Case 1:16-cv-00116-RGA Document 176 Filed 08/30/17 Page 1 of 3 PageID #: 3242
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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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`KAREN JACOBS
`(302) 351-9227
`kjacobs@mnat.com
`
`1201 NORTH MARKET STREET
`P.O. BO X 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`Original Filing Date: August 23, 2017
`Redacted Filing Date: August 30, 2017
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`REDACTED -- PUBLIC VERSION
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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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`VIA ELECTRONIC FILING
`
`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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`Facebook submits this letter in connection with the discovery dispute conference
`scheduled for August 25, 2017 at 11:00 a.m.
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`Two hours before the close of fact discovery in this case, Sound View served its “First
`Amended Infringement Contentions” that changed Sound View’s theory of infringement with
`respect to the ’181 patent.1 Sound View’s last-minute supplementation for the first time alleged
`that
` in Facebook’s source code were structurally equivalent to the “login
`CGI” required by claim 5 of the ’181 patent.
`
`Sound View’s decision to withhold its means-plus-function structural equivalents theory
`prevented Facebook from any opportunity to address this theory, either in discovery or in claim
`construction. Sound View has no excuse for such an untimely disclosure. The Court should
`strike this theory as untimely and prejudicial under Rule 37(c)(1).
`
`I.
`
`The “Login CGI” Structure Was Proposed by Sound View and Included in the
`Court’s Construction
`
`This dispute involves the limitation in claim 5 of the ’181 patent, “means at said server to
`compare said user input information with stored information and based on user verification and
`user access type provide said user with a list of other users for which said user has access.”
`Although both parties agreed this is a means plus function limitation subject to 35 U.S.C. § 112 ¶
`6, they disagreed on how it should be construed. Facebook argued that the term was indefinite
`because the specification disclosed no corresponding structure and algorithm. Sound View
`
`1
`Sound View’s First Amended Infringement Contentions changed theories for other
`patents as well, but Facebook addresses only the ‘181 patent here. 
`
`

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`Case 1:16-cv-00116-RGA Document 176 Filed 08/30/17 Page 2 of 3 PageID #: 3243
`The Honorable Richard G. Andrews
`August 23, 2017
`Page 2
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`proposed a corresponding structure of “a login CGI, the system shared memory’s simple user
`database, Web API, System API, and a drop box selection menu as described in col. 9:34-36 or
`depicted in Figure 13.” (D.I. 100 at 13 (emphasis added).) The Court adopted Sound View’s
`construction. (Id., at 13-15.) Most relevant to the issues here, Sound View’s proposed
`construction that the Court adopted included a requirement of a “login CGI.”
`
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`II.
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`Sound View’s Contentions Never Disclosed a Structural Equivalents Theory
`for the Login CGI Structure
`
`
`At the outset of the case, the Scheduling Order negotiated by the parties provided for
`
`early discovery of technical documentation and source code before Sound View’s infringement
`contentions so Sound View could serve meaningful infringement contentions based on that early
`discovery. (D.I. 23 at 1-2.) Facebook made its source code repositories available to Sound View
`for review beginning in July 2016, nearly a month before Sound View’s August 26, 2016
`deadline for serving infringement contentions. (Ex. A, 2016-07-29 Ltr from Morton to Kellman;
`D.I. 23 at 2.) Sound View took full advantage of that accommodation by having two of its
`experts and one of its attorneys review the source code extensively over a period of several
`days – before serving its infringement contentions. (Ex. B, Excerpt of Source Code Review
`Log.) Based on even a cursory review of the source code, Sound View knew or should have
`known that
`
` that Sound View would later assert in its last-minute
`supplementation related to the ’181 patent.
`
`
`But when Sound View served its infringement contentions on August 26, 2016, it did not
`mention
` or disclose any structural equivalents theory for any means-plus-
`function limitation. (Ex. C at 21-24, Excerpts of Initial Infringement Contentions.) At most,
`Sound View made boilerplate assertions about the “doctrine of equivalents” that were not linked
`to any specific limitation in the ’181 patent.
`
`Fact discovery continued for almost another year during which Sound View never
`supplemented its infringement contentions. Moreover, Sound View never disclosed any
`structural equivalents theory in its responses to Facebook’s Interrogatory No. 7.2 Sound View
`instead waited until two hours before fact discovery closed on August 3, 2017 to serve its “First
`Amended Infringement Contentions” that for the first time asserted that Sound View intended to
`assert that
` were structurally equivalent to and therefore satisfied the “login
`CGI” requirement of the ’181 patent. (Ex. D at 24-25, Excerpts of First Amended Infringement
`Contentions.) This allegation represented a sea change from Sound View’s original literal
` are structurally identical.
`infringement theory that the login CGI and
`
`
`
`2  
`Interrogatory No. 7 requested: “Provide element-by-element claim charts setting forth the
`complete basis for Your contention that Facebook has Infringed, whether directly or indirectly,
`literally or under the doctrine of equivalents, the Asserted Claims, including an identification of
`the alleged direct Infringer(s) of each Asserted Claim, if any.” 
`
`

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`Case 1:16-cv-00116-RGA Document 176 Filed 08/30/17 Page 3 of 3 PageID #: 3244
`The Honorable Richard G. Andrews
`August 23, 2017
`Page 3
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`III.
`
`Sound View’s Late Disclosed Structural Equivalents Theory for Login CGI
`Should Be Stricken
`
`This is not a case where Sound View amended its contentions to conform to a claim
`
`construction different from the one it proposed, a practice routinely allowed by other district
`courts with patent local rules. 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). Here, Sound View
`itself proposed the requirement of a “login CGI” in December 2016, which the Court adopted in
`the claim construction order in May 2017. (D.I. 64, at 6, ¶ 13; D.I. 100, at 13.) Sound View
`nevertheless waited until two hours before the close of discovery to address the “login CGI”
`requirement it proposed long ago.
`   
`
`Sound View’s change in its infringement theory has unfairly prejudiced Facebook by
`depriving it of the ability to conduct discovery necessary to rebut this new theory. Analysis of a
`structural equivalency theory involves significantly different analysis and potentially different
`discovery, including (1) whether the newly-accused
` are substantially
`different from the login CGI structure and (2) whether
` were an equivalent
`structure available at the time of issuance of the claim. Facebook had no opportunity to explore
`these issues during fact discovery because Facebook had no notice of Sound View’s structural
`equivalency theory.
`
`Sound View has no legitimate excuse for failing to disclose a structural equivalents
`theory until the final hours of fact discovery. Sound View knew or should have known that
`Facebook had no “login CGI” and
` when
`Sound View first extensively reviewed the Facebook source code, which took place before
`service of its initial infringement contentions in August 2016. Sound View could have sought to
`revise its infringement contentions when it proposed the “login CGI” requirement in December
`2016, or after the Court adopted that requirement in May 2017, but Sound View did not do so at
`either time. Sound View instead sought to revise its infringement theory at the veritable last
`minute, ensuring that Facebook would have no opportunity to investigate or respond to the
`theory.
`
`Facebook thus respectfully requests that the Court strike Sound View’s late disclosed
`structural equivalents theory for the ’181 patent.
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`KJ/dlw
`Enclosures
`cc:
`Clerk of Court (Via Hand Delivery; w/ encl.)
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`All Counsel of Record (Via Electronic Mail; w/ encl.)
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`Respectfully,
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`/s/ Karen Jacobs
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`Karen Jacobs (#2881)
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