Case 1:16-cv-00455-RGA Document 426 Filed 05/25/18 Page 1 of 2 PageID #: 31795
`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
`jblumenfeld@mnat.com
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`May 25, 2018
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`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:
`Following the May 17, 2018 hearing on pending summary judgment issues, the Court asked
`the parties to provide additional submissions on two issues by May 23, 2018. (D.I. 557.) Defendants
`understood those issues to be limited to providing additional law on (1) whether source code can be
`prior art under §102(b) as it relates to the “corset case,” and (2) patent ineligibility for computer
`readable medium claims following Cybersource. (5/17/18 Hr’g Tr. 30:17-20; 78:8-14). Defendants
`submitted two letter briefs on these issues on May 23. Acceleration Bay, without seeking leave from
`the Court, submitted a “Supplemental MSJ submission” (D.I. 563) that addressed these issues and
`two additional issues – the request for correction of claim 19 and certain ActiveNet prior art issues.
`To the extent the Court considers Acceleration Bay’s unauthorized additional briefing, Defendants
`respectfully request that the Court also consider the responses below to these two additional issues.
`Request for Correction of Claim 19
`“A district court can correct a patent only if (1) the correction is not subject to reasonable
`debate based on consideration of the claim language and the specification and (2) the prosecution
`history does not suggest a different interpretation of the claims.” Novo Industries L.P. v. Micro
`Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The correction now requested by Acceleration
`does not meet this standard because there are at least three alternatives for moving the “non-routing
`table based” clause – (1) “non-routing table based network” (proposed by Acceleration for over a
`year and rejected by this Court during claim construction), (2) “non-routing table based broadcast
`channel” (as recited, e.g., in claim 10 of the ‘634 patent), and (3) “non-routing table based method”
`(now proposed by Acceleration), and because these three alternatives would result in substantially
`different claim scope.
`In Novo, the Federal Circuit reversed a correction by the district court, which merely changed
`the word “a” to “and,” because other possibilities for correction existed with substantive impact on
`the claims. Id. at 358-59. Similarly, in Fargo Electronics, Inc. v. Iris, Ltd., Inc., the Federal Circuit
`affirmed the district court’s refusal to make a correction because there were different ways to correct
`the claim resulting in different scope. 287 Fed.Appx. 96, 99-101 (Fed. Cir. 2008). District courts
`have reached the same conclusion against correction of claim language. See Magnetar Technologies
`Corp. v. Six Flags Theme Parks, Inc., 61 F.Supp.3d 437, 442-43 (D. Del. 2014) (Court refused to
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`Case 1:16-cv-00455-RGA Document 426 Filed 05/25/18 Page 2 of 2 PageID #: 31796
`The Honorable Richard G. Andrews
`May 25, 2018
`Page 2
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`correct claim in spite of a clear error because different possible corrections left the “scope of the
`claim subject to reasonable debate.”); Smartflash LLC v. Apple Inc., 77 F.Supp.3d 535, 561 (E.D.
`Texas 2014) (court refused to correct an alleged error “[b]ecause the purported error is more than a
`misspelling or a missing letter.”).
`Acceleration’s reliance on CBT Flint Partners v. Return Path, Inc. 654 F.3d 1353 (Fed. Cir.
`2011) is misplaced because there the Court found that the claim would have the “same scope and
`meaning under each of the three possible” corrections. Id. at 1358. Here, the placement of “non-
`routing table based” to modify “network,” “broadcast channel” or “method” would result in
`markedly different claim scope, as it would alter which of those different items may or may not use a
`routing table. This difference is scope is analogous to the difference between describing a “non-
`subway based city” and a “non-subway based method for getting from point A to point B in the
`city.” The former would require that the city not have subways, whereas the latter would merely
`require that the method doesn’t use any subways that are present in the city. Acceleration Bay never
`grapples with the clearly different scope that results from these different possible corrections,
`providing only the conclusory statement that “they mean the same thing – the network and the
`method controlling the network do not rely on routing tables to move messages through the
`network.” D.I. 563 at 2. But the network clearly is not the same thing as the method, so it is
`certainly a different scope to require that the network does not use routing tables as opposed to just
`requiring that the method not using routing tables.
`The Public Use of ActiveNet In Heavy Gear II Demo
`Defendants provided evidence that (1) Dr. Karger evaluated two versions of ActiveNet and
`concluded they were indistinguishable in relevant part, and (2) that even if Dr. Karger had no
`personal knowledge of a public use of ActiveNet, Mr. Kegel did. D.I. 474, 32. Mr. Kegel’s
`declaration states that “‘Heavy Gear 2 demo was released using the version of ActiveNet current in
`November 1998, and it was released [to the public] in the weeks immediately thereafter.’” D.I. 488,
`Ex. E-18, Kegel Dep. Tr. 103:19-104:10.
`Acceleration Bay argues for the first time that there is no evidence of what code was
`“compiled” into Heavy Gear II Demo. This is wrong. Mr. Kegel’s declaration explains that his
`technique was embodied in software code and was used by at least Heavy Gear II Demo. It is this
`technique that is described in his web publication and implemented by the relevant ActiveNet code.
`A December 14, 1998 web posting corroborates Mr. Kegel’s recollection. See D.I. 488, (Kegel
`Decl.), Attachment 10 (“The first games known to use [Mr. Kegel’s techniques] are Heavy Gear 2
`Demo and Battlezone . . . .”).
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`JBB/dlw
`cc:
`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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