Case 1:16-cv-00455-RGA Document 425 Filed 05/23/18 Page 1 of 5 PageID #: 31790
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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
`jblumenfeld@mnat.com
`
`
`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`Dear Judge Andrews:
`
`May 23, 2018
`
`
`VIA ELECTRONIC FILING
`
`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
`
`Acceleration Bay LLC (“Acceleration”) filed a motion for summary judgment, in part, on
`whether there was sufficient evidence that the software program “ActiveNet” was prior art to the
`asserted patents. Defendants provided evidence that ActiveNet was included in a video game
`called “Heavy Gear II Demo” that was published and sold more than a year prior to the filing of
`the asserted patents and therefore is prior art under 35 U.S.C. §102(b).
`
`During the March 17, 2018 summary judgment hearing, Acceleration contended for the
`first time that because the actual ActiveNet source code used in connection with Heavy Gear II
`Demo product was not visible to the public, the Heavy Gear II Demo product did qualify as prior
`art with respect to that software.1
`
`Defendants’ counsel explained that the law does not require that a public use need not be
`enabling and that Defendants could properly rely on source code to show the features that were
`in public use and on sale by virtue of the public use and prior art sales of the Heavy Gear II
`Demo product. In support of this position, Defendants’ counsel referred to a case that the parties
`and Court called “the corset case.”
`
`
`
`
`
`
`1
`Specifically, Plaintiff’s counsel argued in response to the Court’s question: “I would
`disagree, Your Honor, because it would show that there was, the game was publicly
`available, but the information and how that game operates is not, because in order to be
`publicly available prior art, it has to be enabling. It has to teach someone how to use it.
`The whole idea behind source code is you keep a secret. You don't teach people how to
`use it. The fact that it's in a game, that is going to teach one skilled in the art how to make
`that invention.” (Tr.12:5-13.)
`
`

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`Case 1:16-cv-00455-RGA Document 425 Filed 05/23/18 Page 2 of 5 PageID #: 31791
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`The Honorable Richard G. Andrews
`May 23, 2018
`Page 2
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`
`The Court asked the parties to provide additional information, specifically:
`
`I would like to get from you your case saying, as close as you can,
`source code that is in some publicly available thing doesn't count
`as public use….And just for the completion of the record, I would
`like to get the citation to the corset case, and if you have some case
`that's more like source code in a publicly available thing, it doesn't
`count as a public use. (Tr. 31:12-20)
`
`This is Defendants’ submission on these issues.
`
`The “corset” case is Egbert v. Lippmann, 104 U.S. 333 (1881), and it remains good law.
`For instance, the Federal Circuit explained in 2007:
`
`The classical standard for assessing the public nature of a use was
`established in [Egbert v. Lippman, 104 U.S. 333, 26 L. Ed. 755
`(1881)]. In Egbert, the inventor of a corset spring gave two
`samples of the invention to a lady friend, who used them for more
`than two years before the inventor applied for a patent.”
`Invitrogen, 424 F.3d at 1382. Although the inventor in Egbert did
`not obtain any commercial advantage, the Court determined that
`the invention had been used for its intended purpose for over a
`decade without limitation or confidentiality requirements. Thus,
`even though not in public view, the invention was in public use.
`
`Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1384 (Fed. Cir. 2007). The Federal
`Circuit has explained that “[p]ublic use includes any public use of the claimed invention by a
`person other than the inventor who is under no limitation, restriction or obligation of secrecy to
`the inventor.” Id. (citing Egbert v. Lippmann, 104 U.S. 333, 336, 26 L. Ed. 755 (1881)).
`
`The Federal Circuit has also rejected Plaintiff’s argument that public use prior art is tied
`to the extent the invention is disclosed by that public use. The Federal Circuit has explained the
`relevant inquiry regarding a “public use” focuses on the nature of the use—not some disclosure
`requirement. J.A. LaPorte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 1583 (Fed. Cir. 1986)
`(“[O]ur precedent holds that the question is not whether the sale, even a third party sale,
`‘discloses’ the invention at the time of the sale, but whether the sale relates to a device that
`embodies the invention.” (emphasis original)); Lough v. Brunswick Corp., 86 F.3d 1113, 1122
`(Fed. Cir. 1996) (rejecting argument that claimed invention was not in public use because
`prototypes were unlikely to be seen by the public and citing Egbert v. Lippmann).
`
`Acceleration’s argument that source code cannot be used as proof of a “public use”
`because the public has no access to the source code has also been rejected. In Touchcom, Inc. v.
`Bereskin & Parr, 790 F. Supp. 2d 435, 453 (E.D. Va. 2011), the Court rejected the very same
`argument plaintiffs made at the hearing:
`
`

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`Case 1:16-cv-00455-RGA Document 425 Filed 05/23/18 Page 3 of 5 PageID #: 31792
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`The Honorable Richard G. Andrews
`May 23, 2018
`Page 3
`
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`Plaintiffs further argue that the ARCO II system cannot qualify as
`“prior art” because its use was “secret” in that members of the
`public “would not have been able to discern the claimed structure”
`by reviewing the system's source code. The Court disagrees.
`
`Public use occurs where “an inventor, having made his device,
`gives or sells it to another, to be used by the done or vendee,
`without limitation or restriction, or injunction of secrecy, and it is
`so used.” Egbert v. Lippmann, 104 U.S. 333, 336, 26 L. Ed. 755
`(1881) (emphasis added). “[T]he public use itself need not be
`enabling,” however. Zenith Electronics Corp. v. PDI Commc'n
`Sys., Inc., 522 F.3d 1348, 1356 (Fed. Cir. 2008). It need not
`outwardly describe the full structure of the invention for all to see
`and recognize, it *454 need simply embody that invention. J.A.
`LaPorte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 1583 (Fed.
`Cir. 1986). Indeed, were Plaintiffs correct, even if the ARCO II
`system was installed at every gas station nationwide, it probably
`would still not be in “public use,” as consumers using it would still
`not be able to see its source code.
`
`The court specifically rejected the “secrecy” argument:
`
`Plaintiffs cite W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
`1540, 1550 (Fed. Cir. 1983), for the proposition that "[f]or the use
`to qualify as `public use,' the public must have been able to learn
`about the claimed process by examining the ARCO II system."
`What is being claimed here, however, is a product, not a process,
`meaning that a different standard for prior art applies. See D.L.
`Auld. Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147-48
`(Fed. Cir. 1983).2
`
`
`2
`Nor would any such argument apply here. First of all, Heavy Gear II Demo was released
`to the public in December 1998 as the evidence shows. There is no contention that the
`use of the video game by the public after its release was a secret. The law regarding
`“secret” uses is inapplicable, which focuses on whether there were reasonable attempts to
`keep the actual use a secret and the nature of the use is examined, among other things.
`See, e.g., Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370-71 (Fed. Cir.
`1998). And, cases distinguish between public uses that are “noninforming” and secret
`uses. See Hall v. Macneale, 107 U.S. 90, 97 (1883); Gillman v. Stern, 114 F.2d 28, 31
`(2nd Cir. 1940) (“We are to distinguish between a public user which does not inform the
`art and a secret user”); Dunlop Holdings Ltd. v. Ram Golf Corp., 524 F.2d 33, 36 (7th
`Cir. 1975) (“If Wagner had applied for a patent more than a year after commencing the
`public distribution of Surlyn covered golf balls, his application would have been barred
`notwithstanding the noninforming character of the public use or sale.”). Second, the
`
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`Case 1:16-cv-00455-RGA Document 425 Filed 05/23/18 Page 4 of 5 PageID #: 31793
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`The Honorable Richard G. Andrews
`May 23, 2018
`Page 4
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`Id. at note 6. See also In re Epstein, 32 F.3d 1559, 1563 (Fed. Cir. 1994) (affirming PTO’s
`rejection of claims over abstracts discussing software products being used as “evidence of prior
`art products”).
`
`Judge Sleet rejected a similar argument made by Acceleration’s national counsel in a
`different case. See Finjan, Inc. v. Symantec Corp., C.A. No. 10-593, 2013 WL 5302560, at *43-
`44 (D. Del. Sept. 19, 2013). During closing argument, counsel told the jury that his client’s
`expert did not review source code “[b]ecause the law tells him not to” and because “[h]e was
`required to rely on public information. Source code is not public information.” Id. at *43
`(quoting trial transcript). Judge Sleet gave a corrective instruction:
`
`I think [Mr. Andre] has made a statement, perhaps unintentionally,
`that might be misleading to you, I want to give you a brief bit of
`guidance, as to source code and what he just said. The defendants
`in this case relied on products as prior art, the products as prior art.
`They relied on source code, and the witnesses, the experts talked
`about source code, to demonstrate how the prior art products work
`and therefore demonstrate the invalidity, in their view, of the
`particular Finjan patents that are at issue.” Id. at *43 (bracketed
`material in original).
`
`Finjan’s post-trial motions took issue with Judge Sleet’s corrective instruction to the jury.
`Citing Touchcom, Judge Sleet explained that the corrective instruction was appropriate:
`
`Because the prior art the defendants asserted was the products
`themselves, Finjan's statement was incorrect as a matter of law and
`misleading to the jury. Rather, it was appropriate for the
`defendants' experts to rely upon the source code to explain how the
`products worked. See Touchcom, Inc. v. Bereskin & Parr, 790
`F.Supp.2d 435, 453–54 (E.D. Va. 2011) (rejecting the argument
`that a product is not prior art because the public would not have
`been able to see its source code); Lab. Skin Care, Inc. v. Limited
`Brands, Inc., 2011 WL 4005444, at *5 (D. Del. Sept. 8, 2011)
`(concluding that “the offered product is in fact the claimed
`invention may be established by any relevant evidence, such as
`memoranda, drawings ... and testimony of witnesses” (citation
`omitted)). Id.
`
`The judgment was affirmed on appeal without opinion. See Finjan Inc. v. Symantec
`Corp., 577 Fed. App’x 999 (Fed. Cir. Sept. 15, 2014).
`
`
`
`claim here is an apparatus claim, not a process claim, so the reasoning of W.L. Gore &
`Associates is inapplicable.
`
`

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`Case 1:16-cv-00455-RGA Document 425 Filed 05/23/18 Page 5 of 5 PageID #: 31794
`
`The Honorable Richard G. Andrews
`May 23, 2018
`Page 5
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`
`
`
`JBB/dlw
`cc:
`All Counsel of Record (Via Electronic Mail)
`
`
`Respectfully,
`
`/s/ Jack B. Blumenfeld
`
`Jack B. Blumenfeld (#1014)
`
`