Case 1:16-cv-00116-RGA Document 168 Filed 08/23/17 Page 1 of 3 PageID #: 2964
`PHILLIPS, GOLDMAN, MCLAUGHLIN & HALL, P.A.
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`ATTORNEYS AT LAW
`JOHN C. PHILLIPS, JR. PENNSYLVANIA AVE. AND BROOM ST.
`ROBERT S. GOLDMAN 1200 N. BROOM STREET
`LISA C. MCLAUGHLIN
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` WILMINGTON, DE 19806
`JAMES P. HALL ___________
`DAVID A. BILSON
`MEGAN C. HANEY
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` (302) 655-4200 (P)
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` (302) 655-4210 (F)
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`August 23, 2017
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`VIA CM/ECF & HAND DELIVERY
`The Honorable Richard G. Andrews
`United States District Court for the District of Delaware
`844 N. King Street
`Wilmington, Delaware 19801
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`Re: Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116 (RGA)
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`Dear Judge Andrews,
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`Plaintiff Sound View Innovations, LLC (“Sound View”) submits this letter in connection
`with the discovery dispute conference scheduled for August 25, 2017, at 11:00 am. Sound View’s
`dispute concerns Facebook’s wholesale replacement of its invalidity references asserted against
`U.S. Patent No. 6,732,181 (the “’181 patent”) the week before the close of fact discovery.
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`Approximately a year ago, on August 25, 2016, the Court limited Sound View to 32
`asserted claims and reciprocally limited Facebook to 40 alleged prior art references. (D.I. 45.) As
`the Court explained in a discovery hearing several months later in which Sound View sought to
`limit the number of invalidity theories per claim, the purpose of the limitation on prior art
`references was to contain the scope of the case and allow the parties to fully vet those references.
`(D.I. 72, Jan. 9, 2017 Hr’g Tr. at 4:20-21 (“[T]here are 40 different references. You know what
`your target is.”), 11:2-8 (“The idea, I think of sort of a reduction of asserted claims, reduction of
`prior art references, is a limited universe of prior art references. It allows the other side, the plaintiff
`in this case to, you know, think about them, and decide if there is something they want to
`investigate, and decide, you know, whether they are, in fact, prior art references.”).)
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`Despite the explicit language in the scheduling order and the Court’s further explanation,
`without any advance notice to Sound View or the Court, on July 27, 2017—only a week before
`the August 3, 2017, fact discovery cut off1—Facebook served its First Amended Invalidity
`Contentions in which it abandoned all of its previously disclosed references for the ’181 patent in
`favor of five previously undisclosed references. (Compare Ex. A at pp. 20-37, Exs. C11-C3 with
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`1 The originally scheduled fact discovery cut off in the case was June 30, 2017. (D.I. 21.) On May
`31, 2017, the parties filed a proposed order changing the deadline to August 3, 2017. (D.I. 115.)
`The Court entered that order later the same day.
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`Case 1:16-cv-00116-RGA Document 168 Filed 08/23/17 Page 2 of 3 PageID #: 2965
`The Honorable Richard G. Andrews
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`Page 2
`August 23, 2017
`Ex. B at pp. 20-35, 64, Exs. C1-C3.)2 More specifically, Facebook’s contentions suggest that it
`no longer wishes to proceed on any of its original references (or theories) regarding the ’181 patent,
`and instead it wishes to proceed with theories based on five entirely new references: Lipschutz,
`Morgan, Abraham, Orwant, and Khurana. Facebook should be precluded from making this 11th
`hour shift and should be held to the references that served as the guideposts for alleged ’181 patent
`invalidity throughout the course of this case.
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`If allowed, Facebook’s wholesale change of the ’181 patent invalidity case would severely
`prejudice Sound View. The entire discovery process in the case proceeded with certain prior art
`references serving as the backbone of Facebook’s invalidity case. Changing the target now
`prevents Sound View from gaining the benefit of discovery regarding potential issues raised by
`those new references.
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`Nor has Facebook been able to provide Sound View with an explanation for the nature and
`timing of its dramatic shift. Instead, during the parties’ meet and confers, Facebook’s only alleged
`justification for completely changing its ’181 patent invalidity case is that the change was based
`on the Court’s claim construction ruling. But the parties submitted their joint claim construction
`chart to the Court on December 22, 2016, which contained Sound View’s proposed constructions.
`Thus, the close-of-discovery timing of Facebook’s theory-shift given that it knew of the proposed
`constructions early in the process is suspect. Indeed, even during the January 9, 2017, discovery
`hearing related to narrowing prior art theories Facebook never suggested that it would need to
`change references based on the Court’s claim construction decisions. In fact, Facebook’s only
`proposed constructions for the ‘181 patent terms sought invalidity based on indefiniteness,
`demonstrating that its prior art theories were the alternative it intended to pursue if it lost its claim
`construction indefiniteness challenge.3
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`Additionally, given Facebook’s silence on the timing of its discovery of the new references,
`it undoubtedly knew of them months before serving its new contentions,4 but consciously chose
`not to alert Sound View (or the Court) of its intention to switch references at the close of fact
`discovery. Even if Facebook could show good cause and diligence—which it cannot—the
`prejudice to Sound View is too great to allow the invalidity sea change Facebook seeks for the
`’181 patent.
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`2 Facebook’s contentions modified theories related to the other patents as well, but those were
`largely modifications to theories as opposed to wholesale swapping out of references and Sound
`View does not challenge those modifications here.
`3 Indeed, if it won on indefiniteness, prior-art based invalidity would be irrelevant.
`4 In fact, Facebook relied on a combination of Orwant, Morgan, and three other references as a
`basis for § 103(a) invalidity of claim 5 in its March 1, 2017 Petition for Inter Partes Review of the
`’181 patent. (Case IPR2017-01006). Facebook also relied on Abraham as an additional reference
`to assert § 103(a) invalidity of claims 6-9 but not claim 5.
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`Case 1:16-cv-00116-RGA Document 168 Filed 08/23/17 Page 3 of 3 PageID #: 2966
`The Honorable Richard G. Andrews
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`Page 3
`August 23, 2017
`Accordingly, Sound View respectfully requests that the Court strike Facebook’s new
`invalidity contentions with respect to the ’181 patent.
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`Respectfully submitted,
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`/s/ John C. Phillips, Jr.
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`John C. Phillips, Jr. (No. 110)
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`All counsel of record (via CM/ECF & email)
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`cc:
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