Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 1 of 15 PageID #: 12880
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`VB ASSETS, LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`
`AMAZON.COM SERVICES LLC,
`
`
`Defendant.
`
`C.A. No. 1:19-cv-01410-MN
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`JURY TRIAL DEMANDED
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`
`
`
`
`REPLY BRIEF IN SUPPORT OF DEFENDANT’S
`MOTION FOR JUDGMENT AS A MATTER OF LAW
`PURSUANT TO FED. R. CIV. P. 50(b)
`
`Steven J. Balick (#2114)
`sbalick@ashbygeddes.com
`Andrew C. Mayo (#5207)
`amayo@ashbygeddes.com
`ASHBY & GEDDES
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`
`Attorneys for Defendant
`
`
`
`Of counsel:
`
`J. David Hadden, CSB No. 176148
`dhadden@fenwick.com
`Saina S. Shamilov, CSB No. 215636
`sshamilov@fenwick.com
`Ravi R. Ranganath, CSB No. 272981
`rranganath@fenwick.com
`Vigen Salmastlian, CSB No. 276846
`vsalmastlian@fenwick.com
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`
`January 17, 2024
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 2 of 15 PageID #: 12881
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`TABLE OF CONTENTS
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`Page
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`I.
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`JMOL OF NONINFRINGEMENT IS WARRANTED ........................................................1
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`A.
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`Claim 13 of the ’681 patent. ......................................................................................2
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`1.
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`2.
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`3.
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`“generate a…grammatically or syntactically adapted [ ]
`response….” .................................................................................................2
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`“identify a context associated with the utterance…from the short-
`term shared knowledge and the long-term shared knowledge” ....................2
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`“receive an utterance” and steps performed with “the utterance” ................3
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`B.
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`C.
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`D.
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`Claim 40 of the ’176 patent. ......................................................................................4
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`Claim 23 of the ’097 patent. ......................................................................................5
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`Claim 25 of the ’703 patent. ......................................................................................6
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`II.
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`THE ASSERTED CLAIMS ARE INVALID. .......................................................................6
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`A.
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`B.
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`Claim 23 of the ’097 patent lacks written description support. .................................6
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`The asserted claims are ineligible under 35 U.S.C. § 101. ........................................7
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`III.
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`PLAINTIFF FAILED TO PROVE WILLFUL INFRINGEMENT. ......................................9
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 3 of 15 PageID #: 12882
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`TABLE OF AUTHORITIES
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`CASES
`Adaptive Streaming, Inc. v. Netflix, Inc.,
`836 F. App’x 900 (Fed. Cir. 2020) ............................................................................................7
`Ansell Healthcare Prods. LLC v. Reckitt Benckiser LLC,
`No. 15-cv-915-RGA, 2018 WL 620968 (D. Del. Jan. 30, 2018)...............................................9
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)..................................................................................................8
`Arctic Cat, Inc. v. Bombardier Rec. Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017)................................................................................................10
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..................................................................................................8
`BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)..................................................................................................8
`Callwave Commc’n LLC v. AT&T Mobility LLC,
`No. 12-1701-RGA, 2014 WL 5363741 (D. Del. Jan. 28, 2014) ................................................9
`Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
`935 F.3d 1341 (Fed. Cir. 2019)..................................................................................................7
`Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) ...................................................................................................................9
`In re Mohapatra,
`842 F. App’x 635 (Fed. Cir. 2021) ............................................................................................9
`Lucent Techs., Inc. v. Gateway, Inc.,
`543 F.3d 710 (2008) ...............................................................................................................1, 5
`Paradox Sec. Sys., Ltd. V. ADT Sec. Servs., Inc.,
`388 F. App’x 976 (Fed. Cir. 2010) ............................................................................................4
`Smith v. Garlock Equip. Co.,
`658 Fed. Appx. 1017 (Fed. Cir. 2016) .......................................................................................1
`SRI International, Inc. v. Cisco Systems, Inc,
`930 F.3d 1295 (Fed. Cir. 2019)................................................................................................10
`Sunoco Partners Mktg. & Terminals L.P. v. Powder Springs Logistics, LLC,
`624 F. Supp. 3d 473 (D. Del. 2022) .........................................................................................10
`Synopsys, Inc. v. Mentor Graphics Corp.,
`839 F.3d 1138 (Fed. Cir. 2016)..............................................................................................7, 8
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 4 of 15 PageID #: 12883
`TABLE OF AUTHORITIES
`(Continued)
`
`Yoon Ja Kim v. ConAgra Foods, Inc.,
`465 F.3d 1312 (Fed. Cir. 2006)..................................................................................................5
`STATUTES
`35 U.S.C. § 101 ................................................................................................................................7
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`PAGE(S)
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 5 of 15 PageID #: 12884
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`I.
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`JMOL OF NONINFRINGEMENT IS WARRANTED
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`The Federal Circuit has repeatedly explained that “[e]xpert testimony that fails to show how
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`the accused device meets a particular limitation cannot constitute evidence supporting a finding of
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`literal infringement.” Smith v. Garlock Equip. Co., 658 Fed. Appx. 1017, 1024 (Fed. Cir. 2016). In
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`Lucent, the Federal Circuit applied this principle to reject Dr. Polish’s testimony asserting that he
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`could infer that the accused system infringed—when he had offered no evidence that an accused
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`component was ever placed into operation. See Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710,
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`723 (2008). Here, Dr. Polish again attempted to infer infringement of disputed limitations by listen-
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`ing to Alexa’s spoken responses, without presenting evidence that Alexa operated as those limita-
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`tions require—i.e., he presented no evidence “that it infringed.” (Opp. at 3.)
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`And so, VB attempts to cast Amazon as arguing the wrong standard by citing cases that hold
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`that an “expert’s personal observations” and “circumstantial evidence” can be relevant evidence of
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`infringement. These arguments miss the point. The problem is that in merely listening to Alexa’s
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`spoken responses coming out of an Echo speaker, Dr. Polish did not show how Alexa functions or
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`that it meets the challenged claim elements. He told the jury that he could infer from just the words
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`spoken that Alexa operates as the claims require without showing the operation of the system. VB
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`does not cite to any Amazon engineer testimony. It is undisputed that Dr. Polish did not review any
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`source code, and that Mr. Peck was not asked to review source code for any of the claim elements
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`addressed in Amazon’s JMOL. (Tx., 445:14-447:6, 448:13-23.) And although Dr. Polish pointed
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`to some Amazon documents, none showed that Alexa meets the challenged claim elements. The
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`jury was left with Dr. Polish’s inferences about how Alexa might work and his conclusory testimony,
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`both of which are insufficient to support a verdict.
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 6 of 15 PageID #: 12885
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`A.
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`Claim 13 of the ’681 patent.
`1.
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`“generate a…grammatically or syntactically adapted [ ] response….”
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`VB did not show that Alexa has “computer executable instructions” that “grammatically or
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`syntactically adapt[] the response.” (JMOL 4.) VB points to Dr. Polish’s testimony about multi-
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`turn conversations (Tx., 351:1-14); short-term knowledge (id., 340:1-17); that he “reviewed many
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`technical documents” and “used Alexa extensively” (id., 296:9-20); and demonstratives (not in evi-
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`dence) relating to an alarm conversation (PDX3-13, 18)—but none shows Alexa “grammatically or
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`syntactically adapting the response,” which he never mentions in VB’s cited testimony. VB argues
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`also that Dr. Polish addressed this claim limitation because he examined Alexa’s operation and relied
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`on the analysis of source code identified by Mr. Peck. (Opp. at 5.) But VB itself then cites to Dr.
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`Polish’s direct admission that he “do[es]n’t recall specifically” “any Amazon source code that gram-
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`matically or syntactically adapts a response” (Tx., 407:20-408:19), and Mr. Peck testified that he
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`was never asked to determine whether Alexa has source code that meets this claim element (id.,
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`447:2-6). The only technical document VB identifies (PTX226.032) shows only an existence of a
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`response, not one that is “grammatically or syntactically adapted” according to the claim. And that
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`is why VB must resort to arguing that Dr. Polish’s testimony was enough because he also testified
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`that the claim only requires a response that is “not canned.” (Opp. at 5.) But the patent never equates
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`“grammatically or syntactically adapted” to “not canned,” which, indeed, is contrary to the claim
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`language itself. None of the evidence shows that Alexa generates a response according to the claim.
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`2.
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`“identify a context associated with the utterance…from the short-term
`shared knowledge and the long-term shared knowledge”
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`The infringement story VB tells for this element in its brief was never presented at trial.
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`First, VB points to PTX78 and PTX472 as allegedly showing that Alexa’s NLU generates a single
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`intent, which VB equates to a context. (Opp. at 5-6.) However, during trial, Dr. Polish explained
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 7 of 15 PageID #: 12886
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`that PTX78 and PTX472 show that “[t]he output of the Amazon Alexa NLU is a collection of in-
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`tents,” not a single intent. (Tx., 317:24-319:23 (emphasis added), 334:6-335:16.) Next, VB points
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`to slide 36 of PTX-226 for short-term knowledge, but Dr. Polish never identified any short-term
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`knowledge on this slide. Indeed, the testimony that VB cites from Dr. Polish for PTX-226 does not
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`talk about short-term knowledge at all. (Id., 322:13-332:14.) Likewise, Dr. Polish did not identify
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`any short-term knowledge when discussing his own use of Alexa; in VB’s cited testimony, Dr. Polish
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`provides conclusory testimony that there was short-term knowledge, but never identifies what it was.
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`(Id., 340:1-17.) Mr. Peck is no help—he testified he was never asked to determine whether the Alexa
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`source code identifies a context. (Id., 445:22-446:19.) Most importantly, VB never points to any
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`testimony or evidence that shows that Alexa uses the short-term and long-term knowledge together
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`to identify a context for the utterance, as this claim requires.
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`3.
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`“receive an utterance” and steps performed with “the utterance”
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`The Convolve, Process Control, and X One cases all explain that where—as here—a claim
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`recites “receiv[ing] an utterance” and then performing steps on “the utterance,” VB was required to
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`show that Alexa performed all the recited steps for that same utterance. (JMOL at 7-8.) In arguing
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`to the contrary that it had no “legal requirement” to do so, VB cites no case law and does not even
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`attempt to distinguish Amazon’s cited cases. Dr. Polish admitted that he did not map a single utter-
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`ance to the claim elements. (Tx., 394:22-395:3.) This alone warrants granting JMOL.1 VB tries to
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`piece together bits of Dr. Polish’s testimony to argue he showed infringement through a “conversa-
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`tion setting an alarm.” (Opp. at 8.) But consistent with VB’s description, Dr. Polish discussed an
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`entire “conversation” with many utterances and never mapped a single utterance through all the
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`1 VB is not correct that the jury was free to infer infringement without evidence that Alexa per-
`forms each of the recited steps on the same utterance. (JMOL at 7-8 (citing authorities).)
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 8 of 15 PageID #: 12887
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`steps. Indeed, although VB now identifies the example utterance as “six,” at trial Dr. Polish identi-
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`fied it as “Alexa set alarm.” (Tx., 423:14-18.) And even if Dr. Polish had used the “six” utterance,
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`he still did not show that Alexa (i) established an intended meaning for “six” (ii) within a context
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`that is identified from the short-term and long-term knowledge. In fact, he explained that Alexa had
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`to ask more questions to determine what “six” means. (Tx., 425:10-14.) And here again, he also
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`failed to show a “grammatically or syntactically adapt[ed]” response.
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`In addition, VB ignores that the claim requires “computer executable instructions” to perform
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`these steps. Dr. Polish did not review any source code (Tx., 384:2-9), and Mr. Peck admitted he was
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`not asked to determine whether Alexa’s source code accumulates “short-term” or “long-term
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`knowledge,” “identifies a context,” “determines an intended meaning,” or “generates a grammati-
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`cally or syntactically adapted response.” (Tx., 445:14-447:6.)
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`B.
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`Claim 40 of the ’176 patent.
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`VB does not point to any testimony where Dr. Polish identified (i) an “adaptive misrecogni-
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`tion engine” in Alexa or (ii) any “predetermined event” in response to which the misrecognition
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`engine determines that words/phrases were incorrectly interpreted. VB admits that Dr. Polish never
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`identified an “adaptive misrecognition engine” in Alexa as such but contends is “immaterial” be-
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`cause he discussed a “re-ranking process” in Alexa that allegedly serves the same function. (Opp.
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`at 9.) But VB had the burden to identify an “adaptive misrecognition engine” in Alexa and map it
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`to the claim. See Paradox Sec. Sys., Ltd. V. ADT Sec. Servs., Inc., 388 F. App’x 976, 981-82 (Fed.
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`Cir. 2010) (affirming JMOL where expert “pointed to no structure in the” accused product that met
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`the limitation). Where its expert offered no opinion about where the jury could find an such an
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`engine, VB cannot avoid JMOL on direct infringement by cobbling together citations to argue its
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`expert testified to equivalent functions. Moreover, Dr. Polish did not even show the re-ranking pro-
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`cess was equivalent—instead, he admitted that he did not identify a predetermined event (Tx.,
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 9 of 15 PageID #: 12888
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`411:13-16)—let alone show that Alexa determines that words/phrases were incorrectly interpreted
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`in response to that event. VB also points to a “Hunger Games” example utterance where the song is
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`ranked highest as an intended meaning, but if the same request is made to a different device, an
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`Amazon FireTV, the Hunger Games video is ranked highest. (Opp. at 9.) VB tries to map portions
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`of the claim elements to this example, but Dr. Polish never presented this theory at trial. (Tx.,
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`328:24-329:11, 329:23-330:7.) And VB’s new theory at best shows that rankings may differ based
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`on the source Alexa device. VB never proved that Alexa has an “adaptive misrecognition engine”
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`or showed that a “predetermined event” in response to which that engine determines that
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`words/phrases were incorrectly interpreted.
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`C.
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`Claim 23 of the ’097 patent.
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`Claim 23 of the ʼ097 patent requires “computer program instructions” that cause “physical
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`processors to, “responsive to the existence of a pronoun in the natural language utterance, determine
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`whether the pronoun refers to one or more of the product or service or a provider of the product or
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`service.” VB’s only evidence of infringement is that Alexa provided different responses to “what
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`color” and “what color is it.” (Opp. at 10, n.4.) But these different responses do not prove infringe-
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`ment—Dr. Polish just speculates that Alexa must have computer program instructions that recognize
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`and process a pronoun. See, e.g., Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1319 (Fed.
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`Cir. 2006). He did not present evidence of what Alexa actually does—indeed, he admitted “I don’t
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`know what it’s done with the pronoun.” (Tx., 411:25-412:21.) There is no other evidence. It is
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`undisputed that neither Dr. Polish nor Mr. Peck identified any source code for this claim element.
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`(Tx., 415:8-11, 448:13-23.) VB argues that Dr. Polish reviewed “extensive technical evidence,” but
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`it does not cite any, and Dr. Polish admitted that he was “not presenting Amazon technical documents
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`on this.” (Tx., 415:3-7.) Just as in Lucent, Dr. Polish’s testimony cannot support the verdict.
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`D.
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`Claim 25 of the ’703 patent.
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`VB failed to show that Alexa provides a “request for user confirmation to use the payment
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`and the shipping information for a purchase transaction,” as required by claim 25. VB’s identifica-
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`tion of the Alexa prompt “You can say ‘buy it now’” as the required “request” fails as this prompt
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`does not ask the user for “confirmation to use the payment and shipping information.” (Opp. at 11,
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`n.5.) Claim 25 also requires, after receiving a user input, both identifying a product or service and
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`obtaining shipping information without additional user input. As explained in Amazon’s brief, Dr.
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`Polish testified that, when he said, “I want to buy an iPhone case,” Alexa identified a product (an
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`iPhone case), but he offered no testimony that Alexa obtained shipping information without addi-
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`tional user input, as required. (JMOL 12; see Tx., 363:15-23, 366:15-19.) VB does not address this
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`deficiency at all. As VB fails to cite substantial evidence, JMOL is warranted.
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`II.
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`THE ASSERTED CLAIMS ARE INVALID.
`A.
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`Claim 23 of the ’097 patent lacks written description support.
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`The opposition brief confirms that the Court should grant JMOL of lack of written descrip-
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`tion. To be valid, a skilled artisan must understand the ’097 patent to disclose a computer system
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`that can identify a pronoun in a user utterance and determine whether that pronoun refers to a product
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`or service in an advertisement. Yet VB concedes in its opposition that the word “pronoun” does not
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`even appear in specification (Opp. at 12), and ignores the inventor’s direct admission that he never
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`invented “a way for a computer to understand the meaning of a pronoun” (Tx., 286:1-13), as well as
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`the other testimony that the claims lack written description support. (Tx., 726:11-727:12.) Instead,
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`VB cites to portions of its attorney’s closing argument (see Opp. at 12-13) to assert that the jury
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`could have found written description support in a smattering of quotations from the specification.
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`(Id. at 12.) But VB cites no actual testimony about these quotations, let alone testimony that based
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`on them a skilled artisan would understand the inventor to possess a computer system to identify and
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 11 of 15 PageID #: 12890
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`interpret a pronoun in a user utterance. (Compare Tx., 863:16–864:7 (Dr. Polish WD testimony);
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`see also 862:20–863:15.) That is determinative, since the Court may not presume that the jury rested
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`its verdict on disclosures that were never discussed. Regardless, VB’s citations fail to describe any
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`pronoun-parsing system. (JTX-005 (9:56-10:5), (9:29-45), (11:20-31).) Instead, they discuss: that
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`a user’s request can be ambiguous; that it is helpful to have as much information as possible for
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`interpretation; and that a user can respond to an advertisement, including by saying “Yeah, I’ll buy
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`that.” None of those disclose a computer system that can pick out the pronoun in an utterance and
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`resolve it. This is not a claim described “using different words” (Opp. at 13)—the claim is invalid.
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`B.
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`The asserted claims are ineligible under 35 U.S.C. § 101.
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`At Alice step 1, the parties agree that the ’703 and ’097 patents claim abstract ideas. (Opp.
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`at 14.) As to claim 25 of the ’176 and claim 13 of the ’681 patent,2 the asserted claims recite a series
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`of results without claiming a particular way to achieve them and are thus abstract. At Alice step 2,
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`VB identifies no inventive concept. The “appropriate question [at step 2] is not whether the entire
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`claim as a whole was ‘well-understood, routine and conventional’ . . . (i.e., whether it lacks novelty).”
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`Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1348–49 (Fed. Cir. 2019) (cleaned
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`up). Instead, it asks whether asserted claim limitations, when considered individually or in combi-
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`nation, recite an inventive concept that goes beyond the abstract idea. Showing that something is
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`novel “does not imply eligibility under § 101” because “what may be novel and non-obvious may
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`still be abstract.” Adaptive Streaming, Inc. v. Netflix, Inc., 836 F. App’x 900, 904 (Fed. Cir. 2020);
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`Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). VB’s step 2 argu-
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`ments focus on novelty—the purported “advance[ments] over the prior art” that in the patents are
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`2 Amazon stipulated that it did not have arguments for abstractness of claim 13 of the ’681 dis-
`tinct from those it raised in its motion to dismiss. (D.I. 280.) Amazon maintains that claim 13 is
`abstract for the reasons it argued as to claim 41. (D.I. 17 at 15–19; D.I. 186 at 20–26.)
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`claimed only in the abstract. (Opp. at 14-18.) For the ’703 patent, claim 25, the supposed advance
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`of “being able to proceed directly to an immediate purchase if you have the information available”
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`(id. at 15) simply rephrases the same abstract idea to which the entire claim is directed: “a spoken
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`request to buy something.” (D.I. 57 at 13.) VB points to nothing that explains how to achieve the
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`result of proceeding directly to an immediate purchase. Synopsys, Inc., 839 F.3d at 1151; Apple, Inc.
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`v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016); BSG Tech LLC v. Buyseasons, Inc., 899
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`F.3d 1281, 1289 (Fed. Cir. 2018). VB’s arguments for ’097 patent, claim 23 are no different: the
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`supposed advance of using a pronoun to parse an utterance in response to an advertisement just
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`restates the abstract idea: “providing promotional content in response to natural language utterances
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`and processing natural language responses to promotional content based on pronouns.” (Opp. at 17;
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`D.I. 57 at 15.) As discussed, that patent nowhere describes how a computer can identify and use a
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`pronoun to interpret an utterance. Dr. Polish concluded that three elements of ’176 patent, claim
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`40—interpreting recognized words or phrases by establishing a context, selecting an advertisement
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`based on the context, and presenting the selected advertisement (Tx., 854:24-855:4)—were uncon-
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`ventional and “shortcut . . . complexity” by using “misrecognition” to “figure out what a person
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`meant to say.” (Tx., 854:16-855:20; Opp. at 16.) But these elements—an “adaptive misrecognition
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`engine” to detect a “predetermined event” and “reinterpret[]” an utterance in response—have no
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`implementation details in either the claims or specification. As to ’681 patent, claim 13, VB cites
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`Mr. Freeman’s testimony that he was unaware of contemporary voice systems that using long-term
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`memory to understand context. (Opp. at 18; Tx., 273:9–23.)3 But no VB witness pointed to anything
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`3 The Federal Circuit has said that “[t]he mere fact that something is disclosed in a piece of prior
`art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer v.
`HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). But here, Amazon has relied on the fact that the
`claims and specification do not disclose any non-abstract inventive concept. Moreover, VB acknowl-
`edges that the prior art system Amazon presented consisted of “15 different articles, videos, and
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 13 of 15 PageID #: 12892
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`in the claims that showed how to achieve the intended result or where such a solution appears in the
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`claims or specification. It cannot constitute the inventive concept.
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`VB contends that the inventors testified to purported inventive concepts yet admits that these
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`were aspirational goals. (See Opp. at 14-18.) Announcing goals that a patentee “contends will flow
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`from the claimed abstract idea . . . does not constitute an ‘inventive concept’ for purposes of” Alice
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`step 2. In re Mohapatra, 842 F. App’x 635, 639 (Fed. Cir. 2021). And so Mr. Kennewick’s cited
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`testimony—that he “intended to ‘extend [VoiceBox’s] voice ad capability,’” “plan[ned] to commer-
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`cialize the ’703 technology,” that “the ’176 patent was based on wanting ‘to present more interactive
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`ads,” and that the ’097 Patent was meant to expand on the number of use cases” that could involve
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`pronouns (see Opp. at 14-16 (emphasis added))—is irrelevant. No testimony or evidence at trial
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`demonstrated any technical solution that achieved these goals, let alone one disclosed in the patents.
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`III.
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`PLAINTIFF FAILED TO PROVE WILLFUL INFRINGEMENT.
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`VB concedes that Amazon had no pre-suit notice of infringement.4 It nevertheless argues
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`that it could have proved “willful blindness” at trial based on evidence VoiceBox displayed the cover
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`page of the ’176 patent to Amazon during a slide show presentation in 2011, and because in 2017 it
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`provided Amazon with a list of other patents that it owned. (Opp. at 18-20.)5 VB never requested,
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`and the jury never received, any willful blindness instruction. But even putting that aside, willful
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`blindness still requires the plaintiff to prove: (1) a subjective belief of a high probability of a fact
`
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`source code . . . describing various aspects of the MIT Galaxy framework.” (D.I. 301 at 12.)
`4 VB limits its willfulness argument to Amazon’s pre-suit conduct, and thus confirms that the
`Court should reject VB’s strained arguments in the motion for enhanced damages (D.I. 301) that
`Amazon lacked a good faith non-frivolous defense or engaged in other post-filing misconduct.
`5 VB also argues that Amazon should have known it might infringe because the ’681 patent was
`cited during prosecution of an Amazon patent in 2015. (Opp. at 19.) But Judge Andrews has rejected
`the same argument—that a party cited a patent in an information disclosure statement does not show
`the requisite knowledge for willfulness. See Callwave Commc’n LLC v. AT&T Mobility LLC, No.
`12-1701-RGA, 2014 WL 5363741, at *2 (D. Del. Jan. 28, 2014).
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 14 of 15 PageID #: 12893
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`(here, patent validity and infringement) and (2) “deliberate actions to avoid learning of that fact.”
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`Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 768–69 & n.9 (2011); Ansell Healthcare
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`Prods. LLC v. Reckitt Benckiser LLC, No. 15-cv-915-RGA, 2018 WL 620968, at *6–7 (D. Del. Jan.
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`30, 2018). Here, that Amazon was provided the cover page of a patent or a list of patent numbers
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`establishes nothing about its specific intent let alone that it believed the list of patents was valid and
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`infringed—at best it establishes only the type of notice that is insufficient for willfulness. (See JMOL
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`at 20.) The rest of the trial record points away from willfulness. It is undisputed that none of Voice-
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`Box’s technology ever practiced the asserted patents. (D.I. 239 at 13; D.I. 191 at Ex. 33 p. 10.) And
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`even as Amazon met with VoiceBox about this technology (Tx., 602:23-25) and confirmed that
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`VoiceBox did not meet its partnering criteria (id. at 573:22-574:6, 603:3-607:2, 608:18-615:1; PTX-
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`37; PTX-90; DTX-648), neither VoiceBox (nor VB) leveled any accusation of infringement. (Id.,
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`at 224:10-25, 225:1-11, 226:9-20). That silence would not have led Amazon to believe that there
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`was “a high probability” that it infringed—it would give it comfort that it did not. The Federal
`
`Circuit reversed a district court’s order denying JMOL on similar facts. In SRI International, Inc. v.
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`Cisco Systems, Inc, 930 F.3d 1295 (Fed. Cir. 2019), the defendant had expressed an interest in part-
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`nering and met with the inventor. Id. at 1308-09. But the plaintiff did not allege infringement until
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`years later, after defendant had “independently developed the accused systems and first sold them.”
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`Id. It simply did not matter that “key Cisco” engineers had not reviewed the patents until after
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`plaintiff filed suit. The same result should obtain here.6
`
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`6 VB cites Sunoco Partners Mktg. & Terminals L.P. v. Powder Springs Logistics, LLC, 624 F.
`Supp. 3d 473 (D. Del. 2022) to argue that the jury could find willfulness when a defendant meets
`with the patentee and asks for information about its technology. (Opp. at 20.) That case is inappo-
`site: the record there included the defendant’s internal correspondence acknowledging a risk of in-
`fringement by its substantially similar products and discussing licensing the asserted patents. Noth-
`ing similar occurred here. Moreover, the Sunoco meetings concerned the patented technology,
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`Case 1:19-cv-01410-MN Document 319 Filed 01/17/24 Page 15 of 15 PageID #: 12894
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`January 17, 2024
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`
`
`Of counsel:
`
`J. David Hadden, CSB No. 176148
`dhadden@fenwick.com
`Saina S. Shamilov, CSB No. 215636
`sshamilov@fenwick.com
`Ravi R. Ranganath, CSB No. 272981
`rranganath@fenwick.com
`Vigen Salmastlian, CSB No. 276846
`vsalmastlian@fenwick.com
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`
`
`
`
`
`Respectfully submitted,
`
`
`/s/ Steven J. Balick
`Steven J. Balick (#2114)
`sbalick@ashbygeddes.com
`Andrew C. Mayo (#5207)
`amayo@ashbygeddes.com
`ASHBY & GEDDES
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`
`Attorneys for Defendant
`
`
`whereas, as discussed above, here VB conceded that none of its technology ever practiced any as-
`serted claim. Similarly, in Arctic Cat, Inc. v. Bombardier Rec. Prods. Inc., 876 F.3d 1350 (Fed. Cir.
`2017), the parties discussed the asserted patents and their potential coverage by defendant’s products
`in their pre-suit meetings. See id.; No. 14-cv-62369, Dkt. 182, at 31-35.
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