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Case 6:21-cv-00898-ADA Document 265 Filed 06/13/24 Page 1 of 5
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`
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`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
`
`
`JURY TRIAL DEMANDED
`
`
`
`AMAZON’S OFFER OF PROOF REGARDING EXCLUDED
`TESTIMONY OF DR. HENRY HOUH REGARDING INVALIDITY
`BASED ON LACK OF WRITTEN DESCRIPTION UNDER 35 U.S.C. § 112
`
`Defendants Amazon.com, Inc., Amazon.com Services LLC, and Amazon Web Services,
`
`Inc. (collectively, “Amazon”) respectfully submit this offer of proof regarding the excluded
`
`testimony of their technical expert, Dr. Henry Houh, concerning invalidity for lack of written
`
`description under § 112.
`
`In this case, plaintiff AlmondNet, Inc. (“AlmondNet”) asserts claim 37 of U.S. Patent No.
`
`8,671,139 and claim 24 of U.S. Patent No. 7,822,639. AlmondNet accuses Amazon’s Demand
`
`Side Platform (DSP), and in particular, the Amazon DSP’s submission of bids as part of the real-
`
`time bidding and real-time auction process.
`
`To satisfy the written description requirement under 35 U.S.C. § 112, the specification
`
`must objectively demonstrate that the inventor was in possession of the full scope of the claimed
`
`invention as finally claimed. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed.
`
`Cir. 2010).
`
`1
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`

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`Case 6:21-cv-00898-ADA Document 265 Filed 06/13/24 Page 2 of 5
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`
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`Amazon sought to introduce testimony from its technical expert, Dr. Henry Houh, to
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`confirm that one of ordinary skill in the art, having read the specification of the asserted patents,
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`would not understand that the inventor had possession of real-time bidding, which under
`
`AlmondNet’s theory, falls within the scope of the asserted claims. The Court, however, sustained
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`AlmondNet’s objection to this testimony, and the corresponding demonstratives (DDX-004 at 99-
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`101), citing its concern that the jury may not understand that Dr. Houh’s written description theory
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`was based on AlmondNet’s interpretation of the claims rather than the language of the asserted
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`claims themselves, which do not reference real-time bidding at all. (Ex. 1 (Day 2 Draft Trial Tr.)
`
`at 627:8-631:23, 640:22-655:20.)
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`Accordingly, Amazon now makes the following offer of proof. If allowed to testify, Dr.
`
`Houh would have offered the full set of his previously-disclosed opinions regarding invalidity for
`
`lack of written description. (Ex. 2 (Houh Invalidity Report).) Dr. Houh would specifically testify
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`that, to the extent the scope of the asserted claims includes placing a bid in a real-time auction, no
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`corresponding disclosure exists in either patent’s specification, let alone disclosure sufficient to
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`show that the inventor possessed such an invention. (See id. at 19-33, 35-43.)
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`AlmondNet would suffer no prejudice from allowing Dr. Houh’s testimony regarding
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`written description. Dr. Houh’s written description opinions were fully disclosed to AlmondNet
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`in June 2023, when Dr. Houh submitted his initial report, and both the experts and numerous fact
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`witnesses already offer testimony regarding real-time bidding generally. By contrast, Amazon has
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`suffered real and significant prejudice from the Court’s evidentiary ruling—exclusion of
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`Amazon’s § 112 defense in its entirety.
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`2
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`Case 6:21-cv-00898-ADA Document 265 Filed 06/13/24 Page 3 of 5
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`Dated: June 13, 2024
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`
`
`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/ Ravi R. Ranganath
`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
`
`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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`3
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`

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`Case 6:21-cv-00898-ADA Document 265 Filed 06/13/24 Page 4 of 5
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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
`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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`4
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`

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`Case 6:21-cv-00898-ADA Document 265 Filed 06/13/24 Page 5 of 5
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`CERTIFICATE OF SERVICE
`
`I, the undersigned, hereby certify that all counsel of record who are deemed to have
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`consented to electronic service are being served with a true and correct copy of this document on
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`June 13, 2024, via the Court’s CM/ECF system per Local Rule CV 5(a).
`
`Dated: June 13, 2024
`
`
`
`/s/ Ravi R. Ranganath
`Ravi R. Ranganath
`
`
`
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`5
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`

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