Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ALMONDNET, INC.,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, and AMAZON WEB
`SERVICES, INC.,
`
`Defendants.
`
`Civil Action No. 6:21-cv-00898-ADA-DTG
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION TO STRIKE AND
`EXCLUDE CERTAIN OPINIONS OF DR. HENRY HOUH REGARDING
`ENABLEMENT AND WRITTEN DESCRIPTION;
`
`AND
`
`MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY BASED ON
`LACK OF ENABLEMENT AND LACK OF WRITTEN DESCRIPTION
`
`

`

`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 2 of 20
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`DR. HOUH’S NON-ENABLEMENT OPINION IS PROPER ...........................................2
`
`A.
`
`B.
`
`Dr. Houh’s Opinion Is Consistent with the Enablement Inquiry
`Described in Amgen .................................................................................................2
`
`Dr. Houh’s Opinion Properly Considers the Accused Functionality
`That AlmondNet Asserts is Within the Scope of the Claims...................................6
`
`III.
`
`DR. HOUH’S WRITTEN DESCRIPTION OPINION IS PROPER ...................................8
`
`A.
`
`Dr. Houh Applied the Correct Standard of Law in His Written
`Description Opinion .................................................................................................8
`
`B. Written Description Analysis Does Not Require Explicit Analysis of
`the Original Claims ................................................................................................10
`
`ALMONDNET’S MOTION TO STRIKE CONFUSES THE BURDENS AND
`ORDER OF PROOF FOR SHOWING LACK OF ENABLEMENT AND
`WRITTEN DESCRIPTION...............................................................................................11
`
`PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY IS IMPROPER ................12
`
`IV.
`
`V.
`
`
`
`i
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 3 of 20
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Alcon Rsch. Ltd. v. Barr Lab’ys, Inc.,
`745 F.3d 1180 (Fed. Cir. 2014)..................................................................................................2
`
`Amgen Inc. v. Sanofi,
`598 U.S. 594 (2023) ......................................................................................................... passim
`
`Amgen Inc. v. Sanofi, Aventisub LLC,
`987 F.3d 1080 (Fed. Cir. 2021)..................................................................................................2
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010)............................................................................................9, 12
`
`Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc.,
`501 F.3d 1274 (Fed. Cir. 2007)..................................................................................................7
`
`Baxalta Inc. v. Genentech, Inc.,
`579 F. Supp. 3d 595 (D. Del. 2022) ...........................................................................................7
`
`Durel Corp. v. Osram Sylvania Inc.,
`256 F.3d 1298 (Fed. Cir. 2001)..............................................................................................7, 8
`
`FWP IP ApS v. Biogen MA, Inc.,
`749 F. App’x 969 (Fed. Cir. 2018) ..........................................................................................11
`
`Genentech, Inc. v. Novo Nordisk A/S,
`108 F.3d 1361 (Fed. Cir. 1997)..................................................................................................4
`
`Idenix Pharms. LLC v. Gilead Sciences Inc.,
`941 F.3d 1149 (Fed. Cir. 2019)..................................................................................................4
`
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988)................................................................................................2, 3
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`481 F.3d 1371 (Fed. Cir. 2007)..................................................................................................7
`
`Lipocine Inc. v. Clarus Therapeutics, Inc.,
`541 F. Supp. 3d 435 (D. Del. 2021) .........................................................................................10
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`959 F.3d 1091 (Fed. Cir. 2020)........................................................................................3, 4, 12
`
`Mobility Workx, LLC v. Cellco P'ship, No. 4:17-CV-00872, 2019 WL 5721814, at *15
`(E.D. Tex. Nov. 5, 2019) .........................................................................................................13
`
`ii
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 4 of 20
`
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page(s)
`
`Nuvo Pharms. (Ireland) Designated Activity Co. v. Dr. Reddy’s Lab’ys Inc.,
`923 F.3d 1368 (Fed. Cir. 2019)................................................................................................10
`
`Personalized Media Commc’ns, LLC v. Zynga, Inc.,
`No. 2:12-cv-00068-JRG-RSP, 2013 WL 5962812 (E.D. Tex. Nov. 7, 2013) .......................7, 8
`
`Puga v. RCX Sols., Inc.,
`922 F.3d 285 (5th Cir. 2019) ...................................................................................................12
`
`Trustees v. Everlight,
`896 F.3d 1357 (Fed. Cir. 2018)..................................................................................................6
`
`
`
`iii
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 5 of 20
`
`
`Table of Exhibits and Docket Cites
`
`Dkt. 138
`
`Ex. 1
`
`Exhibit /
`Docket No. Description
`Plaintiff’s Motion to Strike and Exclude Certain Opinions of Dr. Henry
`Houh Regarding Enablement and Written Description; and Motion for
`Partial Summary Judgment of No Invalidity Based on Lack of Enablement
`and Lack of Written Description, filed August 23, 2023 (“Mot.”)
`Opening Expert Report of Dr. Henry Houh Regarding Invalidity for Lack of
`Enablement and Written Description Under 35 U.S.C. ¶ 112, served June
`16, 2023 (“Houh 112 Rep.”)
`Excerpts from the Deposition of Henry Houh, Ph.D., taken August 9, 2023
`(“Houh Dep.”)
`Excerpts from the Expert Report of Jason Frankovitz Regarding Invalidity,
`served July 28, 2023 (“Frankovitz Reb. Rep.”)
`Exhibit C, List of Materials Considered, to the Opening Expert Report of
`Dr. Henry Houh Regarding Invalidity for Lack of Enablement and Written
`Description Under 35 U.S.C. ¶ 112, served June 16, 2023 (“Houh 112 Rep.
`Ex. C”)
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`
`
`iv
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 6 of 20
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`I.
`
`INTRODUCTION
`
`AlmondNet moves to strike Dr. Houh’s opinions that the Asserted Patents are not enabled
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`and lack written description, based on incorrect assertions of law and inaccurate portrayals of
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`Dr. Houh’s expert report and deposition testimony. As to enablement, AlmondNet asserts that an
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`expert opinion must include an explicit description of the scope of the prior art and the knowledge
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`of a POSITA and cannot consider functionality that is accused as within the scope of the claims.
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`That is contrary to the controlling law. Concerning written description, AlmondNet asserts that
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`conclusions supporting lack of enablement cannot also support a lack of written description, and
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`that an expert must explicitly consider the originally filed claims. Both arguments are also
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`incorrect. In earnest, AlmondNet contends that
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`
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`. But even if true – and it is not – those are arguments
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`that go to the weight, not the admissibility of expert testimony. AlmondNet is free to explore and
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`exhaust them to its satisfaction on cross-examination of Dr. Houh at trial, and the jury is likewise
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`at liberty to weigh the evidence of his opinion testimony and his credibility in offering it. There is
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`no supportable basis in law or in fact, however, for striking Dr. Houh’s opinions as “unreliable.”
`
`Central to and singular in every dispute concerning section 112 of the Patent Act is the patent
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`specification itself, and Dr. Houh’s opinions in that respect are indisputably anchored to that text
`
`here. Because Dr. Houh’s application of the law is fully consistent with the Supreme Court’s
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`recent ruling on enablement in Amgen and the legal standards for written description, AlmondNet’s
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`motion to exclude Dr. Houh’s testimony and for partial summary judgment of no invalidity must
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`be denied in its entirety.
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`1
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 7 of 20
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`II.
`
`DR. HOUH’S NON-ENABLEMENT OPINION IS PROPER
`
`A.
`
`Dr. Houh’s Opinion Is Consistent with the Enablement Inquiry Described in
`Amgen
`
`In the recent Amgen case on enablement, the Supreme Court affirmed the Federal Circuit’s
`
`finding of non-enablement because the asserted patent’s specification failed to provide “adequate
`
`guidance” to make and use the full scope of the claimed invention. Amgen Inc. v. Sanofi, 598 U.S.
`
`594, 608 (2023). If a patent’s claims recite an entire class of processes, “the patent’s specification
`
`must enable a person skilled in the art to make and use the entire class.” Id. The Supreme Court
`
`acknowledged that the specification “may call for a reasonable amount of experimentation to make
`
`and use a patented invention.” Id. at 612. However, this “tolerance” for reasonable
`
`experimentation “cannot detract from the basic statutory requirement that a patent’s specification
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`describe the invention” to enable a POSITA to make and use the claimed invention. Id. Dr. Houh’s
`
`opinion addresses
`
`
`
`
`
`. (See, e.g., Ex. 1, Houh 112 Rep. ¶¶ 56-101.)
`
`AlmondNet contends that Dr. Houh’s non-enablement opinion should be stricken because
`
`the enablement analysis requires explicit consideration of the Wands factors. See In re Wands,
`
`858 F.2d 731, 737 (Fed. Cir. 1988). That has never been so categorically the law. While the
`
`Wands factors can be considered in an enablement analysis, neither the Federal Circuit nor the
`
`Supreme Court have held that all, or even any, of the factors must be considered. See Amgen Inc.
`
`v. Sanofi, Aventisub LLC, 987 F.3d 1080, 1084–85 (Fed. Cir. 2021) (“As we have stated
`
`elsewhere,” the Wands factors “provide the factual considerations that a court may consider when
`
`determining whether the amount of that experimentation is either undue or sufficiently routine[.]”)
`
`(emphasis added) (citations omitted); see also Alcon Rsch. Ltd. v. Barr Lab’ys, Inc., 745 F.3d 1180,
`
`2
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 8 of 20
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`1190 (Fed. Cir. 2014) (overturning district court’s ruling where it applied the Wands factors but
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`failed to address the “determinative question” as to whether “any experimentation is necessary to
`
`practice the claimed methods.”).
`
`The only required inquiry, one undertaken by Dr. Houh in his report and consistent with
`
`the Supreme Court’s Amgen decision, is whether a person of ordinary skill in the art, at the time
`
`of the effective filing date of the patents, would have been able to make and use the claimed
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`invention based on the express disclosure in the specification, or whether, prohibitively, the
`
`specification compels “painstaking experimentation” in order to recreate embodiments of the
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`invention to an extent/degree commensurate with the full scope of the claims. Amgen, 598 U.S. at
`
`614; (Houh 112 Rep. ¶¶ 25-28). Even if Dr. Houh did not explicitly describe the Wands factors in
`
`his report, Dr. Houh explained at his deposition that “looking at what I did lay out . . . , they are
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`consistent with the Wands factors.” (Ex. 2, Houh Dep. at 148:7-10.)
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`More particularly, AlmondNet faults Dr. Houh’s analysis for failing to explicitly assert
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`“what a POSITA would have known based on the prior art.” (Dkt. 138, Mot. at 6.) Citing McRO,
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`AlmondNet suggests that because “a patent need not include what is well known in the art,” Dr.
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`Houh’s opinion is unreliable because his report does not expound upon what does not need to be
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`expressed within the four corners of a patent’s specification. (Id. at 6 (citing McRO, Inc. v. Bandai
`
`Namco Games Am. Inc., 959 F.3d 1091, 1102 (Fed. Cir. 2020)).) Such a premise defies logic,
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`when the enablement inquiry asks what the specification should disclose to a POSITA in order
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`that they may make and use the invention without undue experimentation.
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`McRO, the case on which AlmondNet principally relies in support of its Motion, confirms
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`that where a method or process is identified as within the scope of the claims and asserted as a
`
`novel aspect of the claimed invention, “the specification must reasonably teach how to make and
`
`use this aspect of the invention.” McRO, 959 F.3d at 1102. If anything, Dr. Houh’s opinion
`
`3
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 9 of 20
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`. Genentech, Inc. v. Novo Nordisk
`
`
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`A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997) (“It is the specification, not the knowledge of one skilled
`
`in the art, that must supply” an enabling description (emphasis added)).
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` (Houh 112 Rep. ¶ 66.) While the specification identifies many different types of
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`
`
`
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`
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`describe how sites can
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` yet the ’639 and ’586 patents do not
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`. (Id. ¶ 72.) Nothing in the record
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`suggests that sharing and matching cookie information are outside of the scope of the claims or
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`that the specification explicitly indicates that a claimed limitation was known to POSITA. Cf.
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`McRO, 959 F.3d at 1101-1103 (vacating district court finding of non-enablement because claim
`
`construction determined on appeal rendered certain systems outside the scope of the claims and
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`finding that a claimed step did not need to be taught because “[t]he specification itself indicates
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`that animators knew how” to perform the step.) AlmondNet’s insistence that Dr. Houh fill the
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`gaps he identifies in the specification with the knowledge of a POSITA would be “an
`
`impermissible end-run around the requirement” for a specification to enable the full scope of a
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`patent’s claims. Idenix Pharms. LLC v. Gilead Sciences Inc., 941 F.3d 1149, 1159 (Fed. Cir. 2019)
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`(“[I]t would be improper to rely on a POSA’s knowledge [] to fill the gaps in the specification”).
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`4
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`- -
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`(“
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`information that can be used to “tag” a visitor, Dr. Houh opines that
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`.”) In the case of a tag that is a cookie, Dr. Houh explained that
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`. (Id. ¶¶ 66-68.)
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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 10 of 20
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`AlmondNet then mischaracterizes Dr. Houh's deposition testimony to mean that Dr. Houh
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`never considers what a POSIT A would have understood at the time of the invention. Mot. at 6-7.
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`Not so; Dr. Houh repeatedly explained that
`
`- (
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`See also 132:7-12 ('
`
`) ( emphasis added); 130:24-131: 1 O; 133: 11-17; 133 :24-134:3)
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`Fmt her, as evident throughout Dr. Houh's report, his analysis in fact considers ■
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`_
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`_ 1 (See, e.g., Houh 112 Rep. ,i,i 64, 72 (explaining that
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`); ,I 49
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`See Houh Dep. at 175:11-16; 62:16-23.
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`5
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 11 of 20
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`-
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`)- Dr. Houh's deposition testimony affinns that
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`; ,r,r 71, 72, 88, 92, 96
`
`(emphasis added).)
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`Far from illustrnting a "total failure in his opening repo1i to consider the knowledge of a
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`POSITA" (Mot. At 8), Dr. Houh's opinion considers
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`. See Amgen, 598 U.S. at 613. ("if our cases teach anything, it is that the more a
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`paiiy claims, the broader the monopoly it demands, the more it must enable."); see also Trnstees
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`v. Everlight, 896 F.3d 1357, 1363 (Fed. Cir. 2018) (a POSITA's knowledge "cannot substitute for
`
`a basic enabling disclosure").
`
`B.
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`Dr. Houh's Opinion Properly Considers the Accused Functionality That
`AlmondNet Asserts is Within the Scope of the Claims
`
`AhnondNet fini her seeks to strike paragraphs 76-77, 82, 93-94 of Dr. Houh's non-
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`enablement repo1i for opining that
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`appears to argue that accused functionality should never be considered in the enablement inquny
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`. (Mot. at 8-9.) AlmondNet
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`6
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 12 of 20
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`at all. Again, Almond.Net is wrong. Comis have found it "significant" when a patent "does not
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`remotely enable the accused [product], which must fall within the scope of the claims to establish
`
`an infringement claim." Baxa/ta Inc. v. Genentech, Inc. , 579 F. Supp. 3d 595, 623 (D. Del. 2022);
`
`see also Auto. Techs. Int'/, Inc. v. BMW of N Am., Inc. , 501 F.3d 1274, 1280 (Fed. Cir. 2007)
`
`(affinning smnmaiy judgment of non-enablement for patent's failure to enable electrnnic sensor
`
`in accused side-impact sensors); Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1378-1380
`
`(Fed. Cir. 2007) (affinning that the plaintiffs pursued claim scope to include a jacketless system
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`for infringement was not fully enabled).
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`Almond.Net reliance on Dure/ and Personalized Media is unavailing. In Dure!, because
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`the posture of the proceedings was far downstreain from the pre-tr·ial stage in which this case
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`presently stands, the accused oxide coatings in Dure/ were already found to be outside of the scope
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`of the asse1ied claims under a construction already affomed by the Federal Circuit. Dure/ Corp.
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`v. Osram Sylvania Inc. , 256 F.3d 1298, 1307 (Fed. Cir. 2001). Thus, the accused oxide coatings
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`were "iITelevant to enablement because they ai·e outside the scope of the clanns as we have
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`construed them." Id. Snnilarly, in Personalized Media, the opinion of the patent challenger's
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`expe1i "revolve[ d] ai·ound" whether the specification taught "technology requiI·ed by and
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`fundainental to the operation of the accused gaines" without establishing whether such technology
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`fell within the scope of the claims. Personalized Media Commc 'ns, LLC v. Zynga, Inc. , No. 2:12-
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`cv-00068-JRG-RSP, 2013 WL 5962812, at *2 (E.D. Tex. Nov. 7, 2013). In contr·ast, Dr. Houh 's
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`repo1i considers
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`. (See, e.g. , Houh 112 Rep.~ 92
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`), 93
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`).) Dr. Houh's repo1i
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`7
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 13 of 20
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`focuses on
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`
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`the accused technology at issue in Durel and Personalized Media,
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` are squarely
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`within the scope of the claims and relevant to the enablement inquiry. Accordingly, it is
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`. (Id.; see also ¶¶ 73-76.) Thus, unlike with
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`appropriate for Dr. Houh to
`
`
`
`-
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`. See Amgen, 598 U.S. at 613 (because “the claims before us sweep much broader than
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`those 26 antibodies” explicitly described in the specification, “Amgen has failed to enable all that
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`it has claimed.”).
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`AlmondNet additionally concludes that Dr. Houh failed to analyze whether the
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`specification provided an enabling disclosure as of the effective filing date, because Dr. Houh
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`notes that real-time bidding auctions were introduced in 2009. (Mot. at 9.) AlmondNet again
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`misreads Dr. Houh’s report, ignoring the fact that
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`
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`Thus, Dr. Houh’s explanation is not “legally improper” as AlmondNet alleges, and the Court
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`.” (Houh 112 Rep. ¶ 76 (emphasis added); see also ¶ 93.)
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`should allow Dr. Houh’s non-enablement opinion to be presented to the jury.
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`III. DR. HOUH’S WRITTEN DESCRIPTION OPINION IS PROPER
`
`A.
`
`Dr. Houh Applied the Correct Standard of Law in His Written Description
`Opinion
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`AlmondNet does not dispute that
`
`
`
`. (Mot. at 10-11;
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`Houh 112 Rep. ¶¶ 29-30.) Instead, it alleges Dr. Houh applied the incorrect legal standard for
`
`8
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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 14 of 20
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`written description because his reasoning only “pertains to whether a claimed invention is
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`enabled,” and not whether the specification includes sufficient written description. (Mot. at 10.)
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`But, in his deposition, Dr. Houh confirmed numerous times that
`
`-
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`172:4-13.)
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` (Houh Dep. at 125:20-25; see also 129:16-23; 147:13-16; 149:21-150:3; 154:1-9;
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`AlmondNet’s argument appears to be that whether a specification explains “how” a
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`claimed result is achieved cannot also inform whether it reasonably conveys to a POSITA that the
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`inventor possessed the claimed invention. (Mot. at 10-11.) AlmondNet cites to no legal authority
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`for this proposition. To the contrary, courts acknowledge that “written description and enablement
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`often rise and fall together,” and there is often “little difference in some fields between describing
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`an invention and enabling one to make and use it.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
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`1336, 1352 (Fed. Cir. 2010). Well-illustrating that reasoning, Dr. Houh’s testified that
`
`-
`
`
`
`
`
`
`
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`
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`(“
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`. (Houh Dep. at 184:11-19; see also Houh 112 Rep. ¶ 79
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`,
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`9
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 15 of 20
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`.”); see also ¶ 83.)
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`Because the focus of the written description requirement is “whether the specification
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`notifies the public about the boundaries and scope of the claimed invention and shows that the
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`inventor possessed all the aspects of the claimed invention,” Dr. Houh’s opinion on
`
`
`
`
`
`, fairly applies the legal standard for written description. Nuvo Pharms. (Ireland)
`
`Designated Activity Co. v. Dr. Reddy’s Lab’ys Inc., 923 F.3d 1368, 1382 (Fed. Cir. 2019).
`
`Additionally, since the “enablement requirement is often more indulgent than the written
`
`description requirement,” Dr. Houh’s conclusion that the
`
`
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` is based in logic and not unreliable.
`
`Lipocine Inc. v. Clarus Therapeutics, Inc., 541 F. Supp. 3d 435, 465 (D. Del. 2021) (citation
`
`omitted).
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`B. Written Description Analysis Does Not Require Explicit Analysis of the
`Original Claims
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`AlmondNet lastly seeks to exclude Dr. Houh’s written description opinion because he
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`allegedly fails to consider the originally filed claims of the ’586 and ’639 patents. However, this
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`is not a valid ground for excluding his testimony; AlmondNet can cite no authority for such a
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`proposition. Nor is it equitable, especially where AlmondNet’s expert Dr. Frankovitz himself does
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`not analyze or describe the original claims of the ’586 and ‘639 patent. (Frankovitz Reb. Rep.
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`¶¶ 458-515.) In any case, AlmondNet is wrong –
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`
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` AlmondNet, moreover, provides no evidence, only
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`conclusory attorney argument, that the original claims provide written description support to the
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`asserted claims. (Mot. at 11-12; see also FWP IP ApS v. Biogen MA, Inc., 749 F. App’x 969, 978
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`10
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`

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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 16 of 20
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`(Fed. Cir. 2018) (finding lack of written description where the plaintiff provides no explanation as
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`to why a skilled artisan would be able to cobble together selected elements from several different
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`[original] claims).)
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`For these and the foregoing reasons, the Court should deny AlmondNet’s request to
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`exclude Dr. Houh’s written description opinions.
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`IV. ALMONDNET’S MOTION TO STRIKE CONFUSES THE BURDENS AND
`ORDER OF PROOF FOR SHOWING LACK OF ENABLEMENT AND
`WRITTEN DESCRIPTION
`
`Ultimately, what renders AlmondNet’s motion most unavailing is its implicit confusion of
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`the parties’ respective burdens in this case. It is true that Amazon has the ultimate burden of
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`persuasion on invalidity, including on its grounds of non-enablement and lack of written
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`description. But Amazon’s burden of production is met by Dr. Houh’s consideration of evidence
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`of the patent specifications themselves coupled with Dr. Houh’s testimony as to their contents and
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`whether there is sufficient disclosure, within the four corners of the document, of how to make and
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`use embodiments of the invention that is within the patent’s broad claims. In this case, it is
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`undisputed by AlmondNet that real-time bidding advertising is an embodiment that falls within its
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`claims. (Supra p. 6-8). Therefore, Dr. Houh’s expert opinion testimony that
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`
`
` is evidence that satisfies Amazon’s burden of production on its enablement
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`and written description defenses. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
`
`(Fed. Cir. 2010). That burden is met by Amazon irrespective of whether Dr. Houh considered –
`
`much less identified or articulated – a POSITA’s knowledge in the art that may have nonetheless
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`despite not enabled the claims being disclosed in the specification. There is no authority imposing
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`such a requirement in order for a patent challenger under § 112 to meet its burden of production,
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`and AlmondNet does not suggest otherwise. The burden of proof then shifts to AlmondNet to
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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 17 of 20
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`offer a rebuttal expert opinion, as Dr. Frankovitz does, opining that an express teaching in the
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`patent is unnecessary for an ordinarily skilled artisan, who would be enabled to make and use the
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`embodiment by filling the undisclosed “gaps” in the specification with what was general
`
`knowledge in the art by the time of the alleged invention. See, e.g., McRO (“a patent need not
`
`include what is well known in the art”).
`
`Dr. Houh is of course subject to cross-examination, as is Dr. Frankovitz, on whether,
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`which, why, and to what extent they did (or did not) consider prior art or the knowledge of a
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`POSITA. Following such an examination, it is up to the jury to find them credible. Just because
`
`Dr. Houh confirmed
`
`
`
`
`
`, it does not follow that his expert testimony is “unreliable,” or that this
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`expert testimony is “no evidence.” Puga v. RCX Sols., Inc., 922 F.3d 285, 294 (5th Cir. 2019) (“As
`
`a general rule, questions relating to the bases and sources of an expert’s opinion affect the weight
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`to be assigned that opinion rather than its admissibility.”) (citation omitted). That has never been
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`the law, and AlmondNet cites no authority stating that it is.
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`V.
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`PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY IS IMPROPER
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`For the same reasons it seeks to exclude Dr. Houh’s testimony, AlmondNet asks this Court
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`to find partial summary judgment of no invalidity based on lack of enablement or written
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`description. As demonstrated above, Dr. Houh’s opinion should not be excluded, and thus,
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`genuine issues of material fact exist for a jury to resolve at trial.
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`For enablement, any alleged failure by Dr. Houh to adequately describe or consider “what
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`was within the POSITA’s understanding about the state and scope of the prior art” (Mot. at 13)
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`goes to the weight, not admissibility, of his opinions that the specification fails to enable a POSITA
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`to make and used the broadly claimed inventions of the Asserted Patents. Idenix, 941 F.3d at 1159.
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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 18 of 20
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`It is not contradictory for Dr. Houh to also opine that that
`
`
`
`
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`. (See Houh
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`112 Rep. at ¶ 80.) Similarly for the written description inquiry, Dr. Houh properly considered
`
`
`
`
`
`AlmondNet’s disagreement with the evidence that Dr. Houh allegedly does or does not consider
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`goes to the weight of his opinions, not its admissibility. See Mobility Workx, LLC v. Cellco P'ship,
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`No. 4:17-CV-00872, 2019 WL 5721814, at *15 (E.D. Tex. Nov. 5, 2019) (“The Court is not in the
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`business of weighing whether evidence is weak or strong, that is the jury's job.”).
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`The Court should therefore deny AlmondNet’s partial motion for summary judgment of no
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`invalidity based on enablement and written description.
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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 19 of 20
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`Dated: September 7, 2023
`
`
`
`
`Of Counsel:
`
`Deron R. Dacus (TX Bar #00790553)
`ddacus@dacusfirm.com
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel: (903) 705-1117
`Fax: (903) 581-2543
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Jessica Lin
`J. David Hadden (CA Bar No. 176148)
`Email: dhadden@fenwick.com
`Saina S. Shamilov (CA Bar No. 215636)
`Email: sshamilov@fenwick.com
`Ravi R. Ranganath (CA Bar No. 272981)
`Email: rranganath@fenwick.com
`Johnson K. Kuncheria (TX Bar No. 24070092)
`Email: jkuncheria@fenwick.com
`Johnathan L. Chai (CA Bar No. 339315)
`Email: jchai@fenwick.com
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`Fax: (650) 938-5200
`
`Eric B. Young, (CA Bar No. 318754)
`Email: eyoung@fenwick.com
`Dargaye Churnet (Admitted Pro Hac Vice)
`Email: dchurnet@fenwick.com
`Christopher L. Larson (CA Bar No. 308247)
`Email: clarson@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Tel: (415) 875-2300
`
`Jeffrey A. Ware (WA Bar No. 43779)
`Email: jware@fenwick.com
`FENWICK & WEST LLP
`401 Union Street, 5th Floor
`Seattle, WA 98101
`Tel: (206) 389-4510
`
`Jessica Lin (NY Bar No. 5035860)
`Email: jessica.lin@fenwick.com
`Eric Menist (NY Bar No. 5721568)
`Email: emenist@fenwick.com
`FENWICK & WEST LLP
`902 Broadway, 18th Floor
`New York, NY 10010
`Tel: (212) 921-2001
`
`Counsel for Defendants
`AMAZON.COM, INC., AMAZON.COM SERVICES
`LLC, and AMAZON WEB SERVICES, INC.
`
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`Case 6:21-cv-00898-ADA Document 186 Filed 09/14/23 Page 20 of 20
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`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record who are deemed to have consented to electronic
`
`service are being served with a true and correct copy of this document on September 7, 2023, via
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`the Court’s CM/ECF system per Local Rule CV 5(a)(3). Additionally, this document and the
`
`attachments thereto were served via email on all counsel of record.
`
`
`
`/s/ Jessica Lin
`Jessica Lin
`
`
`
`15
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`