I/P Engine, Inc. v. AOL, Inc. et al
RESPONSE in Support re 958 MOTION for Leave to File Notice of Supplemental Authority filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit A)(Sherwood, Jeffrey)
I/P Engine, Inc. v. AOL, Inc. et al
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
I/P ENGINE, INC.,
Civil Action No. 2:11-cv-512
AOL, INC. et al.,
I/P ENGINE, INC.’S REPLY IN SUPPORT OF ITS
MOTION FOR LEAVE TO FILE NOTICE OF SUPPLEMENTAL AUTHORITY
In Defendants’ Opposition to I/P Engine’s Motion to Leave to File Notice of
Supplemental Authority, Defendants claim that “the recent re-examination action does nothing to
negate the invalidity position that Defendants have asserted in this litigation and are still
asserting on appeal.” Opposition at 3. In making this claim, Defendants utterly ignore the
circumstance in which they find themselves—adjudicated infringers of valid patents. They
ignore the critically important facts that both the jury and this Court have already convincingly
rejected their “invalidity position.” That the PTO has now confirmed those findings
demonstrates that—post adverse jury verdict—Defendants could not have formed a good faith
belief of invalidity based on an interim PTO decision.
Google suggests that it did not have an opportunity to participate in the ex parte
reexamination proceeding. IPE’s motion, however, focuses on Defendants’ status as adjudicated
infringers of patents the jury and this Court found valid. Google certainly participated in the
trial, having a full and fair opportunity to present its invalidity theories there. And, Google
neglects to mention that it is the party that requested and initiated the ex parte reexamination
proceeding. It did so by filing a 70 page request laying out in substantial detail with claim charts
its invalidity theories. Like the jury, the PTO rejected those theories (even when viewed against
the substantially lower burden of proof the PTO applies). The Notice of Intent therefore
confirmed the merits of (1) Dr. Jamie Carbonell’s trial testimony that the ‘420 patent was valid,
(2) the jury’s factual findings with respect to the cited prior art, and (3) this Court’s ruling that
the patents are not obvious—all events that occurred in November 2012. Defendants cannot
assert that, as of November 2012, after being adjudicated infringers of valid patents, they held a
reasonable good-faith belief that the patents were invalid. And, they can “hardly justify” relying
on an interim PTO decision as the basis for that belief. See Acoustical Design, Inc. v. Control
Elecs. Co., 932 F.2d 939, 942 (Fed. Cir. 1991) (“initial rejection by the Patent and Trademark
Office of original claims that later were confirmed on reexamination hardly justifies a good faith
belief in the invalidity of the claims”), cert. denied, 502 U.S. 863 (1991).
Google also suggests that its good faith invalidity belief is based on two prior art
references, Bowman and Culliss, that were not considered by the PTO during the reexamination
proceedings. That is not correct—both Bowman and Culliss were of record and considered by
the PTO in the reexamination proceeding. Ex. A. (showing Bowman was acknowledged as
considered by the Examiner and that Culliss was already of record).1 In addition to the
references themselves, the PTO also had before it Defendants’ invalidity expert report that
included approximately 20 pages of detailed explanation of Bowman and Culliss, and how those
references invalidated the patents. Id. Yet, despite having those references, the PTO determined
not to issue any rejections of the ‘420 patent based on them. The PTO did not deem them
It is important to note that Defendants’ appeal only asserts one anticipatory reference, Culliss.
Defendants have dropped their anticipation theory with respect to Bowman.
relevant enough to the ‘420 patent to even raise an interim question of invalidity, again
undermining Google’s unreasonable belief of invalidity based on Bowman and Culliss.
Defendants also claim that the PTO only “found that WebHound and Rose do not
anticipate” the claims of the ‘420 patent and that the PTO stated nothing about WebHound and
Rose as obviousness references. Opposition at 3 (emphasis in original). Again, Defendants are
incorrect. The Notice of Intent explicitly discussed obviousness—the PTO withdrew six
different § 103(a) obviousness rejections including several based on WebHound and Rose.
Notice of Intent at 8-9. The Notice of Intent specifically also states that:
. . . 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.”
Id. at 9 (emphasis added). The PTO therefore found that none of the prior art references, even
when considered “in combination” with one another, “suggest” the claimed invention. That is
classic language finding the patent claims are not “obvious.”
As I/P Engine explained in its Memorandum in Support of its Motion for Leave, the
Notice of Intent demonstrates (even under a lower burden of proof) that—post adverse jury
verdict—Defendants could not have formed a good faith belief that the ‘420 patent was invalid.2
Dated: August 8, 2013
By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
Defendants’ unilateral claim to have designed around the patents-in-suit is completely
unsupported, and given the testimony at trial unlikely. In any event, Defendants’ alleged design
around is not relevant to the present motion. See D.I. 949 at 17-20.
150 West Main Street
Norfolk, VA 23510
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Dawn Rudenko Albert
DICKSTEIN SHAPIRO LLP
New York, NY 10019
Counsel for Plaintiff I/P Engine, Inc.
CERTIFICATE OF SERVICE
I certify that on this 8th day of August 2013 I electronically filed the foregoing with the
Clerk of Court using the CM/ECF system, which will send notification to the following:
Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St, Suite 2100
Norfolk, VA 23510 firstname.lastname@example.org
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor San Francisco, CA 94111
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two
11955 Freedom Drive Reston, VA 20190
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE Atlanta, GA 94111
/s/ Jeffrey K. Sherwood
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