Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page1 of 15
`
`
`
`STEFANI E. SHANBERG (State Bar No. 206717)
`JENNIFER J. SCHMIDT (State Bar No. 295597)
`ROBIN L. BREWER (State Bar No. 253686)
`MICHAEL J. GUO (State Bar No. 284917)
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, California 94105
`Telephone: (415) 947-2000
`Facsimile:
`(415) 947-2099
`E-Mail:
`sshanberg@wsgr.com
`
`rbrewer@wsgr.com
`
`jschmidt@wsgr.com
`
`mguo@wsgr.com
`
`Attorneys for Defendants
`GOOGLE INC.; YOUTUBE, LLC; and
`ON2 TECHNOLOGIES, INC.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`MAX SOUND CORPORATION and
`VEDANTI SYSTEMS LIMITED,
`
`
`Plaintiffs,
`
`16
`
`
`
`v.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Case No. 5:14-cv-04412-EJD
`
`DEFENDANTS GOOGLE INC.,
`YOUTUBE, LLC, AND ON2
`TECHNOLOGIES, INC.’S REPLY
`BRIEF IN SUPPORT OF MOTION TO
`DISMISS FOR FAILURE TO STATE A
`CLAIM
`
`Date: April 30, 2015
`Time: 9:00 am
`Place: Courtroom 4, 5th Floor
`Judge: Honorable Edward J. Davila
`
`
`
`GOOGLE INC., YOUTUBE, LLC, and ON2
`TECHNOLOGIES, INC.,
`
`
`Defendants.
`
`
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`
`
`
`
`Google Inc.
`GOOG 1014
`IPR of US Pat. No. 7,974,339
`
`1
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page2 of 15
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................................... 1
`
`Page
`
`
`
`1
`
`2
`
`3
`
`I.
`
`4
`
`II.
`
`ARGUMENT ...................................................................................................................... 2
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`A.
`
`Plaintiff Incorrectly Focuses on the Objective Prong of 35 U.S.C. §
`112(2) While Failing to Address the Subjective Prong of the Statute
`that Requires a Determination of What the Applicants Regard as
`Their Invention. ....................................................................................................... 3
`
`B. Whether the Applicants’ Amendment and the Examiner’s
`Amendment Are Procedurally Proper Is Irrelevant, as They Simply
`Serve as Evidence of What Applicants Regard as Their Invention. ....................... 4
`
`C.
`
`The Omitted Claim Language Is Essential to Patentability. ................................... 5
`
`1.
`
`2.
`
`Plaintiff Misapplies Lucent and Group One, which Require
`Invalidation of the Asserted Patent. ............................................................ 5
`
`The Issued Claims Are Different from What the Applicants Regard
`as Their Invention in Contravention of 35 U.S.C. § 112(2). ....................... 8
`
`3.
`
`The Omitted Language Is Limiting Even as Part of the Preamble. ............. 9
`
`D.
`
`Claim Construction Is Unnecessary and Improper Because, as
`Plaintiff Implicitly Concedes, the Omitted Preamble Language is not
`Apparent from the Face of the Claims. ................................................................. 10
`
`III.
`
`CONCLUSION ................................................................................................................. 11
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- i -
`
`
`
`2
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page3 of 15
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page
`
`
`
`1
`
`2
`
`3
`
`Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002) ....................................2, 3, 4, 8
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Brandywine Commc’ns Techs., LLC v. AT&T Corp., C.A. No. C 12-2494 CW,
`2014 U.S. Dist. LEXIS 54370 (N.D. Cal. Apr. 18, 2014) ....................................................10
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) .......................................4
`
`Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir. 2005) ...............................5, 7, 10
`
`Linear Tech. Corp. v. Micrel, Inc., 524 F. Supp. 2d 1147 (N.D. Cal. Nov. 11, 2005) ......................5
`
`Lucent Techs., Inc. v. Gateway, Inc., CA. No. 02-cv-02060, slip op. (S.D. Cal. Aug.
`11, 2005) ....................................................................................................................... passim
`
`10
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ...............................................3, 10
`
`11
`
`NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) ............................................9
`
`12
`
`Solomon v. Kimberly-Clark Corp., 216 F.3d 1372 (Fed. Cir. 2000) ..................................................3
`
`13
`
`Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000) ...............................................5
`
`14
`
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) .....................................................11
`
`15
`
`Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330 (Fed. Cir. 2010) ...................................................9
`
`16
`
`STATUTES
`
`17
`
`35 U.S.C. § 112(2) ................................................................................................................... passim
`
`18
`
`35 U.S.C. § 251 ..................................................................................................................................5
`
`19
`
`RULES
`
`20
`
`37 C.F.R. § 1.322 ...............................................................................................................................5
`
`21
`
`Federal Rule of Civil Procedure 12(b)(6) ..........................................................................................1
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`MPEP 708.02 .............................................................................................................................2, 5, 9
`
`
`MISCELLANEOUS
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- ii -
`
`
`
`3
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page4 of 15
`
`TABLE OF ABBREVIATIONS
`
`Plaintiff Max Sound Corporation
`
`Max Sound or Plaintiff
`
`Patent Owner Vedanti Systems Limited
`
`VSL
`
`Defendant Google Inc.
`
`Defendant YouTube, LLC
`
`Google
`
`YouTube
`
`Defendant On2 Technologies, Inc.
`
`On2
`
`Defendants Google, YouTube, and On2,
`collectively
`
`Defendants
`
`U.S. Patent No. 7,974,339
`
`’339 patent or asserted patent
`
`United States Patent and Trademark Office
`
`PTO
`
`First Amended Complaint, Dkt. No. 23
`
`Amended Complaint
`
`Defendants Google Inc., YouTube, LLC, and
`On2 Technologies, Inc.’s Motion to Dismiss for
`Failure to State a Claim, Dkt. No. 28
`
`opening brief or Opening Br.
`
`Declaration of Jennifer J. Schmidt in Support of
`Defendants’ Motion to Dismiss, Dkt. No. 29
`
`Schmidt Decl.
`
`Plaintiff Max Sound’s Opposition to
`Defendants’ Motion to Dismiss, Dkt. No. 37
`
`opposition or Opp. Br.
`
`Declaration of Niky Bukovcan, Dkt. No. 38
`
`Bukovcan Decl.
`
`
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- iii -
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`4
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page5 of 15
`
`
`
`1
`
`I.
`
`INTRODUCTION
`
`2
`
`
`
`In its opposition, Plaintiff never addresses the crux of Defendants’ motion to dismiss
`
`3
`
`detailing that the issued claims fail to meet the statutory requirement to set forth “the subject
`
`4
`
`matter which the applicant regards as his invention.” See 35 U.S.C. § 112(2). Instead, Plaintiff
`
`5
`
`focuses on irrelevant ancillary issues, such as other sections of the statute, arcane procedural
`
`6
`
`requirements of patent prosecution, the PTO’s original allowance of the issued claims, and
`
`7
`
`misplaced claim construction arguments.1 Ultimately, none of Plaintiff’s distractions properly
`
`8
`
`disputes that the issued claims fail to include the necessary phrase “data optimization instead of
`
`9
`
`data compression” and other terms that would satisfy the statutory requirement that the claims set
`
`10
`
`forth “the subject matter that the applicant[s] regard[] as [their] invention.” The issued claims are
`
`11
`
`both broader than and different from the allowed claims, and they must be invalidated under 35
`
`12
`
`U.S.C. § 112(2). Because, as Plaintiff implicitly concedes, the claims have no indication on their
`
`13
`
`face of the requisite omitted language, the Court cannot correct the claims. Instead, the patentee
`
`14
`
`must file for a certificate of correction, which it has not done, and any resulting certificate of
`
`15
`
`correction will not be effective for the purposes of this pending action. Accordingly, pursuant to
`
`16
`
`Federal Rule of Civil Procedure 12(b)(6), Plaintiff’s complaint should be dismissed for failure to
`
`17
`
`state a claim for infringement of the ’339 patent.
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`1 Despite Defendants’ motion to dismiss being purely a question of invalidity under 35 U.S.C.
`§ 112(2), Plaintiff’s opposition also includes unsubstantiated allegations of misappropriation,
`which are absent from its complaint. See Opp. Br. at 1; Amended Complaint. Plaintiff also
`includes discussion regarding German proceedings that do not involve the claims of the ’339
`patent and that are thus irrelevant to the present case. See Opp. Br. at 8 n.7. Even more tellingly,
`it appears that Patent Owner VSL, or a related entity, is party to the German proceedings but is
`still not party to this case despite the original complaint being filed half a year ago. See Bukovcan
`Decl., Ex. 15 at 1; Bukovcan Decl., Ex. 16 at 1. Rather than join Plaintiff Max Sound in its
`attempts to assert an indefinite patent, Patent Owner VSL has delayed answering twice, and VSL’s
`counsel has filed an unopposed motion to withdraw. See Defendant Vedanti Systems Limited’s
`Notice of Motion and Motion for Extension of Time to File a Responsive Pleading to Plaintiff
`Max Sound Corporation’s First Amended Complaint, Dkt. No. 32; Motion to Withdraw as
`Counsel of Record for Defendant Vedanti Systems Limited, Dkt. No. 36; Amended Stipulation
`and [Proposed] Order to Extend Time for Vedanti Systems Limited to Respond to Amended
`Complaint, Dkt. No. 47. As noted in Defendants’ opening brief, it is relevant that Plaintiff appears
`to lack Patent Owner VSL’s cooperation to obtain a certificate of correction. See Opening Br. at
`5, 11-12.
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 1 -
`
`
`
`5
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page6 of 15
`
`
`
`1
`
`II.
`
`ARGUMENT
`
`2
`
`
`
`As discussed in Defendants’ opening brief, one of the statutory requirements for
`
`3
`
`patentability is that the claims must set forth “the subject matter which the applicant regards as his
`
`4
`
`invention.” See 35 U.S.C. § 112(2); Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1349
`
`5
`
`(Fed. Cir. 2002) (invalidating claim under Section 112(2) because invention set forth in claim is
`
`6
`
`not what patentee regarded as his invention as evidenced by contradictory specification); Lucent
`
`7
`
`Techs., Inc. v. Gateway, Inc., CA. No. 02-cv-02060, slip op. at 7 (S.D. Cal. Aug. 11, 2005)
`
`8
`
`(invalidating claim under Section 112(2) for failing to claim what applicants regard as their
`
`9
`
`invention as evidenced by claims applicants presented to PTO); Opening Br. at 6-10.
`
`10
`
`
`
`Here, the issued claims do not set forth “the subject matter which the applicant regards as
`
`11
`
`his invention” because they lack the negative limitation that the invention is one of “data
`
`12
`
`optimization instead of data compression” and other limiting claim terms, as evidenced by the
`
`13
`
`applicants’ Amendment dated April 1, 2011, and repeated assertions from the prosecution history,
`
`14
`
`along with the applicants’ statements in the specification. See Schmidt Decl., Ex. E (’339
`
`15
`
`Prosecution, Amendment dated April 1, 2011); Schmidt Decl., Ex. G (’339 Prosecution, Examiner
`
`16
`
`Amendment dated June 1, 2011); Schmidt Decl., Ex. J at 2 (’339 Prosecution History, Declaration
`
`17
`
`of Constance Nash dated July 20, 2006); Schmidt Decl., Ex. I at 1 (’339 Prosecution History,
`
`18
`
`Petition and Statement under 37 CFR §1.102(D) and MPEP 708.02 (XI) for Advancement of
`
`19
`
`Examination dated July 21, 2006); Schmidt Decl., Ex. A at 17 (’339 Prosecution History,
`
`20
`
`Amendment dated January 24, 2011); Schmidt Decl., Ex. C at 17 (’339 Prosecution History,
`
`21
`
`Supplemental Amendment dated January 24, 2011); Amended Complaint, Ex. 1, ’339 patent at
`
`22
`
`1:13-39, 1:54-63, 2:43-46; Opening Br. at 7-10.
`
`23
`
`
`
`Rather than address whether the issued claims of the ’339 patent meet this statutory
`
`24
`
`requirement, Plaintiff focuses on ancillary issues, none of which is relevant to whether the claims
`
`25
`
`set forth “the subject matter which the applicant regards as his invention.” See generally Opp. Br.
`
`26
`
`27
`
`28
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 2 -
`
`
`
`6
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page7 of 15
`
`A.
`
`Plaintiff Incorrectly Focuses on the Objective Prong of 35 U.S.C. § 112(2)
`While Failing to Address the Subjective Prong of the Statute that Requires a
`Determination of What the Applicants Regard as Their Invention.
`
`
`
`1
`
`2
`
`3
`
`
`
`In its opposition, Plaintiff focuses almost entirely on whether the claims provide objective
`
`4
`
`direction to one of skill in the art. See Opp. Br. at 9-12. But that is not the relevant test. As
`
`5
`
`explained in Defendants’ opening brief, “the second paragraph of § 112 contains two
`
`6
`
`requirements: ‘first, [the claim] must set forth what the applicant regards as his invention, and
`
`7
`
`second, it must do so with sufficient particularity and distinctness, i.e., the claim must be
`
`8
`
`sufficiently definite.’” Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1349 (Fed. Cir. 2002)
`
`9
`
`(quoting Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000)) (internal quotes
`
`10
`
`omitted andemphasis added); Opening Br. at 6.
`
`11
`
`
`
`Defendants’ motion to dismiss focuses only on the first requirement, which does not
`
`12
`
`require an evaluation of what one skilled in the art would view as the scope of the invention or that
`
`13
`
`the claims reflect what the examiner decides is allowable, but rather a determination of whether
`
`14
`
`the claims set forth “the subject matter which the applicant regards as his invention.” See 35
`
`15
`
`U.S.C. § 112(2). Contra Opp. Br. at 9-11. As indicated by the plain language of the statute, what
`
`16
`
`“the applicant[s] regard[] as [their] invention” must involve a subjective inquiry. See Allen Eng’g,
`
`17
`
`299 F.3d at 1349 (looking to specification for support as to what patentee regarded as his
`
`18
`
`invention); Lucent, slip op. at 7 (looking to claims applicants presented to PTO as evidence of
`
`19
`
`what they regarded as their invention). If the claims do not set forth what the applicants regard as
`
`20
`
`their invention, then the claims must be invalid under 35 U.S.C. § 112(2). See Allen Eng’g, 299
`
`21
`
`F.3d at 1349 (invalidating claim under Section 112(2) for failing to set forth what applicant
`
`22
`
`regarded as his invention); Lucent, slip op. at 7 (same).
`
`23
`
`
`
`As such, Plaintiff’s reliance on what one skilled in the art would view as the invention is
`
`24
`
`misplaced, as it relates only to the second requirement of 35 U.S.C. § 112(2). See, e.g., Nautilus,
`
`25
`
`Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (only addressing test for whether
`
`26
`
`specification ‘conclude[s] with one or more claims particularly pointing out and distinctly
`
`27
`
`claiming the subject matter which the applicant regards as [the] invention”) (citing 35 U.S.C. §
`
`28
`
`112(2)) (emphasis in original); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 3 -
`
`
`
`7
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page8 of 15
`
`
`
`1
`
`(Fed. Cir. 2014) (deciding only whether claim term particularly pointed out and distinctly claimed
`
`2
`
`invention); Opp. Br. at 10.
`
`3
`
`4
`
`5
`
`B. Whether the Applicants’ Amendment and the Examiner’s Amendment Are
`Procedurally Proper Is Irrelevant, as They Simply Serve as Evidence of What
`Applicants Regard as Their Invention.
`
`Plaintiff next puts forward a red herring concerning whether the applicants’ Amendment
`
`6
`
`and the Examiner’s Amendment meet procedural nuances of the Manual for Patent Examination
`
`7
`
`Procedure (“MPEP”). See Opp. Br. at 12-13, 18-20. But whether the Amendment dated April 1,
`
`8
`
`2011, and the Examiner’s Amendment comply with the MPEP has nothing to do with whether the
`
`9
`
`issued claims are indefinite under 35 U.S.C. § 112(2). Defendants need not show that the
`
`10
`
`applicants’ Amendment and the Examiner’s Amendment were procedurally correct, that they were
`
`11
`
`“‘essential’ or ‘key’ to the allowability of these claims,” or that the PTO inadvertently “omitted”
`
`12
`
`or “overlooked” the “data optimization instead of data compression” language from the issued
`
`13
`
`claims. See Opp. Br. at 12, 19-20.
`
`14
`
`Rather, Defendants must show that the claims do not set forth what “the applicant[s] regard
`
`15
`
`as [their] invention,” as required by 35 U.S.C. § 112(2). See Opening Br. at 7-9. To determine
`
`16
`
`what the applicants regard as their invention, courts rely on the applicants’ statements from the
`
`17
`
`specification and prosecution history. See Allen Eng’g, 299 F.3d at 1349 (relying on patentee’s
`
`18
`
`statements in specification as indicating what he regarded as his invention); Lucent, slip op. at 7
`
`19
`
`(defining “the subject matter which the applicants regarded as their invention” to mean the claims
`
`20
`
`the applicants presented to the PTO).
`
`21
`
`Here, the Amendment dated April 1, 2011, and the resulting Examiner’s Amendment both
`
`22
`
`show that the issued claims are not what the applicants regard as their invention because the
`
`23
`
`applicants attempted to amend the originally allowed claims. See Schmidt Decl., Ex. E (’339
`
`24
`
`Prosecution, Amendment dated April 1, 2011); Schmidt Decl., Ex. G (’339 Prosecution, Examiner
`
`25
`
`Amendment dated June 1, 2011). Even if the missing language was “deliberately omitted” from
`
`26
`
`the issued claims, as Plaintiff infers without support, see Opp. Br. at 3, the omitted language is still
`
`27
`
`indicative of “what the applicant[s] regard[] as [their] invention” as required under 35 U.S.C.
`
`28
`
`§ 112(2). That the omitted language is necessary for the claims to be definite is amply supported
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 4 -
`
`
`
`8
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page9 of 15
`
`
`
`1
`
`by the applicants’ repeated statements from the prosecution history and the specification
`
`2
`
`concerning what they regarded as the scope of the invention.2 See Schmidt Decl., Ex. J at 2 (’339
`
`3
`
`Prosecution History, Declaration of Constance Nash dated July 20, 2006); Schmidt Decl., Ex. I at
`
`4
`
`1 (’339 Prosecution History, Petition and Statement under 37 CFR §1.102(D) and MPEP 708.02
`
`5
`
`(XI) for Advancement of Examination dated July 21, 2006); Schmidt Decl., Ex. A at 17 (’339
`
`6
`
`Prosecution History, Amendment dated January 24, 2011); Schmidt Decl., Ex. C at 17 (’339
`
`7
`
`Prosecution History, Supplemental Amendment dated January 24, 2011); Amended Complaint,
`
`8
`
`Ex. 1, ’339 patent at 1:13-39, 1:54-63, 2:43-46; Opening Br. at 7-10.
`
`9
`
`Moreover, that the Examiner’s Amendment was not entered does not obviate the patentee’s
`
`10
`
`ongoing duty to correct the issued claims with a certificate of correction, particularly since the
`
`11
`
`applicants clearly were aware that the language reflecting what they regarded as their invention
`
`12
`
`was missing from the issued claims. See Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297,
`
`13
`
`1303 (Fed. Cir. 2005) (citing Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir.
`
`14
`
`2000)); Linear Tech. Corp. v. Micrel, Inc., 524 F. Supp. 2d 1147, 1153-56 (N.D. Cal. Nov. 11,
`
`15
`
`2005). Contra Opp. Br. at 11. Without the requisite certificate of correction,3 the issued claims
`
`16
`
`do not set forth “the subject matter which the applicant[s] regard[] as [their] invention.”
`
`17
`
`18
`
`19
`
`C.
`
`The Omitted Claim Language Is Essential to Patentability.
`
`1.
`
`Plaintiff Misapplies Lucent and Group One, which Require Invalidation
`of the Asserted Patent.
`
`
`20
`
`
`
`Plaintiff nonsensically claims that Defendants misread Lucent, as the Lucent court found
`
`21
`
`the asserted claim invalid because the issued claim was broader than the allowed claim, rather than
`
`22
`
`simply different from the allowed claim. See Opp. Br. at 10-11. Indeed, Defendants put forward
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`2 Further, Plaintiff’s red herring hinges on a mere technicality. See Opp. Br. at 19-20. The pro se
`applicants, who were likely unfamiliar with the MPEP, submitted the Amendment dated April 1,
`2011, only three days after payment of the issuance fee. See Schmidt Decl., Ex. E (’339
`Prosecution History, Amendment dated April 1, 2011); Bukovcan Decl., Ex. 12 (Electronic
`Acknowledge Receipt dated March 29, 2011). Regardless, the procedural effectiveness of
`applicants’ Amendment and the Examiner’s Amendment is inapposite.
`3 Alternatively, Patent Owner VSL, but not Plaintiff, could file for a reissue if the PTO does not
`deem the omitted language to be mistakenly omitted as required by 37 C.F.R. § 1.322. See 35
`U.S.C. § 251.
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 5 -
`
`
`
`9
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page10 of 15
`
`
`
`1
`
`this very reading of Lucent. See Opening Br. at 10 (summarizing Lucent as “holding that claim
`
`2
`
`that issued in broader form than allowed by PTO ‘is invalid . . .’”); id. (describing Lucent as
`
`3
`
`“finding that ‘Claim 13 and its dependent claims, as issued, are indefinite because these claims are
`
`4
`
`broader than the claims that were allowed by the PTO’”). Under Lucent, issued claims that are
`
`5
`
`broader than the allowed claims are invalid under 35 U.S.C. § 112(2). Lucent, slip op at 7.
`
`6
`
`
`
`Plaintiff then misapplies this reading of Lucent to the issued claims of the asserted patent,
`
`7
`
`in part by arguing that the issued claims are no broader than the allowed claims.4 See Opp. Br. at
`
`8
`
`11, 14-17 (conclusorily arguing that issued claims are not invalid as indefinite under Lucent).
`
`9
`
`Without identifying any specific language within the claims that limits the scope of the invention
`
`10
`
`to optimization, Plaintiff insists that “the express language of the body of the claims alone makes
`
`11
`
`it clear the scope of the issued claims encompasses data transmission using data optimization and
`
`12
`
`does not require or involve data compression.” Opp. Br. at 14.
`
`13
`
`
`
`But the claims themselves reveal this assertion to be false. See Amended Complaint, Ex.
`
`14
`
`1, cls. 1-13. Here, as in Lucent, the issued claims are plainly broader than the allowed claims in
`
`15
`
`the examiner’s June 1, 2011 amendment, because the issued claims lack the limitation “data
`
`16
`
`optimization instead of data transmission.” See Opening Br. at 7-11; supra Section II.C. Aside
`
`17
`
`from claim 7, none of the claims even contains the word “optimization” or variants thereof. See
`
`18
`
`id., cls. 1-13. And in claim 7, the word “optimized” merely modifies the phrase “matrix data,”
`
`19
`
`such that the plain language of the claim does not reflect that the transmitted data is optimized
`
`20
`
`instead of compressed. See id., cl. 7. The claims also do not use the term “compression,” or
`
`21
`
`variants thereof, much less the phrase “data optimization instead of data compression” or anything
`
`22
`
`relating to that phrase. See id., cls. 1-13. As such, on their face, the claims have no indication of
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`this limited scope. Without language narrowing the claims to data optimization instead of data
`
`
`4 To obfuscate, Plaintiff appears to use a definition of “allowed claims” different from
`Defendants’. See, e.g., Opp. Br. at 2 (stating that issued claims are same as allowed claims).
`Plaintiff appears to refer to the claims from the Examiner’s Amendment attached to the Notice of
`Allowability as the “allowed claims.” See Opp. Br. at 2; Bukovcan Decl., Ex. 8 at 8-10. But
`throughout the opening brief, Defendants refer to the claims from the final Examiner’s
`Amendment as the “allowed claims.” See Opening Br. at 3-4 (comparison of issued claims to
`allowed claims); Schmidt Decl., Ex. G (’339 Prosecution, Examiner Amendment dated June 1,
`2011). Given this use of “allowed claims,” the issued claims are clearly different because they
`omit the phrase “data optimization instead of data compression.” See Opening Br. at 3-4.
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 6 -
`
`
`
`10
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page11 of 15
`
`
`
`1
`
`compression, the issued claims must be broader than the allowed claims, which do contain that
`
`2
`
`limitation. See Opening Br. at 10. In addition, there are other missing limitations that also render
`
`3
`
`the issued claims broader than the allowed claims. As detailed in Defendants’ opening brief, the
`
`4
`
`allowed claims add the term “frame” to modify “analysis system” and “display” in claim 1 and
`
`5
`
`add the limitation of “transmitting region data” only “for each region” in claim 10 (prosecuted as
`
`6
`
`claim 16). See Opening Br. at 3. Without the modifier “frame,” claim 1 reads broadly on any
`
`7
`
`analysis system and on any display. See id. Likewise, issued claim 10 would read broadly on
`
`8
`
`“transmitting region data” without it being only “for each region.” Thus, the issued claims are
`
`9
`
`broader than the allowed claims and are invalid under Lucent.
`
`10
`
`Similarly, Plaintiff misreads and misapplies Group One by morphing the holding of Group
`
`11
`
`One into one concerning whether omitted language was essential to validity over the prior art. See
`
`12
`
`Opp. Br. at 10. Indeed, as Plaintiff admits, whether the omitted language was essential to validity
`
`13
`
`was not disputed in Group One. See id. And as detailed in Defendants’ opening brief, whether
`
`14
`
`the language is essential to validity is irrelevant, as Group One stands primarily for the proposition
`
`15
`
`that an uncorrected patent is indefinite where the claims omit a phrase from the claim. See
`
`16
`
`generally Grp. One, 254 F.3d 1041; accord Lucent, slip op. at 4-5 (“In Group One Ltd. v.
`
`17
`
`Hallmark Cards, Inc. the Federal Circuit affirmed a trial court finding that an uncorrected patent
`
`18
`
`was indefinite. There, a transcription error by the PTO resulted in the deletion of a phrase from
`
`19
`
`Group One’s patent. Because of the nature of the deletion, someone reading the Group One patent
`
`20
`
`could not discern what language is missing from the patent simply by reading the patent.”)
`
`21
`
`(citations and quotes omitted); Opening Br. at 6. Here, as in Group One, the uncorrected claims of
`
`22
`
`the ’339 patent lack the language “data optimization instead of data compression” and other
`
`23
`
`language that limits the claims to what “the applicant[s] regard[] as [their] invention.” See supra
`
`24
`
`Sections II.A-II.B. And as in Group One, someone reading the ’339 patent would not be able to
`
`25
`
`discern what language is missing from the patent simply by reading the claims because the claims,
`
`26
`
`as issued, are grammatically correct. See Opening Br. at 11. Thus, under both Group One and
`
`27
`
`Lucent, the claims of the ’339 patent must be invalid.
`
`28
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 7 -
`
`
`
`11
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page12 of 15
`
`2.
`
`The Issued Claims Are Different from What the Applicants Regard as
`Their Invention in Contravention of 35 U.S.C. § 112(2).
`
`
`
`
`1
`
`2
`
`3
`
`
`
`Even without application of Lucent, the claims would still be invalid because the statute
`
`4
`
`requires that the claims set forth “the subject matter which the applicant regards as his invention.”
`
`5
`
`See 35 U.S.C. § 112(2). And the plain language of the statute contains no requirement that the
`
`6
`
`claims be “broader” than what the applicant regards as his invention to be invalid. See Opp. Br. at
`
`7
`
`11. Further, courts have not limited the statute in such a manner.
`
`8
`
`
`
`As shown in Defendants’ opening brief and unrebutted by Plaintiff, the Federal Circuit has
`
`9
`
`held that “[w]here it would be apparent to one of skill in the art, based on the specification, that
`
`10
`
`the invention set forth in a claim is not what the patentee regarded as his invention, we must hold
`
`11
`
`that claim invalid under § 112, paragraph 2.” Allen Eng’g, 299 F.3d at 1349; see also Opening Br.
`
`12
`
`at 10; see also generally Opp. Br. In Allen, the Federal Circuit found invalid claims reciting that a
`
`13
`
`gear box pivoted “only in a plane perpendicular to” a biaxial plane, whereas the specification
`
`14
`
`directly contradicted the claims, stating that the gear box “cannot pivot in a plane perpendicular to
`
`15
`
`the biaxial plane.” Id.
`
`16
`
`
`
`Here, as in Allen, the issued claims also directly contradict the applicants’ statements as to
`
`17
`
`what they regard as their invention, as evidenced by the specification and prosecution history,
`
`18
`
`because the issued claims lack language limiting the systems and methods to “data optimization
`
`19
`
`instead of data compression.” See Opening Br. at 10. Furthermore, as detailed in Defendants’
`
`20
`
`opening brief, there are numerous other differences between the allowed claims and the issued
`
`21
`
`claims that fail to bring the issued claims within the requirements of 35 U.S.C. § 112(2). For
`
`22
`
`example, the allowed claims add the term “frame” to modify “analysis system” and “display” in
`
`23
`
`claim 1, remove the term “selection” to modify “pixel data” in claims 7 and 13 (prosecuted as
`
`24
`
`claims 11 and 16), and add the limitation of “transmitting region data” only “for each region” in
`
`25
`
`claim 13. See Opening Br. at 3. Because the issued claims are not what “the applicant[s] regard[]
`
`26
`
`as [their] invention,” as required by statute, the claims must be indefinite and invalid.
`
`27
`
`28
`
`
`
`DEFENDANTS’ REPLY BRIEF RE: MOT. TO
`DISMISS FOR FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`
`- 8 -
`
`
`
`12
`
`

`
`Case5:14-cv-04412-EJD Document49 Filed03/30/15 Page13 of 15
`
`3.
`
`The Omitted Language Is Limiting Even as Part of the Preamble.
`
`Relatedly, Plaintiff’s argument that the omitted language “data optimization instead of data
`
`
`
`1
`
`2
`
`
`
`3
`
`compression” would be non-limiting merely because it forms part of the preamble is also
`
`4
`
`incorrect. See Opp. Br. at 13. As the Federal Circuit has held, “if the preamble helps to determine
`
`5
`
`the scope of the patent claim, then it is construed as part of the claimed invention.” NTP, Inc. v.
`
`6
`
`Research in Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005). Likewise, when the language
`
`7
`
`of a preamble presents “the essence or a fundamental characteristic of the claimed invention,” it is
`
`8
`
`limiting. Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1341-42 (Fed. Cir. 2010) (finding that
`
`9
`
`the language “for decoding” in preamble was properly construed as claim limitation because
`
`10
`
`“‘decoding’ is the essence or a fundamental characteristic of the claimed invention”).
`
`11
`
`As in Vizio, both the specification and the applicants’ repeated assertions in the
`
`12
`
`prosecution hist