Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 1 of 14
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`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
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`Gerald F. Ivey (pro hac vice)
`Smith R. Brittingham IV (pro hac vice)
`Elizabeth A. Niemeyer (pro hac vice)
`John M. Williamson (pro hac vice)
`Rajeev Gupta (pro hac vice)
`Aidan C. Skoyles (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`(202) 408-4000
`Facsimile:
`(202) 408-4400
`
`Stephen E. Kabakoff (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3500 SunTrust Plaza
`303 Peachtree Street, N.E.
`Atlanta, GA 30308-3263
`Telephone:
`(404) 653- 6400
`Facsimile:
`(404) 653-6444
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
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`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`OPENTV, INC., NAGRAVISION S.A., and
`NAGRA FRANCE S.A.S.
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`Plaintiffs,
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`Case No. 5:15-cv-02008-EJD (NMC)
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`PLAINTIFFS’ NOTICE OF MOTION
`AND MOTION FOR RULE 54(B)
`CERTIFICATION
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`Date: August 18, 2016
`Time: 9:00 a.m.
`Courtroom: 4, 5th Floor
`Judge: Honorable Edward J. Davila
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`APPLE INC.,
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`v.
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`Defendant.
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`

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`I.
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`II.
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`III.
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`IV.
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`V.
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 2 of 14
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`TABLE OF CONTENTS
`INTRODUCTION ...............................................................................................................1
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`STATEMENT OF THE ISSUE TO BE DECIDED ............................................................1
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`PROCEDURAL HISTORY.................................................................................................1
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`LEGAL STANDARDS FOR RULE 54(B) CERTIFICATION ..........................................2
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`ARGUMENT .......................................................................................................................3
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`A.
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`B.
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`The Order Is a Final Disposition of OpenTV’s Causes of Action ...........................3
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`No Just Reason Exists to Delay an Appeal of the Order .........................................4
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`1.
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`2.
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`3.
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`The Federal Circuit Will Not Need to Address the Issues Twice ................5
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`The Claims on Appeal are “Separable” and Do Not Meaningfully
`Overlap with the Claims of the Three Other Asserted Patents ....................5
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`Judicial Efficiency Strongly Favors Certification ........................................6
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`VI.
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`CONCLUSION ....................................................................................................................8
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 3 of 14
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`
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`TABLE OF AUTHORITIES
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`
`
`
`Cases
`
`Alice Corp. Pty. Ltd. v. CLS Bank International,
`134 S. Ct. 2347 (2014) .............................................................................................................2, 7, 8
`
`Page(s)
`
`Augme Techs., Inc. v. Yahoo! Inc.,
`305 F.R.D. 112 (N.D. Cal. 2012), aff'd, 755 F.3d 1326 (Fed. Cir. 2014) ........................................5
`
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014)........................................................................................................7
`
`Catlin v. United States,
`324 U.S. 229 (1945) .....................................................................................................................2, 4
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`Cogent Med., Inc. v. Elsevier,
`70 F. Supp. 3d 1058 (N.D. Cal. 2014) .............................................................................................8
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`Curtis-Wright Corp. v. Gen. Elec. Co.,
`446 U.S. 1 (1980) .....................................................................................................................2, 3, 5
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`Digitech Image Techs., LLC v. Electronics for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014)........................................................................................................7
`
`HTC Corp. v. IPCom GMBH & Co., KG,
`285 F.R.D. 130 (D.D.C. 2012) .........................................................................................................6
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`Intergraph Corp. v. Intel Corp.,
`253 F.3d 695 (Fed. Cir. 2006)..........................................................................................................3
`
`Lava Trading, Inc. v. Sonic Trading Mgmt., LLC,
`445 F.3d 1348 (Fed. Cir. 2006)........................................................................................................2
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`Liquid Dynamic v. Vaughn Co.,
`355 F.3d 1361 (Fed. Cir. 2004)........................................................................................................4
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`Medtronic, Inc. v. Cardiac Pacemakers, Inc.,
`721 F.2d 1563 (Fed. Cir. 1983)........................................................................................................3
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`Nazomi Commc’ns, Inc. v. Nokia Corp.,
`No. C-10-04686, 2012 WL 6680304 (N.D. Cal. Dec. 21, 2012) .................................................5, 6
`
`Nystrom v. Trex Co.,
`339 F.3d 1347 (Fed. Cir. 2003)........................................................................................................4
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`Pause Tech. LLC, v. TiVo Inc.,
`401 F.3d 1290 (Fed. Cir. 2005)........................................................................................................2
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`Planet Bingo, LLC v. VKGS LLC,
`576 Fed. Appx. 1005 (Fed. Cir. 2014) .............................................................................................7
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`Smart Systems Innovations, L.L.C. v. Chicago Transit Authority,
`No. 14-cv-08053, slip op. (N.D. Ill. Nov. 10, 2015)................................................................4, 7, 8
`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`ii
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 4 of 14
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`Storage Tech. Corp. v. Cisco Sys., Inc.,
`329 F.3d 823 (Fed. Cir. 2003)..................................................................................................2, 3, 4
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`Sun Pharmaceutical Industries, Ltd. v. Eli Lilly & Co.,
`No. 07-cv-15087, 2009 WL 3497797 (E.D. Mich. Oct. 29, 2009) ..................................................4
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`Trading Techs. Int’l, Inc. v. BCG Partners, Inc.,
`883 F. Supp. 2d 772 (N.D. Ill. 2012), rev’d and remanded on other grounds, 728
`F.3d 1309 (Fed. Cir. 2013)...............................................................................................................6
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`W.L. Gore & Assocs., Inc. v. Int’l Med. Prosthetics Research Assocs., Inc.,
`975 F.2d 858 (Fed. Cir. 1992)......................................................................................................3, 6
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`WiAV Sols. LLC v. Motorola, Inc.,
`No. 3:09-cv-447, 2010 WL 883748 (E.D. Va. Mar. 8, 2010)......................................................5, 7
`
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`No. 04-cv-00346, 2010 WL 4115427 (N.D. Ill. Oct. 18, 2010), aff’d, 683 F.3d
`1356 (Fed. Cir. 2012) .......................................................................................................................4
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`Federal Statutes
`28 U.S.C. § 1295(a)(1) ...........................................................................................................................2
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`35 U.S.C. § 101 ............................................................................................................................ passim
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`Rules
`Fed. R. Civ. P. 54(b) .................................................................................................................... passim
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`iii
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 5 of 14
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`NOTICE OF MOTION
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`TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
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`PLEASE TAKE NOTICE THAT on August 18, 2016, at 9:00 a.m., or as soon thereafter as
`this Motion may be heard, in Courtroom 4 of the above-entitled court, located at 280 South First
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`Street, San Jose, California, 95113, Plaintiffs OpenTV, Inc. and Nagra France S.A.S. will and hereby
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`do move, under Federal Rule of Civil Procedure 54(b), for an Order certifying for interlocutory
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`appeal the Court’s Order that the asserted claims of U.S. Patent Nos. 6,148,081 and 7,644,429 are
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`invalid under 35 U.S.C. § 101 as directed to ineligible subject matter. This motion is based on this
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`Notice of Motion and Motion, the accompanying Memorandum of Points and Authorities, all other
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`papers and pleadings on file, and such additional arguments and evidence as may be presented to the
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`Court at or prior to the hearing on this Motion.
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`iv
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 6 of 14
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`I.
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`INTRODUCTION
`On January 28, 2016, the Court issued an Order granting Apple Inc.’s motion to dismiss two
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`counts of infringement related to two of the five patents at issue in this case. The Court ruled that
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`the asserted claims of those two patents—U.S. Patent Nos. 6,148,081 and 7,644,429—are directed to
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`ineligible subject matter and invalid under 35 U.S.C. § 101. OpenTV, Inc. and Nagra France S.A.S.
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`intend to appeal that decision, but the other counts of infringement related to the remaining patents
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`preclude appealing as a matter of right. However, since the Order is the final disposition of the
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`counts related to the ’081 and ’429 patents, and it involves only the isolated and discrete legal issue
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`of invalidity under § 101, there is no just reason to delay OpenTV, Inc. and Nagra France S.A.S.
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`from pursuing an interlocutory appeal under Federal Rule of Civil Procedure 54(b). Indeed,
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`allowing an immediate appeal, and receiving a timely opinion from the Federal Circuit, could
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`potentially prevent the judicial waste associated with having to conduct two jury trials in this case.
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`Accordingly, OpenTV, Inc. and Nagra France S.A.S. respectfully request that the Court enter partial
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`final judgment under Rule 54(b), certifying the Court’s Order for immediate appeal.
`II.
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`STATEMENT OF THE ISSUE TO BE DECIDED
`1.
`Whether the partial final judgment that the asserted claims of ’081 and ’429 patents
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`are invalid under § 101 as directed to ineligible subject matter should be certified for interlocutory
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`appeal under Rule 54(b).
`III.
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`PROCEDURAL HISTORY
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S. (collectively, “OpenTV”) brought
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`this patent suit against Apple in May 2015. (Dkt. 1.) In its complaint, OpenTV alleged five counts
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`of patent infringement related to five different patents. (Id.) As set forth in the complaint, the five
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`patents generally relate to managing, transferring, and securing digital content, but each patent is
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`narrowly focused on different aspects of that broad field of technology. Each patent has a different
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`set of inventors, written descriptions, patent families, claim language, and prior art considered by the
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`examiners.
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`In February 2016, Apple eventually answered OpenTV’s complaint, asserting affirmative
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`defenses as well as seeking declaratory judgment of invalidity and noninfringement (Dkt. 73), but
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 7 of 14
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`not before first challenging the sufficiency of pleadings through a motion to dismiss (Dkt. 33). In its
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`motion to dismiss, Apple contended that the asserted claims of two of the five asserted patents—the
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`’081 and ’429 patents—are directed to ineligible subject matter and invalid under § 101 in view of
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`the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
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`(2014). On January 28, 2016, the Court issued an Order granting Apple’s motion to dismiss. (Dkt.
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`72.) As a result, the case is poised to proceed through claim construction and trial on only counts 2,
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`3, and 5 of OpenTV’s complaint, which relate to the three patents unaffected by the Court’s Order.
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`OpenTV now seeks Rule 54(b) certification so that it may immediately appeal the Court’s Order
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`instead of waiting for the other counts to be finally resolved at some later date.
`IV.
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`LEGAL STANDARDS FOR RULE 54(B) CERTIFICATION
`The Federal Circuit is statutorily bound to review only final orders of district courts. See 28
`U.S.C. § 1295(a)(1).1 Rule 54(b), however, provides district courts an avenue for certifying partial
`final judgment for the purpose of appeal. It states that a district court “may direct entry of a final
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`judgment as to one or more, but fewer than all, claims or parties . . . if the court expressly determines
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`that there is no just reason for delay.” Fed. R. Civ. P. 54(b). The Rule enables district courts to “act
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`as a ‘dispatcher’ and [to] ‘determine, in the first instance, the appropriate time when each “final
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`decision” upon one or more but less than all of the claims in a multiple claims action is ready for
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`appeal.’” Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348, 1350–51 (Fed. Cir.
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`2006) (quoting Pause Tech. LLC, v. TiVo Inc., 401 F.3d 1290, 1294 n.2 (Fed. Cir. 2005)).
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`The Supreme Court has established a two-prong analysis for determining whether Rule 54(b)
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`certification is appropriate. Curtis-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 10, (1980). The first
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`prong requires that the judgment be “final” with respect to one or more claims. Curtis-Wright., 446
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`U.S. at 7. A final judgment is “a decision upon a cognizable claim for relief” that is “an ultimate
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`disposition of an individual claim entered in the course of a multiple claims action.” Id. It is “final”
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`when it “ends the litigation on the merits and leaves nothing for the court to do but execute the
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`judgment.” Catlin v. United States, 324 U.S. 229, 233 (1945).
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`1 Federal Circuit law, instead of regional circuit law, applies to Rule 54(b) certification issues
`in patent cases. Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 830 (Fed. Cir. 2003).
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 8 of 14
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`As to the second prong, “the district court must go on to determine whether there is any just
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`reason for delay.” Curtiss-Wright, 446 U.S. at 8. In determining whether just reasons exist, district
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`courts “take into account judicial administrative interests as well as the equities involved” and
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`consider “whether the claims under review [are] separable from the others remaining to be
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`adjudicated and whether the nature of the claims already determined was such that no appellate court
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`would have to decide the same issues more than once even if there were subsequent appeals.” Id.;
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`see also W.L. Gore & Assocs., Inc. v. Int’l Med. Prosthetics Research Assocs., Inc., 975 F.2d 858,
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`862 (Fed. Cir. 1992). District courts have “substantial discretion” in determining whether there is no
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`just reason for delay. E.g., Intergraph Corp. v. Intel Corp., 253 F.3d 695, 699 (Fed. Cir. 2006).
`V.
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`ARGUMENT
`The circumstances here satisfy Rule 54(b) and weigh in favor of certifying the partial final
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`judgment of invalidity under § 101 of two patents for interlocutory appeal. The Court’s Order of
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`patent ineligibility is “final” because it completely resolved OpenTV’s causes of action against
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`Apple with respect to the ’081 and ’429 patents. There is no “just reason” for delaying an appeal
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`because the ineligibility issue is separable from OpenTV’s infringement claims on the other asserted
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`patents (and Apple’s related defenses) and an immediate appeal would serve judicial efficiency. The
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`Court should not hold OpenTV’s appeal in abeyance for a year or more while the other infringement
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`claims proceed through claim construction and trial.
`The Order Is a Final Disposition of OpenTV’s Causes of Action
`A.
`The Court’s Order granting Apple’s motion to dismiss constitutes a “final judgment” with
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`respect to OpenTV’s causes of action for infringement of the ’081 and ’429 patents. The Court’s
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`decision that the asserted claims are directed to ineligible subject matter invalidated those claims
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`and, as a result, they are rendered unenforceable. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721
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`F.2d 1563, 1583 (Fed. Cir. 1983) (“[A]n invalid claim cannot give rise to liability for
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`infringement.”). The Order therefore represented “an ultimate disposition” of OpenTV’s
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`“cognizable claim for relief.” Curtiss-Wright, 446 U.S. at 8. While Apple has pending
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`counterclaims for noninfringement and invalidity on the ’081 and ’429 patents (see Dkt. No. 73),
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`those counterclaims do “not affect the finality of the judgment.” Accord Storage Tech. Corp. v.
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`3
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 9 of 14
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`Cisco Sys., 329 F.3d 823, 829-30 (Fed. Cir. 2003) (summary judgment of noninfringement was final
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`despite counterclaims for invalidity); see also Liquid Dynamic v. Vaughn Co., 355 F.3d 1361, 1371
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`(Fed. Cir. 2004). In other words, the Order “end[ed] the litigation on the merits and le[ft] nothing
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`for the court to do but execute the judgment.” Catlin, 324 U.S. at 233.
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`District courts have repeatedly found finality in similar situations. In Sun Pharmaceutical
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`Industries, Ltd. v. Eli Lilly & Co., for example, the court found on summary judgment that one of Eli
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`Lilly’s patents was “invalid due to obvious-type double patenting.” No. 07-cv-15087, 2009 WL
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`3497797, at *2 (E.D. Mich. Oct. 29, 2009). The court reasoned that its invalidity order “constituted
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`the ultimate disposition of the parties’ claims and counterclaims relating to [that] Patent.” Id. Citing
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`Nystrom v. Trex Co., 339 F.3d 1347, 1350–51 (Fed. Cir. 2003), the court explained that “a district
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`court may render an adjudication of non-infringement a ‘final judgment’ for purposes of Rule 54(b)
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`by dismissing counterclaims of invalidity without prejudice (with or without a finding that the
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`counterclaim was moot).” Id.
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`Likewise, in Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, the court held that one of
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`Wrigley’s two patents asserted against Cadbury was invalid. No. 04-cv-00346, 2010 WL 4115427,
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`at *6–7 (N.D. Ill. Oct. 18, 2010), aff’d, 683 F.3d 1356 (Fed. Cir. 2012). In addressing whether the
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`ruling was “final” for purposes of Rule 54(b) certification, the court found that its summary
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`judgment order of invalidity “was in fact a final judgment even though the Court did not determine
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`Cadbury’s claim on unenforceability of the . . . patent due to inequitable conduct.” Id. at *4. The
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`infringement claim “was completely disposed of notwithstanding the presence of the unadjudicated
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`counterclaim for inequitable conduct” and the issue was therefore certified for immediate appeal. Id.
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`at *4, 7. In Smart Systems Innovations, L.L.C. v. Chicago Transit Authority, on facts nearly identical
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`to those at issue here, the defendant even conceded that an order dismissing four out of five asserted
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`patents as invalid under § 101 was “final” for purposes of Rule 54(b). No. 14-cv-08053, slip op. at 3
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`(N.D. Ill. Nov. 10, 2015). The same is true here—there can be no genuine question that the finality
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`requirement of Rule 54(b) is satisfied.
`No Just Reason Exists to Delay an Appeal of the Order
`B.
`There is also no just reason to complete all proceedings on the three other asserted patents
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`4
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 10 of 14
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`before allowing OpenTV to appeal the legal question of whether the claims of ’081 and ’429 patents
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`are directed to eligible subject matter. In determining whether “just reason” exists, a “court is
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`required to consider both (1) the ‘judicial administrative interests’ weighing against ‘piecemeal
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`appeals’; and (2) ‘the equities involved.’” Nazomi Commc’ns, Inc. v. Nokia Corp., No. C-10-04686,
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`2012 WL 6680304, at *2 (N.D. Cal. Dec. 21, 2012) (quoting Curtis-Wright, 446 U.S. at 7). The
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`considerations used in weighing those two factors favor Rule 54(b) certification here.
`The Federal Circuit Will Not Need to Address the Issues Twice
`1.
`“With respect to the first factor, an important consideration is whether an ‘appellate court
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`would have to decide the same issues more than once . . . if there were subsequent appeals.’” Id.
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`(quoting Curtis-Wright, 446 U.S. at 7). Here, that risk is nonexistent. OpenTV’s appeal concerns a
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`discrete legal question: whether the subject matter of the asserted claims of the ’081 and ’429 patents
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`is eligible under § 101. That inquiry is specific to the subject matter of those particular claims. That
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`is, regardless of what transpires with respect to the three other patents remaining in this case, the
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`Federal Circuit would never have to revisit the eligibility of the claims of the ’081 and ’429 patents
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`dismissed under § 101. Similarly in Augme Techs., Inc. v. Yahoo! Inc., after granting the
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`defendant’s summary judgment motion that it did not infringe two of the plaintiff’s patent, the Court
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`granted a motion for final judgment under Rule 54(b), although the plaintiff continued to assert a
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`counterclaim of infringement of its own patent. 305 F.R.D. 112, 115 (N.D. Cal. 2012), aff'd, 755
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`F.3d 1326 (Fed. Cir. 2014). The Court in that instance held, “Even if the [defendant’s] and the
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`[plaintiff’s] patents share common technology and products, Yahoo! has not identified one legal or
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`factual issue the Federal Circuit will have to decide more than once.” Id. Thus, the legal issue
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`before the Federal Circuit would not overlap with the remaining patents. See WiAV Sols. LLC v.
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`Motorola, Inc., No. 3:09-cv-447, 2010 WL 883748, *2 (E.D. Va. Mar. 8, 2010) (finding that the
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`certified “issue [was] unique to [dismissed patents] and an appellate court will not have to consider it
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`at all as to the remaining two patents”).
`2.
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`The Claims on Appeal are “Separable” and Do Not Meaningfully
`Overlap with the Claims of the Three Other Asserted Patents
`District courts should also look to “the factual relatedness of [the] separate claims for
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`relief . . . in deciding whether to exercise its discretion to certify an appeal.” Nazomi, 2012 WL
`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`5
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 11 of 14
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`6680304, at *2 (citing W.L. Gore, 975 F.2d at 864). That inquiry has been described as a question of
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`“whether the claims under review are separable from the others remaining to be adjudicated.”
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`Trading Techs. Int’l, Inc. v. BCG Partners, Inc., 883 F. Supp. 2d 772, 780 (N.D. Ill. 2012), rev’d and
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`remanded on other grounds, 728 F.3d 1309 (Fed. Cir. 2013). Here, OpenTV’s counts for
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`infringement of the ’081 and ’429 patents are independent causes of action that are “discrete [and]
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`separate from the infringement [counts]” of the three patents that were not subject to the Court’s
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`Order. Id. at 783. As in Trading Techs., OpenTV’s claims as to those three patents “could have
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`been brought separately” from a suit on the two patents found invalid as ineligible. Id.
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`That the asserted claims of the ’081 and ’429 patents are divisible from the rest is hardly
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`debatable, given that each patent-in-suit has different inventors, family histories, written
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`descriptions, claim language, and prior art considered by the respective examiners. While the
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`patents may all, at some general level, relate to securely communicating digital data between devices
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`and communicating large amounts of digital information, there is no meaningful overlap for
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`purposes of Rule 54(b). As detailed in OpenTV’s complaint, the patents relate to a myriad of
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`technologies, including “fundamental technologies for video and content management, distribution,
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`information acquisition, sharing, authentication, secure storage, and control.” (Dkt. 1 at ¶ 52).
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`Indeed, courts have found that such general levels of technological overlap cannot justify
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`delaying an appeal. For example, in HTC Corp. v. IPCom GMBH & Co., KG, the court certified an
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`appeal on two patents where one patent remained at issue even though the “technology involved in
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`[all] three patents relate[d] to mobile phones.” 285 F.R.D. 130, 132 (D.D.C. 2012). The court found
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`that for purposes of Rule 54(b) certification the “[p]atents de[alt] with different technologies, the
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`infringement evidence for each [wa]s unique, and HTC’s invalidity arguments for each [wa]s
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`distinct.” Id. That is precisely the case here where the three remaining patents will be subject to
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`different infringement and invalidity theories from the two patents ruled invalid. Factual relatedness
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`is not a just reason to prevent OpenTV’s appeal.
`Judicial Efficiency Strongly Favors Certification
`3.
`Perhaps most important is the judicial efficiency that Rule 54(b) provides in this case. The
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`case is in early stages and, if this Court certifies its Order for immediate appeal, several factors
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`6
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`

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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 12 of 14
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`suggest that the Federal Circuit could issue a decision before a trial on the remaining three patents
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`begins. First, this appeal involves only the legal issue of patent eligibility under the Supreme
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`Court’s decision in Alice. It presents a clear and confined legal issue untethered to a complicated
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`factual record. Second, confronted with similar Alice issues, the Federal Circuit has often ruled in
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`approximately one year. For example, the Federal Circuit decided Digitech Image Techs., LLC v.
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`Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), in just over ten months after the notice
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`of appeal. In Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014), it ruled in
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`just over eleven months after the notice of appeal. And, in buySAFE, Inc. v. Google, Inc., 765 F.3d
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`1350 (Fed. Cir. 2014), it issued an opinion about twelve months after the notice of appeal was filed.
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`Thus, certifying the Order for immediate appeal may avoid the waste and expense that two potential
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`trials would entail, if the ruling is reversed. WiAV Sols., 2010 Wl 883748, at *2 (granting
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`certification where delay could “result in two trials and possibly two appeals”).
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`The judicial efficiency gained by certifying invalidity issues under Alice for immediate
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`appeal was the primary justification for certification in Smart Systems, which presented a similar fact
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`pattern to this case. No. 14-cv-08053, slip op. at 3-4 (N.D. Ill. Nov. 10, 2015). In Smart Systems,
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`the court granted a motion to dismiss four out of five asserted patents because it found that the
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`asserted claims were invalid under § 101 and Alice. Id. at 1. As here, the defendant in Smart
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`Systems did not challenge in its motion the remaining patent as not satisfying the rigors of § 101. Id.
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`at 1–2. Like OpenTV here, the patent holder, Smart Systems, asked the court to grant Rule 54(b)
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`certification as to the four invalid patents rather than waiting for final judgment as to all of the
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`patents in the suit. Id. at 2. In finding “sound reason to allow an interlocutory appeal,” the court
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`explained that “[i]f the parties move along promptly in the Federal Circuit, then there is a solid
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`chance that the appeal will be decided before the remaining claims go to trial.” Id. at 3–4. More
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`specifically, it reasoned:
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`The [remaining] patent still requires claim construction; post-
`construction discovery; and . . . a round of summary judgment briefing
`and decision. The proposed appeal would present a question of law on
`a limited record, and . . . there is a solid chance of an appellate
`decision before trial (if there is one) . . . . If this Court’s decision is
`reversed, then the Court will have a chance to put the brakes on before
`the trial . . . , and will have a chance to consolidate the litigation on the
`four patents into one trial. To hold a jury trial requires significant
`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 13 of 14
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`Id. at 4.
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`investment of judicial and . . . community resources, and it would be
`much better to hold one trial in this case, rather than two.
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`The Smart Systems court also found that an appeal based on Alice issues would not require
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`the Federal Circuit to waste resources in “gearing-up” for a first appeal when there might be second.
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`Id. at 5–6. It explained that “deciding the § 101 opinion issue did not require a deep-dive, or any in-
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`depth examination, of the details of [accused products].” Id. at 6. Instead, it found the “point” of the
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`§ 101 challenge “was that the four patents themselves are invalid as trying to cover unpatentable
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`subject matter—no matter what system is accused.” Id. Additionally, it determined that “the claim
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`construction terms in the [remaining patents’] claims simply will not be influenced by the § 101
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`decision.” Id.; see also Cogent Med., Inc. v. Elsevier, 70 F. Supp. 3d 1058, 1065 n.3 (N.D. Cal.
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`2014) (“It is important to distinguish novelty and obviousness from the ‘inventive feature’ required
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`by the Supreme Court in Alice.”). Exactly the same reasoning applies here, all of which militates in
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`favor of certifying the invalidity issues for immediate appeal.
`VI. CONCLUSION
`For the foregoing reasons, OpenTV, Inc. and Nagra France S.A.S. request that the Court
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`enter partial judgment with respect to OpenTV’s counts 1 and 4, thereby certifying the Order for
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`appeal under Rule 54(b). There is no just reason for delaying an appeal while the remaining patents
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`proceed toward trial.
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`PLAINTIFFS’ MOTION FOR RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 75 Filed 02/25/16 Page 14 of 14
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`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
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`
`
`/s/ Robert F. McCauley
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`By:
`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRE