Case 1:16-cv-00116-RGA Document 170 Filed 08/24/17 Page 1 of 3 PageID #: 3174
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
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`1201 NORTH MARKET STREET
`P.O. BO X 1347
`WILMINGTON, DELAWARE 19899-1347
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`(302) 658-9200
`(302) 658-3989 FAX
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`KAREN JACOBS
`(302) 351-9227
`kjacobs@mnat.com
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`August 24, 2017
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`VIA ELECTRONIC FILING
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`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
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`Re:
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`Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116 (RGA)
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`Dear Judge Andrews:
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`Facebook submits this letter in response to Sound View’s letter of August 23, 2017 (D.I.
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`168) seeking to strike Facebook’s invalidity contentions with respect to the ’181 patent. As
`explained below, Facebook’s supplemental invalidity contentions were a timely and proper
`response to the Court’s claim construction order, and Sound View’s request should be denied.
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`Factual Background
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`Facebook’s Amendments Are Timely and Appropriate
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`I.
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`Under the Scheduling Order (D.I. 21), Facebook served its initial invalidity contentions
`in September 2016, nearly three months before the parties began the claim construction process.
`See, e.g., D.I. 55. Claim construction briefing concluded in March 2017, and the Court issued its
`claim construction opinions on May 19 and June 14, 2017. (D.I. 100, D.I. 127.) Facebook
`supplemented its invalidity contentions on July 23, 2017 (D.I. 149) to address those opinions.
`Fact discovery closed on August 3, 2017. (D.I. 115.)
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`II.
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`Facebook’s July amendments were a timely response to the Court’s claim construction
`order. The Court’s May 19, 2017 claim construction order construed one of the means-plus-
`function terms in the ’181 patent to require five separate and very specific structures that are not
`recited in the claim itself, including: (1) “a login CGI”; (2) “the system shared memory’s simple
`user database”; (3) “Web API”; (4) “System API”; and (5) “a drop box selection menu as
`described in col. 9:34-36 or depicted in Figure 13.” (D.I. 100 at 13.) Because Facebook’s initial
`nvalidity contentions were served months before the parties even began the claim construction
`process, Facebook’s contentions could not have accounted for the structures that Sound View
`had proposed and that were ultimately adopted by the Court. Nor could Facebook have foreseen
`that those five specific structures would ultimately become part of the Court’s construction
`because, at that time, Sound View had not yet disclosed any of its claim construction positions.
`Accordingly, Facebook’s prior art analysis leading to the initial round of Invalidity Contentions
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`Case 1:16-cv-00116-RGA Document 170 Filed 08/24/17 Page 2 of 3 PageID #: 3175
`The Honorable Richard G. Andrews
`August 24, 2017
`Page 2
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`was conducted without any guidance from the Court, and with no notice from Sound View as to
`its intended claim construction proposals.
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`After the Court issued its claim construction opinion, including after the Court’s June 14,
`2017 Order deferring further claim construction until summary judgment, Facebook promptly
`supplemented its contentions to incorporate the Court’s constructions. With claim construction
`effectively settled through fact and expert discovery as a result of the Court’s order, Facebook
`diligently undertook further searching for prior art and amending its invalidity contentions to
`account for the state of claim construction. On July 23, 2017, Facebook served amended
`contentions identifying five replacement prior art references for the ’181 patent that accounted
`for the five new limitations added by the Court’s construction. Facebook’s amendments also
`removed seven prior art references asserted in the initial Invalidity Contentions.
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`Facebook’s amendment was reasonable and appropriate, and for good cause. Numerous
`district courts have Patent Local Rules that expressly acknowledge “good cause” for a party to
`amend based on a claim construction by the court that is different from the party’s proposed
`construction. See, e.g., N.D. Cal. Pat. L. R. 3-6 (good cause to amend may include “[a] claim
`construction by the Court different from that proposed by the party seeking amendment”); D.N.J.
`Pat. L. R. 3.7 (same); W.D. Wa. Pat. L.R. 124 (same); see also E.D. Tex. P.R. 3-6 (permitting
`amendment to invalidity contentions within 50 days of claim construction order without leave if
`“the party opposing a claim of patent infringement believes in good faith that the court’s Claim
`Construction Ruling so requires.”); E.D.N.C. Local Civil Rule 303.6 (same)). When Facebook
`served its initial invalidity contentions last September, Facebook had neither the Court’s claim
`construction nor Sound View’s proposed constructions. Even as claim construction proceedings
`began, Facebook could not know whether the Court would adopt any of Sound View’s proposed
`constructions, or whether the Court would agree with Facebook’s position that the ’181 patent
`was indefinite because the specification disclosed no structure and algorithm for performing the
`recited function. Facebook believed (and continues to believe) that the term is indefinite, and the
`Court found a similar means-plus-function limitation in the ’786 patent indefinite before
`reconsidering its order. (D.I. 162 at 3.) Once the Court rendered its decision, however,
`Facebook diligently worked to amend its contentions to address the Court’s constructions.
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`Sound View’s assertion that it would be unduly prejudiced by Facebook’s amended
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`contentions is unfounded. Indeed, Sound View does not identify any discovery it would need
`with respect to the five references for the ’181 patent. The five references consist entirely of
`printed publications (excerpts from four books, and one patent). There were no new system
`references, and thus, no need for any third party discovery or depositions of any witnesses.
`Sound View’s assertion of prejudice is belied by the fact that, during discovery, Sound View
`never sought any discovery regarding any of the 40 prior art references Facebook identified
`previously, which included system references. Sound View’s experts will have had more than
`two months to scrutinize those references by the time their rebuttal reports are due. In fact,
`Sound View concedes that it has been aware of most of the new ’181 prior art and how those
`references apply since at least March, when Facebook filed its petition for inter partes review of
`the ’181 patent.
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`Case 1:16-cv-00116-RGA Document 170 Filed 08/24/17 Page 3 of 3 PageID #: 3176
`The Honorable Richard G. Andrews
`August 24, 2017
`Page 3
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`Sound View’s other argument, that Facebook was somehow prohibited from substituting
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`its references (D.I. 168 at 1), is likewise unsupported. In particular, there is nothing in the
`Scheduling Order or in the Court’s January 9, 2017 Oral Order that prohibits Facebook from
`substituting prior art references. Facebook has not increased the number of prior art references
`relied upon, and in fact, has narrowed its contentions and reduced the total number of prior art
`references at issue.
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`Accordingly, Facebook respectfully requests that the Court deny Sound View’s request to
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`strike Facebook’s amended invalidity contentions for the ’181 patent.
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`KJ/pab
`cc:
`Clerk of Court (Via Hand Delivery.)
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`All Counsel of Record (Via Electronic Mail.)
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`Karen Jacobs (#2881)
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`Respectfully,
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`/s/ Karen Jacobs
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