I/P Engine, Inc. v. AOL, Inc. et al

Filing 958

MOTION for Leave to File Notice of Supplemental Authority by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Proposed Order)(Sherwood, Jeffrey)

Exhibit 1

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, INC.,
Plaintiff,
v.
AOL, INC. et al.,
Defendants.

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Civ. Action No. 2:11-cv-512

PLAINTIFF I/P ENGINE, INC.’S NOTICE OF SUPPLEMENTAL AUTHORITY
On December 18, 2012, Plaintiff I/P Engine, Inc. (“I/P Engine”) moved for an award of
post-judgment royalties requesting enhanced ongoing royalties for Defendants’ continued,
willful, post-verdict use of the adjudged infringing system. In opposition to that motion,
Defendants contended that any ongoing royalty should not be enhanced—despite the adverse
jury verdict against them—because of an interim communication issued during U.S. Patent &
Trademark Office (“PTO”) proceedings that Defendants initiated:
. . . the patents are being re-examined by the Patent Office, which raises a serious
question as to their validity. In the pending reexamination of the ‘420 patent, the
PTO has issued a Final Office Action rejecting all asserted claims as anticipated
or obvious in light of five prior-art references.
D.I. 938 at 21 (emphasis in original).
On July 24, 2013, however, the PTO rejected Defendants’ invalidity positions, and
confirmed the patentability of all reexamined claims. See Notice of Intent to Issue Ex Parte
Reexamination Certificate (“Notice of Intent”) attached as Exhibit A. In fact, the PTO found the
claims valid for exactly the same reasons I/P Engine’s expert, Dr. Jaime Carbonell, testified they
were valid:
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. . . none of the cited references, alone or in combination, teach or suggest the
following claimed features:
(Claim 10) “… the filter system combining pertaining feedback data from
the feedback system with the content profile data in filtering each
informon for relevance to the query.”
(Claim 25) “… combining pertaining feedback data with the content
profile data in filtering each informon for relevance to the query.”
Notice of Intent at 9. Notably, the PTO confirmed all claims as valid under a lower burden of
proof for invalidity as applied at trial. See In re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir.
2008) (in PTO reexaminations, the standard of proof, which is a preponderance of evidence, is
substantially lower than in a civil case, and there is no presumption of validity). Thus, the Notice
of Intent confirming validity of all of the asserted claims (even under the lower burden of proof)
demonstrates that—post adverse jury verdict—Defendants could not have formed a good faith
belief that the ‘420 patent was invalid. The PTO’s confirmation further supports the
enhancement of the post-judgment royalties I/P Engine requested in its motion.

Dated: July 31, 2013

By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone:
[phone]
Facsimile:
[phone]
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Charles J. Monterio, Jr.
Jonathan Falkler
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone:
[phone]
Facsimile:
[phone]
2

Dawn Rudenko Albert
DICKSTEIN SHAPIRO LLP
1633 Broadway
New York, NY 10019
Telephone:
[phone]
Facsimile:
[phone]
Counsel for Plaintiff I/P Engine, Inc.

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Exhibit A