense is evidence showing that there is an unreasonable and inexplicable delay. Defendants have no evidence of this but only suggest that five years since the patent issued in 2002 is too long to delay--and that Bright Response`s predecessors 12

had a duty to promptly investigate and file suit sooner. The proposition fails on its face as a matter of law and logic. There are no exceptional circumstances to justify laches to bar relief when Bright Response is within six years of the patent just being issued. Aside from no factual or legal basis for any alleged undue delay--or any facts as to how or why Bright Response had to file suit sooner--Defendants cannot show the type of prejudice directly tied to that alleged unreasonable delay. Defendants argue only insufficient documents and witness loss of memory based on this five year delay since the patent issued. Witness loss of memory cannot be the yardstick for such an extreme step of finding the plaintiff has no claim for damages. Any party is prejudiced, in the broadest sense of the term, to some degree by witnesses` loss of memory, which as a matter of human experience, is well known to occur not just for events years in the past, but even mere months. This cannot be the trigger for laches and should not be so here. CONCLUSION For the foregoing reasons, the Court should grant summary judgment. The Court should grant summary judgment on all of Defendants` invalidity defenses under Section 102 premised on (i) the CBR Express reference manuals; (ii) the EZ Reader Manual or the EZ Reader system. The Court also should grant summary judgment on Defendants` written description arguments, for the reasons stated herein and as set forth in Bright Response`s Cross-Motion for Summary Judgment on Written Description, Docket Number 420.

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Dated: July 22, 2010

Respectfully submitted, By: /s/ Elizabeth A. Wiley_ Elizabeth A. Wiley

Andrew W. Spangler LEAD COUNSEL SPANGLER LAW P.C. 208 N. Green Street, Suite 300 Longview, Texas 75601 [phone] [phone] (fax) [e-mail] David M. Pridham LAW OFFICE OF DAVID PRIDHAM 25 Linden Road Barrington, Rhode Island 02806 [phone] [phone] (fax) [e-mail] John C. Hueston CA SBN 164921 IRELL & MANELLA, LLP 840 Newport Center Dr., Suite 400 Newport Beach, CA 92660 Tel: [phone] Fax: [phone] Email: [e-mail] Adam S. Goldberg CA SBN 250172 IRELL & MANELLA, LLP 1800 Avenue of the Stars, Suite 900 Los Angeles, CA 90067 Tel: [phone] Fax: [phone] Email: [e-mail]

Marc A. Fenster CA Bar No. 181067 [e-mail] Alexander C.D. Giza CA Bar No. 212327 [e-mail] Andrew Weiss CA Bar No. 232974 [e-mail] Adam Hoffman CA Bar No. 218740 [e-mail] RUSS, AUGUST & KABAT 12424 Wilshire Blvd., 12th Floor Los Angeles, CA 90025 [phone] [phone] (fax) Elizabeth A. Wiley Texas State Bar No. 00788666 THE WILEY FIRM PC P.O. Box. 303280 Austin, Texas 78703-3280 Telephone: [phone] Facsimile: [phone] Email: [e-mail] Patrick R. Anderson PATRICK R. ANDERSON PLLC 4225 Miller Rd, Bldg. B-9, Suite 358 Flint, MI 48507 [phone] [phone] (fax) [e-mail]

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CERTIFICATE OF SERVICE I certify that a true and correct copy of this motion has been served on all opposing counsel of record on this 22nd day of July 2010. \s\ Elizabeth A. Wiley Elizabeth A. Wiley CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL I hereby certify that the Court has previously entered a Protective Order dated July 30, 2008, allowing documents to be filed under seal. \s\ Elizabeth A. Wiley Elizabeth A. Wiley

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