Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 1 of 15 PageID #: 3557
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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 REPLY BRIEF IN SUPPORT OF ITS
`MOTION TO STAY PENDING OUTCOME OF INTER PARTES REVIEW
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`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
` Attorneys for Defendant Facebook, Inc.
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`
`
`
`
`OF COUNSEL:
`
`Heidi L. Keefe
`Elizabeth L. Stameshkin
`Andrew C. Mace
`Sarah Whitney
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843-5000
`
`Phillip E. Morton
`Emily E. Terrell
`COOLEY LLP
`1299 Pennsylvania Avenue, NW, Suite 700
`Washington, DC 20004
`(202) 842-7800
`
`Michael G. Rhodes
`COOLEY LLP
`101 California Street, 5th Floor
`San Francisco, CA 94111-5800
`
`September 14, 2017
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`

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`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 2 of 15 PageID #: 3558
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`TABLE OF CONTENTS
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`
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`Page
`
`INTRODUCTION ............................................................................................................. 1 
`STATUS OF REMAINING PATENTS ............................................................................ 2 
`A. 
`’371 Patent: IPR Instituted ..................................................................................... 2 
`B. 
`’860 Patent: IPR Instituted ..................................................................................... 3 
`C. 
`’181 and ’786 Patents: IPR Denied Because the Asserted Claims are
`Indefinite ................................................................................................................ 5 
`FACEBOOK’S PETITIONS HAVE ALREADY SIMPLIFIED THE ISSUES
`FOR TRIAL; THE
`INSTITUTED
`IPRS WILL PROVIDE FURTHER
`SIMPLIFICATION ............................................................................................................ 6 
`THE MAJORITY OF SUBSTANTIVE TRIAL PREPARATION REMAINS
`OUTSTANDING ............................................................................................................... 7 
`SOUND VIEW WILL NOT BE PREJUDICED BY A STAY ......................................... 8 
`CONCLUSION ................................................................................................................ 10 
`
`I. 
`II. 
`
`III. 
`
`IV. 
`
`V. 
`VI. 
`
`
`i
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`

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`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 3 of 15 PageID #: 3559
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)..............................................................................................5, 7
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-cv-1107(GMS), 2014 WL 1369721 (D. Del. Apr. 7, 2014) ......................................6, 9
`
`Boston Sci. Corp, v. Cordis Corp.,
`777 F. Supp. 2d 783 (D. Del. 2011) ...........................................................................................9
`
`CallWave Commc’ns, LLC v. AT&T Mobility, LLC,
`Civ. No. 12-1701-RGA, 2015 WL 1284203 (D. Del. Mar. 18, 2015).......................................8
`
`Evolutionary Intelligence, LLC v. Sprint Nextel Corp.,
`No. C-13-03587, 2014 WL 4802426 (N.D. Cal. Sept. 26, 2014) ..............................................5
`
`Intellectual Ventures I LLC v. Trend Micro Inc.,
`No. 12-1581-LPS .......................................................................................................................7
`
`NFC Tech. L.L.C v. HTC Am., Inc.,
`No. 13-cv-1058, 2015 WL 1069111 (E.D.Tex. Mar. 11, 2015) ................................................8
`
`O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co.,
`521 F. 3d 1351 (Fed. Cir. 2008).................................................................................................7
`
`Sound View Innovations, LLC v. Facebook, Inc.,
`Case No. 2:17-cv-04275 (C.D. Cal.)........................................................................................10
`
`Versata Software, Inc. v. Callidus Software, Inc.,
`771 F.3d 1368 (Fed. Cir. 2014)..................................................................................................7
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................8
`
`Statutes
`
`35 U.S.C. § 112(f) ¶ 6 ..............................................................................................................1, 2, 5
`35 U.S.C. § 315(e)(2) .......................................................................................................................6
`
`
`
`
`ii
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`

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`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 4 of 15 PageID #: 3560
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`I.
`
`INTRODUCTION
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`Only four of the original seven patents remain at issue in this litigation. The PTAB
`
`instituted inter partes review on the only two remaining patents that it did not believe were
`
`indefinite.1 For the other two patents, the PTAB did not institute review, but only because it
`
`believed that the asserted means-plus-function claims lack sufficient structure, rendering those
`
`claims indefinite under § 112 ¶ 6.2 As such, Facebook’s IPR petitions—through continued PTAB
`
`proceedings and additional claim construction in this Court guided by PTAB expertise—have the
`
`potential to invalidate the vast majority of Sound View’s remaining asserted claims and thus will
`
`simplify any potential remaining issues for trial.
`
`Moreover, the parties and the Court have much left to do to bring this case to a jury,
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`especially in light of expanded and re-opened fact discovery and additional claim construction
`
`issues that arose from the IPR proceedings. The bulk of the expense and burden associated with
`
`preparing for trial is still in the future. A stay at this point would save a substantial amount of the
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`Court’s time and the parties’ resources.
`
`Finally, Sound View cannot complain that it is somehow prejudiced by a stay. Facebook
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`diligently sought IPRs and stay. The now-instituted proceedings before the PTAB will be
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`complete within twelve months—representing a mere six-month delay from trial. And Sound
`
`View is a self-admitted non-practicing licensing entity which does not compete with Facebook.
`
`
`
`
`1
`Facebook has filed motions for reconsideration and alteration for the Court to fully
`consider the PTAB’s detailed analysis explaining its opinions of indefiniteness. (See D.I. 166,
`174, 177).
`2
`While the PTAB can decline to institute inter partes review because it believes the claim
`is indefinite, the PTAB does not have authority to declare the claim invalid for indefiniteness in
`an inter partes review proceeding.
`
`1
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 5 of 15 PageID #: 3561
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`II.
`
`STATUS OF REMAINING PATENTS
`
`Sound View began this case with seven asserted patents. Over the course of the last
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`eighteen months, the case has been substantially reduced: this Court has invalidated two of those
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`patents (the ’486 and ’593 patents), Sound View has stipulated to non-infringement of another
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`(the ’845 patent),3 the PTAB has instituted IPR on two more (the ’371 and ’860 patents), and the
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`remaining two are the subject of pending motions for the Court to reconsider in light of the
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`PTAB’s reasoned opinion on the indefiniteness of the asserted claims (the ’181 and ’786
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`patents). Contrary to the inaccurate and incomplete accounting in Sound View’s opposition,
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`Facebook’s IPR petitions are likely to dispose of—or, at a minimum, provide the Court with
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`useful guidance in disposing of—all or most of what claims remain.
`
`A.
`
`’371 Patent: IPR Instituted
`
`The PTAB instituted review on the method claims (8-10) of the ’371 patent. While the
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`PTAB did not institute review on the system claims (1-3), it only did so based on application of
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`“controller” as not having an identified structure under § 112 ¶ 6,4 not the strength of Facebook’s
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`prior art-based arguments. (See D.I. 192-5, “371 IPR” at 10-13.) Regarding the merits of
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`Facebook’s prior art, the PTAB agreed with Facebook that there is a reasonable likelihood that
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`the claims of the ’371 patent are invalid. (See id. at 25-27.) As shown below, there is no
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`substantive difference between the system claims (1-3) and the instituted method claims (8-10):
`
`Claims 1-3
`
`Claims 8-10
`
`1. A processing system for use with a
`database of data records, said database
`stored in a memory, comprising:
`
`8. A method of operating a processing system
`for use with a database of data records,
`said database stored
`in a memory,
`comprising the steps of:
`
`
`3
`The PTAB also instituted IPR on the ’845 patent shortly before Sound View stipulated to
`summary judgment of non-infringement.
`4
`The PTAB examined the same argument that Facebook presented to the Court, which the
`Court rejected. (D.I. 100, at 9-12.)
`
`2
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 6 of 15 PageID #: 3562
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`Claims 1-3
`
`Claims 8-10
`
`a time stamping controller that assigns a
`time stamp to transactions to be
`performed on said database;
`
`a versioning controller that creates multiple
`versions of ones of said data records
`affected by said transactions that are
`update transactions; and
`
`an aging controller that monitors a
`measurable characteristic of said
`memory and deletes ones of said multiple
`versions of said ones of said data records
`in response to said time stamp and said
`measurable characteristic thereby to
`increase a capacity of said memory.
`
`assigning a time stamp to transactions to
`be performed on said database;
`
`creating multiple versions of ones of said
`data records affected by said transactions
`that are update transactions;
`
`monitoring a measurable characteristic of
`said memory;
`and deleting ones of said multiple versions
`of said ones of said data records in
`response to said time stamp and said
`measurable characteristic thereby to
`increase a capacity of said memory.
`
`2. The processing system as recited in claim 1
`wherein said time stamp is generated as a
`function of a time stamp counter.
`
`9. The method as recited in claim 8 wherein
`said time stamp is generated as a function
`of a time stamp counter.
`
`3. The processing system as recited in claim 2
`wherein said system increments said time
`stamp counter.
`
`10. The method as recited in claim 9 further
`comprising the step of incrementing said
`time stamp counter.
`
`(’371 patent at 9:10-27; 43-62 (equivalent language emphasized).)5 As such, the PTAB’s
`
`ultimate decision on claims 8 through 10 will provide this Court with a roadmap as to the
`
`validity of claims 1 through 3. In the absence of a stay, Facebook will be forced to litigate the
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`validity of claims which, for all intents and purposes, are under PTAB review. The IPR structure
`
`of the AIA was designed to avoid this exact situation.
`
`B.
`
`’860 Patent: IPR Instituted
`
`The PTAB instituted review of claims 1-3, 5 and 7 of the ’860 patent. (See D.I. 192-4,
`
`“860 IPR” at 11-21, 28.) With respect to the dependent claims 8-10, granting the PTAB time to
`
`
`5
`Sound View’s opposition is tellingly silent on this near equivalence—with differences
`principally being verb conjugations—and instead wrongly suggests that Facebook’s instituted
`IPR will have no bearing whatsoever on the remaining claims.
`
`3
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 7 of 15 PageID #: 3563
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`evaluate whether the prior art discloses the elements of the independent claim will allow the
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`parties and the Court to focus any remaining validity disputes on the remaining limitations,
`
`should this case reach trial. Regarding claim 13, after over a year of fact discovery and claim
`
`construction, Sound View has not been able to identify what the claimed “virtual client device”
`
`is in Facebook’s accused systems. Finally, although the PTAB did not institute on Claim 18, it is
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`a near mirror image of claim 1:
`
`’860 Claim 1
`
`’860 Claim 18
`
`1. An apparatus for use in a computer
`network, the apparatus comprising:
`
`
`
`at least one server within the network, the
`server being operative to process a client
`request generated by a client device to
`determine a particular client type associated
`with the client device, to retrieve web content
`identified in the client request, to retrieve
`one or more augmentation files associated
`with at least one of the web content and the
`particular client type, and to alter the
`retrieved web content in accordance with the
`one or more augmentation files, wherein the
`altered web content is delivered to the client
`device;
`
`
`18. A processing system comprising:
`
`
`a web server operative to store web content;
`and
`
`an interpolating proxy server at least
`temporarily coupled to the web server and
`operative to process a client request
`generated by a client device to determine a
`particular client type associated with the
`client device, to retrieve web content
`identified in the client request and stored on
`the web server, to retrieve one or more
`augmentation files associated with the web
`content and the particular client type, and to
`alter the retrieved web content in accordance
`with the one or more augmentation files,
`wherein the altered web content is delivered
`to the client device;
`
`
`wherein the server parses the retrieved web
`content into one or more component
`structures, and subsequently applies a
`pattern matching process to recognize
`designated component structure subject to
`alteration in accordance with the one or
`more augmentation files; and
`
`
`the interpolating proxy server being further
`operative to parse the retrieved web content
`into one or more component structures, and
`subsequently to apply a pattern matching
`process to recognize designated component
`structure subject to alteration in accordance
`with the one or more augmentation files;
`
`
`wherein the pattern matching process
`comprises comparing a given one of the
`
`wherein the pattern matching process
`comprises comparing a given one of the
`
`4
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 8 of 15 PageID #: 3564
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`’860 Claim 1
`
`’860 Claim 18
`
`component structures of the retrieved web
`content to predetermined component
`structures represented by respective tokens
`in the one or more augmentation files.
`
`component structures of the retrieved web
`content to predetermined component
`structures represented by respective tokens
`in the one or more augmentation files.
`
`
`
`The main difference seems to be the “interpolating proxy server,” which to date Sound View has
`
`never specifically identified in its disclosed infringement theories. Thus, like for the ’371 patent,
`
`the PTAB’s guidance on instituted claim 1 will provide a valuable roadmap for addressing any
`
`remaining validity issues with Claim 18.
`
`C.
`
`’181 and ’786 Patents: IPR Denied Because the Asserted Claims are
`Indefinite
`
`As explained in further detail in Facebook’s Motion for Reconsideration (D.I. 166, 174)
`
`and Motion for Modification of Claim Construction Order (D.I. 177), both the ’181 and ’786
`
`patents are invalid for failure to disclose sufficient structure as required by § 112 ¶ 6. Following
`
`twenty-one pages of analysis, the PTAB declined to reach the merits of Facebook’s petitions for
`
`these patents because the specifications do not contain sufficient disclosure of corresponding
`
`structure for certain means-plus-function claim terms subject to § 112 ¶ 6. As such, although the
`
`PTAB declined to institute review, it provided the Court with crucial prosecution history that
`
`warrants revisiting the Court’s claim construction. See Aylus Networks, Inc. v. Apple Inc., 856
`
`F.3d 1353, 1361 (Fed. Cir. 2017) (“[S]tatements made by a patent owner during an IPR
`
`proceeding can be considered during claim construction. . .”); Evolutionary Intelligence, LLC v.
`
`Sprint Nextel Corp., No. C-13-03587, 2014 WL 4802426, at *4 (N.D. Cal. Sept. 26, 2014) (“The
`
`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))).
`
`5
`
`

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`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 9 of 15 PageID #: 3565
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`For the reasons stated in Facebook’s pending motions, Facebook respectfully submits that
`
`the asserted claims of these patents are invalid as indefinite and, as such, should not be
`
`considered as reasons for denying a stay.
`
`III.
`
`FACEBOOK’S PETITIONS HAVE ALREADY SIMPLIFIED THE ISSUES FOR TRIAL; THE
`INSTITUTED IPRS WILL PROVIDE FURTHER SIMPLIFICATION
`
`Contrary to Sound View’s assertion, Facebook’s request for a stay was not based on the
`
`“entire premise” that all of its IPR petitions would be successful. (D.I. 192 at 1.) Rather, the
`
`PTAB’s decisions confirmed that Facebook’s IPR petitions will simplify and streamline the
`
`issues for trial because the decisions show that claims of all four remaining patents are likely
`
`invalid. This factor weighs strongly in favor of a stay. 6
`
`Sound View is rushing to burden a jury with a trial on patents that are likely invalid. The
`
`primary result of this tactic will be Sound View never having to square the findings of the PTAB
`
`with the validity case it presents to the jury. Sound View’s opposition also completely ignores
`
`the beneficial effects of and simplification inherent to the AIA’s estoppel provisions. For any
`
`claims which that survive PTAB review, Facebook will be estopped from asserting invalidity
`
`based on any “ground that [it] raised or reasonably could have raised during that inter partes
`
`review.” 35 U.S.C. § 315(e)(2). Contrary to Sound View’s unsupported argument that Facebook
`
`is using IPR to assert additional prior art references, the preclusive effect of this provision will
`
`necessarily narrow the focus of invalidity for any surviving claims. See Bonutti Skeletal
`
`Innovations, L.L.C. v. Zimmer Holdings, Inc., No. 12-cv-1107(GMS), 2014 WL 1369721, at *5
`
`(D. Del. Apr. 7, 2014) (rejecting argument that defendants were “engaged in a ‘scheme’ to avoid
`
`
`6
`Sound View’s string citation to cases denying motions to stay where less than all of the
`asserted claims are subject to IPR are inapposite as it ignores the true scope and impact of the
`PTAB’s decisions on Facebook’s petitions. (D.I. 192 at 4-5.) Unlike Sound View’s cited cases,
`the PTAB’s review in this case is potentially dispositive for the vast majority of remaining
`claims.
`
`6
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 10 of 15 PageID #: 3566
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`the full statutory scope of estoppel to which they absolutely must be subject” and finding
`
`simplification of issues favored stay)
`
`Finally, Sound View’s argument that “claim construction is essentially complete in this
`
`litigation” is incorrect. (D.I. 192 at 5-6.) First, the Court has already deferred decisions on
`
`outstanding claim constructions until the summary judgment stage. (See D.I. 100 at 27).
`
`Moreover, two motions are outstanding concerning claim construction for the ’181 and ’786
`
`patents. See, e.g., Intellectual Ventures I LLC v. Trend Micro Inc., No. 12-1581-LPS, Hr’g Tr.
`
`[D.I. 223] at 195 (D. Del. April 10, 2015) (granting motion for clarification of claim construction
`
`and stating that “claim construction can be done at any time”); O2 Micro Intern. Ltd. v. Beyond
`
`Innovation Tech. Co., 521 F. 3d 1351, 1360 (Fed. Cir. 2008) (“When the parties raise an actual
`
`dispute regarding the proper scope of these claims, the court, not the jury, must resolve that
`
`dispute.”). Indeed, Facebook’s IPR petitions have already contributed significantly to the
`
`intrinsic record of at least two patents (’181 and ’786), they may contribute even further as the
`
`proceedings advance and Sound View makes further statements regarding the scope of its claims.
`
`See Aylus Networks, 856 F.3d at 1361. Facebook’s pending motions on the ’181 and ’786 patents
`
`seek to provide the Court with the benefits of these additions to the intrinsic record and the
`
`PTAB’s guidance on claim construction. (See D.I. 166, 174, 177.) A stay would enhance these
`
`benefits by allowing the intrinsic record to fully develop for the other two patents and, if
`
`necessary, grant the Court the opportunity to continue claim construction with a complete record.
`
`IV.
`
`THE MAJORITY OF SUBSTANTIVE TRIAL PREPARATION REMAINS OUTSTANDING
`
`Sound View’s backward-looking analysis and concern that a stay would waste already
`
`expended judicial and party resources misses the mark. (D.I. 192 at 6.) Although Facebook does
`
`not dispute that this case has advanced through fact discovery, the proper inquiry for this factor
`
`is “…how much more remains to be done in litigation before reaching the trial date.” Versata
`
`7
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 11 of 15 PageID #: 3567
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`Software, Inc. v. Callidus Software, Inc., 771 F.3d 1368, 1373 (Fed. Cir. 2014) (citing
`
`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1317 (Fed. Cir. 2014); see also
`
`CallWave Commc’ns, LLC v. AT&T Mobility, LLC, Civ. No. 12-1701-RGA, 2015 WL 1284203,
`
`at *1 (D. Del. Mar. 18, 2015) (granting stay even though “[d]iscovery is more advanced than
`
`would be ideal”). Sound View’s analysis contradicts the Federal Circuit’s guidance and vastly
`
`understates the work remaining in this litigation.
`
`At the time of Facebook’s motion, fact discovery on the ’786 patent remained
`
`outstanding. No expert reports had been served, expert depositions were months away,
`
`dispositive motions even further out, and no substantive pre-trial work had been conducted. (See
`
`D.I. 165 at 6-7.)7 The substantive work remaining in this case will undoubtedly represent “the
`
`bulk of the expenses that the parties would incur in pretrial work and trial preparation.” NFC
`
`Tech. L.L.C v. HTC Am., Inc., No. 13-cv-1058, 2015 WL 1069111, at *3 (E.D.Tex. Mar. 11,
`
`2015). A stay at this time could potentially eliminate these significant costs and the associated
`
`burden on the Court’s and the parties’ time and resources. As such, this factor weighs in favor of
`
`granting a stay.
`
`V.
`
`SOUND VIEW WILL NOT BE PREJUDICED BY A STAY
`
`Nothing in Sound View’s opposition establishes any undue prejudice or tactical
`
`disadvantage here. Facebook acted diligently in filing its IPR petitions in light of Sound View’s
`
`recalcitrant discovery tactics. (See D.I. at 165 at 7-8.) Facebook filed its request for a stay as
`
`early as possible to ensure that the parties would be able to address the PTAB’s institution
`
`
`7
`Although “the time of the motion is the relevant time to measure the stage of litigation,”
`much has happened since Facebook’s filing to further complicate the issues and add to the
`amount that remains to be done prior to trial. VirtualAgility, 759 F.3d at 1317. Moreover, as
`discussed supra, the PTAB’s institution decisions strongly suggest the need for additional claim
`construction proceedings regarding the indefiniteness of these patents in light of an expanded
`intrinsic record. (See supra § II.C.)
`
`8
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 12 of 15 PageID #: 3568
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`decisions in briefing before the Court made a final decision. 8 The PTAB instituted two IPRs,
`
`which are statutorily required to be complete within twelve months. And, most importantly,
`
`Sound View is a non-practicing entity seeking only monetary damages that does not compete
`
`with Facebook. As such, all four sub-factors point in favor of a stay. See Boston Sci. Corp, v.
`
`Cordis Corp., 777 F. Supp. 2d 783, 789 (D. Del. 2011)).
`
`First, Facebook met the one-year statutory deadline required by the AIA, and it was
`
`Sound View’s shifting sands discovery that prevented them from being filed earlier. See Bonutti,
`
`2014 WL 1369721, at *3 (granting stay where defendant met statutory deadline and where
`
`patentee’s conduct contributed to any delay). Sound View’s argument that Facebook should have
`
`filed its IPRs at some undefined earlier point in time contravenes the statutory scheme adopted
`
`by Congress.
`
`Second, Facebook filed this motion so that the Court and the parties would have the
`
`benefit of the PTAB’s institution decisions before deciding on a stay. Indeed, Facebook could
`
`hardly have acted with any more alacrity, as briefing is now complete barely a week after the
`
`PTAB’s final decision granting institution.
`
`Third, now that the PTAB has instituted review, a final decision is required within
`
`twelve months. Thus, the IPR proceedings will conclude a mere six months after trial is currently
`
`scheduled. Such delay is to be expected within the framework of the AIA and cannot, alone,
`
`constitute prejudice. Bonutti, 2014 WL 1369721, at *2 (“Potential delay does not in itself
`
`establish undue prejudice to the non-movant.”) Indeed, Sound View’s apparent goal is to render
`
`the Facebook IPRs “irrelevant” by rushing this case to trial despite the PTAB’s parallel
`
`proceedings. (D.I. 192 at 9-10.) Such an outcome would be prejudicial to Facebook, not Sound
`
`
`8
`Indeed, Facebook filed this reply a few days after receiving Sound View’s opposition to
`close briefing on this issue as quickly as possible.
`
`9
`
`

`

`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 13 of 15 PageID #: 3569
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`View.
`
`Fourth, Sound View cannot escape the conclusion that it does not compete with
`
`Facebook and thus is not harmed by the delay inherent in the PTAB’s review. (See D.I. 165 at 8-
`
`9 (collecting cases).) Sound View’s complaint that its licensing activities have been hampered by
`
`Facebook’s defense is unavailing. Sound View cannot, on the one hand, make the strategic
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`decision to not sue other companies while this case is pending and, on the other hand, blame
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`Facebook for defending itself. Facebook has every right to mount a full-throated defense against
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`Sound View’s allegations and should not be punished for successfully disposing of nearly half of
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`Sound View’s patents in this case.9
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`VI. CONCLUSION
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`For all the foregoing reasons, all relevant factors favor a stay. Facebook respectfully
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`requests that the Court stay these proceedings pending final resolution of Facebook’s petitions
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`for inter partes review.
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`9 Sound View’s argument that its “ability to secure licenses through good-faith negotiations
`rather than litigation[] are core to its business” is simply wrong. (D.I. 192 at 10.) Sound View
`has not produced a single license that did not involve litigation. Indeed, it is the threat of
`protracted, serial litigation that is core to Sound View’s business, not its ability to negotiate. See
`Sound View Innovations, LLC v. Facebook, Inc., Case No. 2:17-cv-04275 (C.D. Cal.) (second
`patent infringement lawsuit filed by Sound View against Facebook in June 2017.)
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`10
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`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 14 of 15 PageID #: 3570
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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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`September 14, 2017
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`Case 1:16-cv-00116-RGA Document 201 Filed 09/14/17 Page 15 of 15 PageID #: 3571
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 14, 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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`September 14, 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
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`Karen Jacobs (#2881)
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