Case 1:17-cv-02097-RBJ Document 223 Filed 05/28/21 USDC Colorado Page 1 of 11
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`REALTIME ADAPTIVE STREAMING, LLC
` Plaintiff,
`v.
`SLING TV L.L.C., SLING MEDIA
`L.L.C., DISH TECHNOLOGIES L.L.C.,
`AND DISH NETWORK L.L.C.
` Defendants.
`
`
`CIVIL ACTION NO. 1:17-CV-02097-RBJ
`PATENT CASE
`JURY TRIAL DEMANDED
`
`
`
`
`DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
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`I.
`
`INTRODUCTION
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`
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`Patent protection is a bargain between the Patent Office and the patentee. The
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`Patent Office grants a limited monopoly to the patentee to make, use, and sell the
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`claimed invention. In return, the patentee must do two things to avoid invalidity. First,
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`the patentee must sufficiently describe the claims in the specification, i.e. the body of
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`the patent, to allow others in the industry to understand and recognize the invention, or
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`the patent is invalid. Second, the patentee must draft the claims so that they can also
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`be reasonably understood or those claims are invalid as indefinite.
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`Realtime did not uphold its end of the bargain. First, there is simply nothing in
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`the ’610 patent’s specification that provides adequate written description support for
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`independent claim 9. Claim 9 recites “select[ing] one or more compression algorithms
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`from among a plurality of compression algorithms to determine a plurality of
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`compression algorithms to apply.” In other words, the claim requires selecting one
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`compression algorithm to determine more compression algorithms to apply. The
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`specification’s disclosure, however, is limited to selecting a single compression
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`algorithm for compressing the data. This claim is invalid for failure to meet the written
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`description requirement.
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`Second, Realtime drafted every asserted claim ambiguously by including the
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`term “asymmetric compression algorithm.” Realtime specifically defined “asymmetric
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`compression algorithm” in the specification and as “a compression algorithm in which
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`the execution time for compression and decompression differ significantly” and agreed
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`to this definition at Markman.1 The term “differ significantly,” however, is a term of
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`degree, and the ’610 patent provides no objective bounds to determine what is
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`“significant” vs. insignificant. The claims are, therefore, invalid as indefinite.
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`For these reasons, explained in detail below, Defendants respectfully move the
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`Court to enter judgment that each asserted claim of the ’610 patent is invalid.
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`II. STATEMENT OF UNDISPUTED FACTS
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`The ’610 Patent’s Disclosure of Selecting an Algorithm: Claim 9 is directed to
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`“select[ing] one or more compression algorithms from among a plurality of compression
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`algorithms to determine a plurality of compression algorithms to apply.” The
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`specification, however, simply discloses selecting a single compression algorithm for
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`compressing the data. ’610 patent at 11:6–12:46. It never contemplates selecting one
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`algorithm to determine additional algorithms of any kind.
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`The “Asymmetric” Requirement: Each asserted claim contains the term
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`“asymmetric compression algorithm” or is dependent on a claim using the term. The
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`’610 patent defines “asymmetric compression algorithm” as “a compression algorithm in
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`
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`1 During the Markman proceedings, Realtime agreed with the Court’s construction but
`disagreed that the construction rendered the claims indefinite. Dkt. No. 151 at 11–13.
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`2
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`which the execution time for compression and decompression differ significantly.” Dkt.
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`No. 151 at 13, 26. Due to this lexicographical disclosure, the parties agreed, and the
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`Court adopted, the ’610 patent’s definition as the construction for this term.2
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`“Differ significantly” is a term of degree, and the ’610 patent does not define how
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`much difference would be significant. The ’610 patent instead explains that “with an
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`asymmetrical algorithm, either the compression routine is slow and the decompression
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`routine is fast or the compression routine is fast and the decompression routine is slow,”
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`’610 patent at 9:66–10:2, and “a ‘symmetrical’ data compression algorithm is . . . one in
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`which the execution time for the compression and the decompression routines are
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`substantially similar.” Id. at 10:5–8; see also id. at 11:19–22. Moreover, the few
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`examples that the ’610 patent characterizes as asymmetric or symmetric do not provide
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`a boundary for this term. Id. at 10:2–9.
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`III.
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`LEGAL STANDARD
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`Summary judgment is appropriate if “there is no genuine issue as to material fact
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`and the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c).
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`An absence of a genuine dispute over any material fact shifts the burden to the non-
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`movant to show that there is a genuine factual issue for trial. Celotex Corp. v. Catrett,
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`477 U.S. 317, 323–24 (1986).
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`A. Written Description
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`The statute mandates that a patent specification “shall contain a written
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`
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`2 The Court reserved judgment on whether the construction renders the term indefinite.
`Dkt. No. 151 at 13.
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`3
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`description of the invention.” 35 U.S.C. § 112(a). “Compliance with the written
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`description requirement is a question of fact but is amenable to summary judgment in
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`cases where no reasonable fact finder could return a verdict for the non-moving party.”
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`PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008). Whether
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`the written description is sufficient turns on whether it “reasonably conveys to those
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`skilled in the art that the inventor had possession of the claimed subject matter as of the
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`filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
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`In other words, “[w]hat is claimed by the patent [] must be the same as what is disclosed
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`in the specification. . . .” Id. at 1347 (Fed. Cir. 2010) (citing Festo Corp. v. Shoketsu
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`Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002)).
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`B.
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`Indefiniteness
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`A patent claim is indefinite unless it “particularly point[s] out and distinctly
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`claim[s]” the invention. 35 U.S.C. § 112(b). This occurs when a claim, “read in light of
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`the specification . . . and the prosecution history” fails to “inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
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`Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). And “[i]f a claim employs a term of
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`degree, the intrinsic record must provide those skilled in the art with ‘objective
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`boundaries’ with which to assess the term’s scope.” In re Walter, 698 F. App’x 1022,
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`1026 (Fed. Cir. 2017) (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371
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`(Fed. Cir. 2014) (finding “unobtrusive manner” indefinite because it was “facially
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`subjective claim language without an objective boundary.”)).
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`An indefinite claim term renders invalid (a) the claim containing the term and (b)
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`4
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`all claims depending on that claim. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
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`1342, 1356 (Fed. Cir. 2005) (affirming summary judgment of invalidity for dependent
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`claims where the indefinite term was present within the independent claim). “Whether a
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`claim is invalid under 35 U.S.C. §112, ¶ 2, for indefiniteness is a question of law.”
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`Union Pac. Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir.
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`2001).
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`IV. ARGUMENT
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`A.
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`Claim 9 Is Invalid under the Written Description Requirement
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`Claim 9 is invalid for lack of written description because it requires selecting one
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`or more algorithms to determine additional algorithms to apply but the ’610 patent’s
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`specification does not contain such a disclosure.3 Claim 9 recites “select[ing] one or
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`more compression algorithms from among a plurality of compression algorithms to
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`determine a plurality of compression algorithms to apply.” In other words, claim 9 does
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`not simply select an algorithm to apply. Claim 9 requires selecting one algorithm to then
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`determine additional algorithms to apply in a second step.
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`The ’610 patent, however, only discloses selecting a single compression
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`algorithm to compress the data. Ex. A, Bovik Decl. at ¶¶ 14–18. It uses different “data
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`profiles” that include information organized in “access profiles” associated with "different
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`data sets, which enables the controller … to select a suitable compression algorithm
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`based on the data type.” ’610 patent at 11:30–36; see also id. at 8:4–36 (“access
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`
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`3 Asserted claims 10-14, 16, and 18 depend from claim 9 and are invalid because they
`include the same “selecting” limitation that lacks written description support.
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`profiles … enables the controller to select a suitable compression algorithm.”); see also
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`Ex. A, Bovik Decl. at ¶¶ 16–17.
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`Nothing in this disclosure, or anywhere else in the ’610 patent, describes the
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`claimed “controller” selecting one algorithm to then determine a plurality of algorithms
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`to apply, and Realtime will be unable to meet its shifted burden of pointing to such a
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`disclosure. It is not even clear how such a system would operate. Ex. A, Bovik Decl. at
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`¶ 15. Thus, claim 9 is invalid for lack of adequate written description.
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`B.
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`The Asserted Claims Are Invalid Because “Asymmetric” Is Indefinite
`As a Term of Degree
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`The term “asymmetric compression algorithm”—found in each independent
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`claim—renders the asserted claims indefinite because its agreed definition includes an
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`undefined term of degree. During claim construction, Realtime agreed that
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`“asymmetric” means “a compression algorithm in which the execution time for
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`compression and decompression differ significantly” because the patentee provided
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`this definition in the specification. Dkt. No. 151 at 11–13, 26 (emphasis added). But the
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`specification of the ’610 patent fails to guide a person of ordinary skill in determining
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`with reasonable certainty what “differ significantly” means. As a result, whether a
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`particular compression algorithm has “execution times” for compression and
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`decompression that “differ significantly” is impermissibly left to the “eye of the beholder.”
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`Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“The
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`fact that Halliburton can articulate a definition supported by the specification, however,
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`does not end the inquiry. Even if a claim term’s definition can be reduced to words, the
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`claim is still indefinite if a person of ordinary skill in the art cannot translate the definition
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`into meaningfully precise claim scope.”); Ex. B, Rhyne Tr. at 190:19-191:3, 193:3-10
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`(Realtime expert admitting that there are no objective bounds in the ’610 patent and so
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`“significantly” is left to “eye of the beholder” interpretation.).
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`The ’610 patent specification does not provide any objective criteria for a person
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`of ordinary skill to determine what execution time differences would be significant
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`versus insignificant. Berkheimer v. HP Inc., 881 F.3d 1360, 1363–4 (Fed. Cir. 2018)
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`(finding “minimal redundancy” indefinite where the patent did not explain “how much is
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`minimal”); Intell. Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1381 (Fed. Cir.
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`2018) (citation omitted) (“By the [] patent’s own terms, ‘optimiz[ing] . . . QoS’ is a ‘term of
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`degree’ that, like the ‘aesthetically pleasing’ limitation in Datamize, is ‘purely subjective’
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`and depends ‘on the unpredictable vagaries of any one person’s opinion.’”); Fiber, LLC
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`v. Ciena Corp., No. 13-CV-00840-PAB-KLM, 2017 WL 3896443, at *13 (D. Colo. Sept.
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`6, 2017), aff’d, 792 F. App’x 789 (Fed. Cir. 2019) (finding the term of degree
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`“substantially a complete set” indefinite because there was “no basis for a POSITA to
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`determine the meaning of the term”).
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`The ’610 patent makes no attempt to illustrate objective boundaries. Instead, it
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`merely acknowledges the “two categories of compression algorithms” and reflects the
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`Court’s construction that an “asymmetrical data compression algorithm is . . . one in
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`which the execution time for the compression and decompression routines differ
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`significantly.” ’610 patent at 9:63–66. The ’610 patent simply states, “with an
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`asymmetrical algorithm, either the compression routine is slow and the decompression
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`routine is fast or the compression routine is fast and the decompression routine is slow,”
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`’610 patent at 9:66–10:2, and “a ‘symmetrical’ data compression algorithm is . . . one in
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`which the execution time for the compression and the decompression routines are
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`substantially similar.” Id. at 10:5–8; 11:19–22.
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`The ’610 patent provides no context to the meaning of a “fast” or “slow” routine,
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`or what it means for routines to be “substantially similar.” Id. at 9:66–10:8. For this
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`reason alone, the asserted claims are indefinite. Nautilus, 572 U.S. at 901 (“[A] patent
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`is invalid for indefiniteness if its claims, read in light of the specification delineating the
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`patent, and the prosecution history, fail to inform, with reasonable certainty, those
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`skilled in the art about the scope of the invention.”); see also Berkheimer, 881 F.3d at
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`1363–4.
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`Moreover, the ’610 patent’s disclosure of examples of asymmetric and symmetric
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`algorithms does not save “asymmetric” from indefiniteness. ’610 patent at 10:2–9
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`(“asymmetrical compression algorithms include dictionary-based compression schemes
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`such as Lempel-Ziv,” and “symmetrical algorithms include table-based compression
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`schemes such as Huffman.”) These examples do not provide any objective guidance
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`for what the term means and merely describe limited situations. Rovi Guides, Inc. v.
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`Comcast Corp., No. 16-CV-9278, 2017 WL 3447989, at *14 (S.D.N.Y. Aug. 10, 2017)
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`(finding that examples in a patent provided “no indication as to” the meaning of the
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`phrase “relatively large”); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
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`1373 (Fed. Cir. 2014) (citing Nautilus, 572 U.S. at 911) (“[W]e decline to cull out a single
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`‘e.g.’ phrase from a lengthy written description to serve as the exclusive definition of a
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`facially subjective claim term.”) In reality, many algorithms lie somewhere in the middle
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`in terms of execution times. Ex. A, Bovik Decl. at ¶ 11.
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`Even Realtime’s technical expert, Dr. Rhyne, and the ’610 patent inventors were
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`unable distinguish between asymmetric and symmetric algorithms in the context of the
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`’610 patent. For example, Dr. Rhyne testified that there are no “objective bounds” to
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`determine “whether the execution times for compression and decompression differ
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`significantly” and that the determination is “in the eye of the beholder.” Ex. B, Rhyne Tr.
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`at 190:19-191:3, 193:3-10; see Halliburton Energy Servs., 514 F.3d at 1251. Mr. Fallon,
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`an inventor of the ’610 patent, similarly admitted that he is unable to delineate an
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`objective boundary for determining whether compression and decompression times are
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`“significantly” different from one another. See Ex. C, 08-08-2019 Fallon Tr. at 52:8–
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`56:18. Indeed, the closest Mr. Fallon could come to a rule as to how substantial the
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`differences need be is that they have to be “more than a little bit.” Id. at 53:2–24. And
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`when asked the same question, Mr. McErlain, the other named inventor, refused to
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`agree that “significantly” means “more than a little bit.” Ex. D, 02-24-2021 McErlain Tr.
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`at 191:19–192:4. Similarly, when asked to consider what difference in timing between
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`compression and decompression is required to constitute an asymmetric algorithm, Mr.
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`Fallon was unable to say whether a 10% difference in compression and decompression
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`times, or, for that matter, a 1% difference, sufficed to render a compression algorithm
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`symmetric or asymmetric. Ex. C, 08-08-2019 Fallon Tr. at 53:25–54:17.
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`The lack of objective guidance from the ’610 patent specification and conflicting
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`testimony of Realtime’s expert and the ’610 patent inventors parallel the indefiniteness
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`inquiry performed by the court in Princeton Digital Image Corp. v. Amazon.com, Inc.,
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`2019 WL 351258 at *9 (D. Del. Jan. 29, 2019). There, the court examined the patent’s
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`specification “to determine whether a skilled artisan would have sufficient guidance in
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`understanding the bounds” of the claim term “significantly smaller than the combined
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`probability of occurrence of all the signal values represented by the first group.” Id.
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`(emphasis added). While the court noted that the specification offered at least one
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`example of an objective measure (an 85/15 ratio), that objective measure did not relate
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`directly to the claim requirement of being “significantly smaller . . . .” Id. The court
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`therefore ruled that the patent specification did not provide guidance to reasonably
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`ascertain the scope of the claim and held the claim indefinite. Id. Unlike in Princeton,
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`the ’610 patent does not provide a single objective measure that is even arguably
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`related to defining objective bounds for a person of ordinary skill to determine whether
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`execution times of compression and decompression differ significantly. Thus, there is
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`no objective boundary for the “asymmetric” limitation, rendering all asserted claims
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`indefinite and therefore invalid.
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`V. CONCLUSION
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`For these reasons, claim 9 and its dependent claims (claims 10-14, 18, and 18)
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`are invalid under the written description requirement, and all asserted claims are invalid
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`as indefinite.
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`Respectfully submitted,
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`
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` Dated: May 28, 2021
`
`s/ Ruffin B. Cordell
`Ruffin B. Cordell
`Adam R. Shartzer
`Brian J. Livedalen
`
`FISH & RICHARDSON P.C.
`1000 Maine Ave. SW
`Suite 1000
`Washington, DC 20024
`PH: 202-783-5070
`
`
`
`Attorneys for Defendants DISH
`Network L.L.C.,Sling TV L.L.C.,
`Sling Media L.L.C., and DISH
`Technologies L.L.C.
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`CERTIFICATE OF COMPLIANCE
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`1. This motion/brief complies with the content guidelines set forth in D.C.COLO.LCivR
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`56.1.
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`2. This motion/brief complies with the page limitation of Judge R. Brooke Jackson’s
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`Practice Standards.
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`3. This motion/brief complies with the type-volume limitation of D.C.COLO.LPtR 17. This
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`brief contains 2742 words.
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`4. This motion/brief complies with the typeface requirements of D.C.COLO.LPtR 17.
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`This brief has been prepared in double spaced typeface using 12 point Arial font.
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`s/ Ruffin B. Cordell
` Ruffin B. Cordell
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`CERTIFICATE OF SERVICE
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`I certify that on this 28th day of May, 2021 I electronically filed this with the Clerk
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`of the Court using the CM/ECF system, which will notify all counsel of record.
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`s/ Ruffin B. Cordell
` Ruffin B. Cordell
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