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

Filing 864

RESPONSE in Opposition re #845 MOTION for Judgment as a Matter of Law Regarding Invalidity (Renewed) MOTION for Judgment as a Matter of Law Regarding Invalidity (Renewed) MOTION for Judgment as a Matter of Law Regarding Invalidity (Renewed) MOTION for Judgment as a Matter of Law Regarding Invalidity (Renewed) MOTION for Judgment as a Matter of Law Regarding Invalidity (Renewed) filed by Bedrock Computer Technologies, LLC. (Attachments: #1 Text of Proposed Order)(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.

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

BEDROCK’S RESPONSE TO YAHOO’S RENEWED MOTION FOR JUDGMENT
AS A MATTER OF LAW REGARDING INVALIDITY [ DKT. NO. 845]

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TABLE OF CONTENTS
TABLE OF AUTHORITIES .......................................................................................................... ii
I.

INTRODUCTION ...............................................................................................................1

II.

LEGAL STANDARDS .......................................................................................................3

III.

THE CONSTRUCTION OF THE ASSERTED CLAIMS..................................................6

IV.

JMOL IS INAPPROPRIATE ..............................................................................................7
A.
B.

Yahoo Cannot Show That the NRL Code Renders Claim 1
Obvious. .................................................................................................................10

C.

Dr. Nemes’s Own ’495 Patent Does Not Render Obvious
Claim 1...................................................................................................................12

D.
V.

Yahoo’s Evidence that the 1995 Linux Code Anticipates
Claim 1 is Legally Deficient. ...................................................................................7

None of Yahoo’s Many Obviousness Combinations
Invalidate Claim 2..................................................................................................15

THE COURT MAY DECIDE THE ISSUE OF INVALIDITY AS
FACT FINDER..................................................................................................................16

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i

TABLE OF AUTHORITIES
Page(s)
CASES
Anderson v. Cryovac, Inc.,
862 F.2d 910 (1st Cir. 1988)....................................................................................................17
Apple Computer, Inc. v. Articulate Sys., Inc.,
234 F.3d 14 (Fed. Cir. 2000)......................................................................................................4
Bank of La. v. Aetna U.S. Healthcare Inc.,
468 F.3d 237 (5th Cir. 2006) .....................................................................................................3
Estate of Sanford v. Commissioner,
308 U.S. 39 (1939).....................................................................................................................4
i4i Ltd. P’ship v. Microsoft Corp.,
598 F.3d 831 (Fed. Cir. 2010)............................................................................................2, 3, 4
i4i Ltd. P’ship v. Microsoft Corp.,
670 F. Supp. 2d 568 (E.D. Tex. 2009)............................................................................. passim
In re Mixon,
59 C.C.P.A. 1396 (C.C.P.A. 1973) ..........................................................................................14
Kamen v. Kemper Fin. Servs. Inc.,
500 U.S. 90 (1991).....................................................................................................................4
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007)...........................................................................................................10, 11
McDaniel v. Anheuser-Busch, Inc.,
987 F.2d 298 (5th Cir. 1993) ...................................................................................................16
McNair v. City of Cedar Park,
993 F.2d 1217 (5th Cir. 1993) ...................................................................................................4
Microsoft Corp. v. i4i Ltd. P’ship,
180 L. Ed. 2d 131 (2011) ...................................................................................................1, 2, 4
Mirror Worlds, LLC v. Apple, Inc.,
2011 U.S. Dist. LEXIS 36451 (E.D. Tex. Apr. 4, 2011) .......................................................5, 8
Network Appliance, Inc. v. Bluearc Corp.,
374 F. Supp. 2d 825 (N.D. Cal. 2005) ...................................................................................5, 7

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ii

Nobelpharma AB v. Implant Innovations, Inc.,
141 F.3d 1059 (Fed. Cir. 1998)..................................................................................................4
Provident Financial Inc. v. Strategic Energy L.L.C.,
404 Fed. Appx. 835 (5th Cir. 2010)...........................................................................................4
Sinskey v. Pharmacia Ophthalmics, Inc.,
982 F.2d 494 (Fed. Cir. 1992)....................................................................................................5
Spectra-Physics, Inc. v. Coherent, Inc.,
827 F.2d 1524 (Fed. Cir. 1987)................................................................................................17
Therrell v. Georgia Marble Holdings Corp.,
960 F.2d 1555 (11th Cir. 1992) ...............................................................................................17
Tokai Corp. v. Easton Enters.,
632 F.3d 1358 (Fed. Cir. 2011)................................................................................................14
United States v. Adams,
383 U.S. 39 (1966)...................................................................................................................11
W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540 (Fed. Cir. 1983)................................................................................................11
z4 Techs., Inc. v. Microsoft Corp.,
507 F.3d 1340 (Fed. Cir. 2007)..............................................................................................3, 4

STATUTES
35 U.S.C. § 102................................................................................................................................3
35 U.S.C. § 112 ¶ 6..........................................................................................................................1
35 U.S.C. § 282................................................................................................................................4

OTHER AUTHORITIES
FED. R. CIV. P. 49...........................................................................................................................16
FED. R. CIV. P. 49(a) ............................................................................................................1, 15, 16
FED. R. CIV. P. 49(a)(3)..............................................................................................................1, 15
FED. R. CIV. P. 50(a)(1)....................................................................................................................2

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FED. R. CIV. P. 51(c) and (d)..........................................................................................................15
FED. R. CIV. P. 52(a) ......................................................................................................................16
Wright & Miller, FEDERAL PRACTICE & PROCEDURE § 2507 (3d ed. 2008) .................................16

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I.

INTRODUCTION
Yahoo’s renewed motion for judgment as a matter of law on invalidity should be denied

just as the Court denied Yahoo’s motion for judgment as a matter of law at the close of evidence
at trial. TT. 5/9 p.m. at 306-07. Yahoo’s evidence did not meet the JMOL standard. Yahoo did
not present such evidence that the jury would not be at liberty to disbelieve nor establish that the
only reasonable conclusion was in Yahoo’s favor. The Court should deny Yahoo’s renewed
JMOL because the trier of fact was free to disbelieve Yahoo’s evidence and determine against a
finding of invalidity, as did the jury in the Google trial on the basis of the same prior art
references. Dkt. No. 746.
Yahoo’s renewed motion must further be denied because it misstates Yahoo’s burden to
establish JMOL in its favor. Rather than recognizing the stringent JMOL standard, Yahoo
incorrectly tells the Court that all it must show to obtain JMOL is that a “reasonable jury would
have a legally sufficient evidentiary basis to find the accused claims invalid.” Mot. at 2. Yahoo
also inappropriately places upon Bedrock the burden to present “sufficient evidence at trial to
refute” Yahoo’s invalidity evidence. Mot. at 3. Neither of these statements is correct.
Yahoo also ignores the legal presumption of the patent’s validity that can only be
overcome with clear and convincing evidence. Yahoo instead asserts that there is “no deference
owed to the PTO’s decision to confirm the accused claims in re-examination” because pieces of
prior art “were not considered by the PTO.” Mot. at 4. There is no evidence, however, that the
prior art was not considered, as Yahoo admits that the NRL code was submitted to the PTO in
the second re-examination proceeding. Mot. at 1, n.2. Under the teachings of Microsoft Corp. v.
i4i Ltd. P’ship, the Court may consider that there is a dispute as to whether the code was
considered and may evaluate whether evidence is materially new, but that does not mean that the

1

PTO is entitled to no deference. See i4i, 180 L. Ed. 2d at 146. The presumption of validity
establishes the need for deference.
Even setting aside these shortcomings, Yahoo still cannot demonstrate that it is entitled to
JMOL that claims 1 and 2 of the patent-in-suit, U.S. Patent No. 5,893,120 (the “’120 patent”, PX
1) are invalid. If fact, the only thing that Yahoo demonstrates in its Motion (Dkt. No. 845,
“Mot.”) is a fundamental misunderstanding as to the enormous hurdle it faces in attempting to
invalidate claims governed by 35 U.S.C. § 112 ¶ 6 on JMOL. The standard is exacting, and
Yahoo does not come close to meeting its burden. At trial, Yahoo did not present legally
sufficient theories as to invalidity, and Bedrock accordingly moved for JMOL on validity.
Specifically, Yahoo completely ignored the structural limitations of the claims of the patent-insuit, and in the few times that Yahoo addressed the claims’ structural limitations, Yahoo
provided only conclusory testimony. This legal deficiency carries over to Yahoo’s motion for
JMOL, where Yahoo must demonstrate that a jury would not be at liberty to disbelieve its
invalidity theories. Yet, any jury would be completely free to disbelieve Yahoo’s invalidity
theories, especially where Yahoo made no effort to explain it theories with particularized, linked
testimony.
Finally, as discussed in Section V below, the Court should find under Rule 49(a)(3) that
Yahoo failed to prove invalidity by the requisite proof. The verdict form in this case conditioned
the question of invalidity on a finding of infringement. Dkt. No. 834. When the jury found no
infringement, it did not answer the invalidity question. Since Yahoo did not object to the
conditioning instruction, the question reverts to the Court under Rule 49(a) of the Federal Rules
of Civil Procedure. Judgment should be entered against Yahoo on invalidity for the same
reasons JMOL is improper. Yahoo did not meet its burden of proof.

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II.

LEGAL STANDARDS
Yahoo Misstates the Legal Standard.

Yahoo misstates the legal standard for the

judgment as a matter of law that it seeks. Yahoo states that JMOL is appropriate “when the
Court finds that a reasonable jury would not have a legally sufficient evidentiary base to find for
the party on that issue.” Mot. at 1. Yahoo further asserts that the Court decision is “whether a
reasonable jury would have a legally sufficient evidentiary basis to find the accused claims
invalid.” Mot. at 2. The JMOL standard is much more difficult to meet. Judgment as a matter
of law on Yahoo’s assertion of invalidity is properly granted only if no reasonable jury could
arrive at a verdict against Yahoo on its affirmative defense and counterclaim. McNair v. City of
Cedar Park, 993 F.2d 1217, 1219 (5th Cir. 1993). Further, Yahoo repeatedly trumpets the
testimony of its own witnesses. In evaluating evidence, however, a jury is free to disbelieve the
movant’s witnesses and experts. See i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 848 (Fed.
Cir. 2010).
Generally. “In order to show that it is entitled to JMOL on its affirmative defense of
invalidity [Yahoo] is required to prove the essential elements of that defense to a virtual
certainty.” See i4i Ltd. P’ship v. Microsoft Corp., 670 F. Supp. 2d 568, 584 (E.D. Tex. 2009)
(Davis, J.); see also Bank of La. v. Aetna U.S. Healthcare Inc., 468 F.3d 237, 241 (5th Cir. 2006)
(“For a defendant to obtain summary judgment on an affirmative defense, it must establish
beyond dispute all of the defense’s essential elements.”). A court may grant a motion for JMOL
with regard to a claim upon which the non-movant bears the burden of proof only when a
reasonable jury would not have a legally sufficient evidentiary basis to find for the non-movant
on that issue. z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1346 (Fed. Cir. 2007); FED. R.
CIV. P. 50(a)(1). A motion for JMOL in favor of the party that bears the burden of proof at

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trial—as Yahoo does by clear and convincing evidence1 on the issue of invalidity—should only
be granted where: (1) the movant has established its case by evidence that the jury would not be
at liberty to disbelieve, and (2) the only reasonable conclusion is in the movant’s favor. z4
Techs., 2006 U.S. Dist. LEXIS 58374, *5-6 (E.D. Tex. Aug. 18, 2006); Nobelpharma AB v.
Implant Innovations, Inc., 141 F.3d 1059, 1064 (Fed. Cir. 1998). In other words, Yahoo’s JMOL
on the issue of invalidity should only be granted if Yahoo establishes its case by evidence that a
jury would not be at liberty to disbelieve, and the only reasonable conclusion is in Yahoo’s favor.
See id.
112 ¶ 6 Terms. “Anticipation under 35 U.S.C. § 102 requires the disclosure in a single
piece of prior art of each and every limitation of a claimed invention.” Apple Computer, Inc. v.
Articulate Sys., Inc., 234 F.3d 14, 20 (Fed. Cir. 2000) (internal citations omitted).

“The

anticipation of a means-plus-function claim element is governed by the same standard that
applies in determining whether such an element is literally infringed. Consequently, to support a
finding of anticipation, there must be sufficient evidence to establish that ‘the assertedly
equivalent structure performs the claimed function in substantially the same way to achieve
substantially the same result as the corresponding structure described in the specification.’”
1

Yahoo correctly notes that the parties agreed to try the issue of validity to the jury on the
preponderance of evidence standard because Microsoft v. i4i Ltd. P’ship was pending before the
Supreme Court. Bedrock, however, did not agree that, if the matter was not decided by jury
verdict, the Court should decide the validity issue by the preponderance standard. i4i has been
decided and establishes the propriety of the clear and convincing evidence standard. 180 L. Ed.
2d 131 (2011). Since the Court is now considering invalidity, the Court should apply the correct
legal standard: clear and convincing evidence. The Court is not bound to accept as controlling a
stipulation as to questions of law. Estate of Sanford v. Commissioner, 308 U.S. 39, 51 (1939);
Provident Financial Inc. v. Strategic Energy L.L.C., 404 Fed. Appx. 835, 839 n.3 (5th Cir. 2010)
(unpublished) (“We note that we are not bound to accept stipulations as to questions of law.”).
“When an issue or claim is properly before the Court, the Court is not limited to the particular
legal theories advanced by the parties, but rather retains the independent power to identify and
apply the proper construction of governing law.” Kamen v. Kemper Fin. Servs. Inc., 500 U.S.
90, 99 (1991).
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Network Appliance, Inc. v. Bluearc Corp., 374 F. Supp. 2d 825, 839 (N.D. Cal. 2005) (internal
citations omitted). Transforming well-established principles governing infringement under the
doctrine of equivalents into its invalidity counterpart yields the following standards. To support
a finding of invalidity under the doctrine of equivalents, Yahoo “must have presented, on a
limitation-by-limitation basis, particularized testimony and linking argument as to the
‘insubstantiality of the differences’ between the claimed invention and the accused device or
process, or with respect to the function, way, result test.” See Mirror Worlds, LLC v. Apple, Inc.,
2011 U.S. Dist. LEXIS 36451, at *30-31 (E.D. Tex. Apr. 4, 2011) (Davis, J.). Generalized
testimony as to the “overall similarity” between the claims and the prior art “will not suffice.”
See id. Particularized testimony is essential, so that a defendant “cannot under the guise of
applying the doctrine of equivalents, erase a plethora of meaningful structural and functional
limitations of the claim . . . .” See id. (internal quotations removed). “These requirements ensure
that a jury is provided with the proper evidentiary foundation from which it may permissibly
conclude that a claim limitation has been met by an equivalent.” See id. (internal quotations
removed).
No Shifting Burden. In its motion, Yahoo attempts to shift the burden to Bedrock to
prove that its patent is valid by repeatedly asserting that Bedrock cannot “survive JMOL.” This
is improper. Yahoo is the party with the burden, and that burden never shifts to Bedrock. See 35
U.S.C. § 282; see also Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 494, 498 (Fed. Cir.
1992) (“The statutory presumption of validity under 35 U.S.C. § 282 puts the burden of proving
invalidity on the party asserting it and the burden never shifts to the patentee.”).

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III.

THE CONSTRUCTION OF THE ASSERTED CLAIMS
Magistrate Judge Love correctly construed the claims of the patent-in-suit, Dkt. No. 369,

and the Court adopted his recommendations with little modification, Dkt. No. 554.

Most

relevant to this brief are the Court’s constructions for claim terms 1(b) and 1(c):
Claim Term
1(b) a record search means utilizing a search
key to access the linked list

Court’s Construction
Function: utilizing a search key to access the
linked list
Structure: CPU 10 and RAM 11 of FIG. 1 and
col. 3 lines 52- 56 and portions of the
application software, user access software or
operating system software, as described at col.
4 lines 22-48, programmed with software
instructions as described in Boxes 31-36 and
Boxes 39-41 of FIG. 3 and in col. 5 line 53-col.
6 line 4 and col. 6 lines 14-20, and/or
programmed with software instructions as
described in the pseudo-code of Search Table
Procedure (cols. 11 and 12) or Alternate
Version of Search Table Procedure (cols. 11,
12, 13, and 14), and equivalents thereof.

1(c) the record search means including a means Function: identifying and removing at least
for identifying and removing at least some of some of the expired ones of the records from
the expired ones of the records from the linked the linked list when the linked list is accessed
list when the linked list is accessed, and
Structure: CPU 10 and RAM 11 of FIG. 1 and
col. 3 lines 52-56 and portions of the
application software, user access software or
operating system software, as described at col.
4 lines 22-48, programmed with software
instructions as described in Boxes 33-42 of
FIG. 3 and in col. 5 line 53-col. 6 line 34,
and/or programmed with software instructions
as described in the pseudo-code of Search
Table Procedure (cols. 11 and 12) or Alternate
Version of Search Table Procedure (cols. 11,
12, 13, and 14), and equivalents thereof.

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See Dkt. No. 369. The corresponding structure is most easily understood by highlighting
the corresponding boxes of the Figure 3 from the ’120 patent:
Corresponding Structure for Claim Term 1(b)

Corresponding Structure for Claim Term 1(c)

As illustrated, claim terms 1(b) and 1(c) use common structural components, and taking
the constructions together, all components of figure 3 are necessary structure of claim 1. To
support a finding of anticipation, Yahoo must be sufficient evidence to establish that the
structure in the prior art performs the claimed function in at least substantially the same way to
achieve at least substantially the same result as this structure in the Court’s construction. See
Network Appliance, 374 F. Supp. 2d at 839.
IV.

JMOL IS INAPPROPRIATE
A. Yahoo’s Evidence that the 1995 Linux Code Anticipates Claim 1 is Legally Deficient.
Yahoo has no legally sufficient evidence of equivalence, let alone evidence that

demonstrates invalidity to a virtual certainty.
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Claim Term 1(b). In its Motion, Yahoo cites to the evidence that it presented regarding
the algorithm in the 1995 Linux code, but Yahoo’s attempt at trial to link that algorithm to the
structure in the Court’s construction was entirely conclusory:
Q. So does the Linux prior art perform the same function as the
record search means, applying the Court’s claim construction?
A. Yes, it does.
Q. And does it do it in substantially the same way to achieve
substantially the same result?
A. Yes, sir, it does.
TT 5/10 p.m. at 190:12-18 (Williams). This conclusion of equivalence, without any articulation
of the rationale underlying that conclusion, is insufficient. See Mirror Worlds, 2011 U.S. Dist.
LEXIS 36451, at *30-31.

It is not enough that Yahoo presented evidence to explain the

structures in the alleged prior art. Yahoo is required to provide evidence linking that structure to
the structure in the Court’s construction. See id.
Claim Term 1(c). Yahoo’s approach to claim 1(c) is similarly flawed. Yahoo claims in
its Motion that the 1995 Linux code “discloses the identical function and structure of this Court’s
Claim Construction Order,” see Mot. at 11, but the evidence it cites in support of this proposition
is entirely conclusory. Yahoo’s first cite to the evidentiary record—TT 5/9 p.m. at 183:6-11—is
simply Yahoo’s expert’s claim to have followed the Court’s claim constructions. Yahoo’s
second cite to the evidentiary record—TT 5/9 p.m. at 187:25-188:18—is simply Yahoo’s expert
explaining means-plus-function claim terms. Yahoo’s third and final cite to the evidentiary
record is the following conclusory testimony:
Q. All right. Thank you. Does the Linux prior art perform the
same function as Claim 1 -- as this element of Claim 1?
A. Yes, it does.
Q. And does it do it in substantially the same way and achieve the
same result?

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A. Yes, sir, it does.
TT 5/9/ p.m. at 191:15-21 (Williams).
Contrary to its assertion in its motion, Yahoo has no evidence that the structures are
identical—its cited evidence relates only to equivalence. And as to that evidence, Yahoo’s
conclusion of equivalence, without any articulation of the rationale underlying that conclusion, is
insufficient. See Mirror Worlds, 2011 U.S. Dist. LEXIS 36451, at *30-31. It is not enough that
Yahoo presented evidence to explain the structures in the alleged prior art. Yahoo is required to
provide evidence linking that structure to the structure in the Court’s construction. See id. And
it certainly cannot be said that Yahoo proved “the essential elements of [its] defense to a virtual
certainty.” See i4i, 670 F. Supp. 2d at 584.
Because Yahoo failed to present legally sufficient evidence, it is in no way entitled to
JMOL of invalidity.2 Yahoo claims that “Bedrock does not dispute that the ’95 Linux Code
discloses each element of claim 1.” See Mot. at 7. Not so. Bedrock’s expert, Dr. Mark Jones,
provided testimony on rebuttal explaining that, unlike the structure in the Court’s construction,
the hashing to the linked list and the normal operation on the linked list in the 1995 Linux code
occurs in a different access from the garbage removal. See TT 5/9 p.m. at 285:8-287:22. Yahoo

2

Yahoo similarly failed to present legally sufficient evidence for claim term 1(d):
Q. Right. Okay. So this last element is actually -- the Linux prior
art code actually performs the identical function?
A. Yes, it does.
Q. Does it perform it in substantially the same way to achieve
substantially the same result?
A. It does it in an equivalent way.
Q. And, again, the equivalent ways are under the Court’s
construction for that last element because the record search -- it is
the means utilizing record search means is entitled to equivalents.
A. It achieves substantially the same result in essentially the same
way.
TT 5/9 p.m. at 193:13-25.
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attacks this testimony as consisting of only “seven pages in the entire trial transcript,” see Mot. at
3, but as demonstrated above, Yahoo presented very little to rebut.
B. Yahoo Cannot Show That the NRL Code Renders Claim 1 Obvious.
Yahoo admits that the NRL code does not anticipate the claims of the ’120 patent; Yahoo
only argues for obviousness based on segments of disjoined structure in the NRL code. The
NRL code has two relevant functions: key_acquire() and key_search().

The function

key_acquire() traverses a linked list and removes expired records during that traversal; however,
key_acquire() does not use a hash table or a hash function to get to the head of the linked list as
required by the structure of claim term 1(c). TT 5/9 p.m. at 198:25-199:12; see also Mot. at 15
(admitting missing structure). The function key_search() accesses a linked list via a hash table
and hash function, but it does not remove expired records during the access. TT 5/9 p.m. at
200:2-12. The functions key_acquire() and key_search() are completely separate algorithmic
structures. TT 5/9 p.m. at 207:12-15 (“Q. But there is no one structure in that code that includes
all the elements of the claims of the ’120 patent, does it? A. That is correct.”). Nevertheless,
Yahoo argues that, because the functionality across key_acquire() and key_search() could be
combined, claim 1 of the ’120 patent is obvious. See Mot. at 15-16. Yahoo, however, offers no
legally acceptable theory as to why it would have been obvious to combine these two functions.
Yahoo first posits that one skilled in the art would have combined these functions
because they are “side-by-side.” See Mot. at 16 (citing Williams’s testimony, TT 5/9 p.m. at
198:9-23). Persons of ordinary skill in the art are motivated to make combinations based on
technical considerations rather than proximity. Yahoo’s second argument is expressly based on
hindsight: “So it would be obvious to someone to combine those if they needed to, and you
would get all the elements of the ’120 patent.” TT 5/9 p.m. at 198:20-22. Yahoo’s ex post
reasoning renders its obviousness analysis legally defective. See KSR Int’l Co. v. Teleflex Inc.,
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550 U.S. 398, 421 (2007) (“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); see also W.L.
Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one
of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to fall victim to the insidious effect of
a hindsight syndrome wherein that which only the inventor taught is used against its teacher.”).
Nevertheless, Bedrock rebutted Yahoo’s hindsight-based obviousness theory and
explained why the combination of key_acquire() and key_search() would not have been
obvious—the NRL code, itself, teaches away from this combination. TT 5/9 p.m. at 289:7-20.
Specifically, the NRL code contains a comment in the key_acquire() function that teaches that
garbage collection “should really be done by a function like key_reaper()” See DX 37 at
DEF00007964 (lines 1449-1451). The function key_reaper() that the comment refers to is
standalone garbage collection. TT 5/9 p.m. at 208:4-6. Standalone garbage collection is the
antithesis of “on-the-fly” garbage collection taught in the ’120 patent, which executes “while
other types of access to the storage space are taking place.” See PX 1 at 2-55-57. That the NRL
code itself teaches away from the ’120 patent is evidence of nonobviousness. See KSR, 550 U.S.
at 416 (“[W]hen the prior art teaches away from combining certain known elements, discovery
of a successful means of combining them is more likely to be nonobvious.”) (favorably
discussing United States v. Adams, 383 U.S. 39 (1966)). As the NRL code expressly teaches
away from the very hindsight-based combination that Yahoo advances in its Motion, Yahoo
cannot possibly demonstrate that it proved that the patent is obvious “to a virtual certainty.” See
i4i, 670 F. Supp. 2d at 584.

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C. Dr. Nemes’s Own ’495 Patent Does Not Render Obvious Claim 1.
Yahoo claims that the Dr. Nemes’s previous patent, U.S. Patent No. 5,121,495 (the “’495
patent,” PX 4), renders the ’120 patent obvious. See Mot. at 21. The ’495 patent was before the
USPTO in the original prosecution of the ’120 patent, and the examiner initially rejected the ’120
patent under the judicially created doctrine of double patenting in view of the ’495 patent. See
PX 2 at BTEX0000342. Dr. Nemes responded to this rejection by explaining the differences
between the ’495 patent and the ’120 patent. See id. at BTEX0000364-366. The examiner
agreed with Dr. Nemes’s explanation and issued the patent. See id. at BTEX0000370-371.
In any event, Yahoo’s obviousness argument fails at all points. First, Yahoo misstates
the problem addressed by the ’120 patent. Yahoo asserts that the problem faced by the ’120
patent was “using hashing techniques in an information storage and retrieval system and on-thefly removal of automatically expiring records from the hash table.” See Mot. at 21. In this way,
Yahoo sets out its obviousness analysis by improperly assuming the solution, i.e., on-the-fly
garbage collection, as the problem. The actual problem faced by Dr. Nemes in conceiving the
’120 is expressly stated in the patent itself: “The problem, then, is to provide the speed of access
of hashing techniques for large, heavily used information storage systems having expiring data
and, at the same time, prevent the performance degradation resulting from the accumulation of
many expired records.” PX 1 at 2:22-26.
Yahoo’s next mistake is its belief that “the only difference between the ’120 patent and
the ’495 patent is how a hash collision is resolved.” See Mot. at 21-22. Contrary to Yahoo’s
belief, the two patents are in fact very different:
Q. How is your new patent better than the old zigzag patent?
A. Well, as I just mentioned, it's simpler, less complex.
Programmers have an easier time implementing it. That’s number
one.
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Number two, the ’120 makes better use of memory than the
’495. The ’495, which uses this linear probing technique, requires
that before the computer actually starts running, a section of
memory has to be reserved for all the records. And you have to
engineer that, keeping in mind your maximum needs. You have to
say, well, I expect no more than a million records, let’s say, so I
have to accommodate for that. You may use in that day no more
than the space required for, let’s say, a thousand records, but you
have to pre-allocate space for the full million records.
The ’120, on the other hand, you allocate memory
piecemeal. As a record comes in and you need to store it, you
allocate a specific, small piece of memory just for that record. So
it never wastes any memory in that pre-allocation. It’s also -- the
’120 can be faster than the ’495 in that zigzag operation going
through memory, the ’495 periodically copies one record into the
memory position that another record resides in. In the ’120,
there’s no copying. When I was standing up there, you didn’t see
me doing any kind of copying.
You also saw that in the ’120, we were locking one
particular list, and the other lists could be accessed by other
processes in the computer.
The ’495 doesn't allow that
multitasking. In the ’495, when a single process is doing anything
in the entire collection of data, no other process can be accessing
the data.
See TT 4/27 p.m. at 12:22-14:5. Further, the structures in the ’120 and ’495 patents that perform
the on-the-fly removal demonstrate the vast differences between the patents:

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Removal in the ’495 Patent

Removal in the ’120 Patent

PX 4 and PX 1 (note that, in the ’120 patent, the “remove procedure causes actual removal of the
designated element by adjusting the predecessor pointer so that it bypasses the element to be
removed.” ’120::7:43-45.) As is illustrated by the figures, the ’120 patent is much simpler than
the ’495 patent, and simplicity can be an indicium of nonobviousness. See In re Mixon, 59
C.C.P.A. 1396, 1400 (C.C.P.A. 1973) (“[S]implicity itself has on occasion been held to be an
indicia of non-obviousness.”).3 In any event, the differences between the ’120 and ’495 patents
undermine Yahoo’s assertion that the issue of obviousness can be cast as a choice between hash
3

But see Tokai Corp. v. Easton Enters., 632 F.3d 1358, 1371 (Fed. Cir. 2011) (noting “the
simplicity and availability of the components making up the claimed invention” in affirming a
district court’s grant of summary judgment of obviousness).
-14-

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collision resolution techniques, and Yahoo’s arguments and evidence that flow from this
incorrect assumption inescapably miss the point.4

As a result, Yahoo cannot possibly

demonstrate that it proved that the patent is obvious “to a virtual certainty.” See i4i, 670 F. Supp.
2d at 584.
D. None of Yahoo’s Many Obviousness Combinations Invalidate Claim 2.
Yahoo repeatedly states that Bedrock “did not contest,” “did not dispute,” certain
arguments that Yahoo makes in its Motion. And for good reason—what Yahoo argues in its
Motion is much more than it presented at trial. Indeed, Yahoo repeatedly advances unsupported
attorney argument where it failed to present critical testimony. As evidenced by the absence of
citation to the trial record, the following sentences from Yahoo’s brief should be, but are not,
supported by evidence:


“By placing a limit on the number of entries to examine on any particular sweep, the
system disclosed in the Apple patent also determines a maximum number of entries that
will be removed, because the system cannot remove more entries than it examines on any
particular sweep.” Mot. at 27;



“Furthermore, the motivation existed to combine this art. Because the removal of expired
records can be an expensive process, placing a hard limit on the number of removals, or
garbage collection, occurring at any particular time would have been desirable in any
number of the prior art systems and methods described above.” Mot. at 27;

4

Yahoo asserts that its expert presented testimony comparing the constructions of the claims of
the ’120 patent to the ’495 patent. See Mot. at 24 n.20. Yahoo, however, failed to present
particularized, linked testimony. See, e.g., TT 5/9 p.m. at 202:18-22 (“Q. That’s Figure 3. What
about Figures 5 and 7, is it the same? A. They are the same. They are the same or very similar.
Again, the only difference would be in the hashing technique.”) As a result, Yahoo’s evidence is
legally insufficient. See Mirror Worlds, 2011 U.S. Dist. LEXIS 36451, at *30-31.
-15Dallas 325604v2



“A person of ordinary skill in the art would recognize that this simple ratio could be
applied to dynamically setting the number of removals in the ip_rt_hash_table processing
by, for example, computing the ratio of the number of entries in the ip_rt_hash_table to
the number of active processes.” Mot. at 28.
Yahoo’s record at trial is much thinner than the unsupported argument it presents in its

Motion. In fact, the transcript copied into Yahoo’s Motion on pages 25-26 is the entirety of
Yahoo’s evidence that claim 2 is invalid. Moreover, Yahoo presented absolutely no testimony
that any reference or system disclosed the necessary structural components of claim 2 or its
equivalent. As a result, Yahoo cannot possibly demonstrate that it proved that the patent is
obvious “to a virtual certainty.” See i4i, 670 F. Supp. 2d at 584.
V.

THE COURT MAY DECIDE THE ISSUE OF INVALIDITY AS FACT FINDER
Rule 49(a) of the Federal Rules of Civil Procedure governs the disposition of the

invalidity issue, where the jury was instructed to skip the question on invalidity if it failed to find
infringement. Rule 49(a)(3) provides:
(3)
Issues Not Submitted. A party waives the right to a jury
trial on any issue of fact raised by the pleadings or evidence but
not submitted to the jury unless, before the jury retires, the party
demands its submission to the jury. If the party does not demand
submission, the court may make a finding on the issue. If the court
makes no finding it is considered to have made a finding consistent
with its judgment on the special verdict.
FED. R. CIV. P. 49(a). Rule 51 requires that a party object to a jury instruction at the opportunity
provided by the Court. FED. R. CIV. P. 51(c) and (d).
A party has the burden under Rules 49(a) and 51 to ensure that its issues are properly
submitted to the jury in such a manner that the jury could and would decide those issues.
McDaniel v. Anheuser-Busch, Inc., 987 F.2d 298, 309 (5th Cir. 1993). By failing to object to the
conditioning instruction to skip the invalidity question if the jury failed to find infringement,
-16Dallas 325604v2

Yahoo waived a jury finding on the issue and placed the fact finding in the hands of the Court.
Id.; Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1535 (Fed. Cir. 1987) (When
conditioning caused jury not to answer invalidity question on best mode, the best mode issue, by
operation of Rule 49(a) reverted to the Court for decision); Therrell v. Georgia Marble Holdings
Corp., 960 F.2d 1555, 1563 (11th Cir. 1992). The Court’s finding under Rule 49 is reviewable
under the “clearly erroneous” standard of Rule 52(a). Spectra-Physics, 827 F.2d at 1535;
Anderson v. Cryovac, Inc., 862 F.2d 910, 916 (1st Cir. 1988).
Even when a party has requested the submission of a particular issue as part of a special
verdict, as Yahoo did, it will be held to have waived its right to trial by jury on the issue unless it
objected to the failure to submit the question before the jury has retired. 9B Wright & Miller,
FEDERAL PRACTICE & PROCEDURE § 2507 (3d ed. 2008). If the right to jury trial of an issue has
been waived by a failure to demand its submission, the trial judge should make his or her own
finding of fact on that issue. Id. If the court does not do so, it will be presumed on appeal that
the lower court made whatever finding was necessary in order to support the verdict and
judgment that was entered. Id.
For all the reasons discussed in Sections IV and V above, the Court should deny Yahoo’s
motion for JMOL and should instead find that Yahoo failed to prove invalidity by the requisite
proof, under either the clear and convincing evidence standard or the preponderance standard,
and should enter judgment against Yahoo on its affirmative defense and counterclaim of
invalidity.

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DATED: July 1, 2011

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]
Scott W. Hejny
Texas Bar No. 24038952
[e-mail]
Jason D. Cassady
Texas Bar No. 24045625
[e-mail]
J. Austin Curry
Texas Bar No. 24059636
[e-mail]
Phillip M. Aurentz
Texas Bar No. 24059404
[e-mail]
Daniel R. Pearson
Texas Bar No. 24070398
[e-mail]
Stacie Greskowiak
Texas State Bar No. 24074311
[e-mail]
Ryan A. Hargrave
Texas State Bar No. 24071516
[e-mail]
McKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Facsimile: 214-978-4044

Dallas 325604v2

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
per Local Rule CV-5(a)(3) this 1st day of July, 2011.
/s/ Austin Curry
John Austin Curry

Dallas 325604v2