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

Filing 726

NOTICE by AOL Inc re #665 Opposed SEALED MOTION for Clarification and Reconsideration Notice of Supplemental Authority in Support of Its Motion for Clarification and/or Reconsideration of Judge Love's Order Denying Summary Judgment Regarding the Legal Issue of Whether Mere Capability is Sufficient for Infringement of Claims 1-2 of the '120 Patent (Dacus, Deron)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

Bedrock Computer Technologies LLC,
Plaintiff,

Case No. 6:09-CV-269-LED
JURY TRIAL DEMANDED

v.
SoftLayer Technologies, Inc., et al.,
Defendants.

DEFENDANT AOL’S NOTICE OF SUPPLEMENTAL AUTHORITY IN SUPPORT OF
ITS MOTION FOR CLARIFICATION AND/OR RECONSIDERATION OF JUDGE
LOVE’S ORDER DENYING SUMMARY JUDGMENT REGARDING THE LEGAL
ISSUE OF WHETHER MERE CAPABILITY IS SUFFICIENT FOR INFRINGEMENT OF
CLAIMS 1-2 OF THE ‘120 PATENT (DKT. NO. 665)

Defendant AOL respectfully submits the following Notice of Supplemental Authority in
support of its Motion for Clarification and Reconsideration of Judge Love’s Order Denying
Summary Judgment Regarding the Legal Issue of Whether Mere Capability is Sufficient for
Infringement of Claims 1-2 of the ’120 Patent (Dkt. No. 665). On April 7, 2011, the U.S.
District Court for the Eastern District of Wisconsin addressed this exact legal question and
granted summary judgment of noninfringement.
In Mikkelsen Graphic Engineering (MGE) v. Zund America, the court held that MGE’s
apparatus claims were not drafted to suggest capability, and therefore, actual performance of the
functions was necessary to infringe the claims. Because Zund disabled (but did not remove) the
accused code, Zund did not perform the claimed functions. Therefore, Zund did not infringe as a
matter of law. No. 2:07-cv-00391-LA, Dkt. No. 266, at 18-22 (E.D. Wisc., Apr. 7, 2011)
(attached hereto as Exhibit A). In reaching its decision, the Court stated:
MGE’s argument that disabling the search function does not cure
the infringement is based on its contention that an accused product
“need only be capable of operating” in an infringing way in order
for a sale of that product to constitute direct infringement.
However, this is not a complete statement of the law. Although the
sale of an accused product that is capable of operating in noninfringing modes may infringe a patent, that can occur only where
the claims of the patent are “drawn to capability.” Finjan, Inc. v.
Secure Computing Corp., 626 F.3d 19979, 1204 (Fed. Cir. 2010);
Ball Aerosol & Speciality Container, Inc. v. Limited Brands, Inc.,
555 F.3d 984, 994-95 (Fed. Cir. 2009). For a claim to be drawn to
capability, the claim language must specify a product that is
capable of performing a particular function or operation, not
merely a device that actually performs that function or operation.
Mikkelsen, No. 2:07-cv-00391-LA, at 19 (citation and footnote omitted). The Court went on to
explain:
Nothing in MGE’s apparatus claims suggests that a device that
contains disabled source code for searching is within the scope of
the claims. The claims are not drafted in terms of software
components but in terms of the actual function of the apparatus. In
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other words, the apparatus claims specify a device that performs
MGE’s methods, not a device that contains software code for
performing MGE’s methods. When the code for searching is
disabled, the device does not perform MGE’s methods, and thus
sales of the device with the code for searching disabled is not
direct infringement.
Id. at 21-22 (emphasis added, footnote omitted).
Claim 1 of Bedrock’s 120 patent requires, for example: “a linked list to store and provide
access to records stored in memory of the system, at least some of the records automatically
expiring” and “a record search means utilizing a search key to access the linked list.” Claim 1
uses active tense; claim 1 does not specify mere capability. Therefore, claim 1, like the claims in
MGE, requires that the functions be actually performed. If the accused device does not have a
linked list with records that automatically expire, and does not use a search key to access the
linked list, there can be no infringement. Bedrock has produced no evidence, nor can it, that
AOL ever performs the claimed functions. Therefore, as in MGE, summary judgment of
noninfringement is appropriate for AOL.

Respectfully submitted, this the 12th day of April 2011.
/s/ Deron Dacus____________
Deron R. Dacus
Texas Bar No. 00790553
[e-mail]
Ramey & Flock, P.C.
100 E. Ferguson, Suite 500
Tyler, Texas 75702
Telephone:
[phone]
Facsimile:
[phone]
Frank G. Smith
[e-mail]
ALSTON & BIRD LLP
One Atlantic Center
1201 West Peachtree Street
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Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
Alan L. Whitehurst
[e-mail]
Marissa R. Ducca
[e-mail]
ALSTON & BIRD LLP
The Atlantic Building
950 F Street, N.W.
Washington, DC 20004
Telephone: [phone]
Facsimile: [phone]
Louis A. Karasik (pro hac vice)
[e-mail]
Rachel Capoccia
[e-mail]
ALSTON & BIRD LLP
333 South Hope Street
16th Floor
Los Angeles, CA 90071
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant AOL Inc.

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CERTIFICATE OF SERVICE
This is to certify that all counsel of record who are deemed to have consented to
electronic service are being served with a copy of this notice via the Court’s CM/ECF system per
Local Rule CV-5(a)(3) on this 12th day of April, 2011. Any other counsel of record will be
served by first class mail.
/s/ Deron Dacus _________

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