Case 2:16-cv-00741-RWS Document 240 Filed 08/21/17 Page 1 of 6 PageID #: 4048
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`ADP, LLC,
`BIG FISH GAMES, INC.,
`BLACKBOARD, INC.,
`BOX, INC.,
`ZENDESK, INC.,
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`Defendants.
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`§
`§
`§ Case No. 2:16-cv-00741-RWS
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`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00858-RWS
`§ Case No. 2:16-cv-00859-RWS
`§ Case No. 2:16-cv-00860-RWS
`§ Case No. 2:16-cv-00863-RWS
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`REPLY IN SUPPORT OF MOTION FOR
`SUPPLEMENTAL CLAIM CONSTRUCTION BRIEFING
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`Case 2:16-cv-00741-RWS Document 240 Filed 08/21/17 Page 2 of 6 PageID #: 4049
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`Defendants ADP, LLC and Big Fish Games, Inc. (“the Moving Defendants”) have asked
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`the Court to hear supplemental briefing addressing the indefiniteness of 11 of the over 100 claim
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`terms drafted in means-plus-function form that are presently asserted by Plaintiffs.1 (D.I. 217.)
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`Each such claim term lacks a corresponding algorithm in the written description sufficiently
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`linked to its claimed function and is therefore indefinite. (See id. at 3 (citing Cloud Farm Assocs.
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`LP v. Volkswagen Grp. of Am., Inc., 674 F. App’x 1000, 1009 (Fed. Cir. 2017).)
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`Plaintiffs object to briefing this issue on the sole basis that the Moving Defendants’
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`request is allegedly untimely under the Local Rules. In fact, the motion is timely and ripe for
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`determination. Plaintiffs continue to assert dozens of means-plus-function claims against each
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`defendant, despite failing to provide any specific identifications of corresponding structure in
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`their P. R. 3-1 Infringement Contentions for these claims. Plaintiffs will submit expert reports on
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`infringement (for which Plaintiffs bear the burden of proof) against defendants in the AVG cases
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`on September 13 (consolidated under 2:16-cv-393), and defendants in the ADP cases
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`(consolidated under 2:16-cv-741) on September 22. Plaintiffs’ expert will have to understand the
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`structure supporting these claims to address their infringement, and the scope of each of these
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`claims is affected by the issue raised in the Moving Defendants’ brief. Yet, as set forth in
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`Moving Defendants’ brief, Plaintiffs and the Moving Defendants presently disagree as to
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`whether any structure sufficiently supports these claims. When parties disagree as to the
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`construction and indefiniteness of a claim under 35 U.S.C. 112 ¶6, the Court resolves that
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`1 Plaintiffs have repeatedly refused to provide their preliminary and final election of asserted claims as required
`under General Rule 13-20. Thus the large total number of means-plus-function limitations currently at issue is a
`result of Plaintiffs’ refusal to comply with the reduction of asserted claims mandated by the local general order. The
`Moving Defendants’ brief is focused on eleven critical terms, which in fact reduce to six substantive “means” terms
`and five duplicative “computer readable program code means” terms which Plaintiffs appear to agree are of identical
`scope. Those terms touch each independent system claim asserted by Uniloc across the patents-in-suit and thus
`could significantly reduce the scope of this case.
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`Case 2:16-cv-00741-RWS Document 240 Filed 08/21/17 Page 3 of 6 PageID #: 4050
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`disagreement as a matter of law. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d
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`1106, 1113 (Fed. Cir. 2002).
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`The Moving Defendants previously raised the uncertainty of the proper construction for
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`these claims in their Joint Submissions to the Court (D.I. 148 at 2-3, D.I. 186 at 1-2), and again
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`at the Court’s August 10 Markman hearing, where they noted their position that the
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`specifications of the patents-in-suit lacked clear algorithmic structures linked to the claimed
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`functions. After the Markman hearing, the Court found certain means-plus-function claim terms
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`indefinite. See Markman Order (D.I. 233 at 51-55.) As acknowledged at that hearing, Plaintiffs
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`provided only an insufficient, blanket citation to six columns of written description to support
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`those terms. Likewise, no written description clearly supports the additional claims addressed by
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`the Moving Defendants’ brief.
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`Defendants ask the Court to enter their proposed brief (D.I. 218) and set a prompt
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`response deadline for the Plaintiffs, so that the scope of the asserted means-plus-function claims
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`can be resolved before expert reports are due.
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`Dated: August 21, 2017
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`Respectfully submitted,
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`/s/ Matthew J. Moffa
`William J. McCabe
`E-Mail: WMcCabe@perkinscoie.com
`Matthew J. Moffa
`E-Mail: MMoffa@perkinscoie.com
`PERKINS COIE LLP
`30 Rockefeller Plaza, 22nd Floor
`New York, NY 10112-0085
`Telephone: (212) 262-6900
`Facsimile: (212) 977-1649
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`Victoria Q. Smith
`E-Mail: vsmith@perkinscoie.com
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`Case 2:16-cv-00741-RWS Document 240 Filed 08/21/17 Page 4 of 6 PageID #: 4051
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`PERKINS COIE LLP
`3150 Porter Drive
`Palo Alto, CA 94304
`Telephone: (650) 838-4321
`Facsimile: (650) 838-4350
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`Michael E. Jones
`Texas Bar No.: 10929400
`E-Mail: mikejones@potterminton.com
`Patrick C. Clutter
`Texas Bar No. 24036374
`E-Mail: patrickclutter@potterminton.com
`POTTER MINTON, PC
`110 North College Suite 500
`Tyler, TX 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
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`ATTORNEYS FOR DEFENDANT ADP,
`LLC
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`/s/ Douglas F. Stewart, with permission by
`Matthew J. Moffa
`Douglas F. Stewart
`doug.stewart@bracewelllaw.com
`Bracewell LLP
`701 Fifth Avenue, Suite 6200
`Seattle, Washington 98104-7018
`(206) 204-6200 (t)
`(800) 404-3970 (f)
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`David J. Ball
`david.ball@bracewelllaw.com
`Bracewell LLP
`1251 Avenue of the Americas
`New York, New York 10020
`(212) 508-6100 (t)
`(800) 404-3970 (f)
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`Timothy R. Geiger
`tim.geiger@bracewelllaw.com
`Bracewell LLP
`711 Louisiana, Suite 2300
`Houston, Texas 77002
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`Case 2:16-cv-00741-RWS Document 240 Filed 08/21/17 Page 5 of 6 PageID #: 4052
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`(713)-223-2300
`(800)-404-3970
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`ATTORNEYS FOR DEFENDANT BIG
`FISH GAMES, INC.
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`Case 2:16-cv-00741-RWS Document 240 Filed 08/21/17 Page 6 of 6 PageID #: 4053
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
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`being served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-
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`5(a)(3) on August 21, 2017.
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`/s/ Matthew J. Moffa
`Matthew J. Moffa
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