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

Filing 750

Unopposed MOTION for Leave to File - Defendants' Unopposed Renewed Motion for Leave to Serve an Expert Report Regarding Reexamination Procedures in teh United States Patent and Trademark Office by AOL Inc, Amazon.com Inc., MySpace Inc., Softlayer Technologies, Inc., Yahoo! Inc.. (Attachments: #1 Exhibit A - Expert Report of N. Godici, #2 Text of Proposed Order)(Williams, E Danielle)

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

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CASE NO. 6:09–CV–00269
Hon. Leonard E. Davis

JURY TRIAL DEMANDED

DEFENDANTS’ UNOPPOSED RENEWED MOTION FOR LEAVE
TO SERVE AN EXPERT REPORT REGARDING REEXAMINATION PROCEDURES
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

I.

INTRODUCTION
The United States Patent & Trademark Office (“USPTO”) has granted two reexamination

requests of the patent-in-suit, U.S. Patent No. 5,893,120 (the ‘120 Patent). The requests for these
reexaminations specifically involved a number of prior art references that the Defendants1 do not
intend to use at trial. During both reexaminations, several prior art references that Defendants
intend to use at trial were listed in an IDS submitted to the USPTO, but there is no evidence that
several of these prior art references were considered by the examiner who conducted the first
reexamination. To ensure the jury has a clear understanding of USPTO procedure associated

1

This motion is filed on behalf of Defendants Amazon.com Inc., SoftLayer
Technologies, Inc., MySpace, Inc., AOL Inc, and Yahoo! Inc.
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with submission and consideration of prior art, as well as the USPTO’s procedures that led to the
grant of a second reexamination, Defendants filed a motion for leave to serve an expert report
regarding reexamination procedures in the USPTO.2 The motion requested that, if the Court
admitted the evidence of the reexaminations of the ‘120 patent, the Court also grant the
Defendants leave to disclose an expert with respect to the USPTO’s reexamination process.
Subsequently, Magistrate Judge Love granted Defendants’ Motion in Limine #4, which
precluded Plaintiff from offering testimony, evidence or argument regarding the reexaminations
of the ‘120 patent.3 Thus, Defendants’ motion for leave to serve an expert report regarding
reexamination procedures in the USPTO was rendered moot. Accordingly, the Court denied
Defendants’ motion. 4 During trial of a co-Defendant in this matter, the Court allowed the
Plaintiff to present evidence of one of the reexaminations of the ‘120 patent.5 The Court also
permitted the co-Defendant to present testimony from a USPTO expert.6 In consideration of the
Court’s decision,

Defendants renew their motion to serve an expert report regarding

reexamination procedures in the USPTO.7

2

Defendants' Motion for leave to Serve an Expert Report Regarding Reexamination
Procedures in the United States Patent and Trademark Office, Bedrock Computer Technologies
v. SoftLayer Technologies, Inc. et al., 6:09-cv-269 (E.D. Tex. March 28, 2011), DKT 668.
3

Order, Bedrock Computer Technologies v. SoftLayer Technologies, Inc. et al., 6:09-cv269 (E.D. Tex. March 30, 2011), DKT 680.
4

Order, Bedrock Computer Technologies v. SoftLayer Technologies, Inc. et al., 6:09-cv269 (E.D. Tex. March 31, 2011), DKT 691.
5

Bedrock Computer Technologies v. Google, 6:09-cv-269, Trial Transcript, April 11,
2011, Morning Session, 11:14-18.
6

Bedrock Computer Technologies v. Google, 6:09-cv-269, Trial Transcript, April 13,
2011, Afternoon Session, 77:5-167:3.
7

Defendants intend to offer the opinion of Mr. Nick Godici, a former U.S. Patent
Examiner and the former Commissioner for Patents. Mr. Godici’s Expert Report was served on
April 20, 2011 and is attached hereto as Exhibit A.
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Defendants hereby restate all facts and arguments presented in the March 28, 2011,
motion for leave to serve and expert report regarding reexamination procedures8 and renew their
request that, if the Court decides to permit reference to either or both of the reexaminations,9 the
Court also grant the Defendants leave to disclose an expert with respect to the USPTO’s
reexamination process. In particular, due to the complexity of the dual reexaminations of the
‘120 Patent, and the fact that the examiner considered some, but not all, prior art submitted, there
is a significant danger that the jury will become confused regarding what the examiner’s decision
means in the context of the second reexamination, and whether all the prior art was indeed
considered. To counter this danger, Defendants renew their request that they be allowed to rely
on the testimony of an expert in the USPTO’s reexamination procedures who can guide the jury
through the USPTO’s procedures for considering submitted prior art, and also explain why the
USPTO granted a second reexamination of the ‘120 patent, before issuing a certificate in the first
reexamination.

8

Defendants' Motion for leave to Serve an Expert Report Regarding Reexamination
Procedures in the United States Patent and Trademark Office, Bedrock Computer Technologies
v. SoftLayer Technologies, Inc. et al., 6:09-cv-269 (E.D. Tex. March 28, 2011), DKT 668.
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Defendants plan to file a Bench Brief in support of excluding all references to both
reexaminations as addressed in Defendants’ Motion in Limine #4 [DKT 604] and in opposition
to Plaintiff’s Motion in Limine A [DKT 587].
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Dated: April 21, 2011

Respectfully submitted,

/s/ Alan L. Whitehurst (with permission)_
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]

/s/ E. Danielle T. Williams __
Steven Gardner
E. Danielle T. Williams
John C. Alemanni
Alton Absher III
Michael Morlock
KILPATRICK TOWNSEND &
STOCKTON LLP
1001 West 4th Street
Winston-Salem, NC 27101
Telephone: [phone]
Fax: [phone]

Frank G. Smith
[e-mail]
ALSTON & BIRD LLP
One Atlantic Center
1201 West Peachtree Street
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]

William H. Boice
Russell A. Korn
KILPATRICK TOWNSEND &
STOCKTON LLP
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
Telephone: [phone]
Fax: [phone]

Michael J. Newton (SBN 24003844)
[e-mail]
ALSTON & BIRD LLP
Chase Tower
2200 Ross Avenue, Suite 3601
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]

J. Thad Heartfield
Texas Bar No. 09346800
[e-mail]
M. Dru Montgomery
Texas Bar No. 24010800
[e-mail]
THE HEARTFIELD LAW FIRM
2195 Dowlen Road
Beaumont, TX 77706
Telephone: [phone]
Fax: [phone]

Louis A. Karasik (pro hac vice)
[e-mail]
ALSTON & BIRD LLP
333 South Hope Street
16th Floor
Los Angeles, CA 90071
Telephone: [phone]
Facsimile: [phone]

Attorneys for Defendants SoftLayer
Technologies, Inc. and Amazon.com Inc.

Attorneys for Defendants MySpace, Inc. and
AOL Inc.

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/s/ Christopher D. Bright (with permission)
Yar R. Chaikovsky
[e-mail]
John A. Lee
[e-mail]
Bryan K. James
[e-mail]
MCDERMOTT WILL & EMERY LLP
275 Middlefield Rd., Suite 100
Menlo Park, CA 94025
Tel: [phone]
Fax: [phone]
Christopher D. Bright
[e-mail]
MCDERMOTT WILL & EMERY LLP
18191 Von Karman Ave, Ste. 500
Irvine, California 92612
Tel: [phone]
Fax: [phone]
Natalie A. Bennett
[e-mail]
MCDERMOTT WILL & EMERY LLP
227 West Monroe
Chicago, IL 60614
Tel: [phone]
Fax: [phone]
Jennifer Doan
Texas Bar No. 08809050
[e-mail]
J. Scott Andrews
Texas Bar No. 24064823
[e-mail]
HALTOM & DOAN
Crown Executive Center, Suite 100
6500 Summerhill Rd.
Texarkana, Texas 75503
Tel: [phone]
Fax: [phone]
Attorneys for Defendant Yahoo! Inc.

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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 21st day of April, 2011.

/s/ E. Danielle T. Williams _

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