Case 1:16-cv-00455-RGA Document 395 Filed 02/07/18 Page 1 of 6 PageID #: 29751
`
`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6000
`www.potteranderson.com
`
`Philip A. Rovner
`Partner
`provner@potteranderson.com
`(302) 984-6140 Direct Phone
`(302) 658-1192 Fax
`
`BY CM/ECF & HAND DELIVERY
`
`February 7, 2018
`
`The Honorable Richard G. Andrews
`U.S. District Court for the District of Delaware
`U.S. Courthouse
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`Acceleration Bay LLC v. Activision Blizzard, Inc. et al.
`D. Del., C.A. No. 16-453-RGA, 16-454-RGA, 16-455-RGA
`
`Dear Judge Andrews:
`
`Pursuant to the Court’s request at the January 29, 2018 hearing, Acceleration Bay
`respectfully submits this summation of the experts’ testimony regarding the construction of Term
`4 (“means for connecting to the identified broadcast channel”).
`
`I.
`
`Summary
`
`Based on the testimony at the January 29, 2018, hearing, the algorithm in Column 5 is
`clearly “sufficient to define the structure and make the bounds of the claim understandable,” and
`that “one skilled in the art would understand from that disclosure” the structure corresponding to
`the function of Term 4. D.I. 388 at 3 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1313-
`14 (Fed. Cir. 2012); see, e.g., Tr. at 72:16-19, 74:9-10. Accordingly, the Court’s construction
`identifying Column 5 and Figure 8 as alternate embodiments is correct.
`
`Defendants’ own expert, Dr. John Kelly, conceded that the algorithm in the ‘344 Patent at
`Column 5 Lines 33-55 (the “Column 5 Disclosure”) discloses to a POSA the function of
`“connecting to the identified broadcast channel.” Although Defendants solicited testimony from
`Dr. Kelly to suggest that the Column 5 Disclosure is not sufficient, Dr. Kelly’s May 19, 2017
`claim construction declaration (“May Declaration”) contradicted his testimony. D.I. 191-4, Ex.
`H (5/19/2017 Kelly Decl.) at pg. ¶ 71. Confronted with his May Declaration, on cross-
`examination Dr. Kelly was forced to concede these points. Specifically, Dr. Kelly conceded that
`the Column 5 Disclosure defines the bounds of the claim via a series of steps describing the
`process for connecting to a broadcast channel. Tr. at 71:25-72:9. Further, Dr. Kelly conceded
`that the steps are understandable to a POSA. Tr. at 74:9-10. Indeed, Dr. Kelly ultimately
`admitted that his prior May Declaration quoted the Column 5 Disclosure and characterized it as
`“disclos[ing] the following procedure for connecting to a broadcast channel with m-regular
`
`

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`Case 1:16-cv-00455-RGA Document 395 Filed 02/07/18 Page 2 of 6 PageID #: 29752
`
`The Honorable Richard G. Andrews
`February 7, 2018
`Page 2
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`network graph.” Tr. at 77:1-14; D.I. 191-4, Ex. H (5/19/2017 Kelly Decl.) at pg. ¶ 71. While
`Dr. Kelly tried to point to portions of his May Declaration citing to Figure 8 and corresponding
`specifications (the “Figure 8 Disclosure”), on cross-examination Dr. Kelly was forced to admit
`that his citations to the Figure 8 Disclosure relate to the separate functions of identifying and
`selecting ports and are the subject of different inventions in the related patents––not Term 4. Tr.
`at 76:10-17 (finding and reordering port); Tr. at 78:1-14 (admitting portions of his May
`Declaration on port selection and port reordering are related to different patents and claims).
`
`Plaintiff’s expert Dr. Michael Mitzenmacher also confirmed that the Column 5
`Disclosure is sufficient to define the structure and make the bounds of the claim understandable.
`Dr. Mitzenmacher explained that the function of “connecting to a broadcast channel” is high-
`level and requires only a few basic steps to perform that function. Tr. at 15:15-25, 16:15-21. Dr.
`Mitzenmacher explained that all of the steps necessary to perform the connecting function are
`described in the Column 5 Disclosure, such that the bounds of the claim are understandable. Tr.
`at 20:4-22:6. Dr. Mitzenmacher also explained that the disclosures in the Figure 8 Disclosure are
`a second, different embodiment that includes optional features not necessary to perform the
`connecting function. Namely, the Figure 8 Disclosure includes steps for performing other
`functions that precede or follow the function of connecting, such as identifying the broadcast
`channel, ports and reordering ports. Tr. at 22:11-25:3. Those functions are the subject of
`different patents and claims.
`
`II.
`
`The Disclosure in Column 5 Sufficiently and Understandably Describes the Steps to
`Perform the Function of Term 4
`
`A.
`
`Term 4 Describes a High-Level Function of Connecting
`
`The Column 5 Disclosure describes the structure, and more specifically, an algorithm, to
`perform the function of “connecting to the identified broadcast channel.” An algorithm, as
`explained by Dr. Mitzenmacher, is simply “a process to accomplish some task . . . a sequence of
`steps.” Tr. at 12:7-8. Further, Dr. Mitzenmacher explained that a POSA would understand that
`the disclosures needed to perform a function depend on the complexity and nature of the
`function. Tr. at 14:17-22 (“when we’re talking about a high-level functionality, you expect to
`see a corresponding high-level description.”).
`
`Dr. Mitzenmacher explained that because the function of Term 4 is high-level––
`connecting to the identified broadcast channel–– a POSA would expect there to be a high-level
`description of the steps to perform the function. Dr. Mitzenmacher then explained why, here, the
`high-level function of connecting to the identified broadcast channel is well within the skill-level
`of a POSA with the benefit of the teachings of the specifications:
`
`We’re talking about making a connection within a network, a particular type of
`connection.
`
`They identify a broadcast channel. But again, that’s a very high level of function,
`one that people understand readily . . . because they have to deal with managing
`connections to the networks. They would have seen that and understood that.
`
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`Case 1:16-cv-00455-RGA Document 395 Filed 02/07/18 Page 3 of 6 PageID #: 29753
`
`The Honorable Richard G. Andrews
`February 7, 2018
`Page 3
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`And so, one would expect that . . . . the corresponding description of an algorithm
`to do that would be a corresponding high-level.
`
`*
`
`*
`
`*
`
`But here we’re talking about a high level networking function where there is
`already in place various protocols such as TCP/IP and so on for individual
`connections . . . .
`
`And so, people understand the methodologies for doing connections. You would
`expect a description to take into account that people have this knowledge.
`
`Tr. at 15:15-25, 16:15-21. Dr. Mitzenmacher further contrasted the high-level function of Term
`4 with low-level functions requiring significantly more detail such as a something that needs to
`be implemented at the chip level. Tr. at 16:2-21.
`
`Dr. Kelly did not dispute Dr. Mitzenmacher’s definition of an algorithm, his explanation
`that the complexity of functions determines the level of detail needed for an algorithm, or that
`connecting is a high-level function.
`
`B.
`
`The Column 5 Disclosure Describes a Series of Understandable Steps to
`Perform the Function of Term 4
`
`1.
`
`The Experts Confirmed that a POSA Would Understand that the
`Column 5 Disclosure is Sufficient to Perform the Connect Function
`
`Dr. Mitzenmacher explained that the Column 5 Disclosure describes three basic steps to
`perform the function of connecting to the identified broadcast channel:
`
`[1] Each computer is aware of one or more “portal computers” through which that
`computer may locate the broadcast channel. A seeking computer locates the
`broadcast channel by contacting the portal computers until it finds one that is
`currently fully connected to the broadcast channel.
`
`[2] The found portal computer then directs the identifying of four computers (i.e.,
`to be the seeking computer's neighbors) to which the seeking computer is to
`connect.
`
`[3] Each of these four computers then cooperates with the seeking computer to
`effect the connecting of the seeking computer to the broadcast channel
`
`‘344 Patent at 5:32-48; Tr. at 20:4-22:6.
`
`Dr. Mitzenmacher explained that the above steps are sufficient for a POSA to understand
`the bounds and perform the high-level “connecting” function. For example, Dr. Mitzenmacher
`explained that if he were to give the Column 5 Disclosure to a senior level undergraduate
`student, who is taking a networking and algorithm course and who has some experience (i.e.,
`
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`Case 1:16-cv-00455-RGA Document 395 Filed 02/07/18 Page 4 of 6 PageID #: 29754
`
`The Honorable Richard G. Andrews
`February 7, 2018
`Page 4
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`someone with even less experience than a POSA), the student could implement the function of
`connecting a computer to a portal computer using this disclosure. Tr. at 20:4-16. Dr.
`Mitzenmacher further explained that additional details were not needed because the series of
`steps disclosed in the Colum 5 Disclosure is sufficient to inform a POSA (or even an
`undergraduate student) how the function should be performed. Tr. at 21:7-2, 21:4-22:6.
`
`Dr. Kelly did not rebut this opinion. Instead, Dr. Kelly admitted that the Column 5
`Disclosure describes a series of steps that would be understood by a POSA. Tr. at 73:8-9 (“It’s
`fair to say that there are three steps here associated with connecting to a broadcast channel.”); Tr.
`at 74:6-10. Further, Dr. Kelly admitted that “Column 5 is basically a broad-brush overview of
`what you would have to do in order to connect to the broadcast channel.” Tr. at 65:24-66:1
`(emphasis added).
`
`2.
`
`Dr. Kelly’s Prior May Declaration Contradicted His Testimony
`
`On direct examination Dr. Kelly testified that the Column 5 Disclosure does not disclose
`the procedure for connecting to the broadcast channel. The Court should disregard this
`testimony because it directly contradicts his prior May Declaration. Specifically, in his May
`Declaration Dr. Kelly admitted the exact opposite, stating that the Colum 5 Disclosure describes
`the procedure for “connecting to a broadcast channel.” D.I. 191-4, Ex. H (5/19/2017 Kelly
`Decl.) at pg. ¶ 71.
`
`Although Dr. Kelly tried to claw back the concessions in his May Declaration by pointing
`to other portions of his declaration citing to the Figure 8 Disclosure, on cross-examination Dr.
`
`

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`Case 1:16-cv-00455-RGA Document 395 Filed 02/07/18 Page 5 of 6 PageID #: 29755
`
`The Honorable Richard G. Andrews
`February 7, 2018
`Page 5
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`Kelly was forced to admit that these additional citations related to different claims and different
`functions, not Term 4. Tr. at 75:18-76:17 compare with Tr. at 78:1-14.
`
`3.
`
`Defendants’ Expert Dr. Kelly Ignores the Knowledge and
`Understanding of a POSA
`
`Dr. Kelly does not dispute that a POSA would have knowledge of and familiarity with
`networking protocols such as TCP/IP which are used to connect computers to a portal computer
`as explained by Dr. Mitzenmacher. Tr. at 21:7-22:6, 73:12-74:10. To the contrary, Dr. Kelly
`contends that a POSA would have even more knowledge and experience than Dr.
`Mitzenmacher’s POSA, and would have a deeper understanding of networking tools and
`protocols for connecting computers. Tr. at 73:12-74:10. Further, Dr. Kelly admits that a POSA
`could read and understand the steps in Column 5. Tr. at 72:16-19, 73:4-9. In the face of these
`concessions (1) that a POSA would understand Column 5 to disclose the steps of connecting and
`(2) a POSA would have extensive networking experience on how to connect computer; there is
`no basis to find that the Column 5 Disclosure is not sufficient to perform the function of
`connecting to an identified broadcast channel to a POSA. See Tr. at 52:17-22; 60:16-23
`
`4.
`
`Dr. Kelly Confused the Subject Matter of the Asserted Patents
`
`Dr. Kelly incorrectly argued that the Column 5 Disclosure was incomplete because it did
`not include functionality that is the subject of different patents. Dr. Kelly asserted that the
`Column 5 Disclosure does not disclose how to identify and re-order ports:
`
`The issue here is that there are tens of thousands of potential ports and it is just
`not practical for a seeking computer to dialing those one after the other. It would
`take far too long. And to make it to a point where you’ve exhausted every
`possible port on a portal computer, and you still don’t have a connection.
`
`So you’ve got to find some mechanism for identifying or increasing the likelihood
`that you will identify the port. And that’s what the port ordering algorithm is used
`for.
`
`Tr. at 66:25-67:9; see also Tr. at 66:8-22, 67:10-68:3. However, on cross-examination, Dr. Kelly
`admitted this issue is the subject of the ‘147 and ‘497 Patents. Tr. at 78:4-11. Thus, these
`functions have no bearing on the functionality covered by Term 4 of the ‘344 and ‘966 Patents
`
`Dr. Kelly also testified that the Column 5 Disclosure does not disclose how to overcome
`the problems of “elongating the network.” Tr. at 68:16-69:2. On cross-examination, however,
`Dr. Kelly conceded this is the functionality of the ‘069 Patent. Tr. at 75:21-76:6, 78:1-3. This
`also is not relevant to the construction of Term 4.
`
`C.
`
`Figure 8 is an Alternate Embodiment with Optional Features
`
`There is no reason to construe Term 4 as requiring all functionality described in the
`Figure 8 Disclosure Dr. Mitzenmacher explained that Figure 8 includes optional features (e.g.,
`
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`Case 1:16-cv-00455-RGA Document 395 Filed 02/07/18 Page 6 of 6 PageID #: 29756
`
`The Honorable Richard G. Andrews
`February 7, 2018
`Page 6
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`using time for error correction) that are not required to perform the connect function. Tr. 22:7-
`23:8, 24:13-25:21. Dr. Kelly did not dispute that Figure 8 includes additional features and
`options not needed to perform the connect function. For example, there was no dispute that error
`correction in Figure 8 is not necessary for performing the connect function.
`
`III.
`
`Conclusion
`
`For the foregoing reasons, the Court’s construction accurately reflects the different
`embodiments in Column 5 and Figure 8, and no further amendments are necessary.
`
`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`cc:
`
`All Counsel of Record (Via ECF Filing, Electronic Mail)
`
`