Case 1:16-cv-00455-RGA Document 300 Filed 10/27/17 Page 1 of 4 PageID #: 21678
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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
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`(302) 658-9200
`(302) 658-3989 FAX
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`JACK B. BLUMENFELD
`(302) 351-9291
`(302) 425-3012 FAX
`jblumenfeld@mnat.com
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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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`October 27, 2017
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`VIA ELECTRONIC FILING
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`Re:
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`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
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`Dear Judge Andrews:
`Defendants write in response to Plaintiff’s October 24 letter. As explained below: (1)
`Defendants properly identified and gave clear notice of their intent to rely on the Alagar
`reference; and (2) Defendants have good cause to elect Alagar given Plaintiff’s claim
`construction positions and infringement reports. In addition, on October 20, 2017, days before
`filing its letter, Plaintiff moved to strike some of Defendants’ invalidity expert report, including
`contentions based on Alagar, with the Special Master. There is no reason for both the Court and
`the Special Master to deal with these issues at the same time.
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`Alagar Was Disclosed, and Defendants Have Good Cause. Both before this Court and
`before the Special Master, Plaintiff alleges violations of the Scheduling Order and seeks to
`preclude Defendants from relying on Alagar. Plaintiff’s sole basis is that Defendants supposedly
`did not properly elect Alagar as required by the Scheduling Order and Defendants cannot show
`good cause to rely on Alagar. In its Motion to the Special Master, Plaintiff also argues that
`Defendants’ invalidity contentions did not disclose Alagar-based obviousness combinations.
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`In fact, Defendants advised Plaintiff in their May 6, 2016 Invalidity Contentions And
`Election Of Prior Art that they would elect Alagar in their final election of prior art if Plaintiff
`read the claims onto cited prior art. The Election of Prior Art for each patent specifically states:
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`Also, the patentee amended the asserted claims during prosecution to
`include limitations which Plaintiff now ignores in its infringement contentions.
`By ignoring these limitations, Plaintiff attempts to recapture subject matter
`rejected by the examiner and/or disclaimed by the patentee. If Plaintiff construes
`the claims to read out these limitations, Defendants reserve the right to argue that
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`Case 1:16-cv-00455-RGA Document 300 Filed 10/27/17 Page 2 of 4 PageID #: 21679
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`The Honorable Richard G. Andrews
`October 27, 2017
`Page 2
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`the Asserted Claims are invalid in view of the references cited by the examiners
`during prosecution of the Asserted Claims. Ex. A at 24-26.1
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`Plaintiff has done just that. But at the same time it seeks to strip the record of the Alagar prior
`art around which it amended its applications to secure the asserted claims. Plaintiff’s desire to
`exclude the Alagar reference is understandable – Alagar is far closer to the Asserted Claims than
`any of Defendants’ products are. Indeed, Alagar falls squarely within Plaintiff’s interpretations
`of the claims. It discloses “a dynamic computer network” for “reliable communications,” which,
`like the Asserted Claims, relies on “flooding” to broadcast a message through the network.
`(“Our solution is based on simple (restricted) flooding …. To broadcast a message, a mobile host
`transmits the message to all of its neighbors. On receiving a broadcast message, an intermediate
`mobile host retransmits the message to all of its neighbors.”). Alagar also discloses the concept
`of an incomplete network, where some, but not all, members of the network are connected
`“neighbors.” Two members of the Alagar network (called “mobile hosts”) “are neighbors if they
`can ‘hear’ each other.” Alagar, p. 238. Each mobile host has an “optimal” number of neighbors.
`Id. at 237 (“the optimum throughput occurs with a cell size defined by a range that includes an
`average of six nearest neighbors“). In one example, Alagar discloses a computer network where
`each mobile host is connected to exactly four neighbors. Id. at 237 (Fig. 1).
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`During prosecution, to avoid Alagar, Applicants amended the claims to add the m-regular
`and incomplete limitations. They argued that the amended claims were “precisely the opposite”
`of Alagar and “require[] that each participant in the network connects to and forms a neighbor
`bond to exactly an m number of neighbors.” Ex. C at 10. Applicants explained that Alagar only
`appeared to disclose an m-regular network because only part of the network was shown: “the
`Alagar reference is deceiving in that it coincidentally shows a 4-regular network. However, that
`is not the typical situation…[and] 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 ….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.” Ex. C
`at 10.
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`Plaintiff’s expert reports ignore the Court’s claim construction, requiring “a state that the
`network is configured to maintain, where each participant is connected to exactly m neighbor
`participants,” and argue that the accused networks are “m-regular” simply because they
`purportedly have the very same features disclosed in Alagar. For instance, one accused network
`is supposedly m-regular because it “includes setting the optimal or maximum number of
`neighboring participants to which any participant connects.” Ex. D, EA Medvidovic Rpt. at 5.
`The allegedly infringing feature is identical to Alagar, which explains that each “mobile host”
`optimally will connect to 6 neighbors. Alagar, p. 237. For another accused network, Plaintiff
`alleges that supposed “proximity rules” cause players to connect to each other when they are
`near each other, which supposedly makes the network m-regular: “when the players are
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`1 In the invalidity contentions, Alagar is referred to by its title “Reliable Broadcast in Mobile
`Wireless Networks, 1995.”
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`Case 1:16-cv-00455-RGA Document 300 Filed 10/27/17 Page 3 of 4 PageID #: 21680
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`The Honorable Richard G. Andrews
`October 27, 2017
`Page 3
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`geographically dispersed through the gameplay area, the proximity connection rules will make
`the network m-regular.” Ex. E, TT Medvidovic Rpt. at 3. Yet, this very same feature is
`disclosed in Alagar, which explains that connections are also formed by proximity rules: mobile
`hosts become neighbors when they are close enough to each other to “‘hear’ each other.”
`Alagar, p. 238. Defendants deny that these features are present or meet the claim limitations.
`But, because Plaintiff is attempting to recapture claim scope it gave up during prosecution,
`Defendants should be permitted to rely on Alagar, just as they said they would do, so they can
`fairly meet Plaintiff’s evolving infringement allegations.
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`The Special Master recently found good cause in an analogous situation. Plaintiff moved
`to preclude Defendants from relying on invalidity materials produced after fact discovery closed.
`Plaintiff’s motion was denied because Plaintiff had only recently disclosed a “new alleged
`infringement theory,” and Defendants could respond to this theory. Special Master Order No. 10
`at 5 [D.I. 290].
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`Moreover, as set forth above, Defendants disclosed and identified Alagar as a reference at
`the first opportunity in their initial invalidity contentions dated May 6, 2016. Defendants then
`continued to reiterate that Alagar was a relevant prior art reference in response to Plaintiff’s
`infringement contentions. Ex. A at 14; Ex. F at 14. Defendants have certainly been diligent.
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`Finally, Plaintiff has not been prejudiced. The claim construction order construed the
`claims to require that “the network is configured to maintain, where each participant is connected
`to exactly m neighbor participants.” D.I. 275 at 15. The Court adopted this construction to
`avoid sweeping in “accidental” or structures that become m-regular and incomplete by chance.
`Id. Nevertheless, Plaintiff asserts infringement by networks that appear m-regular by chance.
`Under this infringement theory, Alagar is invalidating prior art. Plaintiff is not prejudiced by
`responding to the Alagar reference that it claimed around during prosecution.
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`Plaintiff Seeks Similar Relief Before The Special Master. Defendants did not delay
`the presentation of this issue. Any delay was caused by Plaintiff’s desire to seek the same relief
`before both this Court and the Special Master. When Plaintiff first raised the issue, it insisted
`that Defendants be the moving party and that the issue could not proceed before the Special
`Master. Yet, just last Friday, Plaintiff brought a motion before the Special Master seeking relief
`for purported violations of the Scheduling Order, including with respect to the Alagar reference.
`Defendants know of no reason that these issues should proceed separately.
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`Defendants also wish to advise the Court that there are other prior art issues that they are
`likely to raise with the Special Master. Defendants learned about a week ago of material prior art
`that was in Plaintiff’s possession before the suits were filed, but which does not appear to have
`been produced. Defendants learned of that art from a supplemental privilege log from Hamilton
`Capital’s lawyers. That log identified several prior art references that Plaintiff’s counsel sent to
`Hamilton Capital in January 2015. Defendants are in the process of meeting and conferring with
`Plaintiff’s counsel about these events, and anticipate that they will raise this issue with the
`Special Master shortly.
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`Case 1:16-cv-00455-RGA Document 300 Filed 10/27/17 Page 4 of 4 PageID #: 21681
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`The Honorable Richard G. Andrews
`October 27, 2017
`Page 4
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`JBB:ncf
`Enclosures
`cc:
`Clerk of Court (Via Hand Delivery)
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`All Counsel of Record (Via Electronic Mail)
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`Respectfully,
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`/s/ Jack B. Blumenfeld
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`Jack B. Blumenfeld (#1014)
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