Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 1 of 12
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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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`Plaintiff,
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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 REPLY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT OF NO INVALIDITY FOR THEORIES
`INVOLVING MODIFICATIONS TO DOUBLECLICK OR ENGAGE
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`Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 2 of 12
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`TABLE OF CONTENTS
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`I.
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`THERE IS NO GENUINE ISSUE OF MATERIAL FACT REGARDING
`MODIFICATIONS OF DOUBLECLICK/ENGAGE IN VIEW OF BOLLAY ...................2
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`II. PURPORTED MODIFICATIONS TO DOUBLECLICK AND ENGAGE IN VIEW
`OF ELDERING ARE IRRELEVANT. .................................................................................6
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`III. DR. HANSON’S REPORT DOES NOT IDENTIFY ANY MODIFICATIONS TO
`DOUBLECLICK OR ENGAGE IN VIEW OF ZEFF 99. ....................................................6
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`Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 3 of 12
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`Cases
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`TABLE OF AUTHORITIES
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`Asetek Danmark A/S v. CoolIT Sys., Inc.,
`Case No. 19-cv-00410-EMC, Dkt. 504 (N.D. Cal. Sept. 11, 2022) ...................................... 1, 3
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`Duffy v. Leading Edge Prods.,
`44 F.3d 308 (5th Cir. 1995) ....................................................................................................... 1
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`KEYnetik, Inc. v. Samsung Elecs. Co.,
`No. 2022-1127, 2023 WL 2003932 (Fed. Cir. Feb. 15, 2023) .................................................. 4
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`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`959 F.3d 1091 (Fed. Cir. 2020) ................................................................................................. 3
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`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (Fed. Cir. 2015) ................................................................................................. 1
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`Omegaflex, Inc. v. Parker-Hannifin Corp.,
`243 F. App'x 592 (Fed. Cir. 2007) ............................................................................................ 5
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`Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 4 of 12
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`Amazon does not dispute that the references it proposes modifying—DoubleClick,
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`Engage, and Bollay—were all highly complex systems. See Dkt. 130 (“Mot.”) at 1, 4-5;
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`O’Connor Dep. 63:18-24, Jay Dep. 28:8-29. Nor does Amazon dispute that the proposed
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`combination with Bollay would result in a real-time auction system. Mot. at 3. And critically,
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`Amazon’s own expert
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`.” See Houh Opening Report ¶¶ 93-94 (
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`”).
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`In contrast to the above testimony of its own expert, Amazon presents no testimony that
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`the proposed combination of either DoubleClick or Engage with Bollay, yielding a real-time
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`auction system, would be within a POSITA’s capability to implement in 2006 (the priority date
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`of the ’139 Patent).1 Instead, Amazon presents attorney argument, through its opposition, that
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`despite Dr. Houh’s testimony, a POSITA “would have had a reasonable expectation of success,”
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`argument and analysis that was not present in its prior art expert Dr. Hanson’s report. See, e.g.,
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`Dkt. 154 (“Opp.”) at 2-3. But attorney argument is not evidence, and Dr. Hanson’s actual
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`assertions regarding predictability are of the conclusory nature that the Federal Circuit, the Fifth
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`Circuit, and district courts routinely reject as insufficient to establish a genuine issue of material
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`fact. See MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015) (“Conclusory
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`statements by an expert . . . are insufficient to sustain a jury’s verdict.”); Duffy v. Leading Edge
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`Prods., 44 F.3d 308, 312 (5th Cir. 1995) (“Conclusory allegations unsupported by concrete and
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`particular facts will not prevent an award of summary judgment.”); Asetek Danmark A/S v. CoolIT
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`Sys., Inc., Case No. 19-cv-00410-EMC, Dkt. 504 at 12-13 (N.D. Cal. Sept. 11, 2022).
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`1 Houh Report at ¶ 35
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`Furthermore, for other modifications to DoubleClick and Engage, those modifications
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`are either not presented in Dr. Hanson’s report at all, or are irrelevant as they relate to dropped
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`claims. Compare Hanson Opening Report ¶¶ 771
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`), with Ex. A (AlmondNet’s election of asserted claims, stating that
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`AlmondNet is not pursuing claim 48 of the ’139 Patent).
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`I.
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`There is no genuine issue of material fact regarding modifications of
`DoubleClick/Engage in view of Bollay
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`Dr. Hanson’s testimony regarding predictability of his proposed combinations is limited
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`to two conclusory sentences:
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`Hanson Report ¶ 308. As explained in AlmondNet’s Motion, this testimony is wholly
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`conclusory as to why the modifications (which Amazon does not dispute were not implemented
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`in any prior art systems) would be “predictable” and “expected.” Mot. at 3-4.
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`In contrast, Amazon does not dispute that its proposed combination would result in a
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`real-time auction system, and that Amazon’s own expert testified tha
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`. Houh Opening Report ¶ 93; id. at ¶ 35
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`). And while Amazon contends that this analysis was limited to
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`an analysis of the “disclosure in the asserted patents” (Opp. at 8), that contention is contradicted
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`by Dr. Houh’s express testimony
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`Houh Opening Report ¶ 94 (
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`(
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`”); see also ¶ 77
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`). Furthermore, Amazon’s contention that Dr. Houh’s enablement analysis did not
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`consider the prior art features that Amazon now contends were “well-known conventional
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`components and processes” (see Opp. at 3) is clearly inconsistent with the legal standard for
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`enablement under which a “patent need not teach, and preferably omits, what is well known in the
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`art.” McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091, 1102 (Fed. Cir. 2020).
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`Dr. Hanson’s conclusory testimony on reasonable expectation of success is also inconsistent
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`with the reasoned analysis of AlmondNet’s expert, in which he opined that “
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`. Frankovitz Report at ¶¶ 283-
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`284, 370-371.
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`As such, this case is directly analogous to Asetek, where a cursory assertion that “the
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`combination or modification is also based on conventional or known methods that would have
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`yielded predictable results and been reasonably expected to be successfully by a POSITA” was
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`insufficient to set forth a prima facie case of reasonable expectation of success. Asetek Danmark
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`A/S v. CooIT Systems, Inc., Case No. 19-cv-00410-EMC, Dkt. 504 at 12-13 (N.D. Cal. Sept. 11,
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`2022).
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`Amazon’s purported distinction of Asetek—that it involved “no more than ‘one conclusory
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`sentence’ in a plainly half-hearted effort to address reasonable expectation of success” (Opp. at 6)—
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`is not persuasive. First, that case involved a lengthy discussion of what the prior art disclosed and
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`thus what were allegedly “conventional components that would have been well known by a POSA.”
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`Ex. B (opposition to the motion for summary judgment in Asetek) at 4-7. Indeed, the defendants’
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`arguments in that case were strikingly similar to the arguments presented by Amazon here. See Opp.
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`at 6 (attempting to distinguish Asetek because Dr. Hanson “walk[ed] through the pre-existing
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`configuration and operation of the prior art, articulating the ‘well-known’ nature of that art’s
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`relevant pertinent aspects, and explain[ed], accordingly, the simplicity of effecting the combination
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`at issue”), with Ex. B (Asetek MSJ Opp.) at 4-7 (walking through the configuration of the prior art,
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`articulating the “well known” nature of the art, and alleging “predictable results and a reasonable
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`expectation of success”).
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`Amazon’s reliance on other precedent is similarly unpersuasive. For instance, KEYnetik
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`is readily distinguishable for at least two critical reasons. First, it evaluated the burden of proof
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`in an inter partes review which uses a preponderance of the evidence standard, not the clear and
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`convincing standard applicable here. KEYnetik, Inc. v. Samsung Elecs. Co., No. 2022-1127,
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`2023 WL 2003932, at *1 (Fed. Cir. Feb. 15, 2023) (describing procedural posture as an appeal
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`from “an inter partes review”); 35 U.S.C. § 316(e) (“In an inter partes review instituted under
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`this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence.”).2 Second, the patentee there “cited no evidence to the
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`contrary” that the modification would be “simple” and “straightforward.” KEYnetik, 2023 WL
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`2003932, at *2 (“While Dr. Baowd’s testimony is brief, in the absence of any contradictory
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`evidence, it constitutes substantial evidence to support the Board’s finding.”). In contrast, here,
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`2 The Fonar case to which KEYnetik cites is also distinguishable for this reason. Specifically,
`that case held that a patent adequately set forth the “best mode of carrying out an invention,” an
`issue which the patent challenger must disprove by clear and convincing evidence. Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1360 (Fed. Cir. 2011) (“A violation of the best
`mode requirement must be proved by clear and convincing evidence.”) (quoting AllVoice
`Computing PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236, 1240 (Fed. Cir. 2007)). Thus,
`Amazon provides no authority that conclusory and brief expert testimony can support a finding
`of invalidity by clear and convincing evidence.
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`both Amazon and AlmondNet have presented evidence that a real-time auction system resulting
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`from Dr. Hanson’s proposed modification would have been beyond the level of skill in the art,
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`and there is thus no genuine dispute that Amazon’s proposed combination would have been
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`beyond the level of skill in the art in the relevant time frame. See Houh Opening Report ¶¶ 93-
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`94; see also id. at ¶ 77 (
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`Finally, Amazon’s reliance on Omegaflex is inapposite, because there, the expert did not
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`provide conclusory testimony even remotely analogous to Dr. Hanson’s conclusory statements
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`regarding predictability. Rather, the expert there “cite[d] a plethora of prior art references that
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`demonstrate the success” of the proposed solution, whereas here, it is undisputed that no prior
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`art references or systems had implemented Dr. Hanson’s proposed modifications to
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`DoubleClick or Engage. Omegaflex, Inc. v. Parker-Hannifin Corp., 243 F. App'x 592, 596–97
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`(Fed. Cir. 2007); see Mot. at 3-4.
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`In sum, Amazon presents attorney argument that the Court should deny summary
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`judgment because of conclusory testimony that the combination involves only “well-known,
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`conventional components and processes,” (see Mot. at 3), even though Amazon’s own expert
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`presented evidence that
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`” (Houh Opening Report ¶¶ 76-77). Put simply, these
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`two assertions cannot both be true, and Amazon continues to assert that the latter allegation is
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`true. Accordingly, even interpreting the evidence most favorable to Amazon, Amazon cannot
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`establish by clear and convincing evidence that its proposed modifications to DoubleClick and
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`Engage in view of Bollay would have been within the level of skill in the art.
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`II.
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`Purported modifications to DoubleClick and Engage in view of Eldering are
`irrelevant.
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`Amazon asserts that it provides support for reasonable expectation of success for
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`modifications to DoubleClick and Engage in view of Eldering. See Opp. at 8 n.6 (citing Hanson
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`Rep. ¶ 771). But that modification goes to Claim 48 of the ’139 Patent, which AlmondNet is no
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`longer pursuing. See Ex. A (limiting the ’139 Patent asserted claims to “claims 37, 42, 43, and
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`45”). Thus, any modifications to DoubleClick and Engage in view of Eldering are not relevant
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`to any remaining issues in this case.
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`III. Dr. Hanson’s report does not identify any modifications to DoubleClick or Engage
`in view of Zeff 99.
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`Amazon also asserts that it provides a “modification incorporating ‘hybrid advertising
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`pricing’” in view of Zeff 99. Opp. at 8 n.6 (citing Hanson Report ¶¶ 347-350). However, these
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`modifications are not “modifications to the DoubleClick and Engage systems,” which is what
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`AlmondNet’s Motion relates to. Specifically, paragraphs 347-350 of Dr. Hanson’s report relate
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`to
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`. See Hanson Report ¶ 347
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` id. at ¶ 348
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` id. at ¶ 349 (
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`Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 10 of 12
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`). Amazon similarly fails to identify any
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`modifications to the Engage System in view of Zeff 99. See generally id. at ¶¶497-501 (
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`).
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`As explained in AlmondNet’s Motion, and as Amazon does not dispute, “one cannot
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`show that a POSITA would have reasonably expected to succeed in making modifications to the
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`highly complex DoubleClick or Engage systems without even explaining what those
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`modifications might entail.” Mot. at 6. Because Dr. Hanson’s report does not specify any
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`modifications to DoubleClick or Engage other than in view of Bollay or with respect to
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`withdrawn claim 48 of the ’139 Patent, Amazon cannot show a reasonable expectation of
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`success in making any such unspecified modifications.
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`Date: September 15, 2023
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`Respectfully submitted,
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`By: /s/ James A. Milkey
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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
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`Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 11 of 12
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`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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`Case 6:21-cv-00898-ADA Document 203 Filed 09/21/23 Page 12 of 12
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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 September 15, 2023, all counsel of record who have appeared in this case are being
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`served with a copy of the foregoing via electronic mail.
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` /s/ James A. Milkey
` James A. Milkey
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