Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al

Filing 316

SUR-REPLY to Reply to Response to Motion re #283 MOTION for Summary Judgment of Indefiniteness filed by Bedrock Computer Technologies, LLC. (Attachments: #1 Declaration of J. Austin Curry, #2 Exhibit A.1)(Cawley, Douglas)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION BEDROCK COMPUTER TECHNOLOGIES LLC, Plaintiff, v. SOFTLAYER TECHNOLOGIES, INC., et al. Defendants. § § § § § § § § § § §

CASE NO. 6:09-cv-269-LED Jury Trial Demanded

BEDROCK'S SUR-REPLY TO DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS AS TO CLAIMS 1, 2, 5, AND 6 OF U.S. PATENT NO. 5,893,120

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I. ARGUMENT IN SUR-REPLY When Defendants filed their Motion, Bedrock had already filed and served its opening claim construction brief. Nevertheless, Defendants argued: Whether one of skill would understand the metes and bounds of the claim limitation is not the issue here. Rather, the issue is whether the specification discloses an algorithm corresponding to a means-plus-function claim as required by 35 U.S.C. § 112 ¶ 6. See Mot. (Dkt. No. 283) at 7, n.4. In their Reply, the Defendants about-faced and argue that the disclosed structure in the '120 patent is not adequately bounded. In making these new arguments, Defendants again improperly rely upon attorney argument and offer no evidence as to whether the bounds of these disputed claim limitations would be understandable to an ordinary artisan. As such, Defendants' motion for summary judgment must fail. A. The Structure for "Record Search Means . . ." is Adequately Bounded. The hash function that serves as part of the corresponding structure is adequately bounded. See Decl. of Dr. Mark Jones (Dkt. No. 275-8) at ¶¶ 10-13 and 31-32. One skilled in the art would know what is--and what is not--a hash function. See id.; see also '120::5:3-5 (a "hashing function can be any operation on the key that results in subscripts mostly uniformly distributed across a hash table"). Indeed, Defendants have retreated from their original position that a hash function could be "any series of mathematical operations that transforms the key into an index or storage address for a hash table." See Mot. at 2. Further, Defendants' continued recitation of Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) is misleading. In Blackboard, the patentee attempted to avoid indefiniteness by submitting evidence that one skilled in the art could implement a system that performed the recited function, but the patent was found indefinite because the correct inquiry is not what one skilled in the art could do but whether one skilled in the art would understand the

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bounds of the limitation in light of the specification. See id. at 1384. Here, because Bedrock's expert has opined that one skilled in the art would understand the bounds of these limitations, see, e.g., Decl. of Dr. Mark Jones at ¶ 13, Blackboard is inapposite. B. "Hashing Means . . ." Does Not Require the Execution of a Hashing Function. For this limitation, Defendants attack Bedrock's refusal to identify unnecessary structure as not passing "the straight-face test." See Rep. at 4. The Federal Circuit, however, has articulated the actual test: "Structural features that do not actually perform the recited function do not constitute corresponding structure and thus do not serve as claim limitations." See Asyst Tech., Inc. v. Empak, Inc., 268 F.3d 1364, 1370 (Fed. Cir. 2001). C. "Means for Dynamically Determining . . ." Has Clearly Linked Structure. The Defendants now claim that there is no linkage between the disclosed algorithm and this limitation, see Rep. at 4; however, the Defendants, themselves, saw the linkage between this recited function and the disclosed algorithm in their Joint Claim Construction Statement. See Dkt. No. 251-2 at 20 (citing the disclosed algorithm as intrinsic evidence for Defendants' proposed constructions for method step claims 4 and 8, which repeat verbatim the recited function of this limitation). Defendants also attempt to cast Dr. Jones's opinion on this limitation as based on what one skilled in the art could implement. See Rep. at 5. To the contrary, Dr. Jones's opinion is focused on what one skilled in the art would understand in reading the specification. See Decl. of Dr. Mark Jones at ¶¶ 22-24; see also 9/29/10 Depo. Tr. of Dr. Jones at 261:5-20 (Ex. A.1). II. CONCLUSION For the reasons in Bedrock's response and sur-reply, Defendants' motion to invalidate claims 1, 2, 5, and 6 should be denied.

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DATED: October 5, 2010

Respectfully submitted, McKOOL SMITH, P.C. /s/ Douglas A. Cawley Sam F. Baxter Texas Bar No. 01938000 McKOOL SMITH, P.C. [e-mail] 104 E. Houston Street, Suite 300 P.O. Box 0 Marshall, Texas 75670 Telephone: [phone] Facsimile: [phone] Douglas A. Cawley, Lead Attorney Texas Bar No. 04035500 [e-mail] Theodore Stevenson, III Texas Bar No. 19196650 [e-mail] Jason D. Cassady Texas Bar No. 24045625 [e-mail] J. Austin Curry Texas Bar No. 24059636 [e-mail] McKOOL SMITH, P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: [phone] Facsimile: 214-978-4044 Robert M. Parker Texas Bar No. 15498000 Robert Christopher Bunt Texas Bar No. 00787165 PARKER, BUNT & AINSWORTH, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 Telephone: [phone] Facsimile: 903-533-9687 E-mail: [e-mail] E-mail: [e-mail] ATTORNEYS FOR PLAINTIFF BEDROCK COMPUTER TECHNOLOGIES LLC

CERTIFICATE OF SERVICE I hereby certify that all counsel of record who are deemed to have consented to electronic service are being served with a copy of the forgoing document via the Court's CM/ECF system pursuant to the Court's Local Rules this 5th day of October, 2010. /s/ J. Austin Curry J. Austin Curry