Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al
SUR-REPLY to Reply to Response to Motion 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. (Cawley, Douglas)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SOFTLAYER TECHNOLOGIES, INC.,
CASE NO. 6:09-cv-269-LED
Jury Trial Demanded
BEDROCK’S SURREPLY TO YAHOO’S RENEWED MOTION FOR JUDGMENT
AS A MATTER OF LAW REGARDING INVALIDITY [DKT. NO. 845]
I. ARGUMENT IN SURREPLY
A. The Court Should Make Its Finding Under Rule 49.
Although both parties agree that Yahoo’s counterclaim for invalidity should be resolved,
the parties dispute the correct legal framework for that resolution. In its Motion, Yahoo argued
that the Court should decide the issue of invalidity based on “whether a reasonable jury would
have a legally sufficient evidentiary basis to find the accused claims invalid.” See Mot. at 2. In
addition to noting Yahoo’s distorted view of Rule 50, Bedrock responded by pointing out that
Rule 49, not Rule 50, now controls to Yahoo’s counterclaim. See Res. at 16-17. 1 In its Reply,
Yahoo again asks the Court to grant its JMOL on invalidity solely under Rule 50. See Rep. at 89. Yahoo asserts that Rule 50 applies based on its belief that this case did not involve a special
verdict, but Yahoo is wrong. As the Second Circuit recognized, a jury that decides the material
issues of fact in a case and is not asked nor given the opportunity to provide a general verdict in
favor of either plaintiff or defendant can hardly be said to have returned a general verdict under
Rule 49(b) HCB Sport Collectibles v. All-American Collectibles, No. 99-7090, 2000 U.S. App.
By failing to object to the conditioning instruction to skip the invalidity question if the jury
failed to find infringement, Yahoo waived a jury finding on the issue and placed the fact finding
in the hands of the Court. 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); see also Smith-Blair,
Inc. v. R. H. Baker & Co., 232 F. Supp. 484, 487 (S.D. Cal. 1962) (finding waiver under Rule 49
when the court directed the jury not to answer questions of infringement if the jury affirmatively
answered questions related to invalidity).
LEXIS 3462 *4-5 (2d Cir. Feb. 24, 2000) (noted in 9B Charles A. Wright & Arthur A. Miller,
Federal Practice & Procedure § 2506 (3rd ed. 2008). 2
B. Yahoo Cannot Satisfy the Requirements of Rule 50(b).
Yahoo originally moved for JMOL under Rule 50(b), and Bedrock’s response
accordingly addressed the merits Yahoo’s case under the JMOL standard. As a brief recap of
Bedrock’s response, the rigors of the JMOL standard, by themselves, justify denial of Yahoo’s
motion for JMOL:
Yahoo’s Rule 50(b) Motion can only be granted only if no reasonable jury could
arrive at a verdict against Yahoo on its affirmative defense and counterclaim, see
McNair v. City of Cedar Park, 993 F.2d 1217, 1219 (5th Cir. 1993);
Yahoo’s invalidity case hinged on its expert’s subjective theories of structural
equivalence, yet a jury would be free to disbelieve Yahoo’s witnesses and experts,
see i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 848 (Fed. Cir. 2010); and
Yahoo must establish beyond dispute all of the essential elements of its invalidity
case to obtain JMOL on its affirmative defense of invalidity, see Bank of La. v.
Aetna U.S. Healthcare Inc., 468 F.3d 237, 241 (5th Cir. 2006). 3
Moreover, under Rule 39(b), issues upon which the parties do not demand a jury trial “shall be
tried by the court.” FED. R. CIV. P. 39(b). The parties here effectively withdrew the issue of
invalidity from the jury when they did not object to the conditioning of the invalidity question on
a finding of infringement, and they therefore consented to trial by the Court. See HCB Sport
Collectibles, 2000 U.S. App. LEXIS 3462 at *5-6.
In its Reply, Yahoo suggested that the “virtual certainty”/“beyond dispute” standard is
erroneous, see Rep. at 9; however, the Fifth Circuit’s view of Rule 50 in Bank of La. v. Aetna is
well-established law. Moreover, because Rule 50 is not unique to patent law, the Federal Circuit
would apply this view of Rule 50 vis-à-vis Yahoo’s affirmative defense in review of this case.
See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008).
Because Rule 50 should be unattainable to Yahoo and further because Rule 49 is the
appropriate legal standard for resolving Yahoo’s counterclaim, Bedrock will address the merits
of Yahoo’s counterclaim of invalidity to the Court as factfinder on the issue. The Court should
deny Yahoo’s motion for JMOL and should instead find under Rule 49(a) that Yahoo failed to
prove invalidity by the requisite proof under the clear and convincing evidence standard. 4
Bedrock respectfully requests that the Court enter judgment against Yahoo on its affirmative
defense and counterclaim of invalidity. The Court’s finding under Rule 49 is reviewable under
the “clearly erroneous” standard of Rule 52(a). See Spectra-Physics, 827 F.2d at 1535.
C. Yahoo Failed to Adduce an Essential Element of Its Invalidity Defense.
A party seeking to invalidate a patent has a clear and convincing burden to present
evidence that proves how the disclosures in the prior art read onto the claim limitations of the
patent. See 35 U.S.C. § 282. A party seeking to invalidate a patent with equivalence theories
under 35 U.S.C. § 112 ¶ 6 5 must further present particularized testimony and linking argument. 6
This Court is not bound by the parties’ agreement to try to this case by the preponderance
standard. 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). In any event, the Court could also find that Yahoo failed to carry its burden under
the preponderance standard for completeness of the record.
See Network Appliance, Inc. v. Bluearc Corp., 374 F. Supp. 2d 825, 839 (N.D. Cal. 2005)
(concluding that anticipation and infringement are governed by the same standard for claims
governed by § 112 ¶ 6).
See Mirror Worlds, LLC v. Apple, Inc., 2011 U.S. Dist. LEXIS 36451, at *30-31 (E.D. Tex.
Apr. 4, 2011) (Davis, J.) (granting JMOL of no infringement under the doctrine of equivalence
where plaintiff failed to present particularized testimony and linking argument).
It is not enough that Yahoo described the structure of the asserted prior art. A defendant relying
on its expert’s subjective conclusion must present the explanation underlying that expert’s
conclusion by: (i) accounting for the differences between the overall structure 7 in the prior art
and the overall structure in the claim limitation; and (ii) explaining why these differences are
insubstantial. See Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568 (Fed.
Cir. 1996) (affirming the district court’s grant of JMOL of no infringement because the
plaintiff’s expert failed to present “any particularized testimony explaining why the function and
result were the same”) (emphasis in original).
While Yahoo emphasizes that it described the structure of the asserted prior art, this alone
is not enough. At no point did Yahoo identify any differences between the structure in the prior
art and the structure in the Court’s constructions. And at no point did Yahoo present any
explanation as to why the differences between the structure in the prior art and the structure in
the Court’s construction are insubstantial. This is important because the parties largely agree as
to how the asserted prior art worked; the point of dispute is whether the structures in the prior art
are equivalent to the structures in the Court’s construction. But because Yahoo failed to present
its theories of equivalence, Bedrock was left with very little to rebut. To be sure, Yahoo
presented only conclusory testimony that the unspecified, unidentified differences are
insubstantial, but such evidence is deficient as a matter of law. As Yahoo failed to establish an
essential element of its case of invalidity, the Court should find that Yahoo failed to prove that
the asserted claims of the patent are invalid.
See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed. Cir. 1999) (noting that the
individual components of the structure are not limitations; rather, the claim limitation is the
D. Yahoo Presented No Evidence of Equivalence with Respect to the 1995 Linux
Yahoo apparently misunderstands what is required to establish equivalence. Bedrock
does not dispute that Yahoo’s expert, Mr. Joel Williams, described parts of the structure of the
1995 Linux code line-by-line. But how the structures in the prior art worked is not the dispute.
Again, the dispute is whether those structures are equivalents. And to that issue, Mr. Williams
did not identify any differences between the structure of the 1995 Linux code and the structures
in the Court’s constructions, and he further did not explain why any unspecified, unidentified
differences are insubstantial. 8 Bedrock noted this deficiency in its Response, and Yahoo has not
come forward with any testimony where Yahoo’s expert actually identified any differences
between the 1995 Linux code and the structures in the Court’s constructions or explained why
any differences are insubstantial. Instead, Yahoo again cites only to Mr. Williams’ testimony
regarding the structures in the prior art without any regard or reference to the structures in the
Court’s construction. As such, Yahoo failed to establish an essential element of its case of
invalidity and failed to carry its burden. The Court should find that Yahoo failed to prove that
the 1995 Linux code invalidates the asserted claims of the patent-in-suit.
E. Yahoo Failed to Establish Obviousness with the NRL Code.
The NRL code contains two different functions—key_acquire() and key_search()—
neither of which is identical or equivalent to the structures in the Court’s construction. Yahoo’s
witnesses did not dispute this at trial, see 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.”), and Yahoo does not dispute this in its brief, see Mot. at 15 (admitting missing
structure). At trial, Yahoo argued that the NRL code renders the patent obvious based on its
The testimony of David Filo and Alexy Kuznetsov are deficient for the same reasons.
theory that one of skill would have been motivated to combine these two functions, but as
Bedrock explained in its Response, Yahoo’s theories of obviousness were based on
impermissible hindsight. See Res. at 10-11. In its Reply, Yahoo suggests that KSR’s discussion
of “common sense” permits a defendant to employ hindsight in its obviousness analysis. See
Rep. at 5. The Supreme Court in KSR, however, reiterated that hindsight has no place in an
obviousness analysis. See KSR Int’l Co. v. Teleflex Inc., 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.”) As such, Yahoo’s obviousness evidence—which
treated the combination of the claim limitations as if they were the problem to be solved rather
than the solution to another problem—is legally defective. See TT 5/9 p.m. at 198:20-22
(Yahoo’s expert reasoning that one of skill would be motivated to combine the two functions to
“get all the elements of the ’120 patent.”).9
In addition, Yahoo’s evidence that the combination of the two functions would have been
“a fairly easy thing to do” is irrelevant to the determination of obviousness. Ease of
implementation of an invention is not the same as ease of conception of that invention. As
illustration, a second-year electrical engineering student can easily arrange transistors and
resistors on a breadboard to filter a signal, but it does not follow that the student could have
conceived of the idea of a digital signal filter.
Moreover, the NRL code’s teaching away of the patent is objective evidence of
nonobviousness. Yahoo attempts to undermine this evidence by citing another comment in the
NRL code that discusses the deletion of records during the scan of a linked list. See Rep. at 5.
Further, Yahoo has no evidence that, even if the key_acquire() and key_search() functions
were combined, the result would have been identical or equivalent to the structures in the Court’s
This is not the dispute. In its Response, Bedrock even acknowledged that the key_acquire()
function “traverses a linked list and removes expired records during that traversal.” See Res. at
10. The dispute is whether one skilled in the art would have been motivated to implement the
key_acquire() function to operate on a linked list that was accessed through a hash function and a
hash table and therefore meet all of the limitations of claim 1. As to that dispute, the NRL code
itself makes clear that this combination would have been eschewed in favor of standalone
garbage collection. See DX 37 at DEF00007964 (garbage collection “should really be done by a
function like key_reaper()”).
In sum, the only legally adequate evidence in the trial record is Bedrock’s evidence that
the NRL code teaches away from the patent, and the Court should accordingly find that Yahoo
failed to carry its burden in proving that the NRL code invalidates the asserted claims of the
F. Yahoo Failed to Establish Obviousness with Dr. Nemes’s Own 495 Patent.
The testimony below is the entirety of Yahoo’s expert’s testimony on this issue:
Q. And really quickly -- again, we are on time constraints here -- there’s one more
reference I wanted to go through, it's the ’495 patent. Did you also consider this
A. Yes, sir, I did.
Q. And what is difference between the ’495 and ’120 patent?
A. They are essentially the same. As a matter of fact, they are identical. The only
difference is the hashing technique that’s used. In the ’495 they use a linear probing,
and in the ’120 it’s -- it’s the linked list. But they’re both well-known hashing
Q. So would Claims 1 and 2 be obvious in light of the ’495 patent?
A. Yes, sir, they would.
Q. So showing this being the next slide, really quickly, those are differences between the
Claim 1 and Claim 2 -- Claim 1 of the ’495 patent and Claim 1 of the ’120 patent, are
the differences significant?
A. No, they are not significant. Again, the only difference is the hashing technique is
different. Other than that, they are the same.
Q. Now, if we go to the figures of the patent. I think we have Figure 3. Are the
differences here significant?
A. No, they’re the same. Again, the only difference is the hashing technique.
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.
Q. So does the ’495 patent invalidate Claim 1 of the ’120 patent.
A. Yes, sir. The ’495 invalidates Claim 1 of the ’120 patent.
TT 5/9 p.m. at 201:16-203:11. In this testimony, Yahoo’s expert appears to conflate legal
principles by discussing equivalence but concluding obviousness. In any event, the only
proffered basis for Yahoo’s obviousness contention is Yahoo’s expert’s mistaken belief that the
only difference between the two patents is the collision resolution technique (i.e., linear probing
vs. external chaining). As explained below, this is simply untrue.
Yahoo is wrong in its belief that “the only difference between the ’120 patent and the
’495 patent is the use of external chaining versus linear probing.” See Rep. at 6. Although the
’120 patent and the ’495 patent both concern on-the-fly garbage removal and use different data
structures to organize records, the on-the-fly garbage removal technique taught in the ’495 patent
is “confined to linear probing and is entirely inapplicable to external chaining.” See PX 1 (the
’120 patent at 2:30-31. Specifically, the ’495 patent accomplishes actual removal of expired
records from the hash table by “travers[ing], in reverse order, a consecutive sequence of records
residing in the hash table array [and] continually relocating unexpired records to fill gaps left by
the removal of expired ones.” See ’120::2:31-35. As Bedrock noted in its Response, the actual
removal of expired records is expressed in flow chart form in Figure 4 of the ’495 patent. See
PX 4 at 2:66-68 (“FIG. 4 shows a general flow chart for garbage collecting remove procedure
which forms part of the table searching operation of FIG 3.”).
Because the technique of the ’495 patent is entirely inapplicable to external chaining,
the’120 patent removes expired records in a much different way, namely, pointer adjustment.
See PX 1 (the ’120 patent) at 7:43-45 (“The remove procedure causes actual removal of the
designated element by adjusting the predecessor pointer so that it bypasses the element to be
removed.”). 10 Thus, far from Yahoo’s assertion that the ’120 patent is simply the combination of
the ’495 patent with external chaining, the ’120 patent teaches that the technique of the ’495
patent is “entirely inapplicable to external chaining.” In other words, the ’495 patent could not
be combined with external chaining. As such, the Court should find that Yahoo failed to carry
its burden in proving that Dr. Nemes’s own ’495 patent invalidates the asserted claims of the
Yahoo incorrectly claims that Bedrock “argued vehemently against including Figure 4 as a
structural requirement” during Markman. See Rep. at 7. This is not true. Bedrock argued, and
the Court agreed, that the memory deallocation component of Figure 4 in the ’120 patent should
not be corresponding structure because it did not perform the function of actual record removal.
See Dkt. No. 300 (Bedrock’s Reply Claim Construction Brief) at 7. Judge Love correctly noted
Bedrock’s position in its Claim Construction Order and Opinion. See Dkt. No. 369 (the Court’s
Markman Order) at 31 (“Bedrock contends, the corresponding structure is the portion of Figure 4
and/or the pseudo-code of the Remove Procedure that relate to pointer adjustment.”).
Yahoo cites Lexion Med., LLC v. Northgate Techs., Inc., 292 Fed. Appx. 42, *23 (Fed. Cir.
2008) for the proposition that, if a patent is a simple and minor improvement of a prior patent,
the later patent is obvious. See Rep. at 7. Yet, the ’120 patent was not a mere improvement of
the ’495; rather, the ’120 patent uses a completely different record removal algorithm. See § I.F
G. Yahoo Failed to Establish the Obviousness of Claim 2.
Lacking evidentiary support from the trial record, Yahoo attempted to advance
unsupported attorney argument to support its contention that claim 2 is obvious. See Mot. at 2728. Bedrock responded by noting the absence of evidentiary support. See Res. at 15-16. In its
Reply, Yahoo purports to provide citations to its unsupported sentences, but these citations do
not support Yahoo’s arguments. This is a significant failure by Yahoo because these sentences
are critical to Yahoo’s contention for obviousness of claim 2.
Particularly, Yahoo still has no support for its argument that “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.”
See Mot. at 27. Yahoo cites the “Apple patent,” DX 101 and the NRL code, DX 37, but these
references are completely silent on whether motivation existed to combine this art, and these
references do not (and cannot) speak for themselves to evidence what would have been
“desirable” to those skilled in the art. Similarly, Yahoo still has no support for its argument that
“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.” See Mot. at 28. Again, the Apple patnet and the NRL code do not and cannot speak
to what a person of ordinary skill would or would not recognize. Again, these are not
insignificant shortcomings. Without any evidence as to motivation to combine or how a
combination would have been obvious to one skilled in the art, Yahoo simply has no obviousness
case against claim 2. As such, the Court should find that Yahoo failed to carry its burden in
proving that its asserted obviousness combinations render obvious claim 2.
For the foregoing reasons, Bedrock respectfully requests that the Court deny Yahoo’s
Motion for JMOL and instead find under Rule 49(a) that Yahoo failed to prove invalidity by the
requisite proof under the clear and convincing evidence standard.
DATED: July 18, 2011
McKOOL SMITH, P.C.
/s/ Douglas A. Cawley
Sam F. Baxter
Texas Bar No. 01938000
McKOOL SMITH, P.C.
104 E. Houston Street, Suite 300
P.O. Box 0
Marshall, Texas 75670
Telephone: (903) 923-9000
Facsimile: (903) 923-9099
Douglas A. Cawley, Lead Attorney
Texas Bar No. 04035500
Theodore Stevenson, III
Texas Bar No. 19196650
Scott W. Hejny
Texas Bar No. 24038952
Jason D. Cassady
Texas Bar No. 24045625
J. Austin Curry
Texas Bar No. 24059636
Phillip M. Aurentz
Texas Bar No. 24059404
Texas State Bar No. 24074311
Ryan A. Hargrave
Texas State Bar No. 24071516
McKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
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
ATTORNEYS FOR PLAINTIFF
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 18th day of July, 2011.
/s/ Austin Curry
John Austin Curry
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