Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 1 of 25 PageID #: 2625
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`C.A. No. 14-01571-GMS
`
`JURY TRIAL DEMANDED
`
`)))))))))))
`
`
`
`
`
`
`
`IOENGINE, LLC,
`
`
`
`
`Plaintiff,
`
`v.
`
`
`INTERACTIVE MEDIA CORP.
`D/B/A KANGURU SOLUTIONS,
`
`
`Defendant.
`
`
`PLAINTIFF IOENGINE, LLC’S OPPOSITION TO INTERACTIVE MEDIA CORP.’S
`RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW OR, IN THE
`ALTERNATIVE, FOR A NEW TRIAL
`
`
`
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`
`Attorneys for Plaintiff IOENGINE, LLC
`
`
`
`
`Of Counsel
`Jeffrey Ostrow
`jostrow@stblaw.com
`SIMPSON THACHER & BARTLETT LLP
`2475 Hanover Street
`Palo Alto, California 94304
`Telephone: (650) 251-5000
`
`Noah M. Leibowitz
`Gregory T. Chuebon
`nleibowitz@stblaw.com
`gchuebon@stblaw.com
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, New York 10017
`Tel: (212) 455-2000
`
`Dated: March 15, 2017
`
`PayPal Ex. 1030, p. 1
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 2 of 25 PageID #: 2626
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`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`TABLE OF CONTENTS
`
`SUMMARY OF ARGUMENT ...........................................................................................1
`
`NATURE AND STAGE OF THE PROCEEDINGS ..........................................................1
`
`STATEMENT OF FACTS ..................................................................................................2
`
`LEGAL STANDARD ..........................................................................................................2
`
`ARGUMENT .......................................................................................................................3
`
`A.
`
`B.
`
`IMC’s Motion is Based on Arguments It Has Waived ........................................... 3
`
`The Jury’s Verdict That the Asserted Claims Are Not Invalid Over Genske
`Should Not Be Disturbed ........................................................................................ 5
`
`1.
`
`Substantial Evidence Supports the Jury’s Finding that IMC Failed to
`Meet Its High Burden to Prove Invalidity Over Genske............................. 6
`
`C.
`
`The Jury’s Verdict of No Invalidity on Enablement Should Not Be Disturbed ..... 8
`
`1.
`
`2.
`
`Substantial Evidence Supports the Jury’s Verdict of Enablement.............. 9
`
`Dr. Butler’s Rebuttal was More than Sufficient to Show Enablement ..... 10
`
`D.
`
`E.
`
`IMC Fails to Address That a Reasonable Jury Could Have Found Dr.
`Madisetti’s Invalidity Testimony Inconsistent and Unreliable ............................. 11
`
`The Jury’s Verdict of Infringement Should Not Be Disturbed ............................. 12
`
`1.
`
`2.
`
`Substantial Evidence Supports that the Infringing IMC Products
`Contain Third Program Code Executed by the Portable Device
`Processor ................................................................................................... 13
`
`Substantial Evidence Supports that the Infringing IMC Products
`Contain Third Program Code that Causes a Communication to be
`Transmitted ............................................................................................... 15
`
`3.
`
`IMC’s “Synchronizing” Argument is Waived and is Improper................ 18
`
`VI.
`
`CONCLUSION ..................................................................................................................20
`
`
`
`
`
`
`i
`
`PayPal Ex. 1030, p. 2
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 3 of 25 PageID #: 2627
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Abbott Labs. v. Syntron Bioresearch, Inc.,
`334 F.3d 1343 (Fed. Cir. 2003)................................................................................................. 5
`
`Abbott Labs. v. Syntron Bioresearch, Inc.,
`No. 98-CV-2359 H (POR), 2002 WL 32068939 (S.D. Cal. Jan. 11, 2002) ............................. 6
`
`Apple Inc. v. Samsung Elecs. Co.,
`816 F.3d 788 (Fed. Cir. 2016)................................................................................................. 18
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016)............................................................................................... 10
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)................................................................................................. 19
`
`Edwards Lifesciences AG v. CoreValve, Inc.,
`No. C.A. 08-91-GMS, 2011 WL 446203 (D. Del. Feb. 7, 2011) ........................................... 19
`
`EMC Corp. v. Zerto, Inc.,
`C.A. No. 12-956 (GMS), 2016 WL 1291757 (D. Del. Mar. 31, 2016) .................................... 2
`
`Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010)................................................................................................. 3
`
`Grazier ex rel. White v. City of Philadelphia,
`328 F.3d 120 (3d Cir. 2003)...................................................................................................... 2
`
`Hewlett-Packard Co. v. Mustek Sys., Inc.,
`340 F.3d 1314 (Fed. Cir. 2003)............................................................................................... 18
`
`i4i Ltd. P’ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010)........................................................................................... 12, 20
`
`In re Prosser,
`534 Fed. App’x. 126 (3d Cir. 2013)...................................................................................... 3, 4
`
`Invista N. Am. S.A.R.L. v. M & G USA Corp.,
`35 F.Supp.3d 583 (D. Del. 2014) .......................................................................................... 2, 4
`
`Lightning Lube, Inc. v. Witco Corp.,
`4 F.3d 1153 (3d Cir. 1993).................................................................................................... 2, 4
`
`Masimo Corp. v. Philips Elec. N. Am. Corp.,
`C.A. No. 09-80-LPS, 2015 WL 2379485 (D. Del. 2015) ................................................. 3, 5, 9
`
`ii
`
`PayPal Ex. 1030, p. 3
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 4 of 25 PageID #: 2628
`
`
`Mentor H/S, Inc. v. Med. Device All., Inc.,
`244 F.3d 1365 (Fed. Cir. 2001)................................................................................................. 3
`
`Michalic v. Cleveland Tankers, Inc.,
`364 U.S. 325 (1960) ................................................................................................................ 14
`
`Microsoft Corp. v. i4i Ltd. P’Ship,
`564 U.S. 91 (2011) .................................................................................................................... 5
`
`Moleculon Research Corp. v. CBS, Inc.,
`793 F.2d 1261 (Fed. Cir. 1986)............................................................................................... 14
`
`Reeves v. Sanderson Plumbing Prod., Inc.,
`530 U.S. 133 (2000) .................................................................................................................. 3
`
`S.O.I.TEC Silicon On Insulator Techs., S.A. v. MEMC Elec. Materials, Inc.,
`No. CIV. 08-292-SLR, 2011 WL 2748725 (D. Del. July 13, 2011) ........................................ 8
`
`Streck, Inc. v. Research & Diagnostic Sys., Inc.,
`665 F.3d 1269 (Fed. Cir. 2012)................................................................................................. 8
`
`Teleconference Sys. v. Proctor & Gamble Pharm., Inc.,
`676 F. Supp. 2d 321 (D. Del. 2009) .......................................................................................... 6
`
`Tinnus Enters., LLC v. Telebrands Corp.,
`846 F.3d 1190 (Fed. Cir. 2017)............................................................................................... 14
`
`U.S. v. Dunkel,
`927 F.2d 955 (7th Cir. 1991) .................................................................................................... 6
`
`Varlesi v. Wayne State Univ.,
`No. 10-14793, 2014 WL 2864690 (E.D. Mich. June 24, 2014) ............................................... 6
`
`Williamson v. Consol. Rail Corp.,
`926 F.2d 1344 (3d Cir. 1991).................................................................................................... 2
`
`RULES
`
`Fed. R. Civ. P. 50 ................................................................................................................... passim
`
`Fed. R. Civ. P. 59(a) ........................................................................................................................4
`
`OTHER AUTHORITIES
`
`9B Charles Wright & Arthur Miller,
`Fed. Prac. & Proc. Civ. § 2537 (3d ed. 2013) ........................................................................... 3
`
`Webster’s Third New International Dictionary, (2002) .................................................................19
`
`iii
`
`PayPal Ex. 1030, p. 4
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 5 of 25 PageID #: 2629
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`
`I.
`
`SUMMARY OF ARGUMENT
`
`IMC’s motion is entirely divorced from the factual record developed at trial. It is an
`
`attempt to rewrite history after the jury, with the benefit of an extensive factual record and expert
`
`testimony, judged the credibility of the witnesses at the five-day trial and properly found against
`
`IMC on issues of infringement, validity, and inventorship. This is not a case where judgment as
`
`a matter of law or a new trial is appropriate. IMC’s motion should be denied.
`
`1.
`
`Nearly all of IMC’s arguments for JMOL amount to entirely new arguments never
`
`before raised in a Rule 50(a) motion. IMC’s Rule 50(b) arguments based on anticipation,
`
`enablement, the meaning of the claim term “when,” and the alleged lack of direct evidence of
`
`third program code have all been waived.
`
`2.
`
`IMC’s invalidity arguments additionally fail because IMC’s motion mistakes the
`
`relevant standard, attempting to flip the burden of proof on validity. Moreover, Genske does not
`
`disclose all three claimed program codes, which must be run from the portable device memory
`
`(regardless of which processor they are run by), and there is ample evidence of enablement.
`
`3.
`
`Substantial evidence supports the jury’s finding that IMC’s infringing products
`
`contain third program code which, when executed by the portable device processor, causes a
`
`network communication to be transmitted. IMC’s arguments to the contrary ignore the evidence
`
`and misunderstand IOENGINE’s infringement analysis as presented to and accepted by the jury.
`
`4.
`
`Finally, IMC fails to account for the significant credibility issues facing each of
`
`its proffered expert witnesses—whose testimony was subject to rejection by a reasonable jury.
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`After a five-day jury trial on IOENGINE, LLC’s (“IOENGINE”) claims of patent
`
`infringement against Interactive Media Corp. d/b/a Kanguru Solutions (“IMC”), the jury returned
`
`its verdict on January 13, 2017, finding the asserted claims of U.S. Patent No. 8,539,047 (the
`
`1
`
`PayPal Ex. 1030, p. 5
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 6 of 25 PageID #: 2630
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`“’047 Patent”) (PTX0001) valid and infringed,1 and crediting IOENGINE’s founder and
`
`President, Mr. Scott McNulty, as the sole inventor of the patented technology. (D.I. 160).
`
`III.
`
`STATEMENT OF FACTS
`
`The relevant evidence and testimony, which support denial of IMC’s Motion, are set
`
`forth throughout Section V, Argument, as appropriate.
`
`IV.
`
`LEGAL STANDARD
`
`A renewed motion for judgment as a matter of law under Rule 50(b) may be granted only
`
`“if, viewing the evidence in the light most favorable to the nonmovant and giving it the
`
`advantage of every fair and reasonable inference, there is insufficient evidence from which a jury
`
`reasonably could find liability.” EMC Corp. v. Zerto, Inc., C.A. No. 12-956 (GMS), 2016 WL
`
`1291757, at *2 (D. Del. Mar. 31, 2016) (citing Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153,
`
`1166 (3d Cir. 1993)); see also Grazier ex rel. White v. City of Philadelphia, 328 F.3d 120, 123
`
`(3d Cir. 2003) (“A district court should grant [JMOL] only if, viewing all the evidence in favor
`
`of the nonmoving party, no reasonable jury could [return a verdict in the nonmovant’s favor].”).
`
`“In assessing the sufficiency of the evidence, the court must give the non-moving party,
`
`‘as [the] verdict winner, the benefit of all logical inferences that could be drawn from the
`
`evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the
`
`record in the light most favorable to him.’” Invista N. Am. S.A.R.L. v. M & G USA Corp., 35
`
`F.Supp.3d 583, 592 (D. Del. 2014) (quoting Williamson v. Consol. Rail Corp., 926 F.2d 1344,
`
`1348 (3d Cir. 1991)). Although a court considering a Rule 50 motion should “review all of the
`
`evidence in the record,” it must not make “credibility determinations or weigh the evidence” and
`
`
`1
`The jury found that 14 of IMC’s Defender products infringed each of Claims 1, 2, 7, 8,
`14, 15, 21, 23, 24, 27, and 28 (the “Asserted Claims”) of the ’047 Patent: the Defender 2000,
`3000, Elite, Elite30, Elite200, Elite 300, Basic, Basic+, DualTrust, V2, HDD, SSD, HDD300,
`and SSD300 products (the “Infringing IMC Products”).
`
`2
`
`PayPal Ex. 1030, p. 6
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 7 of 25 PageID #: 2631
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`“must disregard all evidence favorable to the moving party that the jury is not required to
`
`believe.” Reeves v. Sanderson Plumbing Prod., Inc., 530 U.S. 133, 150-51 (2000). Moreover,
`
`“Courts grant JMOL for the party bearing the burden of proof only in extreme cases, when the
`
`party bearing the burden of proof has established its case by evidence that the jury would not be
`
`at liberty to disbelieve and the only reasonable conclusion is in its favor.” Masimo Corp. v.
`
`Philips Elec. N. Am. Corp., C.A. No. 09-80-LPS, 2015 WL 2379485, at *6 (D. Del. May 18,
`
`2015) (quoting Mentor H/S, Inc. v. Med. Device All., Inc., 244 F.3d 1365, 1375 (Fed. Cir. 2001)).
`
`Importantly, “‘[s]ince the post-submission [Rule 50(b)] motion is nothing more than a
`
`renewal of the earlier [Rule 50(a)] motion,’ however, the party may not raise any new issue that
`
`she did not raise in her pre-verdict motion.” In re Prosser, 534 Fed. App’x. 126, 131 (3d Cir.
`
`2013) (quoting 9B Charles Wright & Arthur Miller, Fed. Prac. & Proc. Civ. § 2537 (3d ed.
`
`2013)); see also Fed. R. Civ. P. 50 (Rule 50(a) motion must “specify the judgment sought and
`
`the law and facts that entitle the movant to the judgment,” and after the jury returns its verdict,
`
`“the [Rule 50(a)] movant may file a renewed motion for judgment as a matter of law.”).2
`
`Finally, motions for new trial on the ground that “the verdict is against the weight of the
`
`evidence are proper only when the record shows that the jury’s verdict resulted in a miscarriage
`
`of justice or where the verdict, on the record, cries out to be overturned or shocks our
`
`conscience.” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1203 (Fed. Cir. 2010)
`
`(quoting Williamson, 926 F.2d at 1353).
`
`V.
`
`ARGUMENT
`
`A.
`
`IMC’s Motion is Based on Arguments It Has Waived
`
`In its Rule 50(a) motion at the close of IOENGINE’s case-in-chief, IMC moved for
`
`judgment as a matter of law on two issues only: non-infringement for specific, limited reasons;
`
`2
`Unless otherwise noted, all emphasis is added.
`
`3
`
`PayPal Ex. 1030, p. 7
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 8 of 25 PageID #: 2632
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`and IOENGINE’s alleged failure to present a damages theory. See Tr. 680:9-681:21; D.I. 155.
`
`IMC then “renew[ed]” this same motion at the close of all evidence. See Tr. 1049:9-10 (“We
`
`would just renew our [Rule 50(a)] motion, Judge.”). Accordingly, IMC never moved for JMOL
`
`on any validity issues “before the case [was] submitted to the jury.” Fed. R. Civ. P. 50(a)(2). It
`
`is black-letter law that any Rule 50(b) motion by IMC is limited to the two grounds specifically
`
`raised in its Rule 50(a) motion and that all other issues have been waived—IMC cannot now
`
`“renew” in a Rule 50(b) context what it never raised under Rule 50(a). See Lightning, 4 F.3d at
`
`1173 (“Rule 50(b) [motion] must be preceded by a Rule 50(a) motion sufficiently specific to
`
`afford the party against whom the motion is directed with an opportunity to cure possible defects
`
`in proof which otherwise might make its case legally insufficient.” (emphasis in original)).
`
`IMC’s Rule 50(b) motion raises four grounds for JMOL, none of which were the subject
`
`of any Rule 50(a) motion, and all of which have therefore been waived: i) that the Asserted
`
`Claims are invalid over Genske; ii) that the Asserted Claims are not enabled; iii) that there was
`
`insufficient direct evidence of third program code; and iv) that the claim term “when” carries a
`
`meaning other than its plain and ordinary meaning. See Lightning, 4 F.3d at 1173. (Rule 50(a)
`
`motion directed to proximate cause did not support Rule 50(b) motion on foreseeability); see
`
`also Prosser, 534 Fed. App’x. at 131. Further, IMC’s motion, in the alternative, for a new trial
`
`under Rule 59(a) sets out no basis for a new trial distinct from its Rule 50(b) analysis—IMC has
`
`collapsed the Rule 59(a) inquiry into the question about the sufficiency of the evidence under
`
`Rule 50(b), which cannot alone meet the standard required for a new trial. Finjan, 626 F.3d at
`
`1203; see also Invista, 35 F.Supp.3d. at 607 (denying a motion for a new trial for the same
`
`reasons for denying JMOL where “Defendants’ request [was] premised on the same arguments
`
`as its renewed motion for JMOL”). Accordingly, IMC’s Motion should be denied in all respects.
`
`4
`
`PayPal Ex. 1030, p. 8
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 9 of 25 PageID #: 2633
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`
`B.
`
`The Jury’s Verdict That the Asserted Claims Are Not Invalid Over Genske
`Should Not Be Disturbed
`
`IMC’s Motion on Genske argues that there is substantial evidence in the record to support
`
`a jury finding of invalidity. Mot. at 3 (“substantial evidence should support overturning the jury
`
`verdict.”); Mot. at 15 (“A reasonable jury would have concluded…”). But this is not the correct
`
`standard under Rule 50(b). “[T]he burden of establishing invalidity of a patent . . . shall rest on
`
`the party asserting such invalidity” and the defense must be “proved by clear and convincing
`
`evidence.” Microsoft Corp. v. i4i Ltd. P’Ship, 564 U.S. 91, 95 (2011). Thus, to prevail on its
`
`Motion, IMC must establish that no reasonable jury could have concluded—as the empaneled
`
`jury in fact did—that IMC failed to meet its burden of proving by clear and convincing evidence
`
`that Genske discloses each and every limitation of the Asserted Claims. See Abbott Labs. v.
`
`Syntron Bioresearch, Inc., 334 F.3d 1343, 1357 (Fed. Cir. 2003); Masimo, 2015 WL 2379485, at
`
`*6 (“Courts grant JMOL for the party bearing the burden of proof only in extreme cases . . . .”).
`
`The question is not whether a reasonable jury would have had substantial evidence to find in
`
`IMC’s favor; the question is whether no reasonable jury could have decided in IOENGINE’s
`
`favor. See Abbott, 334 F.3d at 1357 (“[Defendant] failed to prove that, in light of the
`
`presumption of validity, no reasonable jury could have decided that [Defendant] failed to prove
`
`by clear and convincing evidence that the claims are invalid . . . .”).
`
`Moreover, in order to meet its burden on JMOL, IMC must “specify . . . the law and facts
`
`that entitle [it] to [JMOL].” Fed. R. Civ. P. 50(a)(2). Instead, IMC merely asserts in conclusory
`
`fashion that “Dr. Madisetti provided a detailed analysis explaining why and how Genske
`
`discloses all elements of each asserted claim,” and cites a block of trial transcript spanning nearly
`
`thirty pages. Mot. at 15. IMC’s conclusory, block citation to address eleven asserted claims,
`
`with multiple elements and sub-elements, demonstrates a failure to identify, much less specify,
`
`5
`
`PayPal Ex. 1030, p. 9
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 10 of 25 PageID #: 2634
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`
`its position regarding the evidence presented at trial. See id.; see also Varlesi v. Wayne State
`
`Univ., No. 10-14793, 2014 WL 2864690, at *7-8 (E.D. Mich. June 24, 2014) (denying JMOL
`
`where movants cited “their trial brief, their motion for summary judgement and generally the
`
`evidence at trial” in part because “[t]he Court is under no duty to sift through the record in search
`
`of evidence or argument in support of a party’s position” (citing U.S. v. Dunkel, 927 F.2d 955,
`
`956 (7th Cir. 1991) (Posner, J., Easterbrook, J., Dumbauld, J.) (“Judges are not [required to]
`
`hunt[] for truffles buried in briefs.”)).3 At most, IMC’s block citation amounts to argument that
`
`substantial evidence could have supported a finding in its favor; this falls far short of establishing
`
`that no reasonable jury could have reached the opposite conclusion—as the jury here did.
`
`1.
`
`Substantial Evidence Supports the Jury’s Finding that IMC Failed to Meet
`Its High Burden to Prove Invalidity Over Genske
`
`a.
`
`IMC Conflates Location of Processors and Location of Memory
`
`Contrary to IMC’s assertion, Dr. Madisetti’s testimony on Genske was not “unrebutted.”
`
`See Mot. at 3,17. And Dr. Butler’s rebuttal testimony was not about which processor executes
`
`program code, but rather which memory it is run from when executed (as the claims require). Dr.
`
`Butler made clear that all three claimed program codes, regardless of whether they are executed
`
`by the portable device processor or the terminal processor, are executed from the portable device
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`memory because, according to the language of the claims, the “program code [is] stored
`
`thereon . . . when executed.” See, e.g., Claim 1; Markman Order, D.I. 67 at 3 n.4 (“When the
`
`words are not excerpted and the claim is read in its entirety: ‘a memory having executable
`
`program code stored thereon,’ there is no need to guess at what thereon refers to: it refers back to
`
`3
`IMC should not be allowed to correct these mistakes in reply. See Teleconference Sys. v.
`Proctor & Gamble Pharm., Inc., 676 F. Supp. 2d 321, 331 n.13 (D. Del. 2009) (refusing to
`consider argument “only made in general terms, and primarily in reply” because “[i]ssues raised
`for the first time in a reply brief should not be heard”); see also Abbott Labs. v. Syntron
`Bioresearch, Inc., No. 98-CV-2359 H (POR), 2002 WL 32068939, at *23 (S.D. Cal. Jan. 11,
`2002), aff’d in part, rev’d in part, 334 F.3d 1343 (Fed. Cir. 2003).
`
`6
`
`PayPal Ex. 1030, p. 10
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 11 of 25 PageID #: 2635
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`the word memory.”). This distinction is important: unlike the claimed executable program code
`
`that is stored on and run from the portable device memory, the jury heard that the application in
`
`Genske was run from the terminal memory because it is “upload[ed] and install[ed]” there. See
`
`Tr. 1012:3-1014:10 (Butler); Ex. A4 (Butler Validity Slides, excerpted) at 10-15.5
`
`Finally, IMC mistakenly argues that Dr. Butler’s rebuttal focused only on “portions of
`
`Genske unrelated to IMC’s invalidity proof.” See Mot. at 16, 3. But IMC points to no authority
`
`suggesting that IOENGINE’s explanation of why Genske does not invalidate must line up with
`
`IMC’s failed attempt to prove that it does. Dr. Butler demonstrated that IMC’s analysis was
`
`based on flawed reasoning that ignored an element of the Asserted Claims—and, therefore, that
`
`IMC failed to meet its burden of proof.
`
`b.
`
`IMC’s Reliance on Generic “Program Code” in Genske Cannot
`Anticipate the Specific Program Code of the Asserted Claims
`
`IMC’s Motion conflates ‘program code’ generally with the three very specific program
`
`codes required by the Asserted Claims. In doing so, IMC points to Dr. Madisetti’s testimony
`
`that paragraph [0333] of Genske “explicitly describes a scenario where program code must be
`
`running on the portable camera device and communicates with the network.” Mot. at 16. IMC
`
`also cites to Dr. Butler’s cross examination testimony that only certain code is installed from the
`
`camera on the terminal. Id. But the mere fact that some code may run on the camera in Genske
`
`does not prove by clear and convincing evidence that it meets the requirements of the specific
`
`first, second, or third program code of the Asserted Claims, much less that Genske discloses all
`
`three claimed program codes (nor does IMC point to anything in the record that proves as much).
`
`4
`Citations to demonstrative exhibits presented at trial are to the Declaration of Gregory
`Chuebon, filed herewith.
`5
`IMC attributes to Dr. Butler the position that “[Genske’s] program code is run exclusively
`from the [phone].” Mot. at 16. But Dr. Butler did not testify that all of Genske’s code is run
`from the phone; he testified that the specific Genske application that Dr. Madisetti argued
`qualified as the claimed program codes was run from the phone. See infra Section V.B.2.b.
`
`7
`
`PayPal Ex. 1030, p. 11
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 12 of 25 PageID #: 2636
`
`
`For example, as explained above, Dr. Madisetti did not show that Genske discloses three
`
`program codes stored on and run from the portable device memory. Further, the third program
`
`code of the Asserted Claims must be executed by the portable device processor “in response to a
`
`communication resulting from user interaction with the interactive user interface” where “the
`
`interactive user interface” is the interactive user interface that the claimed first program code
`
`caused to be presented on the terminal. See, e.g., Claim 1, at (c)(1), (3). Instead, Dr. Madisetti
`
`simply relied on generic network communications that were not tied to user interaction with the
`
`interactive user interface presented on the phone. Indeed, Dr. Madisetti’s only evidence of an
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`interactive user interface in Genske related to the “message box” described in paragraphs [0218]
`
`to [0223] of Genske. See Tr. 912:18-913:1, 916:17-23 (Madisetti). However, Dr. Madisetti did
`
`not explain how this message box has any relation to the network communications of the claims.
`
`And IMC cannot show that no reasonable jury could have decided in IOENGINE’s favor where
`
`Dr. Madisetti failed to prove that Genske met each and every element of the Asserted Claims.
`
`C.
`
`The Jury’s Verdict of No Invalidity on Enablement Should Not Be Disturbed
`
`IMC never raised enablement in any Rule 50(a) motion; therefore, IMC has waived the
`
`ability to move on this issue and IMC’s Motion should be denied. See supra Section V.A.
`
`Further, IMC’s argument on enablement reverses the applicable burden of proof. IMC
`
`focuses on IOENGINE’s supposed failure to demonstrate that the Asserted Claims are enabled—
`
`a burden that simply does not exist. Issued patents are presumed to be enabled; consequently,
`
`IMC bore the burden of proving, by clear and convincing evidence, that the Asserted Claims are
`
`not enabled. See Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir.
`
`2012); S.O.I.TEC Silicon On Insulator Techs., S.A. v. MEMC Elec. Materials, Inc., No. CIV. 08-
`
`292-SLR, 2011 WL 2748725, at *19 (D. Del. July 13, 2011) (“[I]t was not incumbent upon
`
`[plaintiff] to prove the enablement of its claim. Although [defendant] cites to evidence
`
`8
`
`PayPal Ex. 1030, p. 12
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 13 of 25 PageID #: 2637
`
`
`supporting a finding of nonenablement, the jury could have found that [defendant] did not meet
`
`its high burden of proof on this record.”); see also Masimo, 2015 WL 2379485, at *6 (“Courts
`
`grant JMOL for the party bearing the burden of proof only in extreme cases . . . .”).
`
`1.
`
`Substantial Evidence Supports the Jury’s Verdict of Enablement
`
`IMC attempts (as it did at trial) to stretch the ‘speak when spoken to’ concept beyond all
`
`recognition. Mot. at 18. According to IMC’s Motion, Dr. Madisetti explained that “the [USB]
`
`standard only discussed communications from the host computer to the portable device and not
`
`the other direction.” Id. But the notion that the USB standard does not discuss communications
`
`in “the other direction” (i.e., from the portable device to the host computer) is nonsense; even
`
`according to IMC, the USB protocol is “speak when spoken to,” not ‘do not respond even when
`
`spoken to.’ Moreover, the claim language of the ’047 Patent clearly contemplates causation
`
`within the context of a “speak when spoken to” framework: the claimed third program code is
`
`executed by the portable device processor “in response to a communication [e.g., from the
`
`terminal] resulting from user interaction with the interactive user interface.” See, e.g., Claim 1,
`
`at (c)(3); Tr. 1120:10-22. Accordingly, Dr. Butler explained how the claimed portable device
`
`can cause a communication to be transmitted in a ‘speak when spoken to’ environment. See,
`
`e.g., Tr. 445:15-446:3 (Butler). Dr. Madisetti’s testimony attempted to read additional
`
`limitations into the claims, arguing that “cause” must mean “initiate” or “control,” and requires a
`
`direct electrical connection. See Tr. 942:19-21 (“The USB device would not take charge and
`
`ask the host or the computer to send something to a remote node.”), 942:3-5 (“ . . . USB devices
`
`were controlled by the computer, not the other way around.”) (Madisetti). IMC cannot establish
`
`that no reasonable jury could have refused to credit Dr. Madisetti’s testimony, which injected
`
`elements not in the claims and was inconsistent with the plain meaning of “cause.”
`
`9
`
`PayPal Ex. 1030, p. 13
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01571-GMS Document 178 Filed 03/15/17 Page 14 of 25 PageID #: 2638
`
`
`2.
`
`Dr. Butler’s Rebuttal was More than Sufficient to Show Enablement
`
`IMC alleges—incorrectly—that Dr. Madisetti’s testimony on enablement was unrebutted,
`
`and cites to Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1072 (Fed. Cir. 2016), for the
`
`proposition that unrebutted expert testimony requires JMOL. Mot. at 20. But IMC improperly
`
`relies upon a dissenting opinion in that case. See id. at 1063-74. In Apple, the Federal Circuit,
`
`sitting en banc, affirmed and reinstated the district court’s denial of JMOL because the defendant
`
`“failed to establish by clear and convincing evidence that [the asserted claim] would have been
`
`obvious.” Id. at 1062. Contrary to IMC’s suggestion, even expert testimony that may be
`
`characterized as “unrebutted” is insufficient to sustain JMOL where the movant fails to show that
`
`no reasonable jury could have reached the decision the trial jury, in fact, reached. See id.
`
`More fundamentally, Dr. Madisetti’s testimony was not unrebutted—Dr. Butler offered
`
`ample rebuttal testimony on enablement.6 IMC focuses on Dr. Butler’s discussion of the access
`
`terminal module7 and argues that it cannot enable the claimed third program code because the
`
`“access terminal module 1021 [is] running on an access terminal.” See Mot. at 19 (citing ’047
`
`Patent at 28:39-41). But IMC omits qualifying language preceding its citation, see ’047 Patent at
`
`28:38-41 (“Most frequently. . . .”), and also ignores the in-depth description, which explains that
`
`“[i]n an alternative embodiment, a processor independent approach is taken . . . so that the
`
`access terminal module will run on multiple platforms.” ’047 Patent at 28:67-29:5.8 These
`
`disclosures are consistent with the claims, which contemplate that certain program code can be
`
`6
`Notably, IMC’s Motion points to Dr. Butler’s testimony on written description, see Mot.
`at 19 (citing Trial Tr. 1017:2-19 (Butler)), and entirely ignores Dr. Butler’s testimony on
`enablement. See Trial Tr. 1023:21-1024:16; Ex. A at 29.
`7
`IMC conflates the term “access terminal,” which is, for example, a computer, with th