Case 1:17-cv-02097-RBJ Document 111 Filed 07/16/18 USDC Colorado Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`REALTIME ADAPTIVE STREAMING LLC,
`
`Plaintiff,
`
`v.
`
`SLING TV, L.L.C.,
`SLING MEDIA, INC.,
`SLING MEDIA, L.L.C.,
`ECHOSTAR TECHNOLOGIES L.L.C,
`DISH NETWORK L.L.C., and
`ARRIS GROUP, INC.,
`
`Defendants.
`
`REALTIME ADAPTIVE STREAMING LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Civil Action No. 1:17-cv-02097-RBJ
`
`LEAD CASE
`
`Civil Action No. 1:17-cv-02869-RBJ
`
`CONSOLIDATED CASE
`
`APPLE INC.’S MOTION TO LIMIT THE NUMBER OF ASSERTED CLAIMS
`
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`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`IV.
`
`V.
`
`Introduction..........................................................................................................................1
`Factual Background .............................................................................................................2
`A.
`The Asserted Patents................................................................................................2
`B.
`Realtime’s Cut-and-Paste Infringement Contentions ..............................................3
`C.
`Realtime Refused to Discuss a Reduction in the Number of Asserted Claims .......4
`Legal Standard .....................................................................................................................5
`Argument .............................................................................................................................6
`A.
`Assertion of ninety-three claims is plainly excessive and unworkable and serves
`no purpose other than to impose inordinate cost and burden on Apple...................6
`A reduction of asserted claims is appropriate because a majority of the Asserted
`Patents belong to the same family and the asserted claims have substantial overlap
`and redundancies......................................................................................................8
`A reduction in claims is appropriate now to prevent unnecessary expense and
`tactical disadvantage. .............................................................................................13
`CONCLUSION..................................................................................................................15
`
`C.
`
`B.
`
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Joao Control & Monitoring Sys., LLC v. Ford Motor Co.,
`Nos. 13–CV–13615 and 13–CV–13957, 2014 WL 106926
`(E.D. Mich. Jan. 10, 2014).......................................................................................................15
`
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 (Fed. Cir. 2011)..................................................................................5, 6, 13, 14
`
`Medtronic Minimed Inc. v. Animas Corp.,
`No. CV 12-04471 RSWL, 2013 WL 3322248 (C.D. Cal. Apr. 5, 2013) ............................6, 13
`
`Memory Integrity, LLC v. Intel Corp.,
`Case No. 3:15–cv–00262–SI, 2015 WL 6659674 (D. Or. Oct. 30, 2015).........................14, 15
`
`Oasis Research, LLC v. Adrive, LLC,
`No. 4:10–CV–00435, 2011 WL 7272473 (E.D. Tex. Sept. 13, 2011) ....................................14
`
`Thought, Inc. v. Oracle Corp.,
`No. 12-cv-05601-WHO, 2013 WL 5587559 (N.D. Cal. Oct. 10, 2013) ...................................6
`
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`Case 1:17-cv-02097-RBJ Document 111 Filed 07/16/18 USDC Colorado Page 4 of 20
`
`I.
`
`INTRODUCTION
`
`Plaintiff Realtime Adaptive Streaming LLC (“Realtime”) asserts ninety-three patent
`
`claims in this case against Apple Inc. (“Apple”) and has ignored all of Apple’s attempts to get
`
`Realtime to voluntarily reduce the number of claims to a reasonable “handful” as this Court
`
`instructed. Realtime has no legitimate need to assert so many claims at this stage. And while
`
`Realtime has continued to drag its feet on Apple’s repeated requests that it get down to a more
`
`realistic number, costs and prejudice to Apple continue to accrue.
`
`In November 2017, Realtime filed its original complaint against Apple alleging
`
`infringement of six patents and identifying one claim of each patent as allegedly infringed. (Dkt.
`
`No. 1 ¶¶ 6–12, 15, 33, 56, 75, 92, 110.) The Asserted Patents, four of which belong to the same
`
`patent family, are related to compressing electronic data to smaller chunks for transmission or
`
`storage and coding digital video signals. During the March 7, 2018 Case Management
`
`Conference, this Court emphasized the importance of narrowing the asserted claims to a
`
`manageable number. Yet just three weeks later, Realtime served its infringement contentions
`
`and increased the number of claims asserted from six to ninety-three. Since then, Realtime has
`
`ignored repeated requests from Apple to limit the number of claims as this Court instructed.
`
`Apple hereby moves the Court for an order requiring Realtime to reduce the number of
`
`asserted claims to a reasonable, manageable number for purposes of claim construction, fact
`
`discovery, and expert discovery. Because Realtime repeatedly failed to respond to Apple’s
`
`attempts to resolve this dispute in the early weeks of this case, Apple has already expended a
`
`bone-crushing effort to prepare invalidity contentions against the ninety-three asserted claims.
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`Since putting Apple to that effort and expense, Realtime has had several weeks to digest those
`
`contentions and is thus well positioned to reduce the claims asserted.
`
`The claim reduction process should begin now, to prevent Apple from expending more
`
`resources analyzing, conducting discovery on, and responding to dozens of claims that will
`
`eventually be dropped from this action. Accordingly, Apple respectfully requests that the Court
`
`order Realtime to reduce the number of asserted claims so the parties may proceed with the
`
`exchange of claim terms to be construed and present a manageable number of claims for the
`
`Court to construe. Otherwise avoidable costs will compound as the parties brief, and the Court
`
`decides, claim construction and discovery issues for claims that Realtime will elect not to
`
`pursue.1 Given the redundancy of the claims asserted, Realtime should be limited to twenty-four
`
`total claims—at most twelve claims total from the four related patents and six claims each from
`
`the other two patents.
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`The Asserted Patents
`
`In its Complaint against Apple, Realtime alleges infringement of six U.S. patents
`
`(“Asserted Patents”): Nos. 7,386,046 (the “’046 Patent”); 8,929,442 (the “’442 Patent”);
`
`8,934,535 (the “’535 Patent”); 9,769,477 (the “’477 Patent”); 8,634,462 (the “’462 Patent”); and
`
`9,578,298 (the “’298 Patent”). The Asserted Patents are generally directed to electronic data
`
`compression and decompression technologies and video coding. Four of the six patents—the
`
`’046, ’535, ’442, and ’477 Patents—belong to the same patent family and all name James Fallon
`
`and Stephen McErlain as inventors (the “Fallon Patents”). The Fallon Patents claim priority to
`
`1 The parties are currently scheduled to exchange a list of claim terms to be construed on July 25,
`2018.
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`one provisional application and share virtually identical disclosures: their abstracts, detailed
`
`descriptions, and drawings are identical. The claims of the Fallon Patents also cover
`
`substantially overlapping subject matter. The other two Asserted Patents—the ’462 and ’298
`
`Patents—also relate to data coding and compression technology, but neither claim priority to any
`
`of the other Asserted Patents.
`
`B.
`
`Realtime’s Cut-and-Paste Infringement Contentions
`
`During the Case Management Conference on March 7, 2018, this Court emphasized the
`
`importance of narrowing the case to a handful of key claims:
`
`For Markman purposes, I want you to narrow it down to a handful of claims at
`best. You can come up with all kinds of claims that you think you’re disputing,
`but at least for my purposes, for the initial Markman hearing at least, I want you
`to give me those claims, no more than a handful of them that are the key ones.
`
`Ex. A (Realtime Adaptive Streaming, LLC v. Sling TV, LLC, Case No. 17-cv-2097-RBJ,
`
`Scheduling Hearing Transcript, at 18:11–16 (March 7, 2018)).
`
`Less than a month later, on April 4, 2018, Realtime served Apple with over 2,000 pages
`
`of infringement contentions, increasing the number of asserted claims from six to ninety-three.
`
`The asserted claims are summarized in Table 1, below.
`
`Patent
`Family
`
`Fallon
`Patents
`
`Patent No.
`
`Asserted Claims
`
`U.S. Pat. No. 8,934,535
`(“’535 Patent”)
`U.S. Pat. No. 7,386,046
`(“’046 Patent”)
`U.S. Pat. No. 9,769,477
`(“’477 Patent”)
`U.S. Pat. No. 8,929,442
`(“’442 Patent”)
`
`1–6, 8–12, 14–17, 19,
`21, 22, 24
`
`1, 4, 19, 21, 23, 24, 26
`
`1–29
`
`1–6, 8–12, 14, 15
`
`- 3-
`
`Number of
`Asserted
`Claims
`
`Number of
`Pages of
`Contentions
`
`19
`
`7
`
`29
`
`13
`
`549
`
`539
`
`741
`
`170
`
`

`

`Case 1:17-cv-02097-RBJ Document 111 Filed 07/16/18 USDC Colorado Page 7 of 20
`
`Narroschke
`Patent
`Ballocca
`Patent
`
`U.S. Pat. No. 8,634,462
`(“’462 Patent”)
`U.S. Pat. No. 9,578,298
`(“’298 Patent”)
`
`1, 3–7, 9, 11
`
`1–4, 7–19
`
`8
`
`17
`
`97
`
`75
`
`Table 1. Summary of Asserted Claims
`
`Realtime’s infringement contentions contain page upon page of repetitive cut-and-paste
`
`passages from the same handful of websites and technical documents applied to many different
`
`claim limitations. The few short explanatory passages are also repeated verbatim across a
`
`number of disparate claim limitations and bear little relation to the claim language. For example,
`
`Realtime’s infringement contentions for the four Fallon Patents span 1,999 pages. Yet across
`
`those nearly 2,000 pages, which are directed at dozens of distinct limitations, Realtime makes
`
`only eleven unique assertions.
`
`C.
`
`Realtime Refused to Discuss a Reduction in the Number of Asserted Claims.
`
`Almost immediately after Realtime served the infringement contentions, Apple contacted
`
`Realtime to meet and confer regarding reducing the number of asserted claims,2 anticipating the
`
`significant burden that would be imposed on the parties and the Court were the case allowed to
`
`proceed through invalidity contentions, claim construction, expert discovery, and summary
`
`judgment with ninety-three claims. Apple contacted Realtime three times asking to discuss
`
`Realtime’s excessive claim assertions. Realtime ignored each of Apple’s requests.
`
`On May 2, 2018, Apple requested that Realtime reduce the number of asserted claims to
`
`twenty-four, noting that Realtime’s assertion of an excessive number of claims would make it
`
`very difficult to narrow claims down to a handful for Markman as this Court instructed. See
`
`2 Apple also sought to meet and confer regarding other deficiencies in Realtime’s infringement
`contentions, which are not subject to this motion.
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`Ex. B (May 2, 2018, ltr. from C. James to J. Chung) at 2. Realtime ignored this request for more
`
`than two weeks. When Apple followed up on May 18, counsel for Realtime indicated Realtime
`
`would respond to Apple the following week. See Ex. C (May 18, 2018, email from A. Oakley to
`
`J. Chung). But, Realtime never did. On May 25, 2018, Apple renewed its request that Realtime
`
`reduce the number of claims. See Ex. D (May 25, 2018, email from A. Oakley to J. Chung).
`
`Again, Realtime failed to respond. On June 4, 2018, Apple served its invalidity contentions
`
`against each of the ninety-three claims asserted.
`
`III.
`
`LEGAL STANDARD
`
`This Court has the authority to limit the number of asserted claims in patent cases. In re
`
`Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1312–13 (Fed. Cir. 2011). That
`
`authority may be exercised in the Court’s discretion within the bounds of the patent owner’s
`
`right to due process. Id. at 1311–13. A patent owner has no absolute right to assert all claims
`
`that might possibly be infringed. Id. at 1311. Rather, the patent owner may reasonably be
`
`restricted to asserting claims that present unique legal issues. Id. at 1311–12. In Katz, the
`
`district court reasoned that if the patent owner believed the forced selection to be overly
`
`restrictive, the patent owner itself was in the best position to narrow the dispute by identifying
`
`unselected claims that raised separate legal issues not duplicative of selected claims. Id. at 1312.
`
`Thus the district court placed the burden to show a need for additional claims on the patent
`
`owner. Id. at 1309, 1311–12. The Federal Circuit approved this approach, finding it both
`
`“efficient and fair.” Id. at 1312.
`
`Courts look to several factors to determine whether a limit is appropriate, including: the
`
`number of patents and claims at issue, the feasibility of trying the claims to a jury, whether the
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`patents at issue have common genealogy, whether the patents contain terminal disclaimers, and
`
`whether the asserted claims are duplicative. Thought, Inc. v. Oracle Corp., No. 12-cv-05601-
`
`WHO, 2013 WL 5587559, at *2 (N.D. Cal. Oct. 10, 2013) (citing In re Katz, 639 F.3d at 1311).
`
`Courts often force selection of claims in the early stages of a case before the costs and
`
`burden of litigating an unmanageable number of claims accrue. See Medtronic Minimed Inc. v.
`
`Animas Corp., No. CV 12-04471 RSWL, 2013 WL 3322248, at *1–3 (C.D. Cal. Apr. 5, 2013)
`
`(forcing a reduction in the number of asserted claims before the defendant had served invalidity
`
`contentions).
`
`IV.
`
`ARGUMENT
`
`The factors courts generally weigh in ordering claim assertion reductions favor limiting
`
`the number of asserted claims at this point in this case. The number of asserted claims is plainly
`
`excessive. Litigating ninety-three patent claims creates a significant burden on all parties and the
`
`Court, without any legitimate corresponding benefit or purpose. Moreover, most of the Asserted
`
`Patents have a common genealogy and the asserted claims raise overlapping and redundant legal
`
`issues. Realtime should reduce the number of asserted claims now because the burden on Apple
`
`will only compound during claim construction and allowing Realtime to maintain ninety-three
`
`asserted claims any longer will unfairly prejudice Apple.
`
`A.
`
`Assertion of ninety-three claims is plainly excessive and unworkable and
`serves no purpose other than to impose inordinate cost and burden on Apple.
`
`As the Court recognized during the Case Management Conference, the number of claims
`
`at issue directly affects the case management and the burden on the parties and the Court. See
`
`Ex. A. There is no way to try ninety-three claims from six patents to a jury. See Thought, Inc.,
`
`2013 WL 5587559, at *2 (finding 102 claims “a demonstrably unmanageable amount”).
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`Realtime presumably intends to try, at most, a handful of claims. In fact, in a prior case,
`
`Realtime’s counsel conceded that a good attorney never goes to trial with more than a handful of
`
`patent claims. Ex. E (Straight Path IP Group, Inc. v. Apple Inc., Case No. 16-03582-WHA
`
`(N.D. Cal.), Tr. of Hrg. on Mot. to Dismiss, Sep. 22, 2016) at 24:21–25:4. Thus, the efforts
`
`expended by the parties and the Court on the vast majority of asserted claims will be wasted.
`
`But Realtime has not proposed any date for reducing claims, so Apple will be forced to conduct
`
`all fact and expert discovery, including third-party prior art discovery and discovery from
`
`Realtime, as if all the currently asserted claims will remain in litigation. This exercise would
`
`cause Apple to incur ongoing unnecessary expenses.
`
`Indeed, Apple has already expended considerable resources to prepare and serve
`
`invalidity contentions against the ninety-three asserted claims that Realtime asserted in its over
`
`2,000 pages of infringement contentions—costs that could have been avoided had Realtime not
`
`ignored Apple’s repeated attempts to meet and confer regarding the excessive number of asserted
`
`claims. Realtime’s intentional refusal to engage with Apple in a discussion on that issue forced
`
`Apple into a very burdensome and unnecessary process for showing exactly how ninety-three
`
`claims are invalid. That process began by analyzing hundreds of references against each of the
`
`six Asserted Patents. The primary references were then individually applied to each asserted
`
`claim in the form of an invalidity claim chart. Then secondary references were analyzed to
`
`disclose where each claim limitation can be found in one or more prior art references. The charts
`
`were then supplemented with information concerning where the suggestion or motivation for
`
`combining one or more secondary references with each primary reference as found in the prior
`
`art. Thus, the invalidity contentions against the ninety-three asserted claims consumed hundreds
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`of hours of bone-crushing effort that resulted in thousands of pages of invalidity analysis against
`
`almost one hundred claims, many of which Realtime will certainly decide not to pursue.3
`
`B.
`
`A reduction of asserted claims is appropriate because a majority of the
`Asserted Patents belongs to the same family and the asserted claims have
`substantial overlap and redundancies.
`
`A majority of the claims Realtime asserts shares a common genealogy. As noted above,
`
`the four Fallon Patents are from the same patent family, having identical inventors and nearly
`
`identical specifications. Each Fallon Patent claims priority to a common provisional application,
`
`and three of the Fallon patents are continuations in the chain of patent applications that relate
`
`back to the ’046 Patent. See ’477 Patent at 2 (reciting list of continuation applications).
`
`Many of the asserted claims are also duplicative, raising identical or nearly identical legal
`
`issues. The Fallon Patents altogether comprise sixty-eight of the ninety-three claims asserted, of
`
`which twelve are independent. These claims substantially overlap and cover duplicative subject
`
`matter. As one example among many, claims 1 and 19 from the ’046 Patent contain parallel
`
`limitations with no apparent substantive differences.
`
`’046 Patent – Asserted Claim 1
`
`’046 Patent – Asserted Claim 19
`
`A method comprising:
`
`A method comprising:
`
`compressing data using a first compression
`routine providing a first compression rate,
`wherein the first compression routine
`comprises a first compression algorithm;
`
`compressing data using a first compression
`routine providing a first compression rate
`
`tracking the throughput of a data processing
`
`tracking the throughput of a data processing
`
`3 For comparison, Realtime’s infringement contentions spanned roughly 2,200 pages whereas
`Apple’s invalidity contentions were almost 4,500 pages (not including contentions from other
`cases incorporated by reference). This disparity underscores the unfair practice where Plaintiffs
`initially assert an unreasonable number of claims simply to drive up litigation expenses on claims
`that Realtime will ultimately elect not to purse.
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`system to determine if the first compression
`rate provides a throughput that meets a
`predetermined throughput threshold,
`wherein said tracking throughput comprises
`tracking a number of pending requests for data
`transmission; and
`
`when the tracked throughput does not meet the
`predetermined throughput threshold,
`compressing data using a second compression
`routine providing a second compression rate
`that is greater than the first compression rate,
`to increase the throughput of the data
`processing system to at least the predetermined
`throughput level,
`wherein the second compression routine
`comprises a second compression algorithm.
`
`system to determine if the first compression
`rate provides a throughput that meets a
`predetermined thought threshold; and
`
`when the tracked throughput does not meet the
`predetermined throughput threshold,
`compressing data using a second compression
`routine providing a second compression rate
`that is greater than the first compression rate,
`to increase the throughput of the data
`processing system to at least the predetermined
`throughput level,
`wherein said tracking throughput comprises
`tracking a number of pending requests for data
`transmission over a communication channel.
`
`Realtime asserts every single one of the ’477 Patent’s twenty-nine claims, many of which
`
`have only trivial differences. Claims 1 and 20, the only independent claims, each have roughly
`
`120 words. Yet the only substantive difference between the two claims in the context of this
`
`case is the addition that “at least one of the plurality of video compression encoders is configured
`
`to utilize an arithmetic data compression algorithm” in claim 20. Claims 2 and 11, which depend
`
`from claim 1 and are also asserted, add an “arithmetic algorithm” limitation to claim 1 and
`
`therefore raise entirely duplicative issues to claim 20.
`
`’477 Patent – Asserted Claim 1
`
`’477 Patent – Asserted Claim 20
`
`A system, comprising:
`
`A system, comprising:
`
`a plurality of different asymmetric data
`compression encoders,
`
`a plurality of video data compression encoders;
`
`wherein each asymmetric data compression
`encoder of the plurality of different asymmetric
`
`wherein at least one of the plurality of video
`data compression encoders is configured to
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`data compression encoders is configured to
`utilize one or more data compression
`algorithms, and
`
`utilize an asymmetric data compression
`algorithm, and
`
`wherein at least one of the plurality of video
`data compression encoders is configured to
`utilize an arithmetic data compression
`algorithm,
`
`wherein a first video data compression encoder
`of the plurality of video data compression
`encoders is configured to compress at a higher
`compression ratio than a second data
`compression encoder of the plurality of data
`compression encoders; and
`
`wherein a first asymmetric data compression
`encoder of the plurality of different asymmetric
`data compression encoders is configured to
`compress data blocks containing video or
`image data at a higher data compression rate
`than a second asymmetric data compression
`encoder of the plurality of different asymmetric
`data compression encoders; and
`
`one or more processors configured to:
`
`one or more processors configured to:
`
`determine one or more data parameters, at least
`one of the determined one or more data
`parameters relating to a throughput of a
`communications channel measured in bits per
`second; and
`
`select one or more asymmetric data
`compression encoders from among the
`plurality of different asymmetric data
`compression encoders based upon, at least in
`part, the determined one or more data
`parameters.
`
`determine one or more data parameters, at least
`one of the determined one or more data
`parameters relating to a throughput of a
`communications channel; and
`
`select one or more video data compression
`encoders from among the plurality of video
`data compression encoders based upon, at least
`in part, the determined one or more data
`parameters.
`
`The other asserted claims of the ’477 Patent that depend from claim 1 are also nearly
`
`identical to the asserted claims that depend from claim 20:
`
`’477 Patent – Asserted Claim 3 & 4
`
`’477 Patent – Asserted Claim 21
`
`3. The system of claim 1, wherein the
`throughput of the communications channel
`comprises: an estimated throughput of the
`communications channel.
`
`The system of claim 20, wherein the
`throughput of the communications channel
`comprises: an estimated or expected
`throughput of the communications channel.
`
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`4. The system of claim 1, wherein the
`throughput of the communications channel
`comprises:
`an expected throughput of the communications
`channel.
`
`’477 Patent – Asserted Claim 5
`
`’477 Patent – Asserted Claim 22
`
`The system of claim 1, wherein the selected
`one or more asymmetric data compression
`encoders are configured to compress the data
`blocks containing video or image data for
`output at different data transmission rates
`measured in bits per second to produce a
`plurality of compressed data blocks.
`
`The system of claim 20, wherein the selected
`one or more video data compression encoders
`are configured to compress one or more data
`blocks containing video data for so different
`data transmission rates measured in bits per
`second to produce a plurality of compressed
`data blocks.
`
`’477 Patent – Asserted Claim 7
`
`’477 Patent – Asserted Claim 23
`
`The system of claim 1, wherein at least one of
`the determined one or more data parameters
`comprises: a resolution of the data blocks
`containing video or image data.
`
`The system of claim 20, wherein at least one of
`the determined one or more data parameters
`are related to a resolution of one or more data
`blocks containing video data.
`
`’477 Patent – Asserted Claim 8
`
`’477 Patent – Asserted Claim 24
`
`The system of claim 1, wherein at least one of
`the determined one or more data parameters
`comprises: a data transmission rate of the data
`blocks containing video or image data.
`
`The system of claim 20, wherein at least one of
`the determined one or more data parameters
`comprises: a data transmission rate of one or
`more data blocks containing video data.
`
`’477 Patent – Asserted Claim 9
`
`’477 Patent – Asserted Claim 25
`
`The system of claim 1, wherein at least one of
`the determined one or more data parameters
`comprises: an attribute or a value related to a
`format or a syntax of video or image data
`contained in the data blocks containing video
`or image data.
`
`The system of claim 20, wherein at least one of
`the 60 determined one or more data parameters
`comprises: an attribute or a value related to a
`format or a syntax of video data contained in
`one or more data blocks containing video data.
`
`’477 Patent – Asserted Claim 12
`
`’477 Patent – Asserted Claim 26
`
`The system of claim 1, wherein the selected
`one or more asymmetric data compression
`encoders are configured to perform
`
`The system of claim 20, wherein the selected
`one or more video data compression encoders
`are configured to perform data compression in
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`Case 1:17-cv-02097-RBJ Document 111 Filed 07/16/18 USDC Colorado Page 15 of 20
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`compression in real-time or substantially
`realtime.
`
`real-time or substantially realtime.
`
`’477 Patent – Asserted Claim 13 & 14
`
`’477 Patent – Asserted Claim 27
`
`13. The system of claim 1, wherein the
`communications channel comprises: a
`distributed network.
`14. The system of claim 13, wherein the
`distributed network comprises: the Internet.
`
`The system of claim 20, wherein the
`communications channel comprises: a
`distributed network or the Internet.
`
`’477 Patent – Asserted Claim 15 & 16
`
`’477 Patent – Asserted Claim 28
`
`The system of claim 20, wherein the one or
`more data blocks containing video data are
`compressed with the selected one or more
`video data compression encoders to create one
`or more compressed data blocks, and wherein a
`descriptor is associated with the one or more
`compressed data blocks that indicates the
`selected one or more video data compression
`encoders.
`
`15. The system of claim 1, wherein the selected
`one or more asymmetric data compression
`encoders are utilized to compress the data
`blocks containing video or image data to create
`one or more compressed data blocks, and
`wherein a descriptor is associated with the one
`or more compressed data blocks that indicates
`the selected one or more asymmetric data
`compression encoders.
`16. The system of claim 1, wherein the selected
`one or more asymmetric data compression
`encoders are utilized to compress the data
`blocks containing video or image data to create
`one or more compressed data blocks, and
`wherein a descriptor indicating the selected one
`or more asymmetric data compression
`encoders is included with the one or more
`compressed data blocks.
`
`Although the Fallon Patents are not subject to terminal disclaimers, there is also
`
`significant overlap between claims among the various patents. For example, six claims are
`
`directed to determining a parameter or attribute of a portion of a data block. See ’535 Patent,
`
`claims 1, 14, and 15; ’477 Patent, claim 20; ’442 Patent, claims 1 and 8. Eleven claims are
`
`directed to selecting compression based on a data throughput. See ’046 Patent, claims 1, 19, 23,
`
`24, and 26; ’477 Patent, claims 1, 8, 20, and 24; and ’442 Patent, claims 1 and 8. Nine claims are
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`Case 1:17-cv-02097-RBJ Document 111 Filed 07/16/18 USDC Colorado Page 16 of 20
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`directed to selecting a compression approach based on information from an access profile or a
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`parameter of a data block. ’046 Patent, claim 24; ’535 Patent, claims 1, 10, 14, 15, and 20; ’477
`
`Patent, claims 1, 10, and 20. Other claims from the Fallon Patent family similarly repeat the
`
`same “features,” such as compressing “video” data blocks in “real time” and “storing”
`
`compressed files. See, e.g., ’046 Patent, claims 4, 21; ’442 Patent, claim 5; ’535 Patent claims 2,
`
`5–6, 12; and ’477 Patent claims 5, 12, 19, 22, 26. The asserted claims of the ’462 and ’298
`
`Patent also overlap. For example, claims 1–10 of the ’298 Patent are directed to substantially the
`
`same subject matter as claims 11–19.
`
`Realtime’s own infringement contentions illustrate the duplication and overlap among the
`
`asserted claims. Realtime cites the same aspects of the Accused Instrumentalities over and over
`
`without differentiation for the vast majority of the claims in the Fallon Patents. Realtime has not
`
`pointed to distinct legal issues or infringement theories or more than trivial differences in the
`
`infringement analysis for these overlapping claims, thereby conceding that its infringement
`
`theories are largely duplicative. Thus, Realtime has no legitimate interest in asserting such a
`
`large number of claims and limitation is appropriate. See Katz, 639 F.3d at 1312.
`
`C.
`
`A reduction in claims is appropriate now to prevent unnecessary expense and
`tactical disadvantage.
`
`Courts that deal with high volumes of patent cases routinely rein in excessive
`
`infringement assertions and limit the number of patent claims plaintiffs can assert at the early
`
`stages. For example, in Medtronic Minimed Inc., the court reduced the number of claims before
`
`the defendant had served invalidity contentions. 2013 WL 3322248 at *1–3. In that case, the
`
`plaintiffs alleged infringement of 255 patent claims over nine patents. Id. The trial court granted
`
`the defendant’s motion to reduce the number of asserted claims to “no more than four claims for
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`- 13-
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`Case 1:17-cv-02097-RBJ Document 111 Filed 07/16/18 USDC Colorado Page 17 of 20
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`each of the nine patents-in-suit.” Id. The court explained that limiting the asserted claims even
`
`before invalidity contentions would prevent “greater prejudice” to the defendants who otherwise
`
`would be burdened with submitting invalidity contentions to more than 200 patent claims
`
`“knowing full well that the vast majority of those contentions will become moot upon Plaintiffs’
`
`reduction of claims shortly thereafter.” Id.
`
`Other courts also have ordered reduction of claims before claim construction. See, e.g.,
`
`Memory Integrity, LLC v. Intel Corp., Case No. 3:15–cv–00262–SI, 2015 WL 6659674, *2–4
`
`(D. Or. Oct. 30, 2015) (noting that plaintiff was in a position to limit its claims in view of
`
`defendant’s invalidity contentions); Oasis Research, LLC v. Adrive, LLC, No. 4:10–CV–00435,
`
`2011 WL 7272473, at *2 (E.D. Tex. Sept. 13, 2011) (finding “that limiting the amount of claims
`
`asserted by Plaintiff is appropriate at this time to aid in efficiency and narrowing the claims prior
`
`to claim construction”).
`
`Now that Realtime has had several weeks to digest and analyze Apple’s invalidity
`
`contentions, it knows (or should know) on which claims it plans to proceed. But Realtime
`
`maintains a tactical advantage by keeping many claims in the case as long as possible. Under the
`
`status quo, Realtime is allowed to hide its hand, perhaps focusing its own efforts on the most
`
`viable claims, but forcing Apple to conduct claim construction, fact and expert discovery, and
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`summary judgment against clai