Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`ALMONDNET, INC.,
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`Plaintiff,
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`Civil Action No. 6:21-cv-00898-ADA
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`AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, and AMAZON WEB
`SERVICES, INC.,
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`v.
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`Defendants.
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`AMAZON’S OPPOSITION TO ALMONDNET’S ELEVENTH-HOUR
`MOTION SEEKING TO DEPRIVE AMAZON OF ITS PRIOR ART
`DEFENSE FOR ONE OF THE TWO REMAINING PATENTS IN THE CASE
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 2 of 9
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`AlmondNet’s motion in limine seeks to preclude Amazon from putting forth any prior art
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`invalidity defense to infringement for one of the patents in the case—claim 37 of U.S. Patent No.
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`8,671,139 (“139 patent”)—a draconian and unjustified request made on the literal eve of trial. The
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`Court should deny this motion because there is no reasonable dispute that AlmondNet had notice
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`of Amazon’s invalidity theory all along.
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`I.
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`DR. HANSON’S EXPERT REPORT UNDISPUTEDLY DISCLOSES HIS
`ENGAGE OBVIOUSNESS THEORY FOR CLAIM 37 OF THE 139 PATENT.
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`AlmondNet argues that Amazon did not disclose in its expert report an invalidity theory
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`that claim 37 of the 139 patent is obvious over the Engage System. However, Dr. Hanson’s report
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`clearly states that the claims of the 139 patent are invalid because the Engage System alone renders
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`them invalid under § 103, as the highlighted excerpt below shows:
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`(Tsuei Decl., Dkt. 258, Ex. D (Hanson Rep.) at 116 (highlighting added).) Dr. Hanson’s report
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`further has a section titled “[t]he Engage System Alone or Optionally in Combination,” in which
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`he explains in detail how every element of claim 37 was performed by the Engage system prior to
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`the 139 patent:
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 3 of 9
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`(Id. at 363.) He starts that section by stating as follows: “In my opinion, the Engage System
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`alone, in view of the knowledge of a POSITA, and/or in combination with other references as set
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`forth below discloses each and every element of claims 37, 42, 43, 45, and 48 of the ’139 Patent.”
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`(Id. ¶ 844 (emphasis added).) Dr. Hanson then provides a comprehensive, limitation-by-limitation
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`mapping of the Engage system to claim 37 of the 139 patent, concluding for each that “[t]he
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`Engage System discloses this element.”1 (Id. ¶¶ 845 (preamble), 852 ([37.a]), 863 ([37.b]), 869
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`([37.c]), 873 ([37.d]).) It is well-established that a reference that discloses every limitation of a
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`claim renders it obvious, as the Federal Circuit confirmed in Realtime Data, LLC v. Iancu.2 912
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`F.3d 1368, 1373 (Fed. Cir. 2019) (“[I]t is well settled that a disclosure that anticipates under § 102
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`also renders the claim invalid under § 103, for anticipation is the epitome of obviousness.”)
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`(emphasis added). Therefore, Amazon’s expert report put AlmondNet on notice that one of its
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`invalidity defenses in this case is that the Engage System alone renders claim 37 invalid under §
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`103 and provided detailed notice of how the Engage System discloses each and every claim
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`limitation. AlmondNet argues that Realtime Data does not apply because, it contends, that case
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`deals with “whether a PTAB board might properly invalidate claims under § 103 when a petitioner
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`1 Dr. Hanson also opines in several instances that a “POSITA would have understood” or
`“recognized” that the Engage System disclosed various limitations, or that the Engage System
`“implicitly” performs other limitations. (Tsuei Decl., Dkt. 258, Ex. D, Hanson Rep. ¶¶ 847, 858,
`865, 865-66.) This confirms that Dr. Hanson asserted § 103 obviousness in view of Engage.
`2 Realtime Data involved an appeal of a PTAB decision invalidating patent claims as obvious
`in view of asserted prior art under § 103. Realtime Data, 912 F.3d at 1372. The patentee argued
`that the PTAB erred in failing to conduct an analysis of motivation to combine two asserted prior
`art references. Id. The Federal Circuit rejected this argument, because the PTAB found a single
`reference disclosed each limitation of the challenged claim and thus necessarily rendered it obvious
`under § 103. Id. at 1373.
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`2
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 4 of 9
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`believes a claim invalidation would be more proper under § 102.” (Mot. at 5.) But the holding in
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`Realtime Data was not so limited; in fact, the panel relied on case law going back as far as 1983,
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`decades before the creation of the PTAB. See id. (citing Connell v. Sears, Roebuck & Co., 772
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`F.2d 1542, 1548 (1983)). Nor does it matter that Realtime Data did not address “notice” under
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`Rule 26 (Mot. at 5) because, as described above, AlmondNet had full notice regarding Dr.
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`Hanson’s opinion that Engage disclosed each limitation of claim 37 of the 139 patent, and thus
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`renders the claim obvious under § 103.3
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`II.
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`ALMONDNET IDENTIFIES NO PREJUDICE FROM ANY PURPORTED LACK
`OF DISCLOSURE.
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`AlmondNet does not reference, much less address, the Fifth Circuit’s test for striking late
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`disclosures. See Tex. A&M Research Found. v. Magna Transp., Inc., 338 F.3d 394, 402 (5th
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`Cir.2003). Two of the factors in that test—“the importance of the evidence” and “the prejudice to
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`the opposing party of allowing the evidence”—are dispositive here. See id.
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`First, the invalidity theory AlmondNet seeks to preclude is of critical importance: in light
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`of case narrowing, this is Amazon’s only remaining prior art defense for the 139 patent. This
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`factor weighs significantly against exclusion.
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`Second, AlmondNet has not suffered any prejudice. That is because, not only did Dr.
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`Hanson’s report clearly state his opinions regarding obviousness of claim 37 of the 139 patent over
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`Engage, but AlmondNet knew about these opinions. AlmondNet’s expert on invalidity, Jason
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`Frankovitz, includes a heading in his rebuttal clearly responding to Dr. Hanson’s obviousness
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`3 AlmondNet attaches to its motion a purported “list showing 90 instances in the Hanson
`Report where” he used the words “obvious,” “combination,” and “motivation.” (Mot. at 4
`(emphasis in original).) But each instance that AlmondNet identifies involves a combination of
`two or more references. Dr. Hanson need not use words like “combination” or address
`“motivation” to combine for a single-reference obviousness theory based on Engage, particularly
`when he explains in detail how Engage performs or discloses each and every claim limitation.
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 5 of 9
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`opinions that “the Engage System alone . . . renders obvious the asserted claims of the ’139
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`Patent”:
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`(Ranganath Decl., Ex. 1 (Frankovitz Rep.) at 75 (emphasis and highlighting added).) Mr.
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`Frankovitz then proceeds to respond to Dr. Hanson’s Engage opinions for several limitations of
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`claim 37 of the 139 patent. (Id. ¶¶ 315-32.) Nowhere in Mr. Frankovitz’s report does he express
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`any confusion over the obviousness opinions Dr. Hanson puts forward, or suggest that Dr. Hanson
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`asserts invalidity based on anticipation.
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`AlmondNet’s “Second Revised Proposed Verdict Form,” submitted on June 6, 2024,
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`further confirms that AlmondNet knew that Amazon would argue obviousness for the 139 patent.
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`(Dkt. 252-13.) As shown below, AlmondNet included a box for just one claim for the 139 patent
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`(though it did not identify that claim to Amazon until late on June 9), and included a question
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`regarding obviousness for that claim:
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 6 of 9
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`If AlmondNet truly believed Amazon did not intend to present an obviousness defense for claim
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`37, it would not have included a question on this in the verdict form.
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`Because AlmondNet has known all along the obviousness defense Amazon would assert
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`for claim 37 of the 139 patent, and its expert addressed Dr. Hanson’s obviousness opinions
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`regarding Engage, it suffered no prejudice. Its motion to exclude Amazon’s obviousness defense
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`for the 139 patent must be denied on this basis.
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`III. ALMONDNET IS WRONG THAT AMAZON NARROWED ITS INVALIDITY
`GROUNDS TO FOREGO ANY PRIOR ART DEFENSE FOR THE 139 PATENT
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`The parties have been working to narrow this case over the past 9 months. Importantly, in
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`each step of the narrowing process, Amazon has identified its narrowed invalidity grounds by
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`patent, without objection from AlmondNet. AlmondNet first narrowed its asserted claims in
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`September 2023. (Ex. H, Dkt. 258-4.) In response, Amazon elected its prior art for the narrowed
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`claims, identifying for the 139 patent “The Engage System in Combination with Admitted Prior
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`Art and Zeff 99.” (Id.) Dr. Hanson mapped the Zeff 99 and AAPA references part of his
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`obviousness opinions for the then-asserted dependent claims. (Tsuei Decl., Dkt. 258, Ex. D
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`(Hanson Rep.) ¶¶ 878 (combining Engage with AAPA for claim 42), 884 (combining Engage with
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`AAPA for claim 43), 886 (combining Engage with Zeff 99 for claim 45).) When AlmondNet
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`reduced its asserted claims on June 8, just two days before trial, it finally disclosed to Amazon it
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`would disclose just one claim of the 139 patent, independent claim 37. (Ex. A, Dkt. 258-1.)
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`Accordingly, Amazon elected its prior art ground for that claim—obviousness over Engage alone.
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`(Id.) Nothing in the parties’ correspondence suggests that Amazon intentionally decided to forego
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`any prior art invalidity defense for the 139 patent, and AlmondNet’s strained reading of the
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`parties’ correspondence is not credible.
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 7 of 9
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`Dated: June 10, 2024
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`Of Counsel:
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`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
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`Respectfully submitted,
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`By: /s/ Ravi R. Ranganath
`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
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`Todd R. Gregorian (CA Bar No. 236096)
`Email: tgregorian@fenwick.com
`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
`Brian M. Hoffman (Admitted Pro Hac Vice)
`Email: bhoffman@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
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`Case 6:21-cv-00898-ADA Document 259 Filed 06/10/24 Page 8 of 9
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`James S. Trainor (Admitted Pro Hac Vice)
`Email: jtrainor@fenwick.com
`Jessica Lin (NY Bar No. 5035860)
`Email: jessica.lin@fenwick.com
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`FENWICK & WEST LLP
`902 Broadway, 18th Floor
`New York, NY 10010
`Tel: (212) 921-2001
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`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 259 Filed 06/10/24 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to electronic
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`service are being served with a true and correct copy of this document on June 10, 2024, via the
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`Court’s CM/ECF system per Local Rule CV 5(a). Additionally, the attachment to this document
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`was served via email on all counsel of record.
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`Date: June 10, 2024
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`/s/ Ravi R. Ranganath
`Ravi R. Ranganath
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