realZOOM LLC v. L Brands, Inc. et alMOTION for Summary Judgment of InvalidityE.D. Tex.June 13, 2018 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION REALZOOM LLC, Plaintiff v. L BRANDS, INC., and VICTORIA’S SECRET STORES, LLC Defendants. Case No. 2:17-CV-00118-RWS LEAD CASE JURY TRIAL DEMANDED DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF INVALIDITY Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 1 of 26 PageID #: 740 ii TABLE OF CONTENTS I. INTRODUCTION .............................................................................................................. 1 II. STATEMENT OF THE ISSUES........................................................................................ 1 III. LEGAL STANDARD ......................................................................................................... 2 IV. STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................. 3 V. ANALYSIS ......................................................................................................................... 7 A. The Asserted Claims Do Not Satisfy the Written Description Requirement ................................................................................................ 7 B. Abramson Anticipates All of the Asserted Claims ..................................... 8 VI. CONCLUSION ................................................................................................................. 22 Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 2 of 26 PageID #: 741 iii TABLE OF AUTHORITIES FEDERAL CASES PAGE(S) Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ...................................................................................................................2 Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)..................................................................................3 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ...................................................................................................................2 In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990) .....................................................................3 In re Johnson 558 F.2d 1008 (CCPA 1977) .....................................................................................................3 Little v. Liquid Air Corp., 37 F.3d 1069 (5th Cir. 1994) .....................................................................................................2 LSR Consulting, LLC v. Wells Fargo Bank, N.A., 835 F.3d 530 (5th Cir. 2016) .....................................................................................................2 Microsoft Corp. v. i4i Ltd P’ship, 564 U.S. 91 (2011) .....................................................................................................................2 Net MoneyIn v. Verisign, 545 F.3d 1359 (Fed. Cir. 2008)..................................................................................................3 Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644 (Fed. Cir. 1994)......................................................................................................2 Santarus, Inc. v. Par Pharm, Inc., 694 F.3d 1344 (Fed. Cir. 2012)..............................................................................................3, 7 Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017)..................................................................................................2 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987)....................................................................................................3 STATUTES 35 U.S.C. § 102 ..................................................................................................................1, 3, 4, 21 35 U.S.C. § 112 ..................................................................................................................3, 7, 8, 22 35 U.S.C. § 282 ................................................................................................................................2 OTHER AUTHORITIES Fed. R. Civ. P. 56(a) ........................................................................................................................2 M.P.E.P § 2173.05 ...........................................................................................................................3 Local Patent Rule 3-1(e) ..................................................................................................................4 Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 3 of 26 PageID #: 742 1 I. INTRODUCTION The Asserted Claims of the Patent-in-Suit are invalid as a matter of law. In this case, Plaintiff alleges that the product zoom feature on the victoriassecret.com website (“VS Website”) infringes U.S. Patent No. 7,774,712 (the “’712 Patent”). The VS Website employs a common, decades-old approach to zooming in on an image. Indeed, as it pertains to this motion, the approach to zooming claimed in the ’712 Patent has been fully described in a published patent application filed years before Plaintiff’s predecessor applied for the ’712 Patent. The Patent Office did not consider this publication during prosecution, and it anticipates every limitation of the Asserted Claims. As a separate ground of invalidity, there can be no dispute of material fact that the Asserted Claims include a negative limitation that was added to the claims during prosecution, for which there is no support in the specification. Plaintiff has not identified an expert nor provided an expert report that can rebut any of these facts. Accordingly, Plaintiff cannot demonstrate a material issue of fact as to invalidity. Thus, Defendants respectfully ask the Court to enter summary judgment that the Asserted Claims are invalid. II. STATEMENT OF THE ISSUES 1. Whether the negative limitation in each of the Asserted Claims of the Patent-in- Suit renders those claims invalid because there is no support for it in the specification. 2. Whether the Asserted Claims of the Patent-in-Suit are invalid under 35 U.S.C. § 102 as anticipated by U.S. Patent App. Pub. No. 2002/0163547 to Abramson et al. (“Abramson”). Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 4 of 26 PageID #: 743 2 III. LEGAL STANDARD Summary judgment is appropriate when “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”1 “[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment.”2 A fact is “material” if it might reasonably affect the outcome of the case.3 Evidence, whether it is offered by the movant to satisfy its initial burden or by the nonmovant to defeat a properly supported motion for summary judgment, may not consist entirely of “conclusory allegations” or “unsubstantiated assertions.”4 Likewise, such evidence must be “capable of being ‘presented in a form that would be admissible in evidence.’”5 A patent is presumed valid, and the burden of proof rests on the party asserting invalidity.6 A party challenging validity must demonstrate that the patent is invalid by clear and convincing evidence.7 With respect to the anticipation issues raised here, a claim is anticipated if “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” and those limitations must be “arranged or combined 1 Fed. R. Civ. P. 56(a); see also Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). 2 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). 3 Id. at 248. 4 Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994). 5 LSR Consulting, LLC v. Wells Fargo Bank, N.A., 835 F.3d 530, 534 (5th Cir. 2016) (emphasis in original). 6 35 U.S.C. § 282. 7 Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017); Microsoft Corp. v. i4i Ltd P’ship, 564 U.S. 91, 95 (2011). Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 5 of 26 PageID #: 744 3 in the same way as recited in the claim.”8 The test does not, however, require ipsissimis verbis disclosure—identical terminology is not required.9 To satisfy 35 U.S.C. § 112, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor actually invented the claimed invention at the time of filing.10 When a patent claim includes a negative limitation, that negative limitation must meet the same written description standard as all other limitations, for example, the specification reciting a reason to exclude a particular element.11 IV. STATEMENT OF UNDISPUTED MATERIAL FACTS The undisputed material facts entitle L Brands and Victoria’s Secret to judgment as a matter of law that the Asserted Claims of the ’712 Patent are invalid under 35 U.S.C. § 102 and 35 U.S.C. § 112. The following facts are undisputed: 1. The patent-in-suit, U.S. Patent No. 7,774,712, (the “’712 Patent”) titled “Methods and Systems for Displaying an Enlarged Image,” issued on August 10, 2010 to inventors Steven Laff and Mark Ormston on an application filed December 31, 2004.12 2. The ’712 Patent has a priority date of December 31, 2004.13 8 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987); Net MoneyIn v. Verisign, 545 F.3d 1359, 1371 (Fed. Cir. 2008). 9 In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). 10 Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). 11 Santarus, Inc. v. Par Pharm, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). See also In re Johnson 558 F.2d 1008, 101[8] (CCPA 1977); and MPEP § 2173.05. 12 See Exhibit A, ’712 Patent. 13 Exhibit B, Plaintiff’s Disclosure of Asserted Claims and Infringement Contentions, p. 4, at Rule 3-1(e). “The ’712 patent claims priority to United States Patent Application No. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 6 of 26 PageID #: 745 4 3. The ’712 Patent as originally filed does not include any disclosure relating to the determination of a portion of the enlarged version of a first image with a client device without requesting additional information from the server.14 4. U.S. Patent App. Pub. No. 2002/0163547 to Abramson et al. (“Abramson”) was filed April 30, 2002 as application serial number 10/136,845, and published on November 7, 2002.15 5. Abramson was never cited in the prosecution history of the ’712 Patent.16 6. Abramson qualifies as prior art to the ’712 Patent under at least 35 U.S.C. § 102(a) and (b) (pre-AIA).17 7. Abramson is generally directed to a “magnifier feature.”18 8. Abramson discloses “an enlargement application” as recited by the claims.19 9. Abramson discloses methods, systems, and computer readable media including instructions for displaying an enlarged image on the display of a client device.20 11/027863 filed December 31, 2004, the priority date to which each asserted claim is entitled.” 14 Exhibit C, First Report of Kendyl Román, at ¶¶ 148-49; Exhibit E, U.S. Application No. 11/027,863 as originally filed; Exhibit F, November 16, 2006 Amendment and Response to Office action. 15 Exhibit D, Abramson. 16 See Exhibit A, ’712 Patent. 17 Exhibit C, First Report of Kendyl Román, at ¶ 169. 18 Exhibit D, Abramson, at Abstract. 19 Exhibit D, Abramson, at [0076] and [0079]; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶¶ 1 and 6. 20 Exhibit D, Abramson, at [0023], [0036], [0069], [0072], and [0076]; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶ 3. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 7 of 26 PageID #: 746 5 10. Abramson discloses “a user interface.”21 11. Abramson discloses “a server.”22 12. Abramson discloses two separate images, “a first image” and “an enlarged version of the first image.”23 13. Abramson discloses “transmitting, over a network, a first image and an enlarged version of the first image from a server to the client device,” “receiving a first image and an enlarged version of the first image from a server,” and “wherein the enlargement application executed by the client device is configured to receive at least the enlarged version of the first image from the server.”24 14. Abramson discloses “display/displaying a first image at a first location on the display.”25 15. Abramson discloses “determine/determining whether the position of the cursor generated by the client device overlaps with the first location of the first image.”26 21 Exhibit D, Abramson, at [0069], [0072], and Figs. 5 and 6; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶ 4. 22 Exhibit D, Abramson, at [0072]; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶¶ 9 and 12. 23 Exhibit D, Abramson, at [0013], [0076], and Fig. 6; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶¶ 10-12. 24 Exhibit D, Abramson, at [0072], [0079], Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶¶ 14-16. 25 Exhibit D, Abramson, at [0078], Figs. 5 and 6; Exhibit C, First Report of Kendyl Román, at ¶ 172; Ex. 4-2, Ex. 5-1 at 18-19. 26 Exhibit D, Abramson, at [0077], [0079]-[0080]; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶ 21-22. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 8 of 26 PageID #: 747 6 16. Abramson discloses “determine/determining a portion of the enlarged version of the first image with the client device without requesting additional information from the server, where the portion of the enlarged version of the first image is determined based on the position of the cursor.”27 17. Abramson discloses “display/displaying the portion of the enlarged version of the first image at a second location on the display.”28 18. Abramson discloses “display/displaying an indication on the first image that indicates a portion of the first image that corresponds to the displayed portion of the enlarged version of the first image.”29 19. Abramson discloses “display/displaying a different portion of the enlarged version of the first image whenever the position of the cursor changes.”30 20. Abramson discloses “not display/displaying the portion of the enlarged version of the first image if the position of the cursor does not overlap with the first location of the first image.”31 27 Exhibit D, Abramson, at [0077], [0079]-[0080]; Exhibit C, First Report of Kendyl Román, Ex. 5-1 at ¶¶ 24-26. 28 Exhibit D, Abramson, at [0036], [0080], and Fig. 6; Exhibit C, First Report of Kendyl Román, at Ex. 4-2; id. Ex. 5-1, at ¶ 28. 29 Exhibit D, Abramson, at [0034], [0036], [0078], and Fig. 6; Exhibit C, First Report of Kendyl Román, at Ex. 4-2; Id., at ¶ 33. 30 Exhibit D, Abramson, at [0037], [0079], and Fig. 6; Exhibit C, First Report of Kendyl Román, Ex. 5-2, at ¶ 36. 31 Exhibit D, Abramson, at [0037], [0078], and Fig. 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 40. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 9 of 26 PageID #: 748 7 V. ANALYSIS L Brands, Inc. and Victoria’s Secret Stores, LLC are entitled to summary judgment of invalidity because Plaintiff cannot rebut Defendants’ clear and convincing evidence that the Asserted Claims are invalid because they (a) fail to satisfy the written description requirement and (b) are anticipated by Abramson. A. The Asserted Claims Do Not Satisfy the Written Description Requirement The Asserted Claims are invalid because the ’712 Patent specification fails to disclose or provide any support for the claim limitation “determining a portion of the enlarged version of the first image with the client device without requesting additional information from the server.”32 This is a negative claim limitation—i.e., infringement occurs only if the accused infringer does not do a particular thing while doing others. Like all other claim limitations, a negative claim limitation must find adequate support in the specification, or the claim is invalid. A patentee may not arbitrarily dissect its invention by adding negative claim limitations to avoid the prior art, because such amendments will be held invalid under 35 U.S.C. § 112 if there is inadequate support for such amendments.33 “Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”34 For example, by explicitly disclosing advantages and/or disadvantages or specific alternative embodiments.35 32 Exhibit C, First Report of Kendyl Román, at ¶ 148. 33 Santarus, 694 F.3d, at 1356-57. 34 Id., at 1351. 35 Id., at 1350. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 10 of 26 PageID #: 749 8 Here, the specification includes no disclosure whatsoever of “determining a portion of the enlarged version of the first image with the client device without requesting additional information from the server.” The “without” clause was amended into the claims during prosecution, and was not part of the as-filed application.36 Indeed, the specification never comes close to suggesting the existence of the claimed negative limitation. At most, the ’712 Patent specification supports the fact that a communication may occur over a network and come from a server.37 There is no disclosure limiting this. There is no limitation in the specification as to when this information is received. The specification does not disclose that the client cannot receive information from a server when making the determination regarding the portion of the enlarger version of the first image.38 Therefore, the ’712 Patent lacks written description support for the negative limitation that is in every Asserted Claim. Consequently, every single Asserted Claim is invalid for lack of written description support under 35 U.S.C. § 112 first paragraph. B. Abramson Anticipates All of the Asserted Claims In general, Abramson relates to systems and methods where a program functions as an enlargement application to display on a screen an enlarged portion of a first whole image.39 Abramson discloses, expressly or inherently, all of the limitations of claims 1, 2, and 7 through 10 of the ’712 Patent. 36 Exhibit C, First Report of Kendyl Román, at ¶ 148. Comparing Exhibit A, ’712 Patent Issued Claims 1, 7, 9, and 11, with Exhibit E, U.S. Application No. 11/027,863 as originally filed; and Exhibit F, November 16, 2006 Amendment and Response to Office, pp. 2, 4, and 6. 37 Exhibit C, First Report of Kendyl Román, at ¶¶ 149-50. 38 Id. 39 SUF 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1 at ¶ 1. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 11 of 26 PageID #: 750 9 (i) Preamble of claims 1, 7, and 9 Abramson teaches every element of the preambles of claims 1, 7, and 9. The Preamble of claim 1 recites: “[a] method of displaying an enlarged image on a display of a client device running an enlargement application executed by a browser program, the client device configured to generate a user interface in which a user may control a position of a cursor, the method comprising.”40 Substantively, the preambles of claims 7 and 9 are similar to claim 1. A person of ordinary skill in the art would understand that Abramson discloses methods, systems, and computer readable media including instructions for displaying an enlarged image on the display of a client device. Specifically, Abramson recites “[t]he invention provides a computer readable medium or media which causes a computer to provide the functionality described herein, and systems and computers and methods, as described herein, that provide such functionality.”41 A person of ordinary skill in the art would understand that Abramson discloses a “user interface.”42 Abramson also provides details on the graphical user interface, including programing languages it may be generated in.43 As illustrated in the figure below, Abramson also discloses that a “magnifier can be moved in any direction using, for example, a mouse or other pointing device.”44 40 Exhibit A, - ’712 Patent, at claim 1. 41 SUF 9; Exhibit D, Abramson, at [0023]; Exhibit C, First Report of Kendyl Román 5-1, at ¶¶ 3 and 7. 42 SUF 10; xhibit D Abramson, at [0069]; Exhibit C, First Report of Kendyl Román 5-1, at ¶¶ 4 and 7. 43 SUF 8, 9 and 10; Exhibit D, Abramson, at [0076]; Exhibit C, First Report of Kendyl Román 5- 1, at ¶ 1. 44 SUF 10; Exhibit D, Abramson, at Fig. 6; Exhibit C, First Report of Kendyl Román 4-2. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 12 of 26 PageID #: 751 10 Therefore, a person of ordinary skill in the art would understand that the user interface as disclosed by Abramson teaches a user interface that displays an image and an enlarged version of an image in which a user may control the position of the cursor on a display.45 As such, one of ordinary skill in the art would understand that Abramson teaches each and every element of the preamble of claims 1, 7, and 9. (ii) (ii) “A server,” “a first image,” and “an enlarged version of the first image” Each of the asserted claims recites a server, a first image, and an enlarged version of the first image. Independent claim 9 recites them individually, while independent claims 1 and 7 include these elements within other elements. Since these elements appear throughout all of the asserted claims, they are addressed here together.46 45 SUF 7-1, and 12; Exhibit D, Abramson, [0036], [0069], and [0076] Fig. 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 5 and 7. 46 Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 8. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 13 of 26 PageID #: 752 11 A person of ordinary skill in the art would understand “the web server 12” of Abramson as disclosing “a server” as recited in claims 1, 7, and 9.47 A person of ordinary skill in the art would also understand Abramson also discloses two separate images, “a first image” and “an enlarged version of the first image.”48 Abramson teaches that “digital signals are provided representing two versions of an area representation, which when displayed provide a smaller, or unmagnified, version and a larger, or magnified, version of at least a portion of the area representation.”49 Abramson, also discloses “[w]ith reference to FIG. 5 [reproduced above], a part of the magnified view 50 obtained from one GIF file is displayed” and “the Shockwave application displays from 47 SUF 11; Exhibit D, Abramson, at [0072]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 9 and 12. 48 SUF 12; Exhibit D, Abramson, at [0078], and Fig. 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 10 and 12. 49 SUF 12; Exhibit D, Abramson, at [0013]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 11 and 12. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 14 of 26 PageID #: 753 12 another GIF file the entire unmagnified view 30.”50 A person of ordinary skill in the art would understand the first GIF file mentioned above to be the enlarged version of the first image, and the second GIF file mentioned in the text above to be, as the text says, the unenlarged image that corresponds to the claimed first image.51 As such, one of ordinary skill in the art would understand that Abramson teaches the claim elements of “a server,” “a first image” and “an enlarged version of the first image” of claims 1, 7, and 9. (iii) “Transmitting, over a network, a first image and an enlarged version of the first image from a server to the client device” (Claim 1) / “receiving a first image and an enlarged version of the first image from a server” (Claim 7) / “wherein the enlargement application executed by the client device is configured to receive at least the enlarged version of the first image from the server” (Claim 9) These three limitations, although worded slightly differently, all relate to the same functionality – the server sending the first image and the enlarged version of the first image to the client device. Accordingly, all three limitations will be discussed here together. A person of ordinary skill in the art would understand that Abramson discloses “transmitting, over a network . . . from a server to the client device” as discussed in claim 1.52 For example, Abramson discloses “[i]n one embodiment, the web server 12, using standard web- serving software, sends a Shockwave executable application and relevant graphics and text files to the user's device 14.”53 50 SUF 12. Exhibit D, Abramson, at [0079], and Fig. 5; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 10 and 12. 51 Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 10. 52 SUF 13; Exhibit D, Abramson, at [0072]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 14 and 16. 53 Id. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 15 of 26 PageID #: 754 13 A person of ordinary skill in the art would understand that Abramson also discloses the analogous limitations of claims 7 and 9 (“receiving . . . from a server” and “wherein the enlargement application executed by the client device is configured to receive . . . from the server”).54 For example, Abramson discloses “the web browser on a personal computer and the Shockwave executable application display, an ‘unmagnified view’ 30 of the concerned map (FIG. 3), and a section of a ‘magnified view’ 50 (FIG. 4), from two GIF files.”55 As such, one of ordinary skill in the art would understand that Abramson teaches the claim elements of “transmitting, over a network, a first image and an enlarged version of the first image from a server to the client device” of claims 1, “receiving a first image and an enlarged version of the first image from a server” of claim 7 and “wherein the enlargement application executed by the client device is configured to receive at least the enlarged version of the first image from the server” of claim 9. (iv) “Displaying the first image at a first location on the display” (Claim 1 and 7) / “display the first image at a first location on the display” Claims 1 and 7 recite this element in the same way, while claim 9 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. Figures 5 and 6 of Abramson clearly illustrate “display[ing] the first image at a first location on the display.” For example, Abramson discloses “[w]ith reference to FIG. 5 . . . the Shockwave application displays from another GIF file the entire unmagnified view 30 of the 54 SUF 13; Exhibit D, Abramson, at [0079]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 15 and 16. 55 Id. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 16 of 26 PageID #: 755 14 concerned geographic area (e.g., the city's map) on the left side 40 of a browser window.”56 This is also illustrated by Exhibit 4-2, reproduced below, of the First Report of Kendyl Román. Román Exhibit 4-2 shows Fig. 6 of the Abramson side by side with Fig. 7 of the ’712 Patent.57 The Abramson figure is colored with blue, green, red, and orange to show the correspondence between Abramson and ’712 Patent. As such, one of ordinary skill in the art would understand that Abramson teaches the claim element of “displaying the first image at a first location on the display” of claims 1 and 7 and “display the first image at a first location on the display” of claim 9. (v) “Determining whether the position of the cursor generated by the client device overlaps with the first location of the first image” (Claims 1 and 7) / “determine whether the position of the cursor overlaps with the first location of the first image” (Claim 9) 56 SUF 14; Exhibit D, Abramson, at [0078], Figs. 5 and 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 18 and 19. 57 SUF 14; Exhibit D, Abramson, at Fig. 6; Exhibit C, First Report of Kendyl Román, at ¶ 172, Ex. 4-2. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 17 of 26 PageID #: 756 15 Claims 1 and 7 recite this element in the same way, while claim 9 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. A person of ordinary skill in the art would understand that Abramson discloses “determine/determining whether the position of the cursor overlaps with the first location of the first image.”58 For example, Abramson discloses using “the ‘x’ and ‘y’ coordinates in the graphic” corresponding to a specific pixel of the first image to determine the portion of the enlarged image to be displayed.59 As such, one of ordinary skill in the art would understand that Abramson teaches the elements of “determining whether the position of the cursor generated by the client device overlaps with the first location of the first image” of claims 1 and 7 and “determine whether the position of the cursor overlaps with the first location of the first image” of claim 9. (vi) “If the position of the cursor overlaps with the first location of the first image, determining a portion of the enlarged version of the first image with the client device without requesting additional information from the server, where the portion of the enlarged version of the first image is determined based on the position of the cursor” (Claims 1 and 7) / “if the position of the cursor overlaps with the first location of the first image, to determine a portion of the enlarged version of the first image without requesting additional information from the server, where the portion of the enlarged version of the first image is determined based on the position of the cursor” (Claim 9) Claims 1 and 7 recite this element in the same way, while claim 9 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. 58 SUF 15; Exhibit D, Abramson, at [0077], [0079], and [0080]; Exhibit C, First Report of Kendyl Román Ex. 5-1, at ¶¶ 21 and 22. 59 SUF 15; Exhibit D, Abramson, at [0077], [0079], and [0080]; Exhibit C, First Report of Kendyl Román, at ¶¶ 21 and 22. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 18 of 26 PageID #: 757 16 A person of ordinary skill in the art would understand that Abramson discloses determining a portion of the enlarged version of the first image with the client device without requesting additional information from the server, where the portion of the enlarged version of the first image is determined based on the position of the cursor.60 Abramson teaches that the application to display the map and enlarged version of the map, as well as all the images and text files, are sent from the server to the user’s computer that runs the application.61 The “application responds to changes in the location of the position indicator on the unmagnified view by displaying the new corresponding area of the magnified view.”62 The application determines the portion of the magnified map to display by determining the cursor location generated by the user device and performing the appropriate calculations.63 Therefore, Abramson discloses that the script running on the client devices determines the location of the cursor without further communications with the server. Consequently, Abramson teaches this limitation. (vii) “Displaying the portion of the enlarged version of the first image at a second location on the display of the client device while continuing to display the first image at the first location” (Claims 1 and 7) / “display the portion of the enlarged version of the first image at a second location on the display” (Claim 9) Claims 1 and 7 recite this element in the same way, while claim 9 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. 60 SUF 16; Exhibit D, Abramson, at [0080]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 25 and 26. 61 SUF 16; Exhibit D, Abramson, at [0077]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 21. 62 Id. 63 SUF 16; Exhibit D, Abramson, at [0080] and [0081]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 25 and 26. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 19 of 26 PageID #: 758 17 A person of ordinary skill in the art would understand that Abramson discloses “display/displaying the portion of the enlarged version of the first image at a second location on the display.”64 Exhibit 4-2 of the First Report of Kendyl Román, reproduced below, illustrates Abramson’s teaching of a display of the first image and the enlarged portion of the first image simultaneously. As shown above, the first image is in blue, while the enlarged portion of the first image is in orange. Plainly, the enlarged version of the first image is displayed at a second location “while continuing to display the first image at the first location.”65 As such, one of ordinary skill in the art would understand that Abramson teaches the elements of “displaying the portion of the enlarged version of the first image at a second location 64 SUF 17; Exhibit D, Abramson, at [0078] and Fig. 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 28 and 31. 65 SUF 17; Exhibit D, Abramson, at [0078] and Fig. 6; Exhibit C, First Report of Kendyl Román, at Ex. 4-2, Ex. 5-1, at ¶¶ 29 and 31. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 20 of 26 PageID #: 759 18 on the display of the client device while continuing to display the first image at the first location” of claims 1 and 7 and “display the portion of the enlarged version of the first image at a second location on the display” of claim 9. (viii) “Displaying an indication on the first image that indicates a portion of the first image that corresponds to the displayed portion of the enlarged version of the first image” (Claims 1 and 7) / “display an indication on the first image that indicates a portion of the first image that corresponds to the displayed portion of the enlarged version of the first image” Claims 1 and 7 recite this element in the same way, while claim 9 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. A person of ordinary skill in the art would understand that Abramson discloses “display/displaying an indication on the first image that indicates a portion of the first image that corresponds to the displayed portion of the enlarged version of the first image.”66 Exhibit 4-2 of the First Report of Kendyl Román, reproduced below, illustrates where FIG. 6 of Abramson displays the indication (shown in red) on the first image. 66 SUF 18; Exhibit D, Abramson, at [0037] and [0078] and Fig. 6; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 33 and 34. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 21 of 26 PageID #: 760 19 As such, one of ordinary skill in the art would understand that Abramson teaches this limitation. (ix) “Displaying a different portion of the enlarged version of the first image whenever the position of the cursor changes” (Claims 1 and 7) / “display a different portion of the enlarged version of the first image whenever the position of the cursor changes” (Claim 9) Claims 1 and 7 recite this element in the same way, while claim 9 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. A person of ordinary skill in the art would understand that Abramson discloses “display/displaying a different portion of the enlarged version of the first image whenever the position of the cursor changes.”67 Abramson discloses: In one embodiment, the magnified view 50 changes in accordance with movement of the position indicator's movement or the dragging of the magnifier 65, i.e., the 67 SUF 19; Exhibit D, Abramson, at [0037] and [0079]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 36 and 38. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 22 of 26 PageID #: 761 20 portion of the magnified view 50 is moved relative to the circular window or mask 55 responsive to the position of the magnifier 65.68 Abramson also discloses that: [I]n certain embodiments, the unmagnified map is displayed, or at least partially displayed, simultaneously with the magnified version. As such, a user is provided with the ability to see where the magnifier is on the unmagnified map as the magnifier smoothly moves over the map. The user can also, of course, view the magnified version at any time, conveniently being able to perceive, by reference to the unmagnified map including the magnifier, the location on, or the portion of, the unmagnified map that corresponds to the magnified version. The above- described embodiments, via the fluidly movable magnifier and corresponding magnified version, provide internal navigation within the unmagnified map.69 As such, one of ordinary skill in the art would understand that Abramson teaches the elements of “displaying a different portion of the enlarged version of the first image whenever the position of the cursor changes” of claims 1 and 7 and “display a different portion of the enlarged version of the first image whenever the position of the cursor changes” of claim 9. (x) Dependent Claims 2, 8, and 10: “Not displaying the portion of the enlarged version of the first image if the position of the cursor does not overlap with the first location of the first image” (Claims 2 and 8) / “not display the portion of the enlarged version of the first image if the position of the cursor does not overlap with the first location of the first image” (Claim 10) Claims 2 and 8 recite this element in the same way, while claim 10 describes the same functionality as part of a system, rather than as part of a method. Because the recitation in all three claims goes to the same functionality, they are discussed here together. One of ordinary skill in the art would understand that Abramson discloses “not display/displaying the portion of the enlarged version of the first image if the position of the 68 SUF 19; Exhibit D, Abramson, at [0079], Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 36. 69 SUF 19; Exhibit D, Abramson, at [0037], Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 37. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 23 of 26 PageID #: 762 21 cursor does not overlap with the first location of the first image.”70 For example, as discussed above in section E, supra, Abramson discloses determining if the cursor overlaps the first image. In section F, supra, Abramson discloses only displaying the second image if the cursor overlaps the first image. Therefore, one of ordinary skill in the art would understand that in the instance where the cursor does not overlap the first image, the enlarged image would not be displayed. This would especially be true if the user clicks on an area outside of area 40 and is not a list of additional information such as “listings 410.” As another example, Abramson discloses detailed method for determining if the location where a user clicks overlaps with a specific location, including determining the coordinates of the cursor, offsets for the pixels from the edges of the image, and the corresponding portion of the enlarged image if the user clicks on the magnifier 65.71 Consequently, one of ordinary skill in the art would understand that Abramson teaches the elements of “not displaying the portion of the enlarged version of the first image if the position of the cursor does not overlap with the first location of the first image” of claims 2 and 8 and “not display the portion of the enlarged version of the first image if the position of the cursor does not overlap with the first location of the first image” of claim 10. Therefore, every element of the Asserted Claims are disclosed by Abramson and would enable a person of ordinary skill in the art to carry out the invention. As such, Abramson anticipates all of the Asserted Claims of the ’712 Patent under 35 U.S.C. § 102 (pre-AIA). 70 SUF 20; Exhibit D, Abramson, [0077], [0079]-[0081]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶¶ 40 and 46. 71 SUF 20; Exhibit D, Abramson, [0079]-[0081]; Exhibit C, First Report of Kendyl Román, Ex. 5-1, at ¶ 41. Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 24 of 26 PageID #: 763 22 VI. CONCLUSION As discussed above, Defendants have demonstrated that the specification of the patent in suit does not include adequate written description to satisfy 35 U.S.C. § 112. In addition, Abramson anticipates all of the Asserted Claims of the patent in suit. Plaintiff has not identified an expert or submitted an expert report to refute any of proof Defendants have provided here. Accordingly, Defendants respectfully ask the Court to grant this motion and enter summary judgment of invalidity. Dated: June 13, 2018 /s/ Richard W. Miller Richard W. Miller Darjush Boushehri (pro hac vice) Ballard Spahr LLP 999 Peachtree St. NE, Suite 1000 Atlanta, GA 30309 Phone: 678.420.9300 Fax: 678.420.9301 millerrw@ballardspahr.com bousherehid@ballardspahr.com Lynn E. Rzonca Ballard Spahr LLP 1735 Market Street, 51st Floor Philadelphia, PA 19103-7599 Phone: 215.665.8500 Fax: 215.864.8999 rzoncal@ballardspahr.com Melissa R. Smith Texas Bar No. 24001351 Gillam & Smith, LLP 303 South Washington Avenue Marshall, Texas 75670 Phone: 903.934.8450 Fax: 903.934.9257 melissa@gillamsmithlaw.com Attorneys for Defendants Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 25 of 26 PageID #: 764 23 CERTIFICATE OF SERVICE The undersigned hereby certifies that on June 13, 2018, a true and correct copy of the foregoing has been electronically served via electronic mail on the following counsel of record: Stephen Michael Lobbin Foundation Law Group LLP 445 South Figueroa Street, Suite 3100 Los Angeles, CA 90071 949.636.1391 stephen@foundationlaw.com Adam Baumli Baumli Law Firm PLLC 5068 West Plano Parkway, Suite 300 Plano, TX 75093 adam@baumlilawfirm.com (214) 870-1240 Dated: June 13, 2018 /s/ Melissa Smith Case 2:17-cv-00118-RWS Document 69 Filed 06/13/18 Page 26 of 26 PageID #: 765
