Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 1 of 27
`
`UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`WACO DIVISION
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Case No. 6:21-cv-00898-ADA
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`
`ALMONDNET, INC.,
`
`
`
`
`
`AMAZON.COM, INC.; AMAZON.COM
`SERVICES LLC; and AMAZON WEB
`SERVICES, INC.,
`
`
`
`
`
`Defendants.
`
`
`
`
`PLAINTIFF’S MOTION TO EXCLUDE CERTAIN OPINIONS OF DR. HENRY HOUH
`AND TO STRIKE PORTIONS OF HIS EXPERT REPORT
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 2 of 27
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`II.
`THE COURT SHOULD EXCLUDE UNDER DAUBERT OR STRIKE HOUH’S
`OPINIONS CONCERNING NON-INFRINGING ALTERNATIVES BECAUSE HE FAILED
`TO ASSUME INFRINGEMENT IN HIS ANALYSIS ................................................................ 1
`
`III. THE COURT SHOULD EXCLUDE UNDER DAUBERT AND STRIKE HOUH’S
`OPINIONS THAT ARE INCONSISTENT WITH THE COURT’S MARKMAN ORDER ......... 4
`
`A. Houh Reads a “Saturation” Limitation into the Claims of the ’639 and ’586 Patents,
`Despite the Court Expressly Holding to the Contrary ....................................................... 5
`
`B. Houh Insists that Sale and Payment for Advertisements Must Occur in the Past for the
`’639 and ’586 Patents, but the Court Has Rejected that Argument................................... 6
`
`IV. THE COURT SHOULD LIKEWISE EXCLUDE UNDER DAUBERT AND STRIKE
`HOUH’S NEW AND BELATED CLAIM CONSTRUCTION THEORIES THAT ARE
`UNSUPPORTED BY THE INTRINSIC RECORD ..................................................................... 7
`
`A. Houh’s Interpretation of “first Internet site” in the Claims of the ’639 and ’586
`Patents Is in Direct Contradiction with the File History ................................................... 8
`
`B. Houh’s Interpretation of “directing” in Claim Element 37(a) of the ’139 Patent Is in
`Direct Contradiction with the File History ........................................................................ 8
`
`C. Houh’s Purported Requirements that the “first price” in the Claims of the ’639 and
`’586 Patents Is Predetermined, Fixed, the Same for Multiple Visitors, and Also Must Be
`a Publisher Price, Improperly Imports Limitations from Examples in the Specification . 9
`
`D. Houh’s Purported Requirement that the “authorizing” of Claim Element 37(b) of the
`’139 Patent Must Occur Prior to When an “electronic visitor visits a second media
`property” Improperly Imports a Limitation from Examples in the Specification and Is
`Inconsistent with the Claim Language ............................................................................ 11
`
`E. Houh’s Purported Requirement that the “condition” of Claim 37 of the ’139 Patent
`Must be Predetermined Improperly Imports a Limitation from Examples in the
`Specification .................................................................................................................... 12
`
`F. Houh’s Purported Requirement that the Claims of the ’139 Patent Are Directed to
`“Expected Profit” Calculations Improperly Imports a Limitation from an Example in the
`Specification .................................................................................................................... 12
`
`G. Houh’s Purported Requirement that the “third party server computer controlling
`advertising space” of Claim Element 37(a) of the ’139 Patent Must Be the Same for
`“each of a multitude of electronic visitors” Is Inconsistent with the Claim Language ... 13
`
`
`
`i
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 3 of 27
`
`V.
`THE COURT SHOULD STRIKE HOUH’S OPINIONS CONCERNING THE
`PREAMBLES OF THE ASSERTED CLAIMS, AS HE HAS NOT OPINED THEY ARE
`LIMITING, NOR HAS THE COURT FOUND THAT THEY ARE ......................................... 14
`
`VI. THE COURT SHOULD STRIKE HOUH’S OPINIONS THAT RELY ON
`INFORMATION THAT AMAZON WITHHELD DURING FACT DISCOVERY ................. 15
`
`VII. THE COURT SHOULD EXCLUDE UNDER DAUBERT OR STRIKE HOUH’S
`OPINIONS BASED ON BALD ASSERTIONS UNSUPPORTED BY ANY EVIDENCE OR
`REASONING .............................................................................................................................. 18
`
`
`
`
`
`
`
`ii
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 4 of 27
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`No. 2:15-cv-1047, 2016 WL 11750179 (E.D. Tex. Nov. 30, 2016) ....................................... 18
`
`Continental Circuits LLC v. Intel Corp.,
`915 F.3d 788 (Fed. Cir. 2019) ................................................................................................. 11
`
`Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579 (1993) .................................................................................................... 1, 4, 7, 19
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009) ................................................................................................. 4
`
`Glaukos Corp. v. Ivantis, Inc.,
`No. 18-cv-620, 2020 WL 10501852 (C.D. Cal. July 23, 2020) ................................................ 1
`
`Gree, Inc. v. Supercell Oy,
`No. 2:19-cv-70, 2020 WL 4288356 (E.D. Tex. July 27, 2020) ........................................ 15, 17
`
`Kaist IP US LLC v. Samsung Elecs. Co.,
`2:16-cv-1314, 2018 WL 2411772 (E.D. Tex. May 29, 2018) ................................................... 7
`
`Kim v. ConAgra Foods, Inc.,
`465 F.3d 1312 (Fed. Cir. 2006) ............................................................................................... 19
`
`Liquid Dynamics Corp. v. Vaughan Co.,
`449 F.3d 1209 (Fed. Cir. 2006) ................................................................................................. 4
`
`Maxell, Ltd. v. Apple Inc.,
`No. 5:19-cv-36, 2020 WL 8269548 (E.D. Tex. Nov. 11, 2020) ........................................... 6, 7
`
`Navico Inc. v. Garmin Int’l, Inc.,
`No. 2:16-cv-190, 2017 WL 2868961 (E.D. Tex. July 4, 2017) .............................................. 18
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.,
`30 4th 1339 (Fed. Cir. 2002) ................................................................................................... 19
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (2008) ................................................................................................................ 7
`
`OneSubSea IP UK Ltd. v. FMC Techs., Inc.,
`No. 4-16-0051, 2020 WL 7263266 (S.D. Tex. Dec. 10, 2020) ................................................. 4
`
`Prism Techs. LLC v. Sprint Spectrum LP,
`849 F.3d 1360 (Fed. Cir. 2017) ................................................................................................. 1
`
`
`
`iii
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 5 of 27
`
`Rembrandt Vision Techs. LP v. Johnson & Johnson Vision Care, Inc.,
`725 F.3d 1377 (Fed. Cir. 2013) ............................................................................................... 16
`
`Thorner v. Sony Comput. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ................................................................................... 10, 12, 13
`
`U.S. Auto. Assoc. v. PNC Bank NA,
`No. 2:20-cv-00319, 2022 WL 1453204 (E.D. Tex. Apr. 17, 2022) .......................................... 4
`
`U.S. Auto. Assoc. v. PNC Bank NA,
`No. 2:20-cv-00319, 2022 WL 1463984 (E.D. Tex. May 6, 2022) ............................................ 4
`
`Varta Microbattery GmbH v. Audio P’Ship LLC,
`No. 2:21-cv-400, 2023 WL 5192986 (E.D. Tex. Aug. 11, 2023) ............................................. 4
`
`Rules
`
`Fed. R. Civ. P. 26 .................................................................................................................. 15, 16
`
`Fed. R. Civ. P. 37(c) .............................................................................................................. 15, 19
`
`Fed. R. Evid. 702 ............................................................................................................. 1, 4, 7, 19
`
`
`
`
`
`
`
`iv
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 6 of 27
`
`I.
`
`INTRODUCTION
`
`Amazon’s expert Dr. Henry Houh’s rebuttal non-infringement report contains opinions
`
`(1) concerning alleged “non-infringing alternatives” in which he improperly does not assume
`
`that the Accused Products infringe the asserted patents, (2) that are inconsistent with this
`
`Court’s Markman order, (3) that are rooted in belated claim construction proposals that are
`
`inconsistent with and unsupported by the intrinsic record, (4) that are rooted in preambles that
`
`no one contends are limiting, (5) that are based on information that Amazon withheld during
`
`fact discovery, and (6) that are based on nothing more than conclusory statements. AlmondNet
`
`respectfully requests that he be precluded from offering these six categories of opinions at trial
`
`for the reasons detailed below. At a high level, each of these categories of unreliable opinions
`
`would do nothing but to inject irrelevant issues into the case, confusing the jury and bringing
`
`undue prejudice to AlmondNet.
`
`II.
`
`THE COURT SHOULD EXCLUDE UNDER DAUBERT OR STRIKE HOUH’S
`OPINIONS CONCERNING NON-INFRINGING ALTERNATIVES BECAUSE
`HE FAILED TO ASSUME INFRINGEMENT IN HIS ANALYSIS
`
`Rule 702 requires judges to act as gatekeepers to ensure “that an expert’s testimony both
`
`rests on a reliable foundation and is relevant to the task at hand.” Daubert v. Merrell Dow
`
`Pharms., Inc., 509 U.S. 579, 580 (1993). It is black letter law that “the hypothetical-negotiation
`
`rubric for the assessment of reasonable royalty damages assumes that the asserted patents are
`
`valid and infringed.”1 Prism Techs. LLC v. Sprint Spectrum LP, 849 F.3d 1360, 1369 (Fed. Cir.
`
`2017). Consistent with that principle, any non-infringing alternatives proposed by a defendant in
`
`a patent case must, in fact, be non-infringing. See, e.g., Glaukos Corp. v. Ivantis, Inc., No. 18-
`
`cv-620, 2020 WL 10501852, at *11-12 (C.D. Cal. July 23, 2020) (excluding under Daubert
`
`opinions concerning an alleged non-infringing alternative because it infringed asserted claims).
`
`
`1 All emphases added unless otherwise noted.
`
`
`
`1
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 7 of 27
`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 7 of 27
`
`PUBLIC VERSION
`
`But Houh did not assumethat the Accused Products infringe when offering opinions on
`
`a proposed“alternative” in his rebuttal report. Rather, he proposed a minor change to one of the
`
`Accused Products, and that resulting “alternative” would still infringe. Even Amazon’s damages
`
`expert Mr. Christopher Bakewell agrees such an approach is improper, and that Houh must
`
`assumeliability under AlmondNet and its expert’s theory of infrmgement when considering
`
`proposed alternatives:|
`
`x. 19 35:23-43:1; see also id. 77:7-16
`
`Re). But as detailed below, Houh,in fact, did notdo so.
`
`In essence, Houh proposes an “alternative system”
`
`1 99355, 359, 360.
`
`Fatally for Houh, the only “non-infringement” arguments he offers for his proposed
`
`“alternative” are the same arguments that he offers for the Accused Products. Houh summarizes
`
`his reasons for why his proposed “alternative” does not infringe as follows:
`
`See Ex.
`
`Id. §359; see also id. §360. And looking to his more specific analyses of claim elements of the
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 8 of 27
`
`asserted patents, Houh alleges that the proposed “alternative” does not perform the
`
`“authorizing” step of claim element 37 of the ’139 patent because “
`
`
`
`original). But Houh presents this same “ultimate decision” reason as to why the (unmodified)
`
`Accused Products do not meet this claim element. See id. ¶¶206, 210 (asserting that the Accused
`
`.” Id. ¶356 (second emphasis in
`
`Products do not perform the “authorizing” step of claim element 37 because
`
`,” and noting that “
`
`
`
`”); see also id. ¶196.
`
`
`
`
`
`
`
`
`
`Similarly, Houh claims that the proposed “alternative” does not perform the
`
`“facilitating” or “directing” steps of the claims of the ’639 and ’586 patents because
`
`
`
`.” Id. ¶357. But again, he presents the same
`
`reasoning as to why the Accused Products do not meet these elements. See id. ¶245 (asserting
`
`that the Accused Products do not perform the “facilitating delivery” step of the ’639 and ’586
`
`patents “
`
`also id. ¶302.
`
`
`
`”); see
`
`
`
`And finally, Houh claims that the proposed “alternative” “does not ‘cause’ the first or
`
`second [Internet] site to ‘receive revenue’ as a result of
`
` ads, as the claims of
`
`the ’586 and ’639 patents require, because
`
`
`
`. Id. ¶357. And again, he presents the same
`
`reasoning as to why the Accused Products do not meet this limitation. See id. ¶261
`
`
`
`
`
`,
`
`
`
`3
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 9 of 27
`
` ….”);
`
`see also id. ¶265.
`
`
`
`Put simply, Houh’s opinions regarding alleged non-infringing alternatives assume his
`
`non-infringement arguments with respect to the (unmodified) Accused Products are correct, not
`
`that Koskinen’s theories are correct. Houh thus assumes that the unmodified Accused Products
`
`do not infringe, failing to assume liability as required in the context of the hypothetical
`
`negotiation and the associated “non-infringing alternatives” analysis.
`
`Because Houh did not assume infringement when formulating his proposed “non-
`
`infringing alternative,” his opinions on this point should be excluded under Rules 702 and
`
`Daubert because they are the product of unreliable principles and methods. The portions of his
`
`expert report concerning this proposed non-infringing alternative (paragraphs 354-360) should
`
`be stricken for these reasons, and because AlmondNet would suffer undue prejudice, as Houh’s
`
`legally unsupportable opinions would do nothing but confuse both the jury and the issues.
`
`III. THE COURT SHOULD EXCLUDE UNDER DAUBERT AND STRIKE HOUH’S
`OPINIONS THAT ARE INCONSISTENT WITH THE COURT’S MARKMAN
`ORDER
`
`“[E]xpert testimony inconsistent with the court’s claim construction should be excluded
`
`because it is unreliable and unhelpful to the finder of fact.” Varta Microbattery GmbH v. Audio
`
`P’Ship LLC, No. 2:21-cv-400, 2023 WL 5192986, at *3 (E.D. Tex. Aug. 11, 2023) (citing
`
`Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009)); see OneSubSea
`
`IP UK Ltd. v. FMC Techs., Inc., No. 4-16-0051, 2020 WL 7263266, at *5-6 (S.D. Tex. Dec. 10,
`
`2020) (excluding expert testimony as inconsistent with Markman order); U.S. Auto. Assoc. v.
`
`PNC Bank NA, No. 2:20-cv-00319, 2022 WL 1453204, at *7-8 (E.D. Tex. Apr. 17, 2022), R&R
`
`adopted, 2022 WL 1463984 (E.D. Tex. May 6, 2022) (same); see also Liquid Dynamics Corp.
`
`v. Vaughan Co., 449 F.3d 1209, 1229 n.2 (Fed. Cir. 2006) (affirming exclusion of expert
`
`
`
`4
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 10 of 27
`
`testimony based on an impermissible claim construction).
`
`A.
`
`Houh Reads a “Saturation” Limitation into the Claims of the ’639 and ’586
`Patents, Despite the Court Expressly Holding to the Contrary
`
`The Court could not have been clearer in its Markman order: “[W]ith respect to
`
`Amazon’s argument that the claimed invention is premised on the situation [of] whether the first
`
`Internet site becomes ‘saturated’ with advertisements, the Court disagrees. The claims do not
`
`require that the first Internet site is saturated with advertisements.” Dkt. No. 113, 14. Despite
`
`this clear holding, Houh opines otherwise in his rebuttal report. For example, he alleges
`
`AlmondNet’s expert Koskinen
`
` Ex. 1 ¶238; see id. ¶56
`
`; see also id. ¶¶53, 55, 59, 252, 272, 304.
`
`At his deposition, Houh appeared to confirm his “saturation” opinions: “
`
`
`
`
`
`
`
`
`
`” Ex. 2 51:18-52:19; see also id. 36:20-44:9, 62:16-18, 80:10-89:19; Ex. 3
`
`235:4-237:10. He even went as far to claim that the Court has not
`
`
`
` and that he need not follow the holdings in the Court’s Markman order
`
`because, in his view, only “part of the analysis is considering the Court’s analysis.” Ex. 2 93:18-
`
`94:3; 100:6-18; see also id. 91:14-109:15, 111:13-20. As further confirmation that Houh’s
`
`opinions fly in the face of the Markman order, Amazon’s prior art invalidity expert, Dr. Ward
`
`Hanson, does not impose a “saturation” requirement on the claims:
`
`
`
`
`
` Ex. 4 34:6-25; see also id. 115:18-21.
`
`AlmondNet respectfully requests the Court exclude Houh’s “saturation” opinions, and
`
`strike paragraphs 53, 55, 56, 59, 238, 252, 272, 304, and 310 of his rebuttal report, as
`
`
`
`5
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 11 of 27
`
`inconsistent with the Markman order. See, e.g., Maxell, Ltd. v. Apple Inc., No. 5:19-cv-36, 2020
`
`WL 8269548, at *20 (E.D. Tex. Nov. 11, 2020) (holding that “all experts are prohibited from
`
`providing any opinions based on an interpretation of the Court’s construction that is the
`
`equivalent of any construction that the Court previously considered and expressly rejected”).
`
`B.
`
`Houh Insists that Sale and Payment for Advertisements Must Occur in the
`Past for the ’639 and ’586 Patents, but the Court Has Rejected that
`Argument
`
`Houh also applies a rejected interpretation to the “sold” and “has paid” terms of the ’639
`
`and ’586 patents. In its Markman order, the Court rejected Amazon’s contention that “the
`
`advertisement must have been previously sold,” and further concluded that payment need not
`
`“occur prior to the placement of the advertisement at the second Internet site. By contrast,
`
`payment could be made, for example, at the end of the month.” Dkt. No. 113 at 14-15 (emphasis
`
`in original).
`
` See, e.g., Ex. 1 ¶254
`
`
`
`
`
`; id. ¶¶304, 313
`
` see also id.
`
`¶¶69, 75, 246, 247, 255, 256, 271, 273, 276, 277, 305, 314, 315, 321.
`
`
`
` See id. ¶¶257, 316.
`
`
`
` Ex. 3 205:14-206:4; see also id. 203:2-205:13, 211:17-24.
`
`AlmondNet respectfully requests the Court exclude Houh’s opinions that payment or
`
`sale must have occurred prior to the placement of the advertisement, and strike paragraphs 69,
`
`75, 246, 247, 254-257, 271, 273, 276, 277, 304, 305, 313-316, and 321 of his rebuttal report, as
`
`inconsistent with the Markman order. See, e.g., Maxell, 2020 WL 8269548, at *20.
`
`
`
`6
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 12 of 27
`
`IV.
`
`THE COURT SHOULD LIKEWISE EXCLUDE UNDER DAUBERT AND
`STRIKE HOUH’S NEW AND BELATED CLAIM CONSTRUCTION
`THEORIES THAT ARE UNSUPPORTED BY THE INTRINSIC RECORD
`
`Houh offers numerous opinions in his rebuttal report that are nothing more than belated
`
`claim construction theories. To be clear, the opinions addressed in this brief are not fact-based
`
`arguments about what falls within the scope of the claim language, but are rather pure
`
`construction-based, legal arguments that cannot be permitted to go to a jury under controlling
`
`Federal Circuit law. See, e.g., O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
`
`1351, 1361-63 (2008) (“When the parties present a fundamental dispute regarding the scope of
`
`a claim term, it is the court’s duty to resolve it.”).
`
`Resolving each of these issues is straightforward here. Even setting aside these
`
`construction-based theories are being asserted for the first time long after that contemplated by
`
`the Scheduling Order (Dkt. Nos. 113, 120), each is unsupported by the intrinsic record. The
`
`Court should thus exclude each of these opinions under Rule 702 and Daubert as unreliable and
`
`irrelevant to any issue in the case. See, e.g., Kaist IP US LLC v. Samsung Elecs. Co., 2:16-cv-
`
`1314, 2018 WL 2411772, at *1-2 (E.D. Tex. May 29, 2018) (excluding belated construction
`
`raised for the first time in a rebuttal report because it was inconsistent with the specification).
`
`The corresponding portions of Houh’s report should also be stricken, as AlmondNet would be
`
`unduly prejudiced if Amazon could present these unsupportable, legal arguments to the jury.
`
`See, e.g., Maxell, 2020 WL 8269548, at *21-23 (striking portions of expert reports that
`
`advanced new construction theories unsupported by the intrinsic record).
`
`In the alternative, if the Court feels that more briefing would be advantageous to resolve
`
`any of these issues, AlmondNet moves the Court for additional claim construction, consistent
`
`with O2 Micro and its progeny.
`
`
`
`7
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 13 of 27
`
`A.
`
`Houh’s Interpretation of “first Internet site” in the Claims of the ’639 and
`’586 Patents Is in Direct Contradiction with the File History
`
`Houh criticizes AlmondNet’s expert because
`
` Ex. 1 ¶242 (emphasis in original); see id. ¶¶279, 322, 344
`
`); ¶54 (
`
`
`
`
`
`
`
`
`
`
`
`
`
`); see also id. ¶285. Houh’s opinions are in direct contradiction with the
`
`file history of the ’639 patent (which is the grandparent of the ’586 patent):
`
`“[S]ites” in the claims [] refer[] to collections of one or more Internet pages
`operated for the benefit of a particular person or entity, who or which is
`sometimes references as a “proprietor.” The term “site” is not being used to refer
`to a particular URL, domain name, or IP address; after all, for example, a given
`site may have multiple URLs, domain names, or IP addresses.
`
`Ex. 9, 3377 (second underlining in original). Put simply, contrary to Houh’s opinions, the file
`
`history makes clear that “site” in the claims can refer to a collection of Internet pages and
`
`properties operated for the benefit of the same proprietor, including those with different domain
`
`names. The Court should exclude Houh’s “sites” opinion, and strike paragraphs 54, 242, 279,
`
`285, 322, and 344 of his rebuttal report, because they present a belated claim construction
`
`theory that is inconsistent with the intrinsic record.
`
`B.
`
`Houh’s Interpretation of “directing” in Claim Element 37(a) of the ’139
`Patent Is in Direct Contradiction with the File History
`
`Claim element 37(a) in part requires “directing, to a third-party server computer …
`
`indicia of a condition for display of an advertisement.” Ex. 5 cl. 37. Houh claims that the
`
`Accused Products do not direct “indicia of a condition” (which AlmondNet maps to the bid
`
`amount of a real-time bid for an advertisement) to a “third-party server computer” (which
`
`
`
`8
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 14 of 27
`
`AlmondNet maps to a publisher’s ad server) because a component of the Accused Products
`
`“
`
`,” but rather
`
`
`
`. Ex. 1 ¶¶197;
`
`see also id. ¶199, 207; Ex. 3 134:21-135:18, 140:19-143:22. But Houh’s requirement that the
`
` is
`
`again refuted by the file history. The applicant made clear that “directing” in this claim “was
`
`intended to cover instances of both direct communication from the computer system to the
`
`server computer controlling ad space and of indirect communication.” Ex. 8, 156 (italics in
`
`original). The Court should exclude Houh’s “directly directing” opinion, and strike paragraphs
`
`197, 199, and 207 of his rebuttal report, because they present a belated claim construction
`
`theory that is inconsistent with the intrinsic record.
`
`C.
`
`Houh’s Purported Requirements that the “first price” in the Claims of the
`’639 and ’586 Patents Is Predetermined, Fixed, the Same for Multiple
`Visitors, and Also Must Be a Publisher Price, Improperly Imports
`Limitations from Examples in the Specification
`
`Houh opines that the claimed “first price” must be (1) predetermined/pre-arranged,
`
`fixed, and the same for all or multiple visitors, as well as (2) what a publisher or publishers are
`
`paid for the advertisement. On the first point, Houh asserts that
`
` Ex. 1 ¶256; see id. ¶263 (
`
`see also id. ¶¶69, 246, 247, 255, 257, 258, 271-273, 276, 277, 304, 305, 315, 317.
`
` See, e.g., Ex. 1 ¶¶246, 272, 273, 304 (
`
`
`
`9
`
`
`
`
`
`);
`
`
`
`
`
`);
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 15 of 27
`
`id. ¶¶258, 317 (
`
`
`
`). He does not to point to any
`
`lexicography or disclaimer to justify narrowing “first price” to require it to be predetermined
`
`and fixed, or to require the “first price” to be the same for all or multiple visitors. See Thorner v.
`
`Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`On the second point, Houh alleges
`
`
`
`
`
`. Ex. 1 ¶¶258; see also id. ¶¶274, 278, 317, 320,
`
`324; Ex. 3 209:14-213:12. He does not allege that there is any lexicography or disclaimer that
`
`supports such a limitation. See Thorner, 699 F.3d at 1365. Moreover, this interpretation does
`
`not make sense in the context of the claim language itself. For example, claim element 24(f) of
`
`the ’639 patent requires that “the proprietor of the first Internet site retains at least part of the
`
`difference between the first price and the revenue received by the proprietor of the second
`
`Internet site.” Ex. 6 cl. 24. If the “first price” is equal to what the “proprietor of the second
`
`Internet site” charges, logic dictates that claim element 24(f) could never be met, as there would
`
`be nothing left for “the proprietor of the first Internet site” to “retain[].” Indeed, Hanson did not
`
`impose Houh’s proposed requirement in his analysis. See Ex. 4 115:22-116:10.
`
`Relatedly, Houh’s opinions regarding limitation 24(f) of the ’639 patent (and limitation
`
`11(f) of the ’586 patent)
`
`
`
`
`
` Ex.
`
`1 ¶¶281, 324. Again, Dr. Houh provides no support for such a claim requirement, and certainly
`
`nothing arising to lexicography or disclaimer. See Thorner, 699 F.3d at 1365. Indeed, as noted
`
`above, to the extent the “first price” is the publisher price charged by the proprietor of the
`
`
`
`10
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 16 of 27
`
`second site as argued by Houh, limitation 24(f) would make no sense because there would be no
`
`difference between the first price and the revenue retained by the proprietor of the second site.
`
`The Court should exclude Houh’s new “first price” construction, and strike paragraphs
`
`69, 246, 247, 255-258, 263, 271-274, 276-278, 281, 304, 305, 315, 317, 320, and 324 of his
`
`rebuttal report, because they present belated claim construction theories that are unsupported by
`
`and inconsistent with the intrinsic record.
`
`D.
`
`Houh’s Purported Requirement that the “authorizing” of Claim Element
`37(b) of the ’139 Patent Must Occur Prior to When an “electronic visitor
`visits a second media property” Improperly Imports a Limitation from
`Examples in the Specification and Is Inconsistent with the Claim Language
`
`Houh also opines that
`
`
`
`
`
`
`
`
`
` Ex. 1 ¶208 (quoting Ex. 5 cl. 37) (second emphasis in
`
`original); see also id. ¶¶69, 252, 310. On its face, the claim language does not impose a
`
`requirement that the authorization be for a future event as opposed to a current event. Ex. 5 cl.
`
`37. The only support Houh offers for his strained construction are examples from the
`
`specification. See, e.g. Ex. 1 ¶208. And at his deposition, Houh
`
`
`
`
`
`Ex. 3 180:7-183:13. It is of course improper to read a limitation found in exemplary
`
`embodiments into the claims. See, e.g., Continental Circuits LLC v. Intel Corp., 915 F.3d 788,
`
`797-800 (Fed. Cir. 2019). Further supporting that Houh’s narrowing claim interpretation is
`
`wrong is that Hanson disagreed that
`
`. Ex. 4 189:13-193:5. The Court should exclude Houh’s
`
`
`
`
`
`
`
`11
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 17 of 27
`
`construction, and strike paragraphs 69, 208, 252, and 310 of his rebuttal report, because they
`
`present a belated claim construction theory unsupported by the intrinsic record.
`
`E.
`
`Houh’s Purported Requirement that the “condition” of Claim 37 of the ’139
`Patent Must be Predetermined Improperly Imports a Limitation from
`Examples in the Specification
`
`Houh alleges
`
`Ex. 1 ¶202. In support of this argument, he cites
`
` (id. (quoting Ex. 5 10:24-29))
`
`
`
`
`
`
`
`
`
`
`
` (id. (citing Ex. 5 Fig. 1 and associated text)). Again,
`
`he points to only exemplary embodiments and nothing that rises to the level of lexicography or
`
`disclaimer. See Thorner, 699 F.3d at 1365. The Court should exclude Houh’s
`
`
`
`, and strike paragraph 202 of his rebuttal report, because
`
`they present a belated claim construction theory unsupported by the intrinsic record.
`
`F.
`
`Houh’s Purported Requirement that the Claims of the ’139 Patent Are
`Directed to “Expected Profit” Calculations Improperly Imports a
`Limitation from an Example in the Specification
`
`At his deposition, Houh made clear that he intends to testify at trial that the asserted
`
`claims of the ’139 patent, including claim 37, require advertisement placement based on
`
`“expected profit.” Ex. 2 188:1-190:25 (“
`
` He offers similar opinions in his rebuttal report. Ex. 1 ¶51
`
`
`
`
`
`
`
`
`
`
`
`; see also id. ¶¶59, 69. But as Dr. Houh recognized at his
`
`
`
`12
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 18 of 27
`
`deposition,
`
` Ex. 2
`
`189:6-23; see Ex. 5 cl. 37. And again, the only support he has for importing this limitation into
`
`the claims is an exemplary embodiment in the specification, and nothing that amounts to
`
`lexicography or disclaimer. See, e.g., Ex. 1 ¶69 (citing Ex. 5 Figs. 1 & 2); see also Thorner, 699
`
`F.3d at 1365.
`
`That “expected profit” is not required by claim 37 is further confirmed by the dependent
`
`claims, which make clear that the condition for display of an advertisement may (or
`
`alternatively, may not be) based on factors related to expected profit. For example, the concept
`
`of expected profit, while not appearing in independent claim 37, appears in dependent claim 38,
`
`which recites that “the condition” for display of an ad is “that a price charged … is less than
`
`a … price that an advertiser is willing to pay.” Ex. 5 cl. 38; see also id. 8:9-16 (specification
`
`teaching that “how much advertisers are willing to pay for delivering ads” is used to derive
`
`expected revenues and thus profits). In contrast, dependent claim 54 specifies that “the
`
`condition” for display of an ad is “a specified time period,” which of course does not relate to
`
`the concept of expected profit. Id. cl. 54. Indeed, Houh points to this “time period” example in
`
`another one of his flawed opinions. See supra § IV.F.
`
`The Court should exclude Houh’s
`
`, and strike
`
`paragraphs 51, 59, and 69 of his rebuttal report, because they present a belated claim
`
`construction theory unsupported by the intrinsic record.
`
`G.
`
`Houh’s Purported Requirement that the “third party server computer
`controlling advertising space” of Claim Element 37(a) of the ’139 Patent
`Must Be the Same for “each of a multitude of electronic visitors” Is
`Inconsistent with the Claim Language
`
`Houh also opines,
`
`
`
`
`
`
`
`13
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-00898-ADA Document 147 Filed 08/30/23 Page 19 of 27
`
`
`
`
`
` Ex. 1 ¶203. It is unclear whether Houh believes that the third-party server
`
`computer must be the same for all or just multiple electronic visitors. But in any event, he points
`
`to nothing in the claim language supporting either interpretation. Id. Moreover, on its face, the
`
`claim language is agnostic as to whether the third-party server computer controlling advertising
`
`space is the same for all (or multiple) electronic visitors or not. Rather, all that claim requires is
`
`that “indicia of a condition for display of an advertisement” is “direct[ed] to a third-party server
`
`computer,” and that such “directing” occurs “for each of a multitude of different electronic
`
`visitors to a first media property.” Ex. 5 cl. 37.
`
`Houh’s interpretation
`
`
`
` Id. 8:30-32
`
`(internal citations omitted); see also, e.g., id. 9:4-9. The specification further makes clear “a
`
`media property (in the present context) can also be defined as any equipment [e.g., a server
`
`computer] that controls an ad space viewed by a visitor.” Id. 3:38-48. Thus, the specification
`
`expressly teaches the invention can involve coordination with multiple server computers
`
`controlling advertising space, and is not limited to a single server computer controlling
`
`advertising space.
`
`The Court should exclude Houh’s
`
`,
`
`and strike paragraph 203 of his rebuttal report, because