Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 1 of 17 PageID #: 12093
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`REMBRANDT WIRELESS TECHNOLOGIES,
`LP,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`and SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
`
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 2:13-cv-00213-JRG-RSP
`
`SAMSUNG DEFENDANTS’ REPLY TO RULE 50(b) RENEWED MOTION FOR
`JUDGMENT AS A MATTER OF LAW AND/OR RULE 59(a) MOTION FOR NEW
`TRIAL ON LIABILITY ISSUES
`
`Apple Exhibit 1017
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00033
`Page 00001
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`

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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 2 of 17 PageID #: 12094
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`REMBRANDT’S STATEMENT OF LEGAL STANDARDS IS MISLEADING ................ 1
`
`REMBRANDT FAILS TO CITE EVIDENCE TO REBUT SAMSUNG’S PRIMA
`FACIE OBVIOUSNESS CASE ....................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`There Is No Evidence Rebutting the Prior Art’s Disclosure of “Different
`Types” of Modulation Methods ........................................................................................... 1
`
`Rembrandt Mischaracterizes the Evidence on Motivation to Combine and
`Relies on Attorney Argument ............................................................................................... 2
`
`Samsung Properly Established the Prior Art’s Disclosure of the “Reversion”
`Limitation Recited in Claims 2 and 59 of the ‘580 Patent ................................................ 5
`
`There Is No Evidence Rebutting the Prior Art’s Disclosure of the Address
`Placement Limitation of Claim 21 of the ‘228 Patent ....................................................... 6
`
`Rembrandt’s Evidence of Secondary Considerations Is Insufficient to
`Overcome Samsung’s Prima Facie Case ............................................................................... 7
`
`REMBRANDT FURTHER HIGHLIGHTS THE ERRONEOUS
`CONSTRUCTION OF “DIFFERENT TYPES” OF MODULATION
`METHODS .......................................................................................................................................... 8
`
`REMBRANDT’S POST-HOC JUSTIFICATION FOR ITS “AD HOMINEM”
`ATTACKS IS INADEQUATE ........................................................................................................ 9
`
`REMBRANDT’S WITHDRAWAL OF CLAIMS ON THE EVE OF TRIAL
`WARRANTS JMOL OF NON-INFRINGEMENT AS TO THOSE CLAIMS ................... 10
`
`VI.
`
`CONCLUSION ................................................................................................................................. 10
`
`
`
`i
`
`IPR2020-00033 Page 00002
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 3 of 17 PageID #: 12095
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`ABT Sys. v. Emerson Elec. Co.,
`– F.3d at –, 2015 WL 4924160 (Fed. Cir. Aug. 19, 2015) ........................................................ 1, 5, 7, 8
`
`Agrizap, Inc. v. Woodstream Corp.,
`520 F.3d 1337 (Fed. Cir. 2008).................................................................................................................. 1
`
`Alcon Research Ltd. v. Barr Laboratories, Inc.,
`745 F.3d 1180 (Fed. Cir. 2014)................................................................................................................ 10
`
`Asyst Techs., Inc. v. Emtrak, Inc.,
`544 F.3d 1310 (Fed. Cir. 2008).............................................................................................................. 1, 5
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009).................................................................................................................. 3
`
`Ecolab, Inc. v. FMC Corp.,
`569 F.3d 1335 (Fed. Cir. 2009).............................................................................................................. 1, 5
`
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011).................................................................................................................. 8
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012).................................................................................................................. 4
`
`In re Nomiya,
`509 F.2d 566 (CCPA 1975) ........................................................................................................................ 6
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) .................................................................................................................... 9
`
`Interactive Gift Express, Inc. v. Compuserve Inc.,
`256 F.3d 1323 (Fed. Cir. 2003).................................................................................................................. 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..................................................................................................................................... 4
`
`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (Fed. Cir. 2015).................................................................................................................. 1
`
`New Trend Foods, LLC v. Kato Suchi Rest.,
`No. M-06-330, 2008 WL 901568 (S.D. Tex. Mar. 31, 2008) .............................................................. 10
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006).............................................................................................................. 7, 8
`
`ii
`
`IPR2020-00033 Page 00003
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 4 of 17 PageID #: 12096
`
`Seachange Int’l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005).................................................................................................................. 9
`
`Soverain Software LLC v. Newegg Inc.,
`705 F.3d 1333 (Fed. Cir. 2013),
`rev’g 836 F. Supp. 2d 462 (E.D. Tex. 2010) .................................................................................... 1, 7, 8
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010).................................................................................................................. 7
`
`STATUTES
`
`Fed. R. Civ. P.
`50(b) ............................................................................................................................................................ 10
`59(a) ............................................................................................................................................................... 1
`
`iii
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 5 of 17 PageID #: 12097
`
`TABLE OF ABBREVIATIONS
`
`
`
`Abbreviation
`
`BI
`
`CC Opp.
`
`CC Tr.
`
`DI
`
`DX
`
`RI
`
`Description
`
`Samsung Defendants’ Rules 50(b) Renewed Motion for Judgment as a Matter of
`Law and/or Rule 59(a) Motion for New Trial on Liability Issues, filed August 7,
`2015, Dkt. 329
`
`Defendants’ Joint Claim Construction Response Brief, filed May 1, 2014, Dkt.
`102
`
`Transcript of Markman Hearing held May 30, 2014 before Magistrate Judge
`Payne, Dkt. 111
`
`Docket Item
`
`Defendants’ Trial Exhibit
`
`Rembrandt’s Response in Opposition to Samsung Defendants’ Rule 50(b)
`Renewed Motion for Judgment as a Matter of Law and/or Rule 59(a) Motion
`for New Trial on Liability Issues, filed September 7, 2015, Dkt. 335
`
`iv
`
`IPR2020-00033 Page 00005
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 6 of 17 PageID #: 12098
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`Samsung presented clear and convincing evidence that the asserted claims are invalid as
`
`obvious. Rembrandt fails to identify any evidence in the record – let alone substantial evidence – on
`
`which the jury could have based its verdict and, as a result, JMOL is warranted. In the alternative,
`
`the Court’s incorrect instruction to the jury on the meaning of “different types” of modulation
`
`methods and Rembrandt’s personal attacks against Samsung’s lawyers justify a new trial. Rembrandt
`
`fails to provide any compelling reason why these errors in law and procedure were not material and
`
`prejudicial. Finally, Rembrandt’s argument that Samsung waived its right to JMOL of non-
`
`infringement on dropped claims is based on a misreading of the law.
`
`I.
`
`REMBRANDT’S STATEMENT OF LEGAL STANDARDS IS MISLEADING
`
`Rembrandt incorrectly asserts that JMOL of invalidity requires proof “to a virtual certainty.”
`
`RI 6. The only case cited by Rembrandt for this proposition was reversed in relevant part on appeal.
`
`See Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1339-41 (Fed. Cir. 2013), rev’g 836 F. Supp. 2d
`
`462 (E.D. Tex. 2010). The Federal Circuit is clear that JMOL of invalidity is proper where, as here,
`
`the patentee has not provided substantial evidence to rebut a prima facie case of obviousness. Id.1
`
`Rembrandt’s assertion that there must be “a complete absence of evidence” to grant a new trial is
`
`also incorrect because that is an appellate standard. A district court can grant a new trial “for any
`
`reason for which a new trial has heretofore been granted.” Fed. R. Civ. P. 59(a); see also BI 2-3.
`
`II. REMBRANDT FAILS TO CITE EVIDENCE TO REBUT SAMSUNG’S PRIMA
`FACIE OBVIOUSNESS CASE
`
`A.
`
`There Is No Evidence Rebutting the Prior Art’s Disclosure of “Different
`Types” of Modulation Methods
`
`Samsung presented clear and convincing evidence that the Lucent Patent’s DBPSK and
`
`
`1 See also ABT Sys. v. Emerson Elec. Co., – F.3d at –, 2015 WL 4924160, at *10 (Fed. Cir. Aug. 19,
`2015); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172-73 (Fed. Cir. 2015); Ecolab, Inc. v.
`FMC Corp., 569 F.3d 1335, 1348-50 (Fed. Cir. 2009); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310,
`1313-17 (Fed. Cir. 2008); Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1343-44 (Fed. Cir. 2008).
`
`
`
`IPR2020-00033 Page 00006
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 7 of 17 PageID #: 12099
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`PPM/DQPSK are “different types” of modulation methods under the Court’s construction. DI296
`
`(Goodman) 3:22-4:12, 16:6-19:21. There was no evidence to the contrary.
`
`The testimony of Dr. Morrow cited by Rembrandt (RI 8) did not provide a basis for the jury
`
`to conclude that the Lucent Patent does not disclose this element. That testimony related solely to
`
`whether the modulation methods in Bluetooth – GFSK and DPSK – constitute “different types” of
`
`modulation methods. DI 291 (Morrow) 18:13-24. Dr. Morrow testified that he believes that GFSK
`
`and DPSK are in different families because “there are no overlapping characteristics between these
`
`two modulation types.” Id. But Dr. Morrow’s opinion that GFSK and DPSK are in “differen t
`
`families” because they have no overlapping characteristic, does not lead to the conclusion that
`
`DBPSK and PPM/DQPSK are not in “different families” because they have an overlapping
`
`characteristic. Dr. Morrow did not testify – as Rembrandt incorrectly asserts (RI 8) – that two
`
`modulation methods cannot be in “different families” if they have an overlapping characteristic. Dr.
`
`Goodman provided the only testimony at trial regarding the modulation methods in the Lucent
`
`Patent. There was, simply, no basis for the jury to credit one witness over the other and no evidence
`
`from which a jury could reasonably conclude that the Lucent Patent does not disclose “different
`
`types” of modulation methods.
`
`Even if Dr. Morrow had testified as Rembrandt asserts, Rembrandt’s argument is premised
`
`on a requirement of the Court’s construction that does not exist. The Court’s construction of
`
`“different types” does not require that the modulation methods have no overlapping characteristics.
`
`Such a requirement is not found in the claims or the Court’s construction, and is not supported by
`
`the intrinsic evidence. See BI 23-28; infra pp. 8-10.
`
`B.
`
`Rembrandt Mischaracterizes the Evidence on Motivation to Combine and
`Relies on Attorney Argument
`
`Dr. Goodman’s testimony and the plain language in the Upender article provide clear and
`
`convincing evidence that a POSITA would have been motivated to combine the well-known
`
`2
`
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 8 of 17 PageID #: 12100
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`master/slave protocol with the teachings of the Lucent Patent.2 This evidence was unrebutted.
`
`Rembrandt’s argument that Upender teaches away from such a combination fails as a matter
`
`of law. The Federal Circuit is clear that “[a] reference does not teach away[] . . . if it merely
`
`expresses a general preference for an alternative invention.” DePuy Spine, Inc. v. Medtronic Sofamor
`
`Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); see BI 20-21 (citing cases). Upender, on its face,
`
`discusses “tradeoffs” of various protocols and states that the reservation CSMA/CA protocol –
`
`despite its own limitations – is a “good choice” for the authors’ particular application.3 DX1190 at
`
`8-9. However, the article explicitly encourages consideration of different protocols, including
`
`master/slave, stating “your application will no doubt have characteristics that are somewhat
`
`different than ours,” and the discussion of tradeoffs “should allow you to select the best protocol to
`
`match your needs.” Id. at 9. The excerpts from Dr. Goodman’s cross-examination cited by
`
`Rembrandt do not support Rembrandt’s spin on Upender; they simply reflect Dr. Goodman’s
`
`acknowledgment of certain uncontested quotes in Upender. RI 10-11. There is no dispute that
`
`Upender indicates that the use of polling involves tradeoffs and concludes that reservation
`
`CSMA/CA is a “good choice” for the authors’ particular application. But even if Upender favored
`
`an alternative, that does not amount to discouraging investigation into another. As Dr. Goodman
`
`
`2 Rembrandt incorrectly argues that Samsung failed to provide evidence that it would have been
`obvious to combine all five prior art references discussed by Dr. Goodman. RI 17 & n.12.
`Samsung’s evidence of obviousness only requires combining the Lucent Patent and the Admitted
`Prior Art, which together disclose all elements of the asserted claims. The three additional
`references – the Lucent Press Release, the Motorola Patent, and Upender – serve as further evidence
`of obviousness. See BI 10-11, 13, 14, 17. Moreover, Dr. Goodman provided reasons why a
`POSITA would have been motivated to combine each of these references. DI296 (Goodman) 9:8-
`10:22, 11:6-12:4, 30:22-32:1, 33:4-22. That evidence was unrebutted, and there is no basis at all in
`the record for Rembrandt’s arguments to the contrary. See, .e.g., RI 17 n.12.
`
`3 Contrary to Rembrandt’s argument (RI 11), the unrebutted evidence is that the Lucent Patent
`does not use the same CSMA/CA protocol that is allegedly ‘favored” by Upender. See BI 15 n.11;
`DI296 (Goodman) 64:22-25. Thus, even if Upender favored a protocol – it did not – that would
`have no bearing on the protocol used in the Lucent Patent.
`
`3
`
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 9 of 17 PageID #: 12101
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`explained, “the whole [Upender] article is about” the tradeoffs of various media access protocols
`
`and choosing one based on such tradeoffs, which is “at the heart of engineering.” DI296
`
`(Goodman) 92:6-93:4. Such considerations, even in light of “better alternatives,” do not constitute
`
`teaching away. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
`
`Rembrandt’s remaining arguments about motivation to combine are unsupported, or flatly
`
`contradicted, by the evidence. There is no evidence for Rembrandt’s attorney argument that the
`
`“flexibility for advanced systems” mentioned in Upender would have been an overriding concern
`
`that clearly discouraged a POSITA from using master/slave. RI 11-12. There is also no evidence
`
`that the Lucent Patent is the type of “advanced system” referred to in Upender. And contrary to
`
`Rembrandt’s assertion that Upender rates master/slave’s simplicity and determinacy as “neutral” (RI
`
`11 n.8), Upender expressly states that master/slave and two other protocols – not including
`
`CSMA/CA – “are simple” and that Upender’s Table 1 shows “[g]ood” determinacy for
`
`master/slave. DX1190 at 8-9. Upender’s recognition that CSMA/CA also has good determinacy
`
`does not detract from the evidence that a POSITA would have faced a finite number of options
`
`with known advantages and disadvantages to pursue predictable results. See BI 15-16.
`
`Rembrandt attempts to obfuscate a straightforward combination of the Lucent Patent’s
`
`multiple modulation methods with the well-known master/slave protocol. Dr. Goodman testified
`
`that the advantages of using multiple modulation methods were known (as evidenced by the Lucent
`
`Patent), and the advantages of using the popular, simple, and deterministic master/slave protocol (as
`
`demonstrated by the knowledge of a POSITA and Upender) were also known. BI 13-16. Dr.
`
`Goodman provided testimony that a POSITA would have combined these teachings, which all
`
`related to the field of communications systems. See, e.g., DI296 (Goodman) 7:14-23, 8:17-9:7, 10:7-
`
`22, 11:17-12:4; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The unrebutted evidence
`
`thus shows there was an “apparent reason to combine the known elements in the fashion claimed by
`
`4
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 10 of 17 PageID #: 12102
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`the patent at issue” from the known advantages of known elements to achieve predictable results.
`
`Ecolab, 569 F.3d at 1350; see also Asyst, 544 F.3d at 1315; ABT, 2015 WL 4924160, at *9.
`
`C.
`
`Samsung Properly Established the Prior Art’s Disclosure of the “Reversion”
`Limitation Recited in Claims 2 and 59 of the ‘580 Patent4
`
`Samsung also made a prima facie showing that the “reversion” limitation of ‘580 patent claims
`
`2 and 59 is disclosed by the Lucent Patent. This too was unrebutted.
`
`In the testimony that Rembrandt points to, Dr. Goodman explained that the “third
`
`sequence” recited in claim 2 of the ‘580 patent is met by the Lucent Patent’s “signal and service
`
`fields” when sent after the transmission of the first two sequences and, furthermore, those fields are
`
`in a “later packet [that] doesn’t change modulation methods.” DI296 (Goodman) 22:18-23:2.
`
`Although this testimony alone is sufficient, Rembrandt is incorrect that this is the “sum total” of Dr.
`
`Goodman’s testimony. Dr. Goodman also testified that the Lucent Patent discloses sending
`
`multiple packets and that the signal and service fields – found in the “header” portion of each packet
`
`– are always “transmitted in the first modulation method.” Id. (Goodman) 4:13-4:22, 5:21-6:5,
`
`20:19-21:3, 21:7-11, 21:25-22:7, 22:22-23, 24:11-13; see also DX1192 at 1:33-43 (disclosing
`
`transmission of multiple messages), 2:19-25, 3:56-58. Dr. Goodman further explained that the data
`
`portion of each packet, sent after the header, may be sent at either the first modulation method or a
`
`different modulation method. DI296 (Goodman) 4:13-22, 5:21-6:5, 20:12-21:3, 22:9-16; see also
`
`DX1192 at 1:40-43, 2:40-51, 3:59-62. Dr. Goodman explained that the signal and service fields
`
`contain “[a]ll of the information” necessary to indicate the modulation method of a subsequent data
`
`portion, so in the “later packet” that has both the header and data portions in the first modulation
`
`method, the signal and service fields indicate that communication has reverted to the first
`
`modulation method. DI296 (Goodman) 4:23-5:15, 5:18-6:5, 23:3-10; see DX1192 at 1:40-42, 3:59-62,
`
`4 Rembrandt’s reliance on the Patent Trial and Appeal Board’s non-final decisions is unavailing.
`Those decisions are not in evidence and were not made on a full record before the Board.
`
`5
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 11 of 17 PageID #: 12103
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`4:4-11, 6:5-26, 7:41-51, Fig. 7. Consistent with that testimony, Dr. Goodman also explained the
`
`prior art’s disclosure of the similar “reversion” limitation recited in ‘580 patent claim 59. DI296
`
`(Goodman) 25:8-22. Together, that evidence establishes a prima facie showing that the “reversion”
`
`limitation is found in the prior art. Rembrandt did not cross-examine Dr. Goodman on this
`
`evidence, offer its own evidence, or raise this issue during closing statements.
`
`D.
`
`There Is No Evidence Rebutting the Prior Art’s Disclosure of the Address
`Placement Limitation of Claim 21 of the ‘228 Patent
`
`Samsung presented unrebutted evidence that the address placement limitation of ‘228 patent
`
`claim 21 is obvious in view of the Admitted Prior Art or the Motorola Patent. The patents-in-suit
`
`concede that placement of an address in the first portion of a packet was known in the art. The
`
`patents’ statement that, “[i]n a multipoint system, the address of the trib with which the master is
`
`establishing communication is also transmitted during the training interval” is squarely in the
`
`description of Figure 1. ‘580 patent at 3:62-65. There is no dispute that Figure 1 is, by the
`
`specification’s own admission, prior art.5 See id. at Fig. 1, 3:6-8, 3:40-41. And there is no evidence to
`
`support Rembrandt’s new argument that this statement reflects the inventor’s own work. See In re
`
`Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (“We see no reason why appellants’ representations in
`
`their application should not be accepted at face value as admissions that [two figures] may be
`
`considered ‘prior art’ for any purpose, including use as evidence of obviousness under [§] 103.”).
`
`Moreover, Rembrandt does not dispute that this limitation is disclosed by the Motorola
`
`Patent. Rembrandt only argues that the PTO already considered the Motorola Patent and the
`
`Motorola Patent is non-analogous art. There is no evidence, however, that the PTO considered the
`
`Motorola Patent in combination with the Lucent Patent. BI 18-19. There is also no evidence that
`
`5 Figure 8 of the ‘580 patent illustrates “an exemplary transmission according to one embodiment,”
`‘580 patent at 3:26-27, that also incorporates elements of the prior art expressly described by the
`specification, id. at Fig. 2, 3:6-10, 3:62-65, 4:4-26 (noting aspects of Figure 8 similar to prior art
`Figure 2). Dr. Goodman explained this at trial. DI296 (Goodman) 29:14-30:5.
`
`6
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`IPR2020-00033 Page 00011
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 12 of 17 PageID #: 12104
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`the Motorola Patent is non-analogous art. The Court did not instruct the jury on that issue, and
`
`Rembrandt did not present any evidence about either of the two criteria for making a non-analogous
`
`art determination. See Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). To the
`
`contrary, the evidence establishes that, like the Lucent Patent, the Motorola Patent is directed to a
`
`communications system that uses multiple modulation methods. DI296 (Goodman) 30:6-31:21.
`
`E.
`
`Rembrandt’s Evidence of Secondary Considerations Is Insufficient to
`Overcome Samsung’s Prima Facie Case
`
`There is no evidence of a nexus between Rembrandt’s purported secondary considerations
`
`and the claimed inventions. See Soverain, 705 F.3d at 1346 (insufficient evidence of nexus); Ormco
`
`Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (holding that “[e]vidence of . . .
`
`secondary considerations[] is only significant if there is a nexus”). There was also no testimony tying
`
`secondary considerations to validity. Regarding adoption of EDR in Bluetooth chips, Rembrandt
`
`has not established that any novel aspect of the claimed invention (as opposed to EDR’s inclusion in
`
`the Bluetooth standard) drove adoption. See ABT, 2015 WL 4924160, at *9 (finding that record was
`
`“lacking evidence that the alleged success . . . in the market was driven by any novel aspect of the
`
`claimed invention”). Rembrandt’s reliance on praise and long-felt need for EDR also fails because
`
`EDR includes features other than the claimed inventions. See DI291 (Morrow) 19:5-9 (“A key
`
`characteristic of [EDR] . . . is that the modulation scheme is changed within the packet.” (emphasis
`
`added)). Without evidence that the claimed inventions are coextensive with EDR, there is no basis
`
`to conclude that adoption, praise, or long-felt need for EDR was due to the claimed inventions.
`
`Moreover, because the use of multiple modulation methods was already known in prior art, any
`
`evidence of secondary considerations for that feature is not pertinent.6 See ABT, 2015 WL 4924160,
`
`
`6 Any praise of Bluetooth is even further removed, as EDR is just one of many features in the
`Bluetooth standard. See DI295 (Benner) 17:17-25. Other Bluetooth features provide the same
`benefits that EDR purportedly does. See id. (Hall) 63:7-64:24, 72:3-74:16, 79:25-80:4.
`
`7
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 13 of 17 PageID #: 12105
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`at *10 (concluding that prior art disclosures “eliminate any serious contention that there was a long-
`
`felt need for the invention claimed”); cf. Ormco, 463 F.3d at 1312 (stating that success due to feature
`
`known in prior art “is not pertinent”). Rembrandt’s reliance on the BlackBerry-Rembrandt license is
`
`also insufficient because there is no evidence that the license was attributable to the merits of the
`
`claimed invention, rather than a desire to avoid costly litigation. See ABT, 2015 WL 4924160, at *10
`
`(rejecting licenses as evidence of secondary consideration, as patentee “point[ed] to no evidence that
`
`the licenses . . . were taken based on the merits of the invention claimed”); Soverain, 705 F.3d at 1346
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`(rejecting licenses “taken to avoid the costs of litigation” as evidence of secondary consideration).
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`III. REMBRANDT FURTHER HIGHLIGHTS THE ERRONEOUS
`CONSTRUCTION OF “DIFFERENT TYPES” OF MODULATION METHODS
`
`Rembrandt does not dispute that the only three modulation methods disclosed in the
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`specification – QAM, CAP and DMT – all vary a common characteristic.7 This alone demonstrates
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`that there is no support in the specification for Rembrandt’s assertion that “different families”
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`requires modulation methods that do not vary a common characteristic. Although the provisional
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`application identifies additional modulation methods, including FSK, it does not suggest that FSK is
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`in a different family than QAM. The provisional says nothing at all about different families of
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`modulation methods. Moreover, the specification never suggests that one needs to look to the
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`provisional application to understand the meaning of “different types” of modulation methods.8
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`Rembrandt’s attempt to reconcile claims 26 and 43 of the ‘228 patent is equally unavailing.
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`That language is clear that the “first modulation method” and “second modulation method”
`
`
`7 Samsung has not waived this argument. “[P]roffering additional or new supporting arguments” for
`claim construction based on a patent specification does not violate the concerns underlying the
`doctrine of waiver. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1347 (Fed. Cir. 2003).
`
`8 “Whether and to what extent a patent application incorporates material by reference is a question
`of law,” and, “[i]n making that determination, the standard is whether one reasonably skilled in the
`art would understand the application as describing with sufficient particularity the material to be
`incorporated.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011).
`
`8
`
`IPR2020-00033 Page 00013
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 14 of 17 PageID #: 12106
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`correspond to the “at least two different types of modulation methods,” not, as Rembrandt now
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`asserts, that each of the modulation methods has two modulation methods within it.
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`Although it is not binding on the Court, the Board’s final written decision in IPR2014-00518,
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`regarding the ‘580 patent, discussed the construction of different “types” of modulation methods at
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`length and rejected Rembrandt’s proposed construction of different “families.” (Ling Decl. Ex. D at
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`7-12). The Board held that Rembrandt’s prosecution history remarks purporting to set forth a
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`definition for “type” were “anything but clear or precise.” (Id. at 8 (citing In re Paulsen, 30 F.3d 1475,
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`1480 (Fed. Cir. 1994)). It also observed that Rembrandt’s proposed construction regarding
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`“families” – which corresponds with Rembrandt’s interpretation of the Court’s construction here –
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`“is, itself, ambiguous.” (Id. at 9-11). The Board, instead, adopted Samsung’s proposed construction
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`that different “types” of modulation methods are “incompatible” modulation methods. (Id. at 12).
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`The Court’s construction constituted prejudicial error because the jury could have based its
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`invalidity verdict on a finding that the Lucent Patent (and the Lucent Press Release) does not
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`disclose “different families” of modulation methods under that construction, while finding that
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`Samsung had otherwise carried its burden on obviousness. See Seachange Int’l, Inc. v. C-COR, Inc., 413
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`F.3d 1361, 1381-82 (Fed. Cir. 2005) (reversing denial of new trial). Under such circumstances,
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`application of Samsung’s proposed construction could have resulted in a different verdict.
`
`IV. REMBRANDT’S POST-HOC JUSTIFICATION FOR ITS “AD HOMINEM”
`ATTACKS IS INADEQUATE
`
`In an effort to justify its attacks on Samsung’s counsel, Rembrandt faults Samsung for not
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`sufficiently explaining an admittedly unobjectionable demonstrative. RI 22-23. Even if Rembrandt
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`believed further explanation was necessary, this does not excuse Rembrandt’s decision to call
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`Samsung’s counsel “shameful.” 9 In light of the recurring nature of the ad hominem attacks and
`
`
`9 Rembrandt does not even address its personal attack on Samsung’s counsel during the testimony
`of Rembrandt’s damages expert.
`
`9
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`IPR2020-00033 Page 00014
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`Case 2:13-cv-00213-JRG Document 338 Filed 09/22/15 Page 15 of 17 PageID #: 12107
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`Rembrandt’s lack of a rebuttal case, the interest of substantial justice warrants a new trial.
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`V.
`
`REMBRANDT’S WITHDRAWAL OF CLAIMS ON THE EVE OF TRIAL
`WARRANTS JMOL OF NON-INFRINGEMENT AS TO THOSE CLAIMS
`
`Samsung’s renewed motion for JMOL of non-infringement of the claims that Rembrandt
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`withdrew on the eve of trial is timely. Rule 50(b)’s timing requirement for “a jury issue not decided
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`by a verdict” is inapplicable because this was not a jury issue. The language of Rule 50(b) cited by
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`Rembrandt was expressly added to address “when the trial ends without a verdict or with a verdict
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`that does not dispose of all issues suitable for resolution by verdict.” Fed. R. Civ. P. 50(b)
`
`committee note (2006); see, e.g., New Trend Foods, LLC v. Kato Suchi Rest., No. M-06-330, 2008 WL
`
`901568, at *2 (S.D. Tex. Mar. 31, 2008) (applying the time limit to claims on which jury deadlocked).
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`Here, the issue of infringement of the withdrawn claims was never presented to the jury.
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`Furthermore, Samsung did not need to introduce any evidence regarding non-infringement of
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`those claims, as the burden does not shift to the counterclaiming party.10 See BI 29-30 (citing cases).
`
`Rembrandt’s reliance on Alcon Research Ltd. v. Barr Laboratories, Inc., 745 F.3d 1180 (Fed. Cir. 2014), is
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`distinguishable. The parties in that case explicitly recognized in the pre-trial order that the patentee
`
`had dropped two patents. Id. at 1193. The Federal Circuit instructed that, in deciding whether
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`JMOL of non-infringement is appropriate for withdrawn claims, a court should consider what was
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`“raised in the pretrial statement” to determine what the parties “expected to try.” Id. It is significant
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`that the Federal Circuit in Alcon also noted that had the defendant filed a counterclaim of non-
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`infringement, “the district court might have exercised its discretion differently.” Id.
`
`VI. CONCLUSION