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`Exhibit 13
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 2 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 1 of 7 PageID #: 15320
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`REALTIME DATA, LLC,
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`Plaintiff,
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`V.
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`ACTIAN CORPORATION ET AL.,
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`Defendants.
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` §
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`CIVIL ACTION NO. 6:15-CV-463
`RWS-JDL
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`LEAD CASE
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`JURY TRIAL DEMANDED
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`SEALED MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendant Riverbed Technology, Inc.’s (“Riverbed”) Sealed Motion
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`for Partial Summary Judgement Barring Pre-Suit Damages. (Doc. No. 438.) Plaintiff Realtime
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`Data, LLC (“Realtime”) has filed a Sealed Response (Doc. No. 453), Riverbed has filed a Reply
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`(Doc. No. 465), and Realtime has filed a Sealed Sur-Reply (Doc. No. 475).1
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`For the reasons stated herein, the Court DENIES Riverbed’s Motion. (Doc. No. 438.)
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`I.
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`BACKGROUND
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`Realtime alleges that Riverbed infringes certain claims of U.S. Patent No. 7,415,530
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`(“the ’530 Patent”), U.S. Patent No. 9,116,908 (“the ’908 Patent”), and U.S. Patent No.
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`8,643,513 (“the ’513 Patent”). The Asserted Patents generally relate to different systems and
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`methods of data compression. Specifically, Realtime alleges that certain SteelHead WAN
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`optimization products infringe the Asserted Claims of the Asserted Patents.
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`1 Riverbed’s Motion originally raised arguments related to marking and laches. (See Doc. No. 438.) However, on
`March 21, 2017, Riverbed filed a Notice withdrawing its laches arguments in light of the Supreme Court’s opinion
`in SCA Hygiene Prod. Aktiebolag v. First Quality Baby Prod., LLC, No. 15-927, 2017 WL 1050978 (U.S. Mar. 21,
`2017). (See Doc. No. 480.) Accordingly, the Court only addresses Riverbed’s marking arguments in this Order.
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`1
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 3 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 2 of 7 PageID #: 15321
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`The following facts are undisputed: In previous lawsuits, Realtime alleged that products
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`owned by F5 Networks, Inc. (“F5”) and Blue Coat Systems, Inc. (“Blue Coat”) infringed certain
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`other Realtime patents not asserted in the above-captioned litigation. Realtime settled its claims
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`against F5 and Blue Coat by entering into settlement agreements whereby F5 and Blue Coat
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`would pay license fees in exchange for licensing most of Realtime’s patent portfolio, including
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`the ’530 and ’513 Patents. (Doc. No. 444-3, Appx. No. 21, 695-707 (“F5 Agreement”), at 2;
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`Doc. No. 444-3, Appx. No. 22, 709-724 (“Blue Coat Agreement”), at 2.) Both the F5 and Blue
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`Coat Agreements state that “the issues in the Action are disputed.” (F5 Agreement, at 2; Blue
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`Coat Agreement, at 2.) Neither Agreement includes any explicit statements indicating that an F5
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`or Blue Coat product practices any specific claim of the licensed patents. (See generally F5
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`Agreement, Blue Coat Agreement.) F5 has continuously sold its WANJet and BIG-IP products
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`and Blue Coat has continuously sold its ProxySG product since the time these parties entered
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`into settlement agreements with Realtime in October 2009 and January 2010, respectively.
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`Neither F5 nor Blue Coat have ever marked their products with Realtime’s patent numbers.
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`Realtime filed the above-captioned lawsuit on May 8, 2015. In preparing its defenses,
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`Riverbed employed Dr. Clifford Reader to opine regarding whether Realtime’s Asserted Patents
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`are invalid. Dr. Reader has also opined that Realtime failed to direct its licensees to mark
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`products covered by the Asserted Patents. (Doc. No. 444-2, Appx. No. 7, 439-520 (“Reader
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`Marking Rep.”).) Specifically, Dr. Reader asserts that F5 and Blue Coat’s products infringe the
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`claims of the ’530 and ’513 Patents and should have been marked with the ’530 and ’513 Patent
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`Numbers. (See generally, id.)
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`2
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 4 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 3 of 7 PageID #: 15322
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`II.
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`LEGAL STANDARD
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`Summary judgment is proper “if the movant shows that there is no genuine dispute as to
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`any material fact and the movant is entitled to judgment as a matter of law.” FED.R.CIV.P. 56(a);
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`Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). “A genuine issue of material fact exists ‘if
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`the evidence is such that a reasonable jury could return a verdict for the non-moving party.’”
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`Crawford v. Formosa Plastics Corp., La., 234 F.3d 899, 902 (5th Cir. 2000) (quoting Anderson
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`v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The Court must consider the evidence in the
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`light most favorable to the non-moving party. Thorson v. Epps, 701 F.3d 444, 445 (5th Cir.
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`2012).
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`Under 35 U.S.C. § 287(a), “[p]atentees, and persons making, offering for sale, or selling
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`within the United States any patented article for or under them . . . may give notice to the public
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`that the same is patented” by marking each patented article with the appropriate patent number.
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`A failure to mark precludes a patentee from collecting damages for infringement prior to the date
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`it gave the alleged infringer actual notice of infringement. Id.
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`III. DISCUSSION
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`The Federal Circuit has “yet to resolve competing views as to which party bears the
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`burden of establishing that there was a product that practiced the patent.” Arctic Cat Inc. v.
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`Bombardier Recreational Prod., Inc., No. 0:14-cv-62369-BB, 2016 WL 3948052, at *6 (S.D.
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`Fla. May 31, 2016) (“Arctic Cat II”) (citing Sealant Sys. Int’l, Inc. v. TEK Glob. S.R.L., No.
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`5:11-CV-00774-PSG, 2014 WL 1008183, at *31 (N.D. Cal. Mar. 7, 2014), rev’d in part on other
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`grounds, 616 F. App’x 987 (Fed. Cir. 2015)); see also Arctic Cat Inc. v. Bombardier
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`Recreational Prod., Inc., No. 0:14-cv-62369-BB, Doc. No. 119, at *58-59 (S.D. Fla. May 2,
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`2016) (“Arctic Cat I”) (denying defendant’s motion for summary judgment seeking to bar
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`3
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 5 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 4 of 7 PageID #: 15323
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`recovery of pre-suit damages for failure to mark); Blitzsafe Texas, LLC v. Honda Motor Co.,
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`Ltd., No. 2:15-cv-01274-JRG-RSP, Doc. No. 403, at *3 (E.D. Tex. Jan. 26, 2017) (same).
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`Although other courts in this district have stated that “[t]he patentee bears the burden of
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`compliance with the marking statute,” those courts did not specifically address the question of
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`whether a particular product is a “patented article.” See PACT XPP Tech., AG v. Xilinx, Inc., No.
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`2:07-cv-563-RSP, 2012 WL 1029064, *2 (E.D. Tex. March 26, 2012) (denying patentee’s
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`motion for summary judgment on defendants’ affirmative defense of failure to mark because
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`question of fact existed as to whether any of patentee’s activities involved offers for sale of
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`patented products); Soverain Software LLC v. Amazon.com, Inc., 383 F. Supp. 2d 904, 908 (E.D.
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`Tex. 2005) (no dispute as to whether software sold by licensees constituted a patented product);
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`see also Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1112-13 (Fed. Cir. 1996); Nike, Inc. v. Wal-
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`Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). Having reviewed the case law, the
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`Court concludes that “defendant bears the threshold burden of showing that an unmarked
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`patented product exists.” Blitzsafe, No. 2:15-cv-01274-JRG-RSP, Doc. No. 403, at *3; see also
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`Oracle Am., Inc. v. Google Inc., No. 3:10-cv-03561-WHA, 2011 WL 5576228, at *2 (N.D. Cal.
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`Nov. 15, 2011); Sealant Sys., 2014 WL 1008183, at *31; Arctic Cat I, No. 0:14-cv-62369-BB,
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`Doc. No. 119, at *58-59; accord Fortinet, Inc. v. Sophos, Inc., No. 13-cv-05831-EMC, 2015 WL
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`5971585, at *4-5 (N.D. Cal. Oct. 14, 2015); MobileMedia Ideas, LLC v. Apple Inc., No. 10-258-
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`SLR, 2016 WL 3958723, at *5 (D. Del. July 21, 2016; but see Adrea, LLC v. Barnes & Noble,
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`Inc., No. 13-cv-4137 (JSR), 2015 WL 4610465, at *2 (S.D.N.Y. July 24, 2015); DR Sys., Inc. v.
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`Eastman Kodak Co., No. 08-cv-0669 H(BLM), 2009 WL 2632685, *4 (S.D. Cal. August 24,
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`2009). Consistent with the usual burden of proof for affirmative defenses, see Dixon v. U.S., 548
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`U.S. 1, 8 (2006), it is the defendant’s responsibility to affirmatively identify and prove that a
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`4
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 6 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 5 of 7 PageID #: 15324
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`product is a patented article, particularly when the product is manufactured by a third party under
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`a settlement license agreement rather than a product manufactured by the plaintiff. “[O]therwise,
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`a defendant’s general allegations could easily instigate a fishing expedition for the patentee in
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`order to stave off pursuit of damages for infringement.” Arctic Cat I, No. 0:14-cv-62369-BB,
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`Doc. No. 119, at *59.
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`Riverbed argues that “[r]egardless of the burden of proof, Riverbed has put forward
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`evidence demonstrating that F5 and Blue Coat have made and sold licensed, unmarked products
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`that practice the ’530 and ’513 Patents.” (Doc. No. 438, at 11.) Riverbed specifically argues that
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`Dr. Reader’s Marking Expert Report demonstrates how, under Realtime’s infringement theories
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`in this case, F5 and Blue Coat products meet the limitations of the asserted system and device
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`claims. (Id. at 10-11.) Realtime argues that Riverbed bears the burden of proving that the F5
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`and Blue Coat products are “patented articles” and Riverbed cannot meet this burden by reliance
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`on the F5 and Blue Coat Agreements. (Doc. No. 453, at 6-7.) Realtime further argues that Dr.
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`Reader’s analysis leaves open fact questions as to whether the F5 and Blue Coat products are
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`patented articles. (Id. at 3.) For example, Realtime argues that Dr. Reader fails to identify
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`whether any of the products specifically includes a “descriptor” as required by the claims. (Id.)
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`Even though Riverbed has met its initial burden by identifying products that allegedly
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`practice the Asserted Patents, the disputed record makes summary judgment unwarranted. See
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`Golden Bridge Tech. Inc v. Apple, Inc., No. 5:12-CV-04882-PSG, 2014 WL 1928977, at *12
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`(N.D. Cal. May 14, 2014); Blitzsafe, No. 2:15-cv-01274-JRG-RSP, Doc. No. 403, at *3.
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`Realtime’s prior lawsuits against F5 and Blue Coat involved different patents; Realtime has
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`never alleged that F5 or Blue Coat infringe the ’530 or ’513 Patents. Even with respect to the
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`patents Realtime asserted against F5 and Blue Coat, the Court never issued findings that F5 or
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`5
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 7 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 6 of 7 PageID #: 15325
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`Blue Coat products practiced those patents-in-suit. Moreover, the F5 and Blue Coat Agreements
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`both state that “the issues in the Action are disputed.” (F5 Agreement, at 2; Blue Coat
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`Agreement, at 2.)
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`Dr. Reader’s expert opinions are likewise insufficient to establish as a matter of law that
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`the F5 and Blue Coat products are patented articles. While Dr. Reader relies on Realtime’s
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`infringement theories in forming his marking opinions, he states that he does not necessarily
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`agree with those theories. (Reader Marking Rep., ¶17.) The Court will not assume for purposes
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`of this Motion that Realtime’s infringement theories are correct, particularly when Riverbed
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`intends to dispute those theories at trial and the fact-finder has not yet even heard all of the
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`evidence related to those theories. See Golden Bridge Tech. Inc v. Apple, Inc., 2014 WL
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`1928977, at *12. Realtime also challenges whether Dr. Reader’s analysis actually shows that the
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`F5 and Blue Coat products meet each and every limitation of the Asserted Claims. For example,
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`Dr. Reader admitted during deposition that there was no explicit evidence that the F5 and Blue
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`Coat products included a “descriptor” as required by the Asserted Claims. (Doc. No. 453, Ex. 3
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`(“Reader Dep.”), at 310:24-311:21.) While Dr. Reader further testified that these products must
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`have a descriptor in order to function, the lack of clarity in his testimony casts sufficient doubt on
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`Defendant’s grounds for summary judgment, “as it is Defendant’s burden to demonstrate that
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`summary judgment is warranted.” Arctic Cat I, No. 0:14-cv-62369-BB, Doc. No. 119, at *61.
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`As Riverbed notes, embarking on a “full-fledged trial on infringement of non-party
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`products” (Doc. No. 465, at 1) may distract from the main disputes in this case. However, it is
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`not appropriate to grant summary judgment solely on this basis. Riverbed—not Realtime—bears
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`the greatest risk of prejudice by presenting marking arguments to the jury in reliance on
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`Realtime’s infringement theories. Riverbed will have to decide whether these risks are worth the
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`6
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`Case 3:17-cv-05659-WHA Document 358-13 Filed 01/24/19 Page 8 of 8
`Case 6:15-cv-00463-RWS-JDL Document 492 Filed 04/04/17 Page 7 of 7 PageID #: 15326
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`possible reward. But the Court declines to hold as a matter of law that F5’s and Blue Coat’s
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`products are “patented articles” implicating the marking statute as Riverbed proposes at this
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`time, particularly given the parties’ factual disputes regarding the scope of the Asserted Claims.
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`IV. CONCLUSION
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`For the reasons stated herein, the Court DENIES Riverbed’s Motion for Partial Summary
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`Judgement Barring Pre-Suit Damages. (Doc. No. 438.)
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`Within seven (7) days of the issuance of this Order, the parties shall file a notice with the
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`Court as to whether this Order can be unsealed, or request appropriate redaction.
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` So ORDERED and SIGNED this 4th day of April, 2017.
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`7
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