Case 6:21-cv-00898-ADA Document 204 Filed 09/21/23 Page 1 of 11
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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:
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`(1) MOTION TO STRIKE AND EXCLUDE CERTAIN OPINIONS OF DR. HENRY
`HOUH REGARDING ENABLEMENT AND WRITTEN DESCRIPTION; AND
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`(2) MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY BASED
`ON LACK OF ENABLEMENT AND LACK OF WRITTEN DESCRIPTION
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`Case 6:21-cv-00898-ADA Document 204 Filed 09/21/23 Page 2 of 11
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`TABLE OF CONTENTS
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`I. AMAZON FAILS TO SHOW DR. HOUH’S ENABLEMENT OPINIONS ARE
`RELIABLE ......................................................................................................................... 1
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`II. AMAZON FAILS TO SHOW DR. HOUH’S WRITTEN DESCRIPTION
`OPINIONS ARE RELIABLE ........................................................................................... 5
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`III. AMAZON’S “BURDEN AND ORDER OF PROOF” ARGUMENTS ARE NON-
`SEQUITURS ....................................................................................................................... 6
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`Case 6:21-cv-00898-ADA Document 204 Filed 09/21/23 Page 3 of 11
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`Cases
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`TABLE OF AUTHORITIES
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`Alcon Rsch. Ltd. v. Barr Lab'ys, Inc.,
`745 F.3d 1180 (Fed. Cir. 2014) ................................................................................................. 6
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`Amgen Inc. v. Sanofi,
`598 U.S. 594 (2023) .............................................................................................................. 1, 2
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`Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc.,
`501 F.3d 1274 (Fed. Cir. 2007) ................................................................................................. 5
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`Baxalta Inc. v. Genentech, Inc.,
`579 F. Supp. 3d 595 (D. Del. 2022) .......................................................................................... 5
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`Durel Corp. v. Osram Sylvania Inc.,
`256 F.3d 1298 (Fed. Cir. 2001) ................................................................................................. 5
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`Effective Expl., LLC v. BlueStone Nat. Res. II, LLC,
`2017 WL 5895164 (E.D. Tex. Nov. 13, 2017) .......................................................................... 6
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`Genentech, Inc. v. Novo Nordisk A/S,
`108 F.3d 1361 (Fed. Cir. 1997) ................................................................................................. 2
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`Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367 (Fed. Cir. 1986) ................................................................................................. 2
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`Idenix Pharms. LLC v. Gilead Sciences Inc.,
`941 F.3d 1149 (Fed. Cir. 2019) ................................................................................................. 2
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`Koito Mfg. Co. v. Turn-Key-Tech, LLC,
`381 F.3d 1142 (Fed. Cir. 2004) ................................................................................................. 2
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`Liebel-Flarsheim Co. v. Medrad, Inc.,
`481 F.3d 1371 (Fed. Cir. 2007) ................................................................................................. 5
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`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`959 F.3d 1091 (Fed. Cir. 2020) ............................................................................................. 1, 2
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`Nuvo Pharms. (Ireland) Designated Activity Co. v. Dr. Reddy's Lab'ys Inc.,
`923 F.3d 1368 (Fed. Cir. 2019) ................................................................................................. 6
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`TQ Delta, LLC v. 2Wire, Inc.,
`373 F. Supp. 3d 509 (D. Del. 2019) .......................................................................................... 3
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`Trustees v. Everlight,
`896 F.3d 1357 (Fed. Cir. 2018) ................................................................................................. 2
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`Case 6:21-cv-00898-ADA Document 204 Filed 09/21/23 Page 4 of 11
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`To save Dr. Houh’s enablement opinions from being precluded, Amazon fails to address
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`the Federal Circuit’s guidance from McRO and—surprisingly—seems to make up a new test for
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`enablement that requires looking only at the “express disclosure” of a specification, based
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`supposedly on the Supreme Court’s recent Amgen decision. Amazon further fails to establish Dr.
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`Houh should be permitted to
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` To save Dr. Houh’s written description opinions, Amazon’s
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`response, like Dr. Houh’s report, conflates the tests and analysis required for each of enablement
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`and written description. It is true that courts have observed that the enablement and written
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`description issues “rise and fall together,” but this neither absolves Dr. Houh’s failure to perform
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`the required analysis with the correct legal test nor permits him to cure the failure by later
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`reciting the correct legal test in deposition and claiming that he did, in fact, do the analysis.
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`I.
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`Amazon Fails to Show Dr. Houh’s Enablement Opinions are Reliable
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`Amazon does not dispute that Dr. Houh’s enablement opinions are
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`seriously dispute Dr. Houh never considered the scope of the prior art, the background
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`knowledge of a POSITA, or the predictability of the art, in forming his enablement conclusions,
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`. Amazon does not
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`even though his ultimate conclusion is that
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`. Amazon does not
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`even try to reconcile the tension between Dr. Houh’s conclusion and his failure to perform the
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`underlying analysis needed to make that conclusion reliable.
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`Instead, Amazon makes up law. It argues that focusing exclusively on the express words
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`of the specification—while ignoring what is well known to a POSITA—is not only permitted,
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`but supposedly required by Amgen Inc. v. Sanofi, 598 U.S. 594 (2023). See Dkt. 164, at 3
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`(asserting the “required inquiry” under Amgen is analysis “based on the express disclosure in
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`the specification” (emphasis by Amazon)). Amazon creates supposed precedent for this rule by
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`selectively quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361 (Fed. Cir. 1997) and
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`Idenix Pharms. LLC v. Gilead Sciences Inc., 941 F.3d 1149, 1159 (Fed. Cir. 2019), and Trustees
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`v. Everlight, 896 F.3d 1357, 1363 (Fed. Cir. 2018). Id. at 2, 4-6.
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`No case cited by Amazon provides support for its rule about looking only at the “express
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`disclosure” of the specification to analyze enablement. Amgen did not change the relevant law: a
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`“patent need not teach, and preferably omits, what is well known in the art.” McRO, Inc. v.
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`Bandai Namco Games Am. Inc., 959 F.3d 1091, 1102 (Fed. Cir. 2020). This rule remains
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`undisturbed by Genentech and Idenix, whose language on which Amazon relies is about how the
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`specification which “must supply the novel aspects of an invention in order to constitute
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`adequate enablement.” Idenix, 941 F.3d at 1159 (quoting Genentech, 108 F.3d at 1366).
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`Moreover, McRO’s reminder that a patent need not expressly teach well-understood and
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`routine concepts for an invention to be enabled has been the law for decades. See Koito Mfg. Co.
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`v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1156 (Fed. Cir. 2004) (“This Court has repeatedly
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`explained that a patent applicant does not need to include in the specification that which is
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`already known to and available to one of ordinary skill in the art.”); Hybritech Inc. v.
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`Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (specification “need not
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`teach, and preferably omits, what is well known in the art”).
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`Amazon’s treatment of McRO, Dkt. 164 at 3-4, simply ignores the law. Amazon does not
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`deny the controlling effect of the McRO language, but, instead, misdirects the Court’s focus back
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`to what the specification “expressly” teaches. Amazon says that Dr. Houh opined that “the
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`specification should have, but failed to, supply any description of how to make and use certain
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`claimed limitations.” Id. at 4 (identifying “sharing and matching cookie information” as not
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`described by the specification, saying “[n]othing in the record suggests … that the specification
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`explicitly indicates that [the] claimed limitation was known to POSITA.”). First, no authority
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`supports Amazon’s argument that a specification must “indicate” certain things were “known to
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`a POSITA” for those things to be relevant to enablement.1 Second, Amazon’s argument
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`underscores AlmondNet’s point: Dr. Houh’s opinion about
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`TQ Delta, LLC v. 2Wire, Inc., 373 F. Supp. 3d 509 (D. Del. 2019) is directly analogous.
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`TQ Delta granted summary judgment to the patentee on lack of enablement where the
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`defendant’s expert’s “report focuses wholly on what the specification discloses and ignores that
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`information ‘already known to and available to one of ordinary skill in the art’ need not be
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`included in the specification for the patent to be enabled.” Id. at 524-25. This failure is not
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`simply one that renders the expert vulnerable to cross-examination. It means the defendant
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`“failed to make a sufficient showing on an essential element of its case with respect to which it
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`has the burden of proof.” Id. at 525.
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`Amazon next attempts to transform its failure into a strawman dispute about whether
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`application of the Wands factors is mandatory. Dkt. 164, at 2-4. But AlmondNet’s argument here
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`is not that Dr. Houh failed to consider the Wands factors or that his failure to do any “explicit”
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`analysis of one factor or another made his opinions unreliable. Rather, AlmondNet’s argument is
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`that Dr. Houh drew conclusions that required a minimum amount of factual analysis that was
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`1 Notably, McRO states the specification preferably “omits”—not “indicates”—known material.
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`neither performed nor provided, whether “explicitly” or not.2 Such baseless conclusions fail to
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`raise a dispute of material fact and should be excluded as unreliable.
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`Next, Amazon accuses AlmondNet of “mischaracterizing” Dr. Houh’s testimony. Dkt.
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`164, at 5. But instead of explaining how the testimony quoted in the Motion “mischaracterizes”
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`Dr. Houh’s testimony, Amazon excerpts another part of the testimony to assert that he was
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`actually saying he had no opinions about “prior art invalidity,” as opposed having no opinions
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`about the scope of prior art for the enablement. Id. This argument presents a false dichotomy.
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`Both statements can be (and, in this case, are) true: Dr. Houh had no opinions about the prior art
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`in Amazon’s invalidity case or any opinions about the scope of prior art for his Section 112
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`analysis. Compare Ex. 2, 132:13-25 and 125:19-20, with id. at 132:7-12.
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`Amazon’s wishful thinking can neither rewrite Dr. Houh’s deposition transcript nor
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`change how his report contains no discussion or analysis about the scope of the prior art for
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`enablement. Amazon’s quotations from Dr. Houh’s report (Dkt. 164, at 5-6) are not an analysis
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`of what information is “already known … to one of ordinary skill in the art” and which “need not
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`be included in the specification for the patent to be enabled.” TQ Delta, 373 F. Supp. 3d at 525.
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`Amazon then asserts that it is entitled to have Dr. Houh opine on lack of enablement
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`. Dkt. 164, at 6-8. It says the
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`rule set forth in Durel and applied in Personalized Media need not be applied, because Durel
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`was issued with a different procedural posture and the defendant in Personalized Media did not
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`“establish[] whether such technology fell within the scope of the claims.” Id. These arguments
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`are nonsense. That Durel involved a noninfringement finding does not diminish the rule:
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`2 Incidentally, Dr. Houh’s report
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`“enablement does not turn on whether the accused product is enabled.” Durel Corp. v. Osram
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`Sylvania Inc., 256 F.3d 1298, 1306 (Fed. Cir. 2001). In fact, Durel faulted the invalidity
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`challenger for failing to “show[] that a significant percentage of [combinations] within the scope
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`of the claims were not enabled,” id. at 1306-07, something Amazon likewise does not show.3
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`Amazon’s citations do not help its case. Baxalta did not say that a patent is invalid for
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`lack of enablement if the accused product was not enabled by the patent, but that a patent’s claim
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`to a wide range of therapeutic procoagulant activities (one of which was practiced by the accused
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`antibody) was not enabled based on a large body of testimonial and other evidence. Baxalta Inc.
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`v. Genentech, Inc., 579 F. Supp. 3d 595, 624 (D. Del. 2022). Both Automotive Technologies and
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`Liebel-Flarsheim turned on their respective patents’ failure to enable a limitation as construed
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`by the court, not whether (as Amazon implies) the accused products were enabled by the patent.4
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`At bottom, Amazon fails to show RTB is anything other than a characteristic of the
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`accused products that is orthogonal to its infringement of the asserted claims. That the accused
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`products also include RTB technology does not make it proper to ask whether RTB systems are
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`enabled by the patents, particularly where no party disputes that a POSITA would not consider
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`whether the patents enabled real-time bidding at their priority dates.
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`II.
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`Amazon Fails to Show Dr. Houh’s Written Description Opinions Are Reliable
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`Finally, Amazon says that Dr. Houh’s written description opinions are sound because he,
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`. Dkt. 164, at 8-9. This does not solve Amazon’s problem, because
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`3 Neither does the supposed failure by Zynga in Personalized Media to show the accused
`products “fell within the scope of the claims” (a question the court never addressed, much less
`decided) somehow cure Dr. Houh’s flawed analysis. Enablement is not tested by looking at
`whether the accused products “fall within the scope of the claims.”
`4 Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1282 (Fed. Cir. 2007); Liebel-
`Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1378 (Fed. Cir. 2007).
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`“Rule 26 does not allow parties to cure deficient expert reports by supplementing them with later
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`deposition testimony.” Effective Expl., LLC v. BlueStone Nat. Res. II, LLC, 2017 WL 5895164,
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`at *3 (E.D. Tex. Nov. 13, 2017) (quotations omitted).
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`Amazon’s next argument is that Dr. Houh’s enablement analysis is “close enough” to the
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`written description issue, and that both issues “rise and fall” together, so his written description
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`opinions are “based in logic and not unreliable.” Dkt. 164, at 9-10. This argument, like Dr.
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`Houh’s analysis, conflates the two requirements. “[W]ritten description is about whether the
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`skilled reader of the patent disclosure can recognize that what was claimed corresponds to what
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`was described; it is not about whether the patentee has proven to the skilled reader that the
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`invention works, or how to make it work, which is an enablement issue.” Alcon Rsch. Ltd. v.
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`Barr Lab'ys, Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014). One analysis cannot substitute for the
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`other. Amazon’s own authority states plainly: “[T]he fact that an invention may be enabled does
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`not mean it is adequately described, and vice versa.” Nuvo Pharms. (Ireland) Designated Activity
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`Co. v. Dr. Reddy's Lab'ys Inc., 923 F.3d 1368, 1382 (Fed. Cir. 2019).
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`III. Amazon’s “Burden and Order of Proof” Arguments Are Non-Sequiturs
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`Finally, Amazon says that AlmondNet’s Motion “confuses the burdens and order of
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`proof.” Dkt. 164, at 11-12. Amazon’s argument appears to be that it has met a “burden of
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`production” on the Section 112 issues which makes them suitable to pass to the jury. AlmondNet
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`is unaware of any burden-shifting rule that would give context to Amazon’s argument. Amazon
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`identifies none. Thus, the usual rules apply: Amazon bears the burden of proof by clear and
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`convincing evidence to show invalidity through lack of enablement or written description.
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`Without expert testimony to show even a prima facie case of non-enablement or lack of written
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`description, Amazon cannot show issues of material fact precluding summary judgment.
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`Case 6:21-cv-00898-ADA Document 204 Filed 09/21/23 Page 10 of 11
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`Date: September 15, 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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`Case 6:21-cv-00898-ADA Document 204 Filed 09/21/23 Page 11 of 11
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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 S. Tsuei
`James S. Tsuei
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