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

Filing 879

NOTICE by Yahoo! Inc. re #878 Notice (Other) Yahoo!'s Response to Bedrock's Notice of Conclusion of Second Reexamination (Chaikovsky, Yar)

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-269-LED

JURY TRIAL DEMANDED

YAHOO!’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND
REEXAMINATION

Yahoo! hereby responds to Bedrock’s Notice of Conclusion of Second Reexamination
(“Notice”). In its Notice, Bedrock asserted that “the art relied upon by Yahoo! was undeniably
in front of the USPTO in the second re-examination.” Dkt. No. 878 at 1. Bedrock’s assertion is
irrelevant, because the second reexamination was not allowed to be presented to the jury at trial
and is not in evidence.1 Further, the issue is not whether the prior art relied upon by Yahoo! was
in front of the PTO; rather, the issue is whether the examiner substantively considered the prior
art. This Court should only defer to the PTO if and when the PTO actually examines the patent
in view of the Yahoo! prior art. It is clear from the examination history that the PTO did no such
thing. Contrary to Bedrock’s assertion, there is no indication in the second reexamination
record, on the Notice of Intent to Issue Ex Parte Reexamination Certificate (“NIRC”), or on the
Ex Parte Reexamination Certificate that the examiner ever considered the prior art Yahoo! relied
upon at trial and in briefing on Yahoo!’s Renewed Motion for Judgment as a Matter of Law
Regarding Invalidity (Docket Nos. 845, 871) (“Motion”).
FACTUAL BACKGROUND
Yahoo! presented evidence at trial that the following prior art either anticipates or makes
obvious the ’120 patent: 1) early versions of the Linux route.c file (Linux source code versions
1.3.52, 1.3.53, and 2.0.1 (“the ’95 Linux Code”)), and 2) the Naval Research Laboratories key
management computer source code (“the NRL code”).

See Motion at 6-14 and 14-20,

respectively. There is no indication that the PTO ever substantively considered either of these
two sets of prior art in the second reexamination.
The Request for Ex Parte Reexamination of U.S. Patent No. 5,893,120, No. 90/011,426
(“Request”) was filed on January 10, 2011 and cited six pieces of prior art: an article by
Christopher J. Van Wyk and Jeffrey Scott Vitter; the ’495 and ’499 patents issued to Richard
1

Docket No. 680, regarding Bedrock’s Motion in limine A.

YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 1

Nemes; and three patents issued to Thatte, Dirks, and Morris.

These six references were

included on an Information Disclosure Statement (“IDS”) accompanying the January 2011
Request.
In February 2011, the PTO granted the Request for Reexamination. Along with the
order, the examiner included a copy of the January 2011 IDS, upon which he had initialed the
six pieces of prior art cited in the Request and considered as required by PTO regulations.
MANUAL

OF

PATENT EXAMINING PROCEDURE (“MPEP”) 609.05(b) (“Examiners must consider

all citations submitted in conformance with the rules, and their initials when placed adjacent to
the considered citations on the list or in the boxes provided on a form PTO/SB/08A and 08B . . .
provides a clear record of which citations have been considered by the Office.”).
On April 1, 2011, Bedrock submitted an IDS which cited two early versions of the ’95
Linux code—Linux source code versions 1.3.52 and 2.0.1. However, the examiner did not initial
or make any other marking on this IDS indicating that the examiner considered these references.2
On April 28, 2011—after the first day of trial—Bedrock submitted to the PTO the
declaration of Alexey Kuznetsov, including attachments of the ’95 Linux code. There is no IDS
in the reexamination record for this submission, and no indication in the record that the examiner
considered these documents. Bedrock also submitted an IDS that cited the NRL code. Again,
there are no initials or any other marking on this IDS in the record, and no indication that the
examiner considered these references.
As Yahoo! has already noted in the Motion, the NIRC does not indicate that the NRL
code or the ’95 Linux code were ever considered by the PTO during the reexamination. In fact,
the NIRC specifies that the Certificate will be issued in view of the “Request for Reexamination
2

At trial, Nicholas Godici, former Commissioner for Patents at the PTO, testified that the
absence of an examiner’s initials indicated that prior art was not reviewed. Trial Transcripts
May 9, 2011 (Afternoon) at 170:23-171:6.
YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 2

submitted 1/10/2011,” and does not contain any citation, mention, or discussion of any prior art
considered other than the art included in the Request.
The Certificate itself only lists the article and patents included in the Request, and does
not identify the art relied upon at trial. Dkt. No. 878-1.
CONCLUSION
Contrary to Bedrock’s characterization, the reexamination record establishes that the
PTO did not consider the art that Yahoo! relied upon at trial and in its Renewed Motion for
Judgment as a Matter of Law Regarding Invalidity. In fact, the Reexamination Certificate does
not identify the art relied upon at trial.
Dated: September 28, 2011

Respectfully submitted,

/s/ Yar R. Chaikovsky
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]
Fay E. Morisseau (Texas Bar No. 14460750)
[e-mail]
MCDERMOTT WILL & EMERY LLP
1000 Louisiana, Suite 1300
Houston, TX 77002
Tel: [phone]
Fax: [phone]
Christopher D. Bright
[e-mail]
MCDERMOTT WILL & EMERY LLP
18191 Von Karman Ave, Ste. 500
Irvine, California 92612
Tel: [phone]
YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 3

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]
HALTOM & DOAN
Crown Executive Center, Suite 100
6500 Summerhill Rd.
Texarkana, Texas 75503
Tel: [phone]
Fax: [phone]
ATTORNEYS FOR DEFENDANT YAHOO!
INC.

YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 4

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented
to electronic service were served with a true and correct copy of the foregoing by certified mail,
return receipt requested, on this the 28th day of September, 2011.

/s/ Yar R. Chaikovsky
Yar R. Chaikovsky

YAHOO’S RESPONSE TO BEDROCK’S NOTICE OF CONCLUSION OF SECOND REEXAMINATION – Page 5