Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 1 of 41 PageID #: 12967
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`VB ASSETS, LLC,
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`AMAZON.COM SERVICES LLC,
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`v.
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`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 19-1410 (MN)
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`Defendant.
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`MEMORANDUM OPINION
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`Neal C. Belgam, Jason Z. Miller, SMITH, KATZENSTEIN & JENKINS LLP, Wilmington, DE; James
`C. Yoon, Ryan R. Smith, WILSON SONSINI GOODRICH & ROSATI P.C., Palo Alto, CA; Matthew A.
`Macdonald, Jamie Otto, Alexander J. Turner, WILSON SONSINI GOODRICH & ROSATI P.C., Los
`Angeles, CA; Bradley T. Tennis, WILSON SONSINI GOODRICH & ROSATI P.C., Washington, DC;
`Mikaela E. Evans-Aziz, WILSON SONSINI GOODRICH & ROSATI P.C., San Francisco, CA –
`Attorneys for Plaintiff.
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`Steven J. Balick, Andrew C. Mayo, ASHBY & GEDDES, P.A., Wilmington, DE; J. David Hadden,
`Ravi R. Ranganath, Vigen Salmastlian, Saina S. Shamilov, FENWICK & WEST LLP, Mountain
`View, CA – Attorneys for Defendant.
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`September 30, 2024
`Wilmington, Delaware
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 2 of 41 PageID #: 12968
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`NOREIKA, U.S. DISTRICT JUDGE:
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`The Court presided over a five-day jury trial from November 2, 2023 to November 8, 2023.
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`(See D.I. 303-307 (“Tr.”)). At the end, the jury found that Defendant Amazon.com Services LLC
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`(“Defendant” or “Amazon”) willfully infringed claims of four patents owned by Plaintiff VB
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`Assets, LLC (“Plaintiff” or “VB Assets”), and that Defendant had failed to prove that those claims
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`are invalid. Presently before the Court are the parties’ post-trial motions. (D.I. 298; D.I. 300).1
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`For the reasons that follow, the Court will GRANT-IN-PART and DENY-IN-PART Defendant’s
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`motion for judgment as a matter of law; and will GRANT-IN-PART and DENY-IN-PART
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`Plaintiff’s motion for an ongoing royalty, pre-judgment interest, post-judgment interest and
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`enhanced damages.
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`I.
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`BACKGROUND
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`Plaintiff owns several patents related to its smart speaker technology. Defendant is the
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`owner of Alexa, a voice-based artificial intelligence assistant that interacts with users through
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`Alexa-enabled devices. At trial, Plaintiff alleged that Alexa infringed claim 13 of U.S. Patent No.
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`8,073,681 (“the ’681 patent”), claim 25 of U.S. Patent No. 9,626,703 (“the ’703 patent”), claim 40
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`of U.S. Patent No. 7,818,176 (“the ’176 patent”) and claim 23 of U.S. Patent 9,269,097 (“the ’097
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`patent”) (collectively, “the asserted claims” of “the asserted patents”).2 Defendant denied
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`infringement and challenged the validity of the asserted claims. Specifically, Defendant argued
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`Each party filed a single post-trial motion but moved for relief on multiple grounds.
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`1
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` 2
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`Plaintiff had also alleged infringement of U.S. Patent No. 9,015,049 and U.S. Patent No.
`8,886,536. The claims of the former patent were invalidated by the Patent Trial and Appeal
`Board. See Amazon.com, Inc, et. al. v. VB Assets, LLC, IPR2020-01346, 2022 WL 320531,
`at *16 (PTAB Feb. 1, 2022). The latter patent was dropped before trial as a result of
`negotiations between the parties. (See D.I. 255 at 1).
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`1
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 3 of 41 PageID #: 12969
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`the asserted claims of the ’703, ’176 and ’097 patents are patent ineligible,3 and that all asserted
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`claims are invalid for lack of adequate written description and obviousness over the prior art. After
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`a five-day trial, the jury found all the asserted claims willfully infringed, not invalid and not patent
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`ineligible. (See D.I. 291). The jury then awarded Plaintiff running royalty damages of
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`$46.7 million. (Id. at 7).
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`Both parties filed post-trial motions that are now before the Court. Defendant renewed its
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`motion for judgment as a matter of law on infringement of all the asserted claims, invalidity for
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`lack of adequate written description for claim 23 of the ’097 patent, ineligibility for all asserted
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`claims and willfulness. (D.I. 299). Plaintiff asks the Court to award pre-judgment and post-
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`judgement interest on the jury’s damages award, an ongoing royalty and enhanced damages.
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`(D.I. 301). The Court addresses the motions below.
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`II.
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`DEFENDANT’S MOTION FOR JUDGMENT AS A MATTER OF LAW
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`A.
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`Legal Standard
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`Before a case is submitted to a jury, the Court may grant judgment as a matter of law if it
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`“finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the
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`[moving] party on that issue.” FED. R. CIV. P. 50(a)(1). Judgment as a matter of law is granted
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`“sparingly” and is only warranted “if, viewing the evidence in the light most favorable to the
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`nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient
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`evidence from which a jury reasonably could find liability.” Lightning Lube v. Witco Corp., 4 F.3d
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`1153, 1166 (3d Cir. 1993). If the court denies the motion, following the entry of judgment, a party
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`may file a renewed motion for judgment as a matter of law. FED. R. CIV. P. 50(b).
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`3
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`The jury was instructed to consider whether the elements in each of these claims,
`considered individually and as an ordered combination, involved only activities which a
`person of ordinary skill in the art would have considered to be well-understood, routine,
`and conventional. (D.I. 288 at 19).
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`2
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 4 of 41 PageID #: 12970
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`A court may grant a renewed motion for judgment as a matter of law if the movant shows
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`“that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they
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`were, that the legal conclusion(s) implied [by] the jury’s verdict cannot in law be supported by
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`those findings.” Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (internal quotation
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`marks omitted). “‘Substantial’ evidence is such relevant evidence from the record taken as a whole
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`as might be accepted by a reasonable mind as adequate to support the finding under review.”
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`Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984). The Court may
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`not “weigh the evidence, evaluate the credibility of the witnesses, or substitute its own version of
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`the facts for the jury’s findings.” Dow Chem. Co. v. Nova Chems. Corp. (Can.), C.A. No. 05-737-
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`JJF, 2010 U.S. Dist. LEXIS 77389, at *4 (D. Del. July 30, 2010). Furthermore, the Court must
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`give the verdict winner “the benefit of all logical inferences that could be drawn from the evidence
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`presented, resolve all conflicts in the evidence in [their] favor and, in general, view the record in
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`the light most favorable to [them].” Williamson v. CONRAIL, 926 F.2d 1344, 1348 (3d Cir. 1991).
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`Moreover, in the Third Circuit, when the movant bears the burden of proof on an issue, judgment
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`as a matter of law is appropriate only if “there is insufficient evidence for permitting any different
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`finding.” Fireman’s Fund Ins. Co. v. Videfreeze Corp., 540 F.2d 1171, 1177 (3d Cir. 1976).
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`B.
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`Infringement
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`The jury found that Defendant infringed claim 13 of the ’681 patent, claim 25 of the ’703
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`patent, claim 40 of the ’176 patent and claim 23 of the ’097 patent. (D.I. 291 at 2). Defendant
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`moves for judgment as a matter of law on infringement of all the asserted claims. (D.I. 298). For
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`the reasons discussed below, the Court denies Defendant’s motion for the ’681 patent, the ’176
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`patent, and the ’097 patent, but grants Defendant’s motion for the ’703 patent.
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`3
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 5 of 41 PageID #: 12971
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`1.
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`Claim 13 of the ’681 patent
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`The ’681 patent is titled “System and Method for a Cooperative Conversational Voice User
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`Interface.” Claim 13 of the ’681 patent claims:
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`13. A non-transitory computer readable medium containing computer-executable
`instructions for providing a cooperative conversational voice user interface, the
`computer-executable instructions operable when executed to:
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`receive an utterance at a voice input device, during a current conversation with a
`user, wherein the utterance includes one or more words that have different
`meanings in different contexts;
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`accumulate short-term shared knowledge about the current conversation, wherein
`the short-term shared knowledge includes knowledge about the utterance received
`at the voice during the current conversation;
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`accumulate long-term shared knowledge about the user, wherein the long-term
`shared knowledge includes knowledge about one or more past conversations with
`the user;
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`identify a context associated with the utterance, wherein a conversational speech
`engine identifies the context associated with the utterance from the short-term
`shared knowledge and the long-term shared knowledge;
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`establish an intended meaning for the utterance within the identified context,
`wherein the conversational speech engine establishes the intended meaning within
`the identified context to disambiguate an intent that the user had in speaking the
`one or more words that have the different meanings in the different contexts; and
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`generate a response to the utterance, wherein the conversational speech engine
`grammatically or syntactically adapts the response based on the intended meaning
`established within the identified context.
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`(JTX-1,’681 patent at 21:6-35).
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`Defendant argues that no reasonable jury could have found claim 13 to be infringed by
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`Alexa for three reasons: (1) there was no evidence proving “computer executable instructions” in
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`Alexa, such as “Alexa source code, technical documents, or testimony from Amazon witnesses”
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`(D.I. 299 at 10); (2) no evidence “[identified] at least one received utterance and [explained] how
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`4
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 6 of 41 PageID #: 12972
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`Alexa performs each of the claimed steps for that same utterance” (id. at 13);4 and (3) Plaintiff
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`did not establish that Alexa accumulated either “short-term” or “long-term” knowledge. (D.I. 319
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`at 8). The Court disagrees.
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`The jury heard Plaintiff’s infringement expert, Dr. Polish, analyze each element of claim
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`13 and then explain how “technical documents” and “[his] own use of the system” demonstrated
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`that those elements were present in Alexa. (Tr. 339:1-2; see also Tr. 296:9-20; 298:9-22; 337:9-
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`351:23) (explaining how various aspects of Alexa meet each element of claim 13). Dr. Polish also
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`used a demonstrative video to bring to life his testimony explaining how, in his opinion, Alexa
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`practices each step of claim 13.5 (Tr. 340:6-17; see also Tr. 340:17-346:3, 346:25-348:21)
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`(discussing how Alexa cooperatively converses with a user setting an alarm; and how Alexa is
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`able to decipher that various numbers correspond to desired alarm times)). The jury was further
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`presented with evidence Alexa could disambiguate user intent through utilizing long-term or short-
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`term information in response to the utterance “Hunger Games.” (Tr. 349:5-10; see also Tr. 328:20-
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`332:1) (testifying step-by-step, how Alexa disambiguated the utterance “Hunger Games.”).
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`Dr. Polish conceded that he did not show Alexa performing each step of claim 13 in
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`response to “one specific utterance.” (Tr. 395:2). Rather, Dr. Polish presented the jury with
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`Specifically, Defendant asserts that Dr. Polish did not “map a single utterance to the claim
`elements” and instead used multiple, disparate utterances to demonstrate each of the steps
`in isolation. (D.I. 299 at 14).
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`When deciding a motion for judgment as a matter of law, the Court must assess the
`evidence presented at trial. Demonstrative exhibits, such as Dr. Polish’s videos, are not by
`themselves evidence, and, therefore, cannot be a standalone basis to support judgment as a
`matter of law. In contrast, expert testimony that is aided by use of a demonstrative exhibit
`can be properly considered when assessing judgment as a matter of law. See, e.g., SSL
`Servs., LLC v. Citrix Sys., 769 F.3d 1073, 1088 (Fed. Cir. 2014) (finding that an expert’s
`use of “demonstrative slides” to prove infringement constituted substantial evidence to
`support the jury’s verdict).
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`4
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`5
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 7 of 41 PageID #: 12973
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`testimony (using demonstratives) of Alexa performing each claim element in response to different
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`utterances. Although Dr. Polish’s testimony may have been more persuasive had he shown Alexa
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`complete all the claim elements in response to one specific utterance, it was not unreasonable for
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`the jury to infer that if Alexa was able to perform each step prompted by different utterances, then
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`Alexa likewise was able to perform each step prompted by the same utterance. And the Court
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`cannot “substitute its own conclusions for that of the jury where the record evidence supports
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`multiple inferences.” Bd. of Regents v. Bos. Sci. Corp., C.A. No. 18-392, 2024 WL 2848471, 2024
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`U.S. Dist. LEXIS 99773, at *5-*6 (D. Del. June 5, 2024).
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`Moreover, despite not viewing Alexa’s source code, the jury was presented with substantial
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`evidence that Alexa was programmed with “computer-executable instructions,” as required by
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`claim 13. First, Dr. Polish opined that the entirety of claim 13’s preamble, including computer-
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`executable instructions, was present in the Alexa device. (Tr. 337:24-338:6). Second, the jury
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`could reasonably infer computer-executable instructions enabled Alexa to perform each element
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`of claim 13. The jury was entitled to rely on circumstantial evidence, such as Alexa’s actual ability
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`and operation, to conclude Alexa contained computer-executable instructions. See Lucent Techs.,
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`Inc. v. Gateway, Inc., 543 F.3d 710, 723 (Fed. Cir. 2008) (“A patentee may rely on either direct or
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`circumstantial evidence to prove infringement.”). Substantial evidence demonstrated Alexa was
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`able to perform each and every element of claim 13; and technological devices are unable to
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`perform intended functions without source code or computer executable instructions. Therefore,
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`the jury was entitled to “evaluate the weight to be attributed to this circumstantial evidence and to
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`decide whether to draw the inferences [Plaintiff] sought.” Power Integrations, Inc. v. Fairchild
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`Semiconductor Int’l, Inc., 935 F. Supp. 2d 747, 759 (D. Del. 2013).
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`Thus, the Court concludes the jury reasonably found infringement of claim 13.
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`6
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 8 of 41 PageID #: 12974
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`2.
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`Claim 40 of the ’176 patent
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`The ’176 patent is titled “System and Method for Selecting and Presenting Advertisements
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`Based on Natural Language Processing of Voice-Based Input.” Claim 40 of the ’176 patent claims:
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`40. A system for selecting and presenting advertisements in response to processing
`natural language utterances, comprising:
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`an input device that receives a natural language utterance containing at least one
`request at an input device;
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` a
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` speech recognition engine coupled to the input device, wherein the speech
`recognition engine recognizes one or more words or phrases in the natural
`language utterance;
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`a conversational language processor coupled to the speech recognition engine,
`wherein the conversational language processor is configured to:
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`interpret the recognized words or phrases, wherein interpreting the
`recognized words or phrases includes establishing a context for the natural
`language utterance, select an advertisement in the context established for
`the natural language utterance; and present the selected advertisement via
`an output device; and
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`an adaptive misrecognition engine configured to determine that the conversational
`language incorrectly interpreted the words or phrases in response to detecting a
`predetermined event, wherein the conversational language processor reinterprets
`the words or phrases in response to the predetermined event.
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`(JTX-3, ’176 patent at 16:48-17:6).
`Amazon argues that the jury could not have reasonably found infringement of claim 40
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`because Plaintiff did not “identify any ‘adaptive misrecognition engine’ in Alexa and a
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`‘predetermined event’ in response to which the engine determines that words or phrases were
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`incorrectly interpreted.”6 (D.I. 299 at 15). Again, the Court disagrees.
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`6
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`Defendant’s complaints about Plaintiff’s evidence appear to be rooted in form, and not
`substance. Plaintiff had to prove that Alexa has an “adaptive misrecognition engine” – not
`that Alexa contains a component labeled “adaptive misrecognition engine.”
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`7
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 9 of 41 PageID #: 12975
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`As a preliminary note, the Court was not asked to (and did not) construe the term
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`“predetermined event” in claim 40. That term, thus, was given its plain and ordinary meaning. At
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`trial, Amazon’s expert, Dr. Johnson, explained that a “predetermined event” is “something else the
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`user says afterwards [that] might indicate the system misunderstood.” (Tr. 743:7-9). Based on
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`Dr. Johnson’s testimony, the jury could have decided that “a predetermined event” is anything a
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`user says which may indicate to the device that it was not providing information the user sought.
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`Plaintiff presented ample evidence at trial establishing that Alexa contains “an adaptive
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`misrecognition engine configured to determine that the conversational language [processor]
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`incorrectly interpreted the words or phrases in response to detecting a predetermined event . . ..”
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`(JTX-3,’176 patent at 17:1-4). First, Dr. Polish opined that Alexa Shopping contains the last
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`element of claim 40. (Tr. 357:10-18). He supported his opinion with references to technical
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`documents like the “NLU deep dive document,” which he explained demonstrated Alexa’s ability
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`to re-rank a user’s intent “in response to getting some information that indicated that [it] had gotten
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`it wrong.” (Tr. 358:9-12; PTX-226 at 22; see also Tr. 409:20-410:12 (discussing the re-ranking
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`processing in Alexa’s NLU); Tr. 319:13-23; PTX-78 (discussing that Amazon’s technical
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`documents show that Alexa has a “blueshift intent format” which is a “collection of intents and
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`scores for them.”)). Furthermore, Dr. Polish utilized a demonstrative video, along with his
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`testimony, to explain that when Alexa was presented with the term “Hunger Games,” Alexa re-
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`ranked and re-scored the user’s intent to conclude whether the term referenced a movie, album,
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`song or book with that title. (Tr. 331-332; PTX-226 at 18-22). Additionally, Mr. Peck, Plaintiff’s
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`source code expert, testified Alexa is coded to take the list of user interpretations and then reorder
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`and re-rank them. (See Tr. 449:3-9). Defendant’s expert, Dr. Strom, likewise explained Alexa’s
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`re-ranking method:
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`8
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 10 of 41 PageID #: 12976
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`. . . the different intents that are coming from the different neural
`networks, they’re compiled into what we call an NBest list, so that’s
`a list of all the intent, and each one of the intents has a confidence
`score designed with it, depending on how sure we are about that
`meaning . . . then we have other machine learning methods that can
`boost or lower the score of some intents, depending on other factors
`like other features in the system. This is called re-ranking . . .
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`(Tr. 565:7-16).
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`Ultimately, Plaintiff presented substantial evidence that Alexa Shopping is configured to
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`re-rank and re-score a user’s intent after the receiving verbal feedback or incorporating other
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`context cues which indicate that its initial intent ranking was incorrect. Such evidence supports
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`the jury’s conclusion that Defendant infringes claim 40. (See also Tr: 351:25-358:15) (explaining
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`how each and every element of claim 40 is present in Alexa.).
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`3.
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`Claim 23 of the ’097 patent
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`The ’097 patent is titled “System and Method for Delivering Targeted Advertisements
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`and/or Providing Natural Language Processing Based on Advertisements.” Claim 23 of the ’097
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`patent claims:
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`23. A system providing natural language processing based on advertisements, the system
`comprising:
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`one or more physical processors programmed with computer program instructions
`which, when executed, cause the one or more physical processors to:
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`provide an advertisement associated with a product or service for
`presentation to a user;
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`receive a natural language utterance of the user; and
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`interpret the natural language utterance based on the advertisement and,
`responsive to the existence of a pronoun in the natural language utterance,
`determine whether the pronoun refers to one or more of the product or
`service or a provider of the product or service.
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`(JTX-5,’097 patent at 14:66-15:12).
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`9
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 11 of 41 PageID #: 12977
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`Amazon argues that no reasonable jury could find infringement of claim 23 because
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`“Dr. Polish offered only a conclusion that Alexa met this limitation” and did not present “source
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`code” or “testimony from an Amazon engineer” to support his “speculative” opinion. (D.I. 299 at
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`16-17). Yet again, the Court disagrees.
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`Dr. Polish utilized an example to show that Alexa is responsive to and can recognize a
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`pronoun in an utterance and then recognize whether that pronoun refers to a previously presented
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`advertisement. (See Tr. 361:14-362:13) (discussing his own use of the system and an
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`advertisement for an iPhone case). When Alexa was prompted with an utterance – Dr. Polish used
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`utterances containing the pronouns “peach” and “stone” – Alexa was able to tie that utterance back
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`to the color of an item in a potential purchase discussed previously, rather than concluding the
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`utterance referred to a fruit or a rock. (See Tr. 413:18-21) (Dr. Polish stating, “[i]t just seems clear
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`that the existence of the pronoun tells Alexa that we’re talking about the purchase that we were
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`making previously.”). Although Dr. Polish did not discuss technical documents or Alexa’s source
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`code, the jury was entitled to agree with Dr. Polish that “the behavior of the system speaks for
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`itself.” (Tr. 414:8). Juries are permitted to rely on circumstantial evidence, like the behavior of
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`Alexa, to conclude there is infringement. See Martek Biosciences Corp. v. Nutrinova, Inc.,
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`579 F.3d 1363, 1372 (Fed. Cir. 2009) (“A patentee may prove infringement by any method of
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`analysis that is probative of the fact of infringement, and circumstantial evidence may be
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`sufficient.”) (internal citations and quotation marks omitted); see also Alco Std. Corp. v. TVA,
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`808 F.2d 1490, 1503 (Fed. Cir. 1986) (“Although the evidence of infringement is circumstantial,
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`that does not make it any less credible or persuasive.”). Further, the jury could have simply found
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`Dr. Polish credible and relied on his purportedly “conclusory” opinion. (See, e.g., Tr. 358:16-
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`362:17) (Dr. Polish opining that Alexa infringes each and every element of claim 23). It is not the
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 12 of 41 PageID #: 12978
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`role of the Court, on a motion for judgment as a matter of law, to weigh the credibility of the
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`witnesses. Accordingly, the Court denies Amazon’s motion.
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`4.
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`Claim 25 of the ’703 patent
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`The ’703 patent is titled “Voice Commerce.” Claim 25 of the ’703 patent (“claim 25”)
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`claims:
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`25. A system for providing voice commerce, the system comprising:
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`receive a user input comprising a natural language utterance;
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`provide, without further user input after the receipt of the user input, the
`natural language utterance as an input to a speech recognition engine;
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`one or more physical processors programmed with computer program instructions
`which, when executed, cause the one or more physical processors to:
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`obtain, without further user input after the receipt of the user input, one or
`more words or phrases recognized from the natural language utterance as
`an output of the speech recognition engine;
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`determine, without further user input after the receipt of the user input, a
`context based at least on the one or more words or phrases;
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`identify, without further user input after the receipt of the user input, the
`product or service to be purchased on behalf of the user based at least on
`the determined context;
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`obtain payment information with which to pay for the product or service;
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`obtain, without further user input after the receipt of the user input, shipping
`information with which to deliver the product or service, wherein the
`shipping information specifies a name or address of a recipient to which the
`product or service is to be delivered after the product or service is
`purchased; and
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`provide, without further user input after the receipt of the user input, a
`request for user confirmation to use the payment information and the
`shipping information for a purchase transaction for the product or service.
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`(JTX-2, ’703 patent at 26:8-43).
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`11
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`Case 1:19-cv-01410-MN Document 325 Filed 09/30/24 Page 13 of 41 PageID #: 12979
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`Amazon argues that no reasonable jury could find infringement of claim 25 because
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`Plaintiff did not: (1) present “source code or back-end Alexa operations” that evidence “computer
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`instructions;” (2) prove Alexa “obtain[s], without further user input after the receipt of the user
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`input, shipping information with which to deliver the product or service;” and (3) prove Alexa
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`“provide[s], without further user input after the receipt of the user input, a request for user
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`confirmation to use the payment information and the shipping information for a purchase
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`transaction.” (D.I. 299 at 17-18). The Court finds merit in Amazon’s third argument.
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`To prove infringement, Plaintiff must establish, by a preponderance of the evidence, that
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`each and every claim element is present in the accused device. See Catalina Mktg. Int’l v.
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`Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002) (“Literal infringement requires the
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`patentee to prove that the accused device contains each limitation of the asserted claim.”). The
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`jury was instructed “[i]f the accused product or process does not contain one or more elements or
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`steps recited in a claim, there is no infringement.” (Tr. 892:12-14). Relevant here, the last element
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`of claim 25 requires “a request for user confirmation to use the payment information and the
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`shipping information for a purchase transaction for the product or service.” (JTX-2,’703 patent at
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`26:41-43) (emphasis added). Accordingly, to find Defendant infringed claim 25, there must have
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`been substantial evidence that Alexa made “a request for user confirmation to use the payment and
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`the shipping information.” (Id.).
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`Simply put, however, the jury was not presented with substantial evidence to reasonably
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`conclude Alexa provided “a request for user confirmation to use the payment and the shipping
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`information.” Plaintiff presented evidence, through the testimony of Dr. Polish, that Alexa
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`responds “buy it now” when completing a transaction. In its brief, Plaintiff argues the prompt
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`“buy it now” constitutes “a request for user confirmation to use the payment and shipping
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`information” because Alexa previously stores a user’s payment and shipping information.
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`(D.I. 311 at 15). Problematically, however, Plaintiff did not introduce evidence at trial suggesting
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`that “buy it now” is shorthand for, or equivalent to, “user confirmation to use the payment and
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`shipping information.” In everyday interactions, when a person directs another to “buy it now”
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`they are not necessarily confirming use of a payment method or shipping information. Rather, and
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`literally, “buy it now” only expresses the end goal of purchase, it does not confirm the means for
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`execution.
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`Moreover, testimony from Dr. Polish did not establish that Alexa performs each element
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`of claim 25. At trial, Dr. Polish was asked whether the last element of claim 25 was “illustrated
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`in [his] video demonstration.” (Tr. 368:17-18). Dr. Polish replied that it was because Alexa
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`“provided information about what was going on.” (Id. at 19-20). Notably, Dr. Polish did not state
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`that Alexa asked for confirmation to use his payment or shipping information, only that it
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`“provided information about what was going on.” This statement does not amount to evidence
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`that Alexa performs the last element of claim 25.7 See, for example, United States v. Bailey,
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`598 Fed. Appx. 117, 122 at n.10 (3d Cir. 2015) (“While [plaintiff’s] counsel’s statements or
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`questions are not evidence, answers are . . .”). Moreover, a reasonable juror viewing the
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`demonstrative would not have concluded Alexa asked for user confirmation. In actuality, the
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`demonstrative, as described in Dr. Polish’s testimony, showed Alexa describing a product’s color,
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`price, and shipment time, and then stating, “you can say ‘buy it now.’” (See Tr. 421:23-422:14)
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`(discussing what occurred in the demonstrative video). After Dr. Polish said, “buy it now,” the
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`device informed Dr. Polish where it was shipping the product and its total cost. Alexa neither
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`7
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`In the same exchange of questioning, Dr. Polish also contradictorily affirmed the purchase
`was charged to his credit card without further input, even though the claim requires that
`Alexa make a request for confirmation to use a payment method. (Tr. 369:8-10).
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`asked for user confirmation to use a shipping address, nor did it mention a payment method at all.
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`Dr. Polish affirmed this interpretation by stating Alexa executed the transaction without further
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`input. (Tr. 368:22-24; Tr. 422:7-15). Dr. Johnson, Amazon’s expert, highlighted this discrepancy
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`to the jury and stated Alexa did not make “a request for confirmation of payment or shipping
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`information” and instead made a “statement that [the product was] ordered.” (Tr. 709:15-17;
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`see also Tr. 709:23-24) (“Alexa doesn’t ask for that particular confirmation when you buy
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`something.”). Further, on cross examination, Dr. Polish acknowledged that he did not prove that
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`Alexa provides a request for user confirmation to use the payment information and shipping
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`information. (Tr. 419:20-24) (Q: “. . . Nowhere did you show Alexa saying Dr. Polish, please
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`confirm this payment information and the shipping information, right? A: “I think that’s right, I
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`think the receipt was sent - - was sent via e-mail.”).
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`In light of the above, the Court finds the jury’s verdict as to this claim is not supported by
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`substantial evidence. Indeed, even when “‘viewing the evidence in the light most favorable to the
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`nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient
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`evidence from which a jury reasonably could find’ for the nonmovant.” Transweb, LLC v. 3M
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`Innovative Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016) (quoting Lightning Lube, Inc. 4 F.3d
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`1153 at 1166). Therefore, the Court grants Amazon’s motion for judgment as a matter of law with
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`regard to infringement of claim 25 of the ’703 patent.
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`C. WILLFUL INFRINGEMENT
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`The jury found that VB Assets proved, by a preponderance of the evidence, that Amazon
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`willfully infringed the asserted claims of the ’681 patent, the ’176 patent and the ’097 patent.
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`(D.I. 291 at 3). Willful infringement is a question of fact and the jury’s determination as to
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`willfulness is reviewable under the substantial evidence standard. See Braun Inc. v. Dynamics
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`Corp. of Am., 975 F.2d 815, 822 (Fed. Cir. 1992).
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`The jury also concluded that the ’703 patent was willfully infringed; but, for the reasons
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`explained above, the Defendant’s motion with regards to this patent is mooted by the Court’s
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`decision that the jury could not have reasonably concluded that claim 25 of the ’703 patent was
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`infringed.
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`1.
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`Legal Standard
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`Willful infringement is foun