Case 1:16-cv-00116-RGA Document 186 Filed 09/05/17 Page 1 of 5 PageID #: 3299
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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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`SOUND VIEW INNOVATIONS, LLC,
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`FACEBOOK, INC.,
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`PLAINTIFF SOUND VIEW INNOVATIONS, LLC’S OPPOSITION
`TO DEFENDANT’S MOTION FOR RECONSIDERATION
`OF THE COURT’S RECONSIDERED CLAIM CONSTRUCTION OPINION
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`A Court may grant a motion for reconsideration where the moving party shows the
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`existence of one of the following: “(1) an intervening change in the controlling law; (2) the
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`availability of new evidence that was not available when the court issued its order; or (3) the
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`need to correct a clear error of law or fact or to prevent manifest injustice.” Smith v. Meyers,
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`C.A. No. 09-814-JJF, 2009 WL 5195928, at *1 (D. Del. Dec. 30, 2009) (citing Max’s Seafood
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`Cafe v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999)). Facebook’s motion for reconsideration
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`raises no such justification. Indeed, despite the Court’s admonition that it did not require “full
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`briefing” on the matter, Facebook’s motion for reconsideration treads the same ground as its
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`Markman briefing and oral argument presented to the Court months ago, rehashing the very
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`same arguments already considered and rejected by the Court. (See D.I. 82 at 55-59; D.I. 89 at
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`63-66, 72-73.) That is plainly improper; “[a] motion for reconsideration is not properly
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`grounded on a request that a court rethink a decision already made.” Smith, 2009 WL 5195928,
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`at *1 (citing Glendon Energy Co. v. Borough of Glendon, 836 F. Supp. 1109, 1122 (E.D. Pa.
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`1993)); see also Dentsply Int’l, Inc. v. Kerr Mfg. Co., 42 F. Supp. 2d 385, 419 (D. Del. 1999)
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`Case 1:16-cv-00116-RGA Document 186 Filed 09/05/17 Page 2 of 5 PageID #: 3300
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`(motions for reconsideration “should not be used to rehash arguments already briefed or to allow
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`a ‘never-ending polemic between the litigants and the Court’”).
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`As was the case in its Markman briefing and oral argument before the Court, Facebook’s
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`motion for reconsideration once again argues that claim 1 of U.S. Patent No. 7,366,786 (the
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`“’786 Patent”) is indefinite because the patent fails to disclose an algorithm for performing each
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`claimed function. Not only does Facebook repeat those same arguments here; it even cites the
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`same cases in support of those arguments. (Compare D.I. 166 at 2 (citing Aristocrat Techs.
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`Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) and WMS Gaming
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`Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348-49 (Fed. Cir. 1999)) with D.I. 82 at 55-56 (citing
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`same).) The Court already has considered and rejected those arguments; therefore, Facebook’s
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`motion for reconsideration is improper. See Celebrate Int’l LLC v. Leapfrog Enters. Inc., C.A.
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`No. 14-261-RGA, slip op. at 1-2 (D. Del. June 16, 2016) (“[Defendant] raised these arguments
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`before. I considered them then.”) (Ex. A). In fact, here the Court looked at the issue twice: once
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`in its initial decision and then again in its decision on reconsideration (D.I. 100, 162).
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`Nor does the Patent Trial and Appeal Board’s (“PTAB”) recent decision to deny
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`institution of Facebook’s petition for inter partes review of the ’786 Patent—raised in
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`Facebook’s notice of subsequent authority (D.I. 174)—support reconsideration by this Court.
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`Facebook provides no context for the selectively quoted and conclusory dicta from the PTAB’s
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`decision. Because Facebook was arguing against Sound View’s constructions before this Court,
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`Facebook merely presented those constructions to the PTAB, and strategically chose not to
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`provide any explanation as to the basis for those constructions. As such, the PTAB’s
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`conclusions were not the result of an adversarial process. Not surprisingly, Facebook failed to
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`meet its burden, Sound View pointed that out, and the PTAB agreed. Indeed, Facebook omits
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`2
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`Case 1:16-cv-00116-RGA Document 186 Filed 09/05/17 Page 3 of 5 PageID #: 3301
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`from its notice the actual holding in the PTAB’s decision—that Facebook did not abide by the
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`PTAB’s procedural rules and thus did not meet its burden in supporting the proposed claim
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`constructions.1 In stark contrast to the fulsome briefing, expert declarations, and argument
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`considered by this Court, Facebook did not include any argument, explanation, or specification
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`citations in its IPR petition, violating the rules of the PTAB, depriving the PTAB of most of the
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`briefing, evidence, and argument this Court had available to it, and putting the PTAB at a
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`significant disadvantage to this Court in reaching the right conclusion.
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`The dicta quoted by Facebook is irrelevant. The fact that the PTAB administrative law
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`judges decided—based on an incomplete record and an unguided scan of the specification—to
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`disregard this Court’s well-reasoned, twice-considered opinion does not provide Facebook with a
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`proper basis for reconsideration of the Court’s analysis. As the Court is well aware, it is not
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`bound by the PTAB’s decision, even one that purports to disagree with this Court’s order.2
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`1 Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-01004, Paper 13 at 7 (PTAB Aug.
`29, 2017) (filed at D.I. 174, Ex. A) (“The Petition does not provide the requisite claim
`construction analysis for the means-plus-function limitations. [Facebook] includes no citation to
`the Specification of the ’786 patent for any alleged structure and, therefore, has not ‘identif[ied]
`the specific portions of the specification that describe the structure, material, or acts
`corresponding to each claimed function,’ as required by our Rules.’”) (emphasis in original)
`(quoting 37 C.F.R. § 42.104(b); id. (“[Facebook] includes no citation to the Specification of the
`’786 patent for this alleged structure.”); id. at 8 (“[Facebook] has not provided any argument in
`support of its proposed construction explaining how the Specification of the ’786 patent links “a
`composed page within a WWW browser” to the function of inputting a user identification (ID)
`and user password. Therefore, we are not persuaded by [Facebook]’s assertion . . . . That Patent
`Owner has proposed these constructions in related district court litigation, however, does not
`relieve [Facebook] of its burden to comply with our Rules for inter partes reviews.”); id. at 11
`(“In sum, [Facebook] does not ‘identify the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function,’ as required by our Rules (37
`C.F.R. § 42.104(b)), to enable us to determine if the asserted prior art teaches such structure.
`Thus, [Facebook] fails to demonstrate a reasonable likelihood of prevailing in its challenge….”).
`2 See, e.g., Inventio AG v. ThyssenKrupp Elevator Americas Corp., C.A. No. 08-874-RGA, 2014
`WL 129799, at *3 n.2 (D. Del. Jan. 14, 2014) (noting in claim construction opinion that “PTAB
`decision is not binding”); Adidas AG v. Under Armour, Inc., C.A. No. 14-130-GMS, slip op. at 2
`n.1 (D. Del. Dec. 15, 2015) (“The court is not bound by a preliminary claim construction used by
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`3
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`Case 1:16-cv-00116-RGA Document 186 Filed 09/05/17 Page 4 of 5 PageID #: 3302
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`Moreover, the higher clear and convincing standard applied to invalidity questions in district
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`court is not applicable in the PTAB.3 And Facebook provides no support for its assertion that a
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`subsequent non-binding decision by the PTAB is a proper basis for reconsideration by a District
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`Court. In fact, just the opposite is true. See Adidas AG v. Under Armour, Inc., C.A. No. 14-130-
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`GMS, op. at 2 n.1 (D. Del. Dec. 15, 2015) (treating defendants’ motion to modify the court’s
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`claim construction order based on preliminary claim construction of PTAB as “essentially a
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`motion for reconsideration” and denying the request as lacking a basis) (Ex. B). In short,
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`Facebook’s request amounts to an improper plea that this Court discard its decision in favor of
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`PTAB conclusions that paid no deference to this Court and were the result of Facebook’s tactical
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`decision to present a claim construction to the PTAB without pointing out the support for that
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`construction in the patent specification. The Court should put an end to such gamesmanship.
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`For the foregoing reasons, Sound View respectfully requests that the Court deny
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`Facebook’s motion for reconsideration of the Court’s claim construction opinion.
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`the PTAB for the limited purpose of denying an IPR request.”) (Ex. B); Microwave Vision, S.A.
`v. ETS-Lindgren Inc., 209 F. Supp. 3d 1322, 1326, 1331-33 (N.D. Ga. Sept. 20, 2016) (denying
`defendant’s motion for summary judgment of invalidity and granting plaintiff’s cross-motion for
`summary judgment of validity, expressly disagreeing with PTAB’s analysis in decision refusing
`to institute IPR because of alleged indefiniteness due to lack of corresponding structure and
`finding that the “PTAB decision provides no reason for the Court to alter its previous claim
`construction”); Perdiem Co, LLC v. IndusTrack LLC, No. 15-cv-727, 2016 WL 3633627, at *41
`(E.D. Tex. July 7, 2016) (“[t]his PTAB decision is not binding on this Court and is
`unpersuasive”); Pragmatus AV, LLC v. Yahoo! Inc., No. C-13-1176, 2014 WL 1922081, at *4
`(N.D. Cal. May 13, 2014) (“this Court owes no deference to the PTAB’s claim construction done
`as part of an inter partes review”); cf. Quad Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d
`870, 876 (Fed. Cir. 1991) (“The courts are the final arbiter of patent validity and, although courts
`may take cognizance of, and benefit from, the proceedings before the patent examiner, the
`question is ultimately one for the courts to decide, without deference to the rulings of the patent
`examiner.”)
`3 See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (“In inter partes
`review, the challenger (or the Patent Office) must establish unpatentability ‘by a preponderance
`of the evidence’; in district court, a challenger must prove invalidity by ‘clear and convincing
`evidence.’).
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`Case 1:16-cv-00116-RGA Document 186 Filed 09/05/17 Page 5 of 5 PageID #: 3303
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`Dated: September 5, 2017
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`/s/ John C. Phillips, Jr. .
`John C. Phillips, Jr. (No. 110)
`Megan C. Haney (No. 5016)
`PHILLIPS, GOLDMAN, MCLAUGHLIN &
`HALL, P.A.
`1200 North Broom Street
`Wilmington, Delaware 19806-4204
`Telephone: (302) 655-4200
`Facsimile: (302) 655-4210
`jcp@pgmhlaw.com
`mch@pgmhlaw.co
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`Of Counsel:
`Alan S. Kellman
`Tamir Packin
`Richard M. Cowell
`Edward B. Geist
`Tom BenGera
`Wesley L. White
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`akellman@desmaraisllp.com
`tpackin@desmaraisllp.com
`rcowell@desmaraisllp.com
`egeist@desmaraisllp.com
`tbengera@desmraisllp.com
`wwhite@desmaraisllp.com
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`Attorneys for Plaintiff
`Sound View Innovations, LLC
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