Case 1:16-cv-00455-RGA Document 187 Filed 07/14/17 Page 1 of 4 PageID #: 17407
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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
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`(302) 425-3012 FAX
`jblumenfeld@mnat.com
`
`
`
`July 14, 2017
`
`VIA ELECTRONIC FILING
`
`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`Re:
`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
`Dear Judge Andrews:
`Defendants submit this letter to address whether the prosecution histories of the ’344 and
`’966 Patents, including arguments to overcome Alagar (see C.A. No. 16-453, D.I. 191, Ex. K-A),
`constitute intrinsic evidence and apply equally to the other Asserted Patents (the ’634, ’147, ’069
`and ’497 Patents). Defendants submit that the ’344 and ’966 prosecution histories are intrinsic
`evidence for the other Asserted Patents.
`Background: The six Asserted Patents were filed on the same day, by the same
`inventors, and include largely identical specifications. See Appendix A. Each of the Asserted
`Patents cites on its face the applications for the ’344 and ’966 Patents as prior art, as well as the
`Alagar reference.1 Further, each of the Asserted Patents cross-references the applications of the
`other Asserted Patents as “related,” and states that their “disclosures … are incorporated herein
`by reference.” Id.
`The Patent Office rejected the pending claims of the applications for the ’344 and ’966
`Patents in May and June 2003, respectively, in view of Alagar. See C.A. No. 16-453, D.I. 117,
`Ex. B-1 & B-2. On September 10, 2003, the applicants amended both the ’344 and ’966
`applications, adding the “m” and “m-regular” limitations, in order to overcome Alagar. The
`applicants addressed the “m” limitations and explained that Alagar teaches “indiscriminate
`linking with neighbors” and is “precisely the opposite” of the claimed invention. Ex. B-1
`(September 10, 2003 Amendment) at 9-11. The applicants also explained that “the Alagar
`reference is deceiving in that it coincidentally shows a 4-regular network” and that “the Alagar
`reference clearly indicates that there is in fact nonregularity in a computer network formed
`because the number of neighbors is not set at a predetermined number.” Id. In contrast, the
`Applicants stated that “Claim 1 as amended requires that the computer network be m regular at
`substantially all times where there are not new nodes entering or leaving the network.” Id. The
`’344 and ’966 Patents then issued, with the remaining related applications still pending. The
`
`
`1 The ’147 Patent cites the applications for the ’344 and ’966 Patents as prior art. The ’344,
`’966, ’634, ’069, and ’497 Patents each cite the other five Asserted Patent applications as
`prior art.
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`

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`Case 1:16-cv-00455-RGA Document 187 Filed 07/14/17 Page 2 of 4 PageID #: 17408
`
`The Honorable Richard G. Andrews
`July 14, 2017
`Page 2
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`claims in the ’634 and ’147 applications were amended to add the same “m” and “m-regular”
`terms. B-3 (’147: 12/11/2003 Amend.) at 4; B-4 (’634: 7/13/2004 Examiner Amend.) at 2-4
`The file histories of the ’344 and ’966 patents are intrinsic evidence to all of the
`Asserted Patents. The Asserted Patents state that they are related to one another and expressly
`incorporate by reference the applications for the other Asserted Patents. Thus those other
`applications (including their file histories) are part of the intrinsic records of all of the patents.
`EPL Holdings, LLC v. Apple, Inc., 2014 WL 491270, at *2 (N.D. Cal. Feb. 4, 2014) (“Intrinsic
`evidence includes the patent and its file history, including any reexaminations and reissues,
`related patents and their prosecution histories, and the prior art that is cited or incorporated by
`reference in the patent-in-suit and prosecution history.”). The listing on the face of the patent,
`cross-reference to, and incorporation of the applications for the ’344 and ’966 Patents by the
`other four Asserted Patents satisfies the public notice requirement for intrinsic evidence.
`Further, the Federal Circuit has held that prior art “listed as a reference on the face of the
`[asserted patent]” establishes that the reference is intrinsic evidence. V-Formation, Inc. v.
`Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (“The [] patent is prior art that was
`listed as a reference on the face of the [] patent and in an Information Disclosure Statement. …
`This court has established that ‘prior art cited in a patent or cited in the prosecution history of the
`patent constitutes intrinsic evidence.’”) (citing cases); see also Open Text S.A. v. Box, Inc., 2015
`WL 400348, at *2 (N.D. Cal. Jan. 28, 2015) (“The only definition … that the parties point to in
`the intrinsic record is in U.S. Patent No. 5,202,982, which is listed on the face of the patent and
`thus constitutes intrinsic evidence.”). Here, each of the Asserted Patents lists Alagar and the
`applications for the ’344 and ’966 Patents on its face, and thus they are intrinsic evidence.
`Still further, none of the rationales for treating evidence as extrinsic apply here. See
`Phillips v. AWH Corp., 415 F.3d 1303, 1318-19 (Fed. Cir. 2005) (identifying five reasons why
`extrinsic evidence is less reliable than intrinsic evidence). The prosecution history at issue here
`was contemporaneous with all of the applications, all Asserted Patents share the same inventors,
`and the statements were made by the Applicants themselves regarding the meaning of terms
`common to and used in the same way by each of the Asserted Patents.
`The Applicant Statements Are Relevant and Persuasive Evidence Whether Intrinsic
`or Extrinsic. Even if the Court concludes that the file histories of the ’344 and ’966 Patents are
`not intrinsic evidence, they should at least be considered persuasive extrinsic evidence. For
`example, the Court of Federal Claims found an argument in an earlier patent to be persuasive
`evidence for the construction of a later patent with the same inventor. Ross-Hime Designs, Inc.
`v. United States, 126 Fed. Cl. 299, 324–25 (2016) (citations omitted). The case involved two
`patents that shared the same inventor and used the same claim language but did not share a
`common parent application. And, unlike this case, the patents there had different specifications
`and did not cross reference and incorporate one another by reference. Id. The court found that a
`disclaimer made during the prosecution of the earlier ’580 Patent bore on the Court’s
`construction of the same claim term from the later ’962 Patent. Id. (“Defendant's position is
`further supported by the fact that the ’580 Patent is expressly listed as a prior art reference in the
`’962 Patent specification and the ’580 Patent itself uses the term ‘differentials in movement.’ As
`such, the Court concludes that its understanding of ‘differentials in movement’ based on the
`disclaimer in the ’580 Patent also bears on the Court's construction of ‘differentials in
`movement’ for the ’962 Patent.”).
`
`

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`Case 1:16-cv-00455-RGA Document 187 Filed 07/14/17 Page 3 of 4 PageID #: 17409
`
`The Honorable Richard G. Andrews
`July 14, 2017
`Page 3
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`
`
`
`JBB/dlw
`Enclosure
`cc:
`Clerk of Court (Via Hand Delivery; w/enclosure)
`
`All Counsel of Record (Via Electronic Mail; w/enclosure)
`
`Respectfully,
`
`/s/ Jack B. Blumenfeld
`
`Jack B. Blumenfeld (#1014)
`
`
`

`

`Case 1:16-cv-00455-RGA Document 187 Filed 07/14/17 Page 4 of 4 PageID #: 17410
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`Appendix A
`
`
`Patent No.
`
`App. No.
`
`App. Date
`
`Issue Date
`
`
`
`6,714,966
`6,732,147
`6,829,634
`6,910,069
`6,920,497
`
`09/629,043
`09/629,577
`09/629,576
`09/629,570
`09/629,572
`
`July 31, 2000
`July 31, 2000
`July 31, 2000
`July 31, 2000
`July 31, 2000
`
`Mar. 30, 2004
`May 4, 2004
`Dec. 7, 2004
`June 21, 2005
`Jul. 19, 2005
`
`
`
`
`
` 6,701,344 09/629,042 July 31, 2000 Mar. 2, 2004
`
`
`
`
`
`JCCC Ex. No.
`(C.A. 16-453, D.I. 117)
`
`A-1
`A-2
`A-3
`A-4
`A-5
`A-6
`
`