Case 6:21-cv-00898-ADA Document 148 Filed 08/30/23 Page 1 of 18
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`UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF TEXAS
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`WACO DIVISION
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`Plaintiffs,
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`v.
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`Case No. 6:21-cv-00898-ADA
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`JURY TRIAL DEMANDED
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`ALMONDNET, INC,
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`AMAZON.COM, INC.; AMAZON.COM
`SERVICES LLC; and AMAZON WEB
`SERVICES, INC.,
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`Defendants.
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`PLAINTIFF’S MOTION TO STRIKE AND EXCLUDE CERTAIN OPINIONS OF DR.
`HENRY HOUH REGARDING ENABLEMENT AND WRITTEN DESCRIPTION;
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`AND
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`MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY BASED ON
`LACK OF ENABLEMENT AND LACK OF WRITTEN DESCRIPTION
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................1
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`I.
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`II. STATEMENT OF RELEVANT FACTS ...........................................................................2
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`A. Dr. Houh’s Failure to Consider the State and Scope of the Prior Art ..........................2
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`B. Houh’s Opinions Based on Amazon’s Accused Products ............................................3
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`C. Dr. Houh’s Cursory Written Description Opinions ......................................................4
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`III. THE COURT SHOULD EXCLUDE UNDER DAUBERT AND STRIKE
`HOUH’S OPINIONS REGARDING ENABLEMENT ...................................................5
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`A. The Court Should Strike Dr. Houh’s Enablement Opinions Because He Failed
`to Consider the State and Scope of the Prior Art..........................................................5
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`B. The Court Should Strike Dr. Houh’s Enablement Opinions Based on Amazon’s
`Accused Products .........................................................................................................8
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`IV. THE COURT SHOULD EXCLUDE UNDER DAUBERT AND STRIKE DR.
`HOUH’S OPINIONS REGARDING WRITTEN DESCRIPTION..............................10
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`A. Dr. Houh Incorrectly Applied the Law on Enablement to Support His Written
`Description Opinions ..................................................................................................10
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`B. Dr. Houh Failed to Consider the Originally Filed Claims of the U.S. Patent
`Application 09/732,391, to Which ‘639 and ‘586 Patents Claim Priority .................11
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`V. THE COURT SHOULD GRANT PARTIAL SUMMARY JUDGMENT OF
`NO INVALIDITY BASED ON LACK OF ENABLEMENT OR WRITTEN
`DESCRIPTION .................................................................................................................13
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`Cases
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`TABLE OF AUTHORITIES
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`ALZA Corp. v. Andrx Pharm.,
`603 F.3d 935 (Fed. Cir. 2010) ................................................................................................... 5
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`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ............................................................................................... 11
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`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,
`635 F.3d 1373 (Fed. Cir. 2011) ............................................................................................... 12
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`Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579 (1993) .............................................................................................................. 5, 9
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`Durel Corp., Durel Corp. v. Osram Sylvania Inc.,
`256 F.3d 1298 (Fed. Cir. 2001); ............................................................................................ 8, 9
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`Enzo Biochem, Inc. v. Calgene, Inc.,
`188 F.3d 1362 (Fed. Cir. 1999) ............................................................................................. 8, 9
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`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988) ................................................................................................... 5
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`Inline Connection Corp. v. AOL Time Warner Inc.,
`No. CIVA 02-272MPT, 2007 WL 275928 (D. Del. Jan. 29, 2007) .......................................... 9
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`Koito Mfg. Co. v. Turn–Key–Tech, LLC,
`381 F.3d 1142 (Fed. Cir. 2004) ................................................................................................. 5
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`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`959 F.3d 1091 (Fed. Cir. 2020) ............................................................................................. 6, 7
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`Mentor Graphics Corp. v. EVE-USA, Inc.,
`851 F.3d 1275 (Fed. Cir. 2017) ............................................................................................... 11
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`Nuvo Pharms. (Ireland) Designated Activity Co. v. Dr. Reddy's Lab'ys Inc.,
`923 F.3d 1368 (Fed. Cir. 2019) ............................................................................................... 11
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`Personalized Media Commc'ns, LLC v. Zynga, Inc.,
`No. 212CV00068JRGRSP, 2013 WL 5962812 (E.D. Tex. Nov. 7, 2013) ........................... 5, 9
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`Spectra-Physics, Inc. v. Coherent, Inc.,
`827 F.2d 1524 (Fed. Cir. 1987) ................................................................................................. 6
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`Via Vadis, LLC v. Amazon.com, Inc.,
`No. 1:14-CV-00813-LY, 2022 WL 174527 (W.D. Tex. Jan. 18, 2022) ................................... 5
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`Statutes
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`35 U.S.C. § 112 ............................................................................................................................. 2
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`I.
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`INTRODUCTION
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`AlmondNet moves to strike and exclude under Daubert the opinions of Dr. Henry Houh
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`regarding the alleged lack of enablement and written description of the ’639, ’586, and ’139
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`patents (“Asserted Patents”). Dr. Houh opines none of the asserted claims of the Asserted
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`Patents are enabled, but his opinions fail to meet any reliability standard set forth by Fed. R.
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`Evid. 702. Though he states in his report, in conclusory fashion, that every asserted claim of
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`every Asserted Patent would require “undue experimentation” of a POSITA, his conclusions are
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`unsupported by the factual analysis that would make them relevant and helpful to a jury: for
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`example, for every limitation of the Asserted Patents, Dr. Houh failed to consider, discuss, refer
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`to, or acknowledge the scope and teaching of the prior art, while still asserting that a POSITA
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`would not know to practice those limitations. Dr. Houh’s analysis is also infected by the
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`improper assumption that enablement is informed by whether the Asserted Patents enable
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`Amazon’s products as opposed to whether they enable the inventions of the asserted claims as
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`understood by a POSITA.
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`Similarly, Dr. Houh opines that none of the asserted claims are supported by adequate
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`written description, but his opinions there (which are limited to one written paragraph per
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`challenged limitation) simply incorporate his flawed analysis as to lack of enablement and thus
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`fail for the same reasons as do his enablement opinions. In addition, Dr. Houh applied the
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`wrong law. Each of his written description opinions start with a predicate assertion that the
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`limitation is a functional one, and then concludes a lack of written description because the
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`specification does not describe “how” a function is achieved. But whether a specification
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`teaches “how” to achieve a functional result is related to enablement, and does not answer,
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`much less control, the written description question. At bottom, Dr. Houh’s opinions on both
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`enablement and written description neither assist a jury nor are the products of reliable
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`principles and methods. They should be stricken and precluded.
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`Finally, in the absence of any competent and admissible evidence that the claims of the
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`Asserted Patents are not enabled or supported by adequate written description, Amazon cannot
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`point to any genuine dispute of material fact that the claims of the Asserted Patents satisfy both
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`of these Section 112 requirements. Accordingly, the Court should enter partial summary
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`judgment against Amazon and that the Asserted Patents are not invalid for lack of enablement
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`or written description.
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`II.
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`STATEMENT OF RELEVANT FACTS
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`On June 16, 2023, Amazon served the Opening Expert Report of Dr. Henry Houh
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`Regarding Invalidity for Lack of Enablement and Written Description Under 35 U.S.C. § 112.
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`See Declaration of James S. Tsuei, Ex. 1 (“Houh Op. Rpt.” or “opening report”). Dr. Houh’s
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`opening report sets forth the basis of his opinions that each and every asserted claim of the three
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`Asserted Patents are invalid as failing both enablement and written description requirements.
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`Dr. Houh structures his analysis by limitation. For the ’639 and ’586 patents (which
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`share a common specification and priority claim), he identifies and discusses two limitations.
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`See Houh Op. Rpt. ¶¶ 66-79 (discussing ’639 patent, limitation 24.b), ¶¶ 80-83 (‘639 patent,
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`limitation 24.c). That analysis is incorporated by reference to form the basis for his conclusions
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`as to the ’586 patent. See id. ¶¶ 86-88. Similarly, Dr. Houh addresses three limitations from the
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`’139 patent as the focus of his analysis. See ¶¶ 91-95 (’139 patent, limitation 37.a), ¶¶ 96-98
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`(’139 patent, limitation 37.c), and ¶¶ 99-100 (’139 patent, limitation 37.d).
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`A.
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`Dr. Houh’s Failure to Consider the State and Scope of the Prior Art
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`The Houh opening report fails to acknowledge, discuss, or otherwise reference the state
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`of the art or prior art, or what a POSITA would have understood based on the state of the art
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`and prior art, for any Asserted Patent. No prior art is mentioned, implicitly or explicitly, in the
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`opening report. Nor does any prior art appear in the list of materials considered attached to the
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`Houh opening report. The word “prior art” does not appear in the opening report, except once:
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`in a brief recitation of law relevant to written description. See Houh Op. Rpt. ¶ 32. Likewise, in
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`his deposition, Dr. Houh confirmed that his opinions on enablement and written description
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`were not informed by the state of the art or scope of the prior art. See, e.g., Ex. 2 (8/9/2023
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`Houh Depo. Tr.), at 133:18-134:4, 125:14-20, 132:5-25. As Dr. Houh stated:
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` Id. at 133:18-134:4.
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`B.
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`Houh’s Opinions Based on Amazon’s Accused Products
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`Dr. Houh’s opening report includes substantial discussion of the accused Amazon’s
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`Display Ad services and platforms and cites specifically to AlmondNet’s infringement
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`contentions. That discussion focuses on the presence of real-time bidding (“RTB”) auctions in
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`the accused products. See Houh Op. Rep. ¶¶ 76-77, 82, 93-94. Houh discusses Amazon’s
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`accused products and their use of RTB auctions to support his opinions that certain limitations
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`are not enabled. Paragraphs 76 and 77 of the opening report, addressing the ‘639 patent (which
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`has a November 28, 2000 priority date), are representative:
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`76.
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`.
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`77.
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`Ex. 1, ¶¶ 76-77.
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`Dr. Houh confirmed in his deposition that these paragraphs were intended to establish a
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`basis for lack of enablement based on the characteristics the RTB auctions in Amazon’s accused
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`products. See, e.g., Ex. 2, at 129:8-25, 117:8-22, 135:3-11, 186:11-16, 186:22-187:9.
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`C.
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`Dr. Houh’s Cursory Written Description Opinions
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`Dr. Houh does not provide a distinct set of opinions or analysis as to written description,
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`except in the form of a single, cursory paragraph at the end of each of his five sections
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`discussing a particular limitation (that is, each of the five sections ends with a conclusory
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`paragraph saying,
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`Houh Op. Rpt. ¶¶ 79, 83, 95, 98, & 100. Each of these conclusory paragraphs begins by
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`asserting that the given limitation is a functional one which claims a
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` See, e.g., id. at ¶ 79
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`)1, ¶ 83
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`).
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`1 All emphases added unless otherwise noted.
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`III. THE COURT SHOULD EXCLUDE UNDER DAUBERT AND STRIKE HOUH’S
`OPINIONS REGARDING ENABLEMENT
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`As a threshold to admissibility, Dr. Houh’s testimony must “assist the trier of fact to
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`understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. This requires that
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`his testimony be relevant and reliable. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589
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`(1993) . It is well-settled that expert opinions and testimony that rely on or apply incorrect legal
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`standards are unreliable and should be excluded. See, e.g., Personalized Media Commc'ns, LLC
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`v. Zynga, Inc., No. 212CV00068JRGRSP, 2013 WL 5962812, at *2 (E.D. Tex. Nov. 7, 2013).
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`Moreover, “[g]eneral and conclusory testimony … does not suffice as substantial evidence of
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`invalidity.” Koito Mfg. Co. v. Turn–Key–Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004).
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`A.
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`The Court Should Strike Dr. Houh’s Enablement Opinions Because He
`Failed to Consider the State and Scope of the Prior Art
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`Dr. Houh opines that each of the five claim limitations addressed in his opening report
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`would require of a POSITA undue experimentation. The Federal Circuit has explained that
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`“[w]hether undue experimentation is needed is not a single, simple factual determination, but
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`rather is a conclusion reached by weighing many factual considerations.” ALZA Corp. v. Andrx
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`Pharm., 603 F.3d 935, 940 (Fed. Cir. 2010) (citing In re Wands, 858 F.2d 731 (Fed. Cir. 1988)).
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`Those factual considerations, known as the Wands factors, include: “(1) the quantity of
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`experimentation necessary; (2) the amount of direction or guidance disclosed in the patent; (3)
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`the presence or absence of working examples in the patent; (4) the nature of the invention; (5)
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`the state of the prior art; (6) the relative skill of those in the art; (7) the predictability of the art;
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`and (8) the breadth of the claims.” Via Vadis, LLC v. Amazon.com, Inc., No. 1:14-CV-00813-
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`LY, 2022 WL 174527, at *6 (W.D. Tex. Jan. 18, 2022).
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`Notably, an “artisan’s knowledge of the prior art and routine experimentation can often
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`fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed
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`embodiments, depending upon the predictability of the art,” and a “patent need not teach, and
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`preferably omits, what is well known in the art.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
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`959 F.3d 1091, 1102 (Fed. Cir. 2020) (quoting Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
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`1524, 1534 (Fed. Cir. 1987)). Dr. Houh’s opening report, however, contains none of this type of
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`factual analysis: his report contains no assertions, express or otherwise, about what a POSITA
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`would have known based on the prior art. Dr. Houh’s deposition testimony further confirmed
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`that his enablement opinions were not informed by any predicate opinion or understanding
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`about the prior art or what it would have taught a POSITA. Ex. 2, at 133:18-134:4, 125:14-20,
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`132:5-25. When asked if he had any such opinions, his answer was,
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`Ex. 2, at 132:16-20. Dr. Houh testified only that he
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` Id. at 132: 20-25. The Houh opening report, however, does
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`not discuss or allude to, either implicitly or explicitly, any prior art, for any purpose (including
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`for the
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` conjecture that Dr. Houh volunteered in deposition). No prior art
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`appears in the list of materials considered. In fact, Dr. Houh confirmed multiple times that his
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`opinions did not take into account the scope of the prior art or the knowledge of a POSITA. See
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`Ex. 2, at 125:19-20
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`The absence of any such analysis from the Houh opening report renders its conclusions
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`on enablement unreliable. What a POSITA knew—and thus did not need to be “taught” by the
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`patent specification (cf. McRO, 959 F.3d at 1102)—in either 2000 or 2006 is a factual issue of
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`preeminent importance, particularly where Dr. Houh’s primary argument that claim limitations
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`are not enabled is that the specification does not describe, explain, or teach certain particular
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`things to a POSITA. Compare Houh Op. Rpt. ¶ 64
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`68
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`, ¶ 72
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` ¶ 79
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`, ¶ 81
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`, ¶ 92
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`, ¶ 99
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`.
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` ¶
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` ¶ 74
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`Put another way, Dr. Houh argues that the claims are not enabled because the
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`specification does not teach a POSITA to do certain things, but he has failed to do the necessary
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`predicate analysis of determining what a POSITA would already have understood or known
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`how to do. The failure to consider a POSITA’s pre-existing knowledge based on the state of the
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`art before concluding lack of enablement renders Dr. Houh’s opinions unreliable under Federal
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`Circuit precedent, which states that pre-existing knowledge of a POSITA, far from being
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`required, is “preferably omit[ted]” from the specification. McRO, 959 F.3d at 1102.
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`Further confirming the unreliability of his enablement opinions, Dr. Houh admitted
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`extemporaneously in deposition that, with respect to limitations 24.b and 24.c of the ’639
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`patent, a POSITA would know of “many ways” to do exactly what he asserted in his report was
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`not taught in the specification. See Ex. 2, at 174:9-25
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`testimony is highly relevant for two purposes: it (1) defeats Dr. Houh’s enablement opinion
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`based on the assertion that the specification does not teach a way to practice the limitation
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`(because the knowledge of a POSITA to practice “many ways” to satisfy the limitation would
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`“fill” the gaps in the specification), and it (2) highlights Dr. Houh’s total failure in his opening
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`report to consider the knowledge of a POSITA about the prior art for his enablement analysis.
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`Thus, as a whole, Dr. Houh’s opinions on enablement are not the product of a reliable
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`methodology and should be stricken. Allowing Amazon to present Houh’s enablement opinions,
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`where they have been generated without consideration of fundamental and important factual
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`issues, would prejudice AlmondNet in a way that could not be cured with additional jury
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`instructions.
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`B.
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`The Court Should Strike Dr. Houh’s Enablement Opinions Based on
`Amazon’s Accused Products
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`Dr. Houh’s opening report improperly opines that the Asserted Patents are not enabled
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`because they supposedly would not have enabled a POSITA to practice the RTB auction
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`technology of Amazon’s accused products. However, “the dispositive question of enablement
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`does not turn on whether the accused product is enabled.” Durel Corp., Durel Corp. v. Osram
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`Sylvania Inc., 256 F.3d 1298, 1306 (Fed. Cir. 2001); see also Enzo Biochem, Inc. v. Calgene,
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`Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999) (“Whether claims are sufficiently enabled by a
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`disclosure in a specification is determined as of the date that the patent application was first
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`filed.”). Thus, the relevant inquiry is whether AlmondNet’s patents would allow a POSITA to
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`practice, in the year 2000 (for the ’639 and ’586 patents) or 2006 (for the ’139 patent), “the full
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`scope of the claimed invention[s] without undue experimentation” (Durel, 256 F.3d at 1306)—
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`not whether one could implement the RTB auctions used by Amazon’s products in 2023.
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`Thus, where an expert opines that certain patent claims are not enabled with reference to
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`an accused infringer’s products, such testimony is unhelpful to a jury in that it fails to apply the
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`correct law on enablement. See, e.g., Inline Connection Corp. v. AOL Time Warner Inc., No.
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`CIVA 02-272MPT, 2007 WL 275928, at *1 (D. Del. Jan. 29, 2007) (“[W]hile defendants'
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`ADSL service allegedly uses the claimed system to infringe, that does not mean that the patent
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`specification must enable the ADSL service as opposed to merely the claimed system.”). In
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`Personalized Media, the court examined, and excluded, a set of opinions which closely
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`resembled those expressed in the Houh opening report about lack of enablement based on
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`Amazon’s RTB auctions. The court granted the patentee’s motion to strike in that case because
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`the infringer’s expert, like Dr. Houh, relied on a legally incorrect standard to support opinions
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`that the patents did not enable the accused products. Indeed, Dr. Houh’s emphasis and reliance
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`on “the accused [product] as the touchstone for enablement is contrary to the Federal Circuit’s
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`mandate in Durel.” Personalized Media, 2013 WL 5962812, at *2. Such opinions are “not
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`sufficiently reliable and relevant to the issues before the jury, and should thus be excluded under
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`Federal Rule of Evidence 702 and Daubert. Id.
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`Dr. Houh’s own report confirms that his opinions based on the accused products are
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`legally improper. For example, Dr. Houh asserts
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` Houh Op. Rpt.
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`¶ 77. Whether viewing the issue from the 2000 priority date of the ’639 and ’586 patents or the
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`2006 priority date of the ’139 patent, nothing Amazon says can cure Dr. Houh’s failure to apply
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`the correct law: “[w]hether claims are sufficiently enabled by a disclosure in a specification is
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`determined as of the date that the patent application was first filed.” Enzo Biochem, 188 F.3d
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`1362, 1371 (Fed. Cir. 1999).
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`Thus, the Court should strike Dr. Houh’s opinions asserting alleged lack of enablement
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`based on comparisons to Amazon’s accused products and its use of RTB auctions, including
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`those found in paragraphs 76-77, 82, 93-94 of his opening report. Allowing Amazon to
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`introduce its own RTB auction technology as part of its lack of enablement defense would serve
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`only to confuse the jury and prejudice AlmondNet, and in a way that would be difficult or
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`impossible to cure on cross-examination or with a curative instruction.
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`IV.
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`THE COURT SHOULD EXCLUDE UNDER DAUBERT AND STRIKE DR.
`HOUH’S OPINIONS REGARDING WRITTEN DESCRIPTION
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`A.
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`Dr. Houh Incorrectly Applied the Law on Enablement to Support His
`Written Description Opinions
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`All of Dr. Houh’s opinions regarding alleged lack of written description should be
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`stricken as conclusory and cursory, and because Dr. Houh simply applied the wrong law. Each
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`of Dr. Houh’s five paragraphs setting forth his written description opinions (Houh Op. Rpt. ¶¶
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`79, 83, 95, 98, & 100) follows a structure that appears to apply the law on enablement for
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`functional claiming—law which Houh recites in his opening report at paragraph 26. Compare
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`id. ¶ 26 (discussing legal principles for enablement):
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`26.
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`Dr. Houh’s five “written description” paragraphs (Houh Op. Rpt. ¶¶ 79, 83, 95, 98, &
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`100) tracks the structure provided in his paragraph 26 about enabling functional claims. In his
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`“written description” paragraphs, he begins by asserting the limitation amounts to a functional
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`result, and then contends that the specification does not explain “how” the result is achieved.
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`See id. But those “how” an invention is practiced pertains to whether a claimed invention is
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`enabled, not whether a claim is supported by sufficient written description. “Every patent must
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`describe an invention. . . . The specification must then, of course, describe how to make and
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`use the invention (i.e., enable it), but that is a different task.” Ariad Pharms., Inc. v. Eli Lilly
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`& Co., 598 F.3d 1336, 1345 (Fed. Cir. 2010); see also id. (characterizing “Supreme Court
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`precedent as recognizing a written description requirement separate from an enablement
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`requirement”).
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`By collapsing his written description and enablement analysis as if the test for one
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`requirement satisfies the other, Dr. Houh violates the principle that the two requirements are
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`distinct and subject to different tests. See Nuvo Pharms. (Ireland) Designated Activity Co. v. Dr.
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`Reddy's Lab'ys Inc., 923 F.3d 1368, 1382 (Fed. Cir. 2019) (“the enablement requirement, which
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`requires the specification to teach those skilled in the art how to make and use the claimed
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`invention without undue experimentation, is separate and distinct from the written description
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`requirement”). The analysis for written description is different: “the test for sufficiency is
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`whether the disclosure of the application relied upon reasonably conveys to those skilled in the
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`art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad
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`Pharms., 598 F.3d at 1351. Houh simply fails to analyze the patent claims under the correct
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`standard, much less analyze what the specifications would have conveyed to a POSITA primed
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`with knowledge about by the state of the prior art. As a result, his written description opinions
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`are neither the product of reliable methodology nor based on sufficient facts.
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`B.
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`Dr. Houh Failed to Consider the Originally Filed Claims of the U.S. Patent
`Application 09/732,391, to Which ‘639 and ‘586 Patents Claim Priority
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`Finally, in his deposition, Dr. Houh conceded that he had not considered U.S. Patent
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`Application 09/723,391 (the “’391 application”), to which both the ’639 and ’586 patents claim
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`priority. See Ex. 2, at 142:24-143:10; Ex. 3 (’391 application). But, “[o]riginal claims are part of
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`the original specification and in many cases will satisfy the written description requirement.”
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`Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). This is
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`because original claims show “‘that the applicants had in mind the invention as claimed’ and
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`described it.” Id. (quoting Crown Packaging Tech., Inc. v. Ball Metal Beverage Container
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`Corp., 635 F.3d 1373, 1381 (Fed. Cir. 2011)). Thus, to the extent the ’391 application contains
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`originally filed claims tending to show that the inventor possessed a disputed limitation of the
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`’639 and ’586 patents, the Houh opening report failed to consider such evidence and has offered
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`no opinion or analysis otherwise.
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`As for disputed limitations, the Dr. Houh asserts that limitation 24.b of the ’639 patent is
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`not enabled because
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` Houh Op. Rpt. ¶ 67. But he is wrong. The claims of the
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`’391 application in fact provide written description and serve as evidence that the inventor
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`possessed that limitation. They clearly disclose and evidence recognizing a visitor on a second
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`website. For just a few examples, see:
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`[claim 1] “) an agency facilitating visitor identification; b) in conjunction with the
`agency, a first broadcaster of a first information-media tagging a preponderance
`of visitors to the first information-media with a tag; and c) in conjunction with the
`agency, a second broadcaster of a second information-media recognizing a visitor
`to the second information media as having the tag, and thereupon by proxy-either
`in conjunction with the agency or in conjunction with the first broadcaster-the
`second broadcaster accepting an offsite content presentation for the recognized
`visitor.
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`[claim 254] whereby the second broadcaster provides a facilitated recognizing of
`a visitor to the second information-media as having the tag, and thereupon by
`proxy - either in conjunction with the agency or in conjunction with the first
`broadcaster – the second broadcaster provides a facilitated accepting the offsite
`content presentation for the recognized visitor; and ii) whereby the agency pays
`for the facilitated delivery accepting.
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`Ex. 3, at 191-236. As shown above, the ‘391 application provides highly material and relevant
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`written description support for the limitations challenged by Dr. Houh. Accordingly, Dr. Houh’s
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`failure to address or acknowledge the original claims further renders his opinion unreliable.
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`V.
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`THE COURT SHOULD GRANT PARTIAL SUMMARY JUDGMENT OF NO
`INVALIDITY BASED ON LACK OF ENABLEMENT OR WRITTEN
`DESCRIPTION
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`Dr. Houh’s opinions as to alleged lack of enablement and written description do not
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`raise a genuine dispute precluding partial summary judgment of no invalidity based on lack of
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`enablement. As explained above, the opinions in the Houh opening report about the lack of
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`enablement of the Asserted Patents should be stricken as unreliable because Dr. Houh failed to
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`consider or determine what was within the POSITA’s understanding about the state and scope
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`of the prior art. Dr. Houh’s opinions about lack of enablement based on Amazon’s use of RTB
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`auctions in its accused products should be stricken for the reasons stated above, as well.
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`In addition, further underscoring the inadmissibility of his opinions, Dr. Houh
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`volunteered in his deposition that, actually, there were
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`reconciled with Dr. Houh’s opinion in his written report, for the same limitation, based on what
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` Ex. 2, at 174:9-25. This admission cannot be
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`is allegedly not disclosed in the specification. Compare Ex. 1, ¶ 80
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`. This and Dr. Houh’s other similar opinions cannot establish a
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`lack of enablement where, as Dr. Houh testifies, the POSITA would have already known of
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`“many ways” to practice the limitation.
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`Further, Dr. Houh’s opinions as to the alleged lack of sufficient written description
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`should be stricken for the reasons explained above. Dr. Houh failed to apply the correct legal
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`analysis required to support an opinion about the sufficiency of the written description for a
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`claim, and instead opined as if he were considering the issue of enablement: that the disputed
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`limitations were functional, and that specifications of the patents allegedly did not explain
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`“how” the limitations were achieved.
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`In the absence of competent evidence from Amazon or its chosen expert, much less clear
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`and convincing evidence, Amazon cannot show there is a genuine issue of material fact raising
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`a question about enablement or written description. No reasonable jury could find any of the
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`asserted claims not enabled or lack adequate written description.
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`Date: August 23, 2023
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`Respectfully submitted,
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`By: /s/ James S. Tsuei
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`Reza Mirzaie
`Marc A. Fenster
`Benjamin T. Wang
`Adam Hoffman
`James A. Milkey
`Amy E. Hayden
`James S. Tsuei
`Jonathan Ma
`Daniel B. Kolko
`Jason M. Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`bwang@raklaw.com
`ahoffman@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`jtsuei@raklaw.com
`jma@raklaw.com
`dkolko@raklaw.com
`jwietholter@raklaw.com
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`Counsel for Plaintiff ALMONDNET, INC.
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on August 23, 2023, counsel of record who have appeared in this case are being served with
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`a copy of the foregoing via email.
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`/s/ James S. Tsuei
`James S. Tsuei
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