Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 1 of 8 PageID #: 3253
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`SOUND VIEW INNOVATIONS, LLC,
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`FACEBOOK, INC.,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`Defendant.
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`C.A. No. 16-116 (RGA)
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`DEFENDANT FACEBOOK, INC.’S MOTION FOR MODIFICATION
`OF THE COURT’S CLAIM CONSTRUCTION ORDER [D.I. 100, 113]
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`Defendant Facebook, Inc. (“Facebook”) respectfully requests that the Court modify its
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`claim construction order as to the term “means at said server to compare said user input
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`information with stored information and based on user verification and user access type provide
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`said user with a list of other users for which said user has access” in claim 5 of U.S. Patent No.
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`6,732,181 (“’181 patent”). Facebook makes this request now because the Patent Trial and
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`Appeal Board (“PTAB”) only yesterday issued its institution decision regarding Facebook’s
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`petition for inter partes review of the ’181 patent. (Ex. 1 (“Decision”).) In that decision, the
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`PTAB independently reviewed and analyzed the patent specification and the Court’s claim
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`construction opinion under controlling Federal Circuit precedent and concluded that the patent
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`fails to disclose the required corresponding structure. (Decision at 12-15.) In view of the
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`persuasive, independent guidance provided by the PTAB, which constitutes an expansion of the
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`intrinsic record for the ’181 patent, Facebook respectfully requests that the Court modify its
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`claim construction rulings (D.I. 100, 113) and hold that this term is indefinite.
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 2 of 8 PageID #: 3254
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`FACTUAL BACKGROUND
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`During claim construction proceedings, the parties agreed that the “means at said server
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`to compare…” term in claim 5 of the ’181 patent is a means-plus-function term, but disputed its
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`corresponding structure. Facebook argued that the patent fails to disclose a corresponding
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`structure, rendering the claim indefinite. E.g., D.I. 82 (Joint Claim Constr. Br.) at 34-38 (“Sound
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`View’s proposal attempts to paste together a number of disparate components . . . . But Sound
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`View’s proposal is just a listing of functional components. It provides no description – let alone
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`an algorithm – for how those components work together to perform the claimed function.”); D.I.
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`89 (Markman Hr’g Tr.) at 58 (“[N]one of those structural components are linked to the functions,
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`as it’s required to be. . . . I would also suggest the Court look at the Blackboard and Aristocrat
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`case. Those are examples of cases where you have a means term like this where they are pointing
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`to just a -- what is basically a functional black box that is a structure.”1). Sound View, on the
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`other hand, argued that the corresponding structure was “a login CGI, the system shared
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`memory’s simple user database, Web API, System API, and a drop box selection menu as
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`described in col. 9:34-36 or depicted in Figure 13.” (D.I. 82 at 34-35.)
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`On May 19, 2017, the Court issued a Memorandum Opinion in which it rejected
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`Facebook’s argument and adopted Sound View’s proposed structure. (D.I. 100 at 13.) The
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`Court reasoned that “I read the patent as both clearly connecting the cited structures to the
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`claimed function and to one another” and discussed and cited portions of the specification. (D.I.
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`100 at 14-15.) The Court thereafter entered an order consistent with its opinion. (D.I. 113 at 2.)
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`Yesterday, the PTAB issued its institution decision regarding Facebook’s petition for
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`1
`Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
`2008) (stating that the corresponding structure for a computer-based function is an algorithm and
`that simply disclosing a computer as the structure is insufficient for § 112 ¶ 6); Blackboard Inc.
`v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009).
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`2
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 3 of 8 PageID #: 3255
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`inter partes review of the ’181 patent. In the decision, the PTAB devoted seven pages to
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`analyzing the proper construction for the “means at said server to compare…” term, though it
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`ultimately denied institution of Facebook’s petition. (Decision at 8-15.) First, the PTAB
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`reviewed the ’181 patent specification in detail to determine whether it discloses sufficient
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`corresponding structure under Blackboard and other governing Federal Circuit precedent. (Id. at
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`8-12 (citing Blackboard, 574 F.3d at 1383 and other cases).) Notably, the PTAB’s independent
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`review did not adopt arguments or positions that either party advocated to the PTAB. (See id.)2
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`The PTAB concluded that the ’181 patent fails to disclose sufficient corresponding structure for
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`the “means at said server to compare...” term.3 (Id.)
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`The PTAB also analyzed this Court’s claim construction opinion on this issue, applying
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`the same legal standard as the Court for construing means-plus-function elements. (Id. at 13-15.)
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`The PTAB, however, reached the opposite conclusion of the Court, finding that the portions of
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`the specification cited by the Court in its claim construction order did not disclose sufficient
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`structure to support the claimed functions:
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`We have considered the district court’s claim construction analysis and the
`portions of the Specification cited therein. We determine, however, that the cited
`portions of the ’181 patent Specification do not provide identification of sufficient
`structure corresponding to the recited function required for our proceedings under
`our Rules and in view of the guidance of the Federal Circuit on this issue.
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`(Id. at 15 (citations omitted).) The PTAB’s analysis and the expanded intrinsic record4 for the
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`2
`While claim 5 of the ’181 patent is indefinite, Facebook had proposed that the PTAB
`could apply Sound View’s proposed claim construction as an undisputed construction for
`purposes of efficiency and judicial economy in the inter partes review proceeding. (See id. at 5.)
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`The PTAB’s review in an IPR is limited to invalidity under 35 U.S.C. §§ 102 and 103
`based on patents and printed publications. The PTAB cannot invalidate a patent under 35 U.S.C.
`§ 112 in an IPR. 35 U.S.C. § 311(b). Thus, when the PTAB finds that a term is indefinite, it
`simply refuses to institute IPR proceedings, as the PTAB did here.
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`See, e.g., Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No. C-13-03587, 2014
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`3
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 4 of 8 PageID #: 3256
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`’181 patent make consideration of modification to the Court’s claim construction orders
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`appropriate.
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`ARGUMENT
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`The PTAB’s analysis confirms that Sound View’s proposed structure is merely a listing
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`of disparate components and that the specification fails disclose any algorithm for performing the
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`recited function as required by Federal Circuit precedent. As Facebook argued in its claim
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`construction briefing and at the Markman hearing, the listing of components advanced by Sound
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`View provides nothing more than a functional black box, which is not enough. (D.I. 82 at 34-38,
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`D.I. 89 at 58.) The PTAB agrees.
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`Turning first to the “login CGI,” the decision explains that the patent “characterizes the
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`‘login CGI’ cited by Petitioner as a program, i.e., software.” (Decision at 10.) However, the
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`specification provides no description of how that software performs the recited function. Based
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`on the PTAB’s review of the specification, including the portions cited by the Court, it concludes
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`that “merely disclosing ‘a black box that performs a recited function’ without disclosing ‘how it
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`does so’ is not sufficient.” (Id. at 10-11 (quoting Blackboard, 574 F.3d at 1383)).
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`The decision then turns to the “Web API” and “System API.” As with the “login CGI,”
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`the PTAB “reviewed the ’181 patent Specification and portions thereof mentioning Web API,
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`Web Services API, and System API.” (Id. at 11 (footnote omitted).) The PTAB explains that it
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`could find no disclosure of how the Web API and System API perform the recited function:
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`One passage of the ’181 patent states that, “[i]f login is successful, the CGI
`program calls Web API, which again calls System API, to construct the users
`welcome screen.” Ex. 1001, 9:62–64. This passage, however, does not describe
`how the Web API and the System API construct the user welcome screen so as to
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`WL 4802426, at *4 (N.D. Cal. Sept. 26, 2014) (“IPR proceedings will also add to the [patent’s]
`prosecution history. Prosecution history is an important part of the intrinsic record relevant to
`claim construction.” (citing Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005))).
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`4
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 5 of 8 PageID #: 3257
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`“provide said user with a list of other users for which said user has access,” as
`recited in 5. Figure 13 may represent a web page or screen that results from some
`operation involving the Web API and the System API, but the manner in which
`that operation is carried out, i.e., the means for performing the recited function, is
`not specified. Indeed, the ’181 patent describes the Web API or Web Services
`API in largely functional terms, with those functions including “invok[ing] a
`WEB Page Formatting API to compose a HTML screen page for the returned
`object as necessary” and “return[ing] the composed HTML screen page.” Ex.
`1001, 5:18–28. The ’181 patent Specification, however, does not describe the
`manner in which the Web Page Formatting API creates pages. See Ex. 1001,
`5:29–36.
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`(Id. at 11-12.) As with the “login CGI,” the PTAB concludes that the specification provides only
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`a black box for performing a function without specifying how it performs that function as
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`Federal Circuit precedent requires. (Id. at 12 (citing Blackboard and other Federal Circuit
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`cases).)
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`In view of the PTAB’s detailed analysis and the expanded intrinsic record, the
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`construction of the “means at said server to compare…” term should be revisited. A court may
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`revisit claim construction at any time. E.g., Intellectual Ventures I LLC v. Trend Micro Inc., No.
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`12-1581-LPS, Hr’g Tr. [D.I. 223] at 195 (D. Del. April 10, 2015) (granting motion for
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`clarification of claim construction and stating that “claim construction can be done at any time”);
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`O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co., 521 F. 3d 1351, 1360 (Fed. Cir. 2008)
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`(“When the parties raise an actual dispute regarding the proper scope of these claims, the court,
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`not the jury, must resolve that dispute.”). Moreover, “the Local Rules of this District expressly
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`recognize the discretion of any judge to act ‘in the interests of justice’ in any particular case.”
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`Leonard v. Stemtech Health Scis., Inc., No. CA 08-067-LPS-CJB, 2012 WL 1133185, at *2 (D.
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`Del. Mar. 28, 2012) (citing D. Del. LR 1.1(d) – “The application of the Rules in any case or
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`proceeding may be modified by the Court in the interests of justice.”); cf. Dougherty v. VFG,
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`LLC, 118 F. Supp. 3d 699, 707 (E.D. Pa. 2015) (“It is well-settled that a District Court has the
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 6 of 8 PageID #: 3258
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`inherent power to depart from its Local Rules where ‘(1) it has a sound rationale for doing so,
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`and (2) so doing does not unfairly prejudice a party who has relied on the local rule to his
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`detriment.’”). Here, revisiting the Court’s claim construction orders in view of the PTAB’s
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`findings would serve the interests of justice and would not unduly prejudice Sound View. The
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`PTAB’s decision provides strong, newly available support for Facebook’s position that the ’181
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`patent fails to disclose sufficient corresponding structure for the “means at said server to
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`compare…” term. The Patent Office’s expertise has been repeatedly acknowledged by courts.
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`See, e.g., Abbott Diabetes Care, Inc. v. Dexcom, Inc., No. 06-514GMS, 2007 WL 2892707, at *5
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`(D. Del. Sept. 30, 2007) (“expert view of the PTO”) (quoting Gould v. Control Laser Corp., 705
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`F.2d 1340, 1342 (Fed. Cir. 1983)); MercExchange, L.L.C. v. eBay, Inc., 500 F. Supp. 2d 556,
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`563 (E.D. Va. 2007) (“obtain guidance from the PTO”); Lentek Int’l, Inc. v. Sharper Image
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`Corp., 169 F. Supp. 2d 1360, 1362 (M.D. Fla. 2001) (“…providing the district courts with the
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`expertise of the patent office”). Here, as noted previously, the PTAB conducted a detailed,
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`independent review of the ’181 patent specification, guided by the same controlling Federal
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`Circuit precedent that governs this Court’s analysis.
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`Moreover, Facebook timely brought this motion only one day after the PTAB’s decision.
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`E.g., Intellectual Ventures I LLC, No. 12-1581-LPS, Hr’g Tr. [D.I. 223] at 195-96 (“I don’t
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`really view what is in front of me today as a motion for reconsideration, but even if I did, it
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`would still be proper and, in my view, timely under the circumstances given that it is based on
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`events that occurred at the Symantec trial and the motion came in relatively expeditiously, within
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`a month of the events at the Symantec trial.”). With expert discovery getting underway, it is
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`timely to consider the updated intrinsic record of the ’181 patent and the PTAB’s guidance and
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`modify the claim construction order before the parties and the Court expend significant
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 7 of 8 PageID #: 3259
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`additional time and resources continuing to litigate patent claims that are invalid for
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`indefiniteness.
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`CONCLUSION
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`For the foregoing reasons, Facebook respectfully requests that the Court grant its motion
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`and modify the Court’s claim construction orders to rule that because the ’181 patent fails to
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`disclose sufficient corresponding structure for the term “means at said server to compare said
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`user input information with stored information and based on user verification and user access
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`type provide said user with a list of other users for which said user has access,” claim 5 of the
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`’181 patent is indefinite.
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`/s/ Karen Jacobs
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`Jennifer Ying (#5550)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`kjacobs@mnat.com
`jying@mnat.com
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`Attorneys for Defendant Facebook, Inc.
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`OF COUNSEL:
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`Heidi L. Keefe
`Elizabeth L. Stameshkin
`Andrew C. Mace
`Sarah Whitney
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843-5000
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`Phillip E. Morton
`Emily E. Terrell
`COOLEY LLP
`1299 Pennsylvania Avenue, NW, Suite 700
`Washington, DC 20004
`(202) 842-7800
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`Michael G. Rhodes
`COOLEY LLP
`101 California Street, 5th Floor
`San Francisco, CA 94111-5800
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`August 30, 2017
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`7
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`Case 1:16-cv-00116-RGA Document 177 Filed 08/30/17 Page 8 of 8 PageID #: 3260
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 30, 2107, I caused the foregoing to be
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`electronically filed with the Clerk of the Court using CM/ECF, which will send notification of
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`such filing to all registered participants.
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`I further certify that I caused copies of the foregoing document to be served on
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`August 30, 2017, upon the following in the manner indicated:
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`John C. Phillips, Jr., Esquire
`Megan C. Haney, Esquire
`PHILLIPS, GOLDMAN, MCLAUGHLIN & HALL, P.A.
`1200 North Broom Street
`Wilmington, DE 19806-4204
`Attorneys for Plaintiff
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`Alan S. Kellman, Esquire
`Tamir Packin, Esquire
`Tom BenGera, Esquire
`Edward Geist, Esquire
`Jason Berrebi, Esquire
`Wesley L. White, Esquire
`Richard M. Cowell, Esquire
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Attorneys for Plaintiff
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`/s/ Karen Jacobs
`Karen Jacobs (#2881)
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