Case 1:22-cv-00304-JLH Document 128 Filed 01/09/24 Page 1 of 3 PageID #: 7135
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`v.
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`ROBOCAST, INC.
`a Delaware corporation,
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`YOUTUBE, LLC, a Delaware limited
`liability company; and GOOGLE LLC,
`a Delaware limited liability company,
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`Defendants.
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`C.A. No. 22-304 (RGA)
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`DEFENDANTS’ RESPONSE TO NOTICE OF SUPPLEMENTAL AUTHORITY
`REGARDING DEFENDANTS’ RENEWED MOTION TO DISMISS FOR
`OBVIOUSNESS-TYPE DOUBLE PATENTING (D.I. 127)
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`Pursuant to Local Rule 7.1.2(b), Defendants YouTube, LLC and Google LLC
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`(collectively, “Defendants” or “Google”) respectfully request that the Court consider this
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`response to Plaintiff Robocast, Inc.’s (“Robocast”) Notice of Supplemental Authority in Support
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`of its Opposition to Defendants’ Renewed Motion to Dismiss for Obviousness-Type Double
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`Patenting (D.I. 127; the “Notice”). The Notice identifies two supplemental “authorities,” neither
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`of which supports Robocast’s Opposition (D.I. 114) to the Motion to Dismiss (D.I. 109).
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`First, Robocast points to the filing of a petition for rehearing en banc of the Federal
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`Circuit’s decision In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023). A petition by the losing party
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`and/or amici is not “authority” binding on this or any Court. Moreover, hearing en banc is rare;
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`the Federal Circuit did not rehear a single patent case en banc in 2022, for example.1 Even if
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`rehearing en banc were to occur, the outcome would likely be the same for all the reasons stated
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`1 See https://www.perkinscoie.com/images/content/2/5/259376/Fed.-Circ.-Patent-Decisions-In-
`2022-An-Empirical-Review.pdf, at 8.
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`1
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`Case 1:22-cv-00304-JLH Document 128 Filed 01/09/24 Page 2 of 3 PageID #: 7136
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`in the Cellect decision. Accordingly, as this Court noted in another case holding patents invalid
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`for obviousness-type double patenting (ODP), it is “bound by the Federal Circuit’s holding” in
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`Cellect. Allergan USA, Inc. v. MSN Lab’ys Priv. Ltd., No. 19-1727-RGA, 2023 WL 6295496, at
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`*22 (D. Del. Sept. 27, 2023).
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`Second, Robocast points to a report and recommendation of Magistrate Judge Burke in
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`another case, Bausch & Lomb Inc. v. SBH Holdings LLC, No. 20-1463-GBW-CJB, D.I. 102 at 6-
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`8. See D.I. 127-3. In that case, the movant “provide[d] no real analysis” as to ODP, and
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`Magistrate Judge Burke identified specific, substantive limitations of the asserted patent claims
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`that were “not present” in the reference claims, such as a “lutein-zeaxanthine combination” and
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`“reducing the risk of developing late stage or advanced age-related macular degeneration.” See
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`id. at 6-7. The court found it had “no record indicating that these differences do not render the
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`claims patentably distinct.” Id. Thus, the obviousness-type double patenting inquiries
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`“appear[ed] to raise fact issues (potentially requiring discovery and claim construction to
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`resolve).” Id. at 8 (citation omitted).
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`Here, by contrast, Robocast itself pleaded that all the asserted claims are directed to “a”
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`single solution (D.I. 1 ¶ 13), and the Examiners already found the pending claims “not patentably
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`distinct” from the reference claims during prosecution. See D.I. 110 at 11-12; D.I. 110-1, Ex. 2
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`at 96; Ex. 3 at 48. The only distinction Robocast argued in its Opposition was between
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`“displaying” and “presenting,” which is not a distinction at all—Robocast contends that
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`“displaying” should be included in all the patents via its claim construction proposals. See D.I.
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`117 at 5. Finally, unlike the movant in Bausch & Lomb, Google has provided a detailed analysis
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`showing the asserted ’451 Patent claims are not patentably distinct from the reference claims,
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`and Robocast has not identified any plausible distinction or claim construction dispute between
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`2
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`Case 1:22-cv-00304-JLH Document 128 Filed 01/09/24 Page 3 of 3 PageID #: 7137
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`the parties that would impact the ODP analysis. Accordingly, the Bausch decision does not
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`support Robocast’s Opposition to the Motion.
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`OF COUNSEL:
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`Jordan R. Jaffe
`Amy H. Candido
`Catherine Lacey
`WILSON SONSINI GOODRICH & ROSATI,
`P.C.
`One Market Plaza, Suite 330
`San Francisco, CA 94105-1126
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`/s/ Griffin A. Schoenbaum
`Frederick L. Cottrell, III (#2555)
`Griffin A. Schoenbaum (#6915)
`RICHARDS, LAYTON & FINGER, P.A.
`One Rodney Square
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`cottrell@rlf.com
`schoenbaum@rlf.com
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`Attorneys for Defendants YouTube, LLC and
`Google LLC
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`3
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