OPPOSITION TO MSJ OF NO ANTICIPATION
BASED ON FOOTPRINT CDN
CASE NO. LA CV17-04146 JAK (PLAx)
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BRETT J. WILLIAMSON (#145235)
bwilliamson@omm.com
JOHN C. KAPPOS (#171977)
jkappos@omm.com
CAMERON W. WESTIN (#290999)
cwestin@omm.com
BO K. MOON (#268481)
bmoon@omm.com
BRADLEY M. BERG (#300856)
bmberg@omm.com
O’MELVENY & MYERS LLP
610 Newport Center Drive, 17th Floor
Newport Beach, CA 92660
Telephone: (949) 823-6900
Facsimile: (949) 823-6994
Attorneys for Defendant and Counter-Claimant
HULU, LLC
UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
SOUND VIEW INNOVATIONS, LLC,
Plaintiff,
v.
HULU, LLC,
Defendant.
Case No. 2:17-cv-04146-JAK-(PLAx)
HULU, LLC’S OPPOSITION TO
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT OF NO
ANTICIPATION BASED ON THE
FOOTPRINT CDN
Hon. Judge John A. Kronstadt
HULU, LLC,
Counter-Claimant,
v.
SOUND VIEW INNOVATIONS, LLC,
Counter-Defendant.
Date: April 15, 2019
Time: 8:30 a.m.
Courtroom No.: 10B
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TABLE OF CONTENTS
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I. INTRODUCTION ........................................................................................... 1
II. ARGUMENT .................................................................................................. 1
A. Hulu’s Invalidity Argument Based On The Footprint CDN Is
Not A “Practicing The Prior Art” Defense ........................................... 1
B. Hulu Has Satisfied Its Burden To Establish A Genuine Dispute
Of Fact Regarding Anticipation As A Matter of Law .......................... 5
1. Dr. Chase’s Report Fully Complies With The
Requirements Of Rule 26(a)(2) .................................................. 5
2. There Is A Genuine Issue OF Fact, Apart From Dr.
Chase’s Opinion, As To Whether The Footprint CDN
Anticipates the CDN Patents .................................................... 10
III. CONCLUSION ............................................................................................. 11
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TABLE OF AUTHORITIES
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CASES
01 Communique Lab., Inc. v. Citrix Sys., Inc.,
889 F.3d 735 (Fed. Cir. 2018) .................................................................. 2, 3, 4, 5
Apple Computer, Inc. v. Articulate Sys., Inc.,
234 F.3d 14 (Fed. Cir. 2000) ................................................................................ 9
Aspex Eyewear, Inc. v. Concepts In Optics, Inc.,
111 Fed. Appx. 582 (Fed. Cir. 2004) ................................................................... 9
Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp,
Inc.,
249 F.3d 1341 (Fed. Cir. 2001) ............................................................................ 8
Digital Reg of Texas, LLC v. Adobe Sys., Inc.,
No. C 12-1971 CW, 2014 WL 4090550 (N.D. Cal. Aug. 19, 2014) ........... 10, 11
Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc.,
87 F. Supp. 3d 928 (N.D. Cal. 2015) .................................................................... 6
Konvin Assocs. v. Extech/Exterior Techs.,
No. 04 C 2544, 2006 WL 2460589 (Aug. 21, 2006, N.D. Ill.) ............................ 9
Mettler-Toledo Inc. v. Fairbanks Scales Inc.,
No. 9:06-CV-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) ....................... 7
Milos Misha Subotincic v. 1274274 Ontario Inc.,
No. SACV 10-cv-01946 AG, 2013 WL 3964994 (C.D. Cal. Apr. 9,
2013) ..................................................................................................................... 7
Peters v. Active Mfg. Co.,
129 U.S. 530 (1889) ............................................................................................. 1
Realtime Data LLC v. EchoStar Corp.,
No. 6:17-CV-00084-JDL, 2018 WL 6271807 (E.D. Tex. Nov. 29,
2018) ..................................................................................................................... 4
Rembrandt Diagnostics, LP v. Innovacon, Inc.,
No. 16-CV-00698-CAB-NLS, 2018 WL 3707023 (S.D. Cal. Aug.
3, 2018) ................................................................................................................. 3
Schumer v. Lab. Comput. Sys., Inc.,
308 F.3d 1304 (Fed. Cir. 2002) ............................................................................ 9
STS Software Sys., Ltd. v. Witness Sys., Inc.,
No. 1:04-CV-2111-RWS, 2008 WL 660325 (N.D. Ga., Mar. 6,
2008) ..................................................................................................................... 8
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Symbol Techs., Inc. v. Opticon, Inc.,
935 F.2d 1569 (Fed. Cir. 1991) ........................................................................ 6, 7
Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc.,
522 F.3d 1348 (Fed. Cir. 2008) ........................................................................ 3, 4
RULES
Fed. R. Civ. P. 26(a)(2)(B)(i) .................................................................................... 6
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I. INTRODUCTION
Sound View’s motion for summary judgment of no anticipation based on the
Sandpiper “Footprint” prior art CDN system (the “Footprint CDN”), Dkt. No. 246,
essentially duplicates the argument in the simultaneously-filed motion to exclude
certain opinions of Hulu’s technical expert, Dr. Jeffrey S. Chase, that Dr. Chase
should not be permitted to testify regarding his opinion that the CDN Patents are
invalid based on the Footprint CDN. See Dkt. No. 245. Hulu demonstrates in its
opposition to that motion--and makes the same case here--that there is no legal
basis to preclude Dr. Chase from testifying on his Footprint CDN invalidity
opinion, because (1) neither Dr. Chase’s opinions, nor Hulu’s invalidity theory,
based on the Footprint CDN rely on the disfavored “practicing the prior art”
defense, and (2) Dr. Chase’s expert report easily satisfies the requirements in Fed.
R. Civ. P. 26(a)(2)(B)(i) of “a complete statement of [the opinion] and the basis and
reasons for [it].” See Defendant’s Opposition to Plaintiff’s Daubert Motion to
Exclude in-part the Testimony of Dr. Jeffrey Chase at 17-24 (filed simultaneously).
Dr. Chase’s report as it pertains to the Footprint CDN invalidity defense identifies
each claim element, addresses that element in light of the intrinsic record, as
interpreted by Dr. Richardson, and explains how each element is disclosed in that
prior art reference--thereby both distinguishing the defense from “practicing the
prior art,” and meeting the standard for expert disclosure under the Federal Rules.
This motion, like its counterpart Daubert motion, should be denied.
II. ARGUMENT
A. Hulu’s Invalidity Argument Based On The Footprint CDN Is Not
A “Practicing The Prior Art” Defense
“That which infringes, if later, would anticipate, if earlier.” Peters v. Active
Mfg. Co., 129 U.S. 530, 537 (1889). Sound View’s summary judgment motion
seeks to circumvent this century-old maxim so that it can continue divorcing its
characterization of the claims for infringement purposes from the invalidity
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analysis. It is entirely proper for Hulu’s expert to provide a limitation-by-limitation
analysis of the Footprint CDN and conclude that, although it does not anticipate
under a proper understanding of the Court’s constructions, it would anticipate if the
claims are broadened improperly as proposed by Sound View’s expert. Sound
View’s motion ignores clear Federal Circuit precedent in a closely analogous
situation, and instead focuses primarily on inapposite district court cases. This
Court should apply the controlling precedent and deny the motion.
Sound View parrots the maxim that there is no “practicing the prior art
defense,” but utterly fails to appreciate the differences between that concept and the
way in which Hulu’s expert Dr. Chase applied the Footprint CDN to the claims. In
fact, Hulu’s non-infringement defense, as embodied in Dr. Chase’s report, is firmly
rooted in a limitation-by-limitation comparison between the asserted claims as
construed by the Court and the Accused Products. Dr. Chase opines that under the
Court’s constructions, Hulu does not infringe the CDN Patents, and the CDN
Patents are thus not invalidated by the Footprint CDN. Westin Decl., Ex. 12 (Chase
Opening Rpt.), ¶ 435 and n.12; Ex. 13 (Chase Dep. Tr.), 186:16-218:14. However,
Dr. Chase also opines that if Sound View attempts to expand the scope of the
claims as its expert Dr. Richardson suggests, for example to read a ring buffer on an
entire cache, or to read adjusting a data transfer rate on selecting different
representations of a video, then the claims would be invalid in light of the Footprint
CDN. Id. There is “nothing improper about this argument.” 01 Communique Lab.,
Inc. v. Citrix Sys., Inc., 889 F.3d 735, 741-42 (Fed. Cir. 2018).
This situation is entirely analogous to that faced by the Federal Circuit in its
recent 01 Communique Lab decision. There, the plaintiff argued that it was entitled
to a new trial because the defendant “resorted to a well-known defendant’s trick,
known as practicing the prior art defense.” Id. at 740-741. The plaintiff contended
that the defendant focused on the similarities between its accused product and its
prior art product and that this comparison misled the jury. Id. at 741. The Federal
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Circuit found “this argument unpersuasive.” It first pointed out that the defendant
had properly performed a limitation-by-limitation analysis, applying the construed
claims to the Accused Product. Id. Importantly, defendant “never argued that its
accused product did not infringe the asserted claims merely because [its accused
product] shared the same architecture as the prior art [] product.” The court noted
that defendant “also presented an alternative invalidity defense that focused on its
prior art [] product.” Specifically, the defendant in 01 Communique Lab argued
that if the plaintiff “attempted to expand the scope of its claims… then the claims
would be invalid in light of the prior art” product. Id. at 741-742. See also
Rembrandt Diagnostics, LP v. Innovacon, Inc., No. 16-CV-00698-CAB-NLS, 2018
WL 3707023, at *16 (S.D. Cal. Aug. 3, 2018) (finding the plaintiff’s argument of
“practicing the prior art” a “straw man” where defendant compared the accused
product to the prior art to illustrate correctly “that claim terms must be construed
the same way for both invalidity and infringement”). As described above, Hulu and
Dr. Chase have done the exact same thing in this case.
As the Federal Circuit explained, this is not a “practicing the prior art defense
to literal infringement” because it does not “forsake[] any comparison between the
asserted claims and the accused product, relying instead upon purported similarities
between the accused product and the prior art.” 01 Communique Lab, 889 F.3d at
742. The Federal Circuit went on to distinguish this situation from other cases it
had decided (including some relied on by Sound View in the present motion). In
general, these cases attempted to apply the prior art to non-infringement by
arguing that the accused products could not infringe because they were simply
practicing the prior art. Id. Even when applied to invalidity, the defendants in
these cases did not attempt to perform a limitation-by-limitation analysis and
thereby failed to carry the burden of clear and convincing evidence to demonstrate
invalidity. Id. For example, in Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., the
primary case relied upon by Sound View here, the defendant “provided no evidence
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whatsoever” that a prior art system met two of the limitations of the claim at issue.
522 F.3d 1348, 1363-64 (Fed. Cir. 2008). Instead, the accused infringer “merely
argued that to the extent the [allegedly infringing product] is considered to practice
[the two claim limitations], then so did the [prior art product].” Id.
None of the other cases cited by Sound View--all but one from district courts
outside of the Central District of California--are nearly as on-point to the present
case as the Federal Circuit’s 01 Communique Lab decision. For example, in the
single post-01 Communique Lab case--Realtime Data LLC v. EchoStar Corp., No.
6:17-CV-00084-JDL, 2018 WL 6271807 at *4 (E.D. Tex. Nov. 29, 2018)—the
district court distinguished 01 Communique Lab because the expert had failed to
apply the prior art to the construed claims. Each of the other district court cases
cited by Sound View (see Dkt. No. 246 at 6-7) was decided before the Federal
Circuit decided 01 Communique Lab, and in any event they all are distinguishable
because the experts in those cases failed to compare the prior art reference to the
patent claims at issue. Here, as in 01 Communique Lab, Dr. Chase compares the
Footprint CDN to the asserted claims of the CDN Patents, using specific evidence
(and applying Dr. Richardson’s interpretation of how the claim language should be
applied), and thus is not using the “practicing the prior art” defense criticized in
Zenith and others.
Indeed, in 01 Communique Lab, the Federal Circuit noted that cases like
Zenith “make clear” that although “an accused infringer cannot defeat a claim of
literal infringement or establish invalidity merely by pointing to similarities
between an accused product and the prior art,” This does not “preclude a litigant
from arguing that if a claim term must be broadly interpreted to read on an
accused device, then this same broad construction will read on the prior art.” 01
Communique Lab 889 F.3d at 742 (citations omitted, emphasis added). Rather,
“when an accused product and the prior art are closely aligned, it takes exceptional
linguistic dexterity to simultaneously establish infringement and evade invalidity.”
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Id. at 742-43 (citations omitted, emphasis added). The Court should not allow
Sound View to shirk its obligation to walk this narrow line with respect to the Hulu
accused products and the Footprint CDN, given the infringement positions
espoused by its expert.
B. Hulu Has Satisfied Its Burden To Establish A Genuine Dispute Of
Fact Regarding Anticipation As A Matter of Law
Sound View’s second and last summary judgment argument on the Footprint
CDN prior art criticizes the detail with which Dr. Chase’s report addresses this
defense. It is clear on the face of his report, however, that Dr. Chase identifies each
claim element at issue, addresses that claim element in light of the intrinsic record
and Dr. Richardson’s opinion, and explains how each claim element is disclosed in
the Footprint CDN, thus indisputably satisfying the requirement in Fed. R. Civ. P.
26(a)(2)(B)(i) of “a complete statement of [the opinion] and the basis and reasons
for [it].” Furthermore, even if Dr. Chase’s opinion regarding the Footprint CDN
was excluded (though as argued herein, and in Hulu’s opposition to Sound View’s
accompanying Daubert motion, it should not be), it does not follow that summary
judgment regarding this prior art reference is appropriate. As a matter of law,
anticipation may be established by evidence other than expert opinion, and
evidence of anticipation by the Footprint CDN has been presented through both fact
witnesses and documentary evidence.
1. Dr. Chase’s Report Fully Complies With The Requirements
Of Rule 26(a)(2)
Dr. Chase’s report as to the Footprint CDN provides detailed claim charts,
mapping specific portions of numerous documents produced by Level 3 to each
claim element of each claim asserted by Sound View. Westin Decl., Ex. 121 (Chase
1 “All citations to “Westin Decl., Ex.” refer to exhibits to the Omnibus Declaration
of Cameron W. Westin In Support of Defendant Hulu, LLC’s Oppositions to Sound
View’s Motions for Summary Judgment and Motions to Exclude (filed
concurrently herewith).”
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Opening Rpt.), pgs. 296-358. Moreover, during his deposition, counsel asked Dr.
Chase his opinion with respect to certain key claim elements such as “content
server” and “helper server,” and Dr. Chase elaborated on his opinion on the basis of
his claim chart and testified that the disclosures cited illustrated how the Footprint
CDN mapped to the Court’s claim construction. Westin Decl., Ex. 13 (Chase Dep.
Tr.), 196:12-199:11. When repeatedly asked if there was any “textual analysis
mapping the Footprint CDN to the claims on an element-by-element basis,” Dr.
Chase testified: “Well, there’s 60 pages of claim charts here that map particular
citations to particular elements of the claims, and there’s a great deal of text
pertaining to the Footprint CDN and aspects that are relevant to the claims.” Id. at
201:9-24.
Other portions of Dr. Chase’s extensive opening report opining on invalidity
provide further relevant analysis. For example, Dr. Chase engages in detailed
analysis regarding the Court’s claim constructions and how the prior art maps to the
asserted claims throughout his Opening Report. This analysis applies equally to the
Footprint CDN, even if not set forth at length again in that section. See, e.g.,
Westin Decl., Ex. 12 (Chase Opening Rpt.), ¶ 96 (“As these terms are found
throughout the asserted claims, I address the party’s constructions here. This
section is incorporated, as appropriate, throughout this opinion.”). The report
containing Dr. Chase’s opinions, as it relates to the Footprint CDN, identifies each
claim element, addresses that element in light of the evidence and Dr. Richardson’s
opinions, and explains in detail how each element is disclosed in the prior art
reference. This is all that is required. See, e.g., Fed. R. Civ. P. 26(a)(2)(B)(i);
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1576 (Fed. Cir. 1991)
(rejecting the contention that the plaintiff did not make a prima facie case of
infringement when its expert’s opinions relied solely on claim charts); Icon-IP Pty
Ltd. v. Specialized Bicycle Components, Inc., 87 F. Supp. 3d 928, 943 (N.D. Cal.
2015) (denying the plaintiff’s motion arguing that an expert’s claim chart opinions
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were insufficiently detailed, finding “the claim charts appended to Werner’s report
are sufficiently detailed to satisfy Specialized’s disclosure requirements and to
establish that his opinions will be helpful to the jury.”).
The cases cited by Sound View in support of its attempt to exclude Dr.
Chase’s opinions present a far different situation. For example, in Milos Misha
Subotincic v. 1274274 Ontario Inc., No. SACV 10-cv-01946 AG, 2013 WL
3964994 (C.D. Cal. Apr. 9, 2013), the only Central District of California case cited
by Sound View, the expert had relied exclusively on claim charts with no additional
analysis. Id. at *13. Far from excluding the entire opinion, the court relied on a
Federal Circuit case to note that the expert’s “exclusive reliance on claim charts in
his report ‘bears a degree of risk,’ but is not independently fatal.” Id. (citing
Symbol Techs., 935 F.2d at 1576). Accordingly, the court allowed testimony based
on the majority of the claim chart, and only prohibited the expert from testifying
with respect to one particular element regarding the movement of the accused
devices. Id. For that limitation, the claim chart merely included a picture with no
“indication of what the movement is.” Id.2 The claim chart relied on by Dr. Chase
is more analogous to the portions allowed by the court than the portion containing
just a picture of the accused product that was disallowed.
Sound View’s remaining cases also fail to support exclusion. In Mettler-
Toledo Inc. v. Fairbanks Scales Inc., No. 9:06-CV-97, 2008 WL 11348468 (E.D.
Tex. Oct. 27, 2008) at *4, the court noted that the expert’s testimony, as embodied
by a claim chart, was “beyond succinct,” apparently consisting only of citations to
certain deposition testimony and exhibits, often without specifying a specific page
or line number. Dr. Chase, by contrast, has excerpted specific portions of various
documents regarding the Footprint CDN. Moreover, unlike in Mettler-Toledo, the
claim charts are not the “sum total” of Dr. Chase’s opinions. Indeed, Dr. Chase
2 Given this missing element, the court also prohibited the expert from testifying
regarding the ultimate question of infringement. Id.
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provides a detailed analysis of the claim language under both his interpretation and
Dr. Richardson’s interpretation earlier in the report. See, e.g., Westin Decl., Ex. 12
(Chase Opening Rpt.), ¶ 96. These portions also apply to the Footprint CDN. The
court in Mettler-Toledo also noted that the plaintiff had designated another
infringement expert to whom the defendant had not objected, so the plaintiff would
not be foreclosed from presenting its infringement case. Id. The court further
concluded that in light of this second expert’s testimony “any probative value of
[the excluded expert’s] testimony would be substantially outweighed by the
‘needless presentation of cumulative evidence.’” Id.
STS Software Sys., Ltd. v. Witness Sys., Inc., No. 1:04-CV-2111-RWS, 2008
WL 660325 (N.D. Ga., Mar. 6, 2008), is also inapplicable. There, the defendant
attempted to present an obviousness combination in a conclusory fashion that it
attempted to remedy in an unauthorized supplemental report. Id. at *2. The claim
chart submitted in the original report contained quotes and excerpts from the
references, but, critically, contained “no opinions… as to why it would be obvious
for a person of ordinary skill in the art to combine the prior art in the way that is
claimed.” Id. These same considerations do not apply in determining whether the
Footprint CDN anticipates the asserted claims. And in Biotec Biologische
Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir.
2001), the evidence supporting anticipation was far more conclusory than in this
case. There, the court “remarked on the absence of explanation by the expert … as
to why these references rendered the … patents invalid.” Id. at 1353. Moreover,
the moving party “presented deposition testimony of the defendants’ primary
witnesses wherein they admitted knowing no facts that implied the invalidity of the
patents.” Id. at 1354. By contrast, Dr. Chase’s invalidity analysis and Footprint
CDN claim chart goes far beyond simply offering conclusory statements, and his
selection of specific portions of specific documents for each element illustrates his
thought process.
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Sound View also relies on cases where the defendant brought a motion for
summary judgement of anticipation—the complete reverse of the situation here. A
court finding that the evidence is insufficient to find anticipation as a matter of law
is manifestly different from Sound View’s request in the present motion that the
Court find there is no genuine dispute regarding whether the Footprint CDN
anticipates, since anticipation is a question of fact. Apple Computer, Inc. v.
Articulate Sys., Inc., 234 F.3d 14, 20 (Fed. Cir. 2000). Thus all of Sound View’s
remaining cases are unavailing. For example, in Schumer v. Lab. Comput. Sys.,
Inc., 308 F.3d 1304 (Fed. Cir. 2002), the Federal Circuit overturned a decision
granting summary judgment of anticipation. Id. at 1315-16. The court concluded
that “[w]hether a patent is anticipated under section 102(b) is a question of fact,”
and that the defendant “failed to prove by clear and convincing evidence on
summary judgement that” the prior art “disclosed ‘each and every limitation’” of
the claim as required, leaving the question of anticipation for the jury. Id.
Similarly, in Aspex Eyewear, Inc. v. Concepts In Optics, Inc., 111 Fed. Appx. 582,
587-88 (Fed. Cir. 2004), the Federal Circuit reversed a summary judgment of
anticipation where the court had failed to construe the claims, the opposing expert
had submitted an affidavit opining that certain limitations were not met by the prior
art, and where the defendant had not presented any expert evidence comparing the
claims to the prior art, among other problems). See also Konvin Assocs. v.
Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (Aug. 21, 2006, N.D.
Ill.) (finding that expert testimony that “states, without elaboration, that certain of
the above mentioned patents ‘include[] all of the limitations of claim 15’… falls far
short of the evidence necessary to support a finding of anticipation on summary
judgment.”). For the reasons discussed above, there is, at a minimum, a factual
question as to whether the evidence presented by Dr. Chase regarding the Footprint
CDN anticipates the asserted patents, at least under Dr. Richardson’s application of
the claims.
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OPPOSITION TO MSJ OF NO ANTICIPATION
BASED ON FOOTPRINT CDN
CASE NO. LA CV17-04146 JAK (PLAx)
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2. There Is A Genuine Issue OF Fact, Apart From Dr. Chase’s
Opinion, As To Whether The Footprint CDN Anticipates the
CDN Patents
Even if Sound View could establish that no genuine dispute of fact exists
regarding whether Dr. Chase’s testimony as to anticipation by the Footprint CDN
should be excluded (and as shown above, there is certainly a genuine issue of fact
on this point), the Court should still deny Sound View’s motion of no anticipation.
Although evidence of anticipation is often provided by expert witnesses, a jury
could find that the Footprint CDN anticipates the asserted patents based on
testimony and corroborating evidence presented at trial by fact witness Christopher
Newton. Mr. Newton has already testified extensively—two of his three
depositions related almost entirely to the operation of the Footprint CDN—and he
has also provided a declaration citing corroborating evidence regarding the
Footprint CDN. His testimony includes extensive detail as to how the Footprint
CDN functioned, when it was first in public use, and other details. Westin Decl.,
Ex. 14 (Newton Declaration); Ex. 15 (Newton Dep. Tr. Vol. II), 293:10-376:20,
413:19-430:6, 454:12-493:18, 613:25-622:8; Ex. 16 (Newton Dep. Tr. Vol. III),
698:18-721-21, 745:10-753:3; 791:17-802:18. A jury, giving weight to Dr.
Richardson’s application of the claims to the Level 3 CDN, could find, based on
Mr. Newton’s testimony and corroborating evidence, that the Footprint CDN also
meets each claim limitation and that it was publicly available before the priority
date of the asserted patents.
This scenario is similar to that in Digital Reg of Texas, LLC v. Adobe Sys.,
Inc., No. C 12-1971 CW, 2014 WL 4090550, at *8 (N.D. Cal. Aug. 19, 2014), in
which the defendant proposed to call a fact witness to discuss a prior art reference
with which he was familiar in order to demonstrate the invalidity of the asserted
patents. Although the court held that he could not opine on what a hypothetical
person skilled in the art would know or what was claimed by the asserted patents,
the court held that the witness “can speak to topics within his personal knowledge,
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OPPOSITION TO MSJ OF NO ANTICIPATION
BASED ON FOOTPRINT CDN
CASE NO. LA CV17-04146 JAK (PLAx)
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such as … documents related to the [prior art] system.” Id. The court further
determined that “[h]is testimony as to the bounds of the [prior art] system as a
device is also admissible.” Id. In a similar way, Mr. Newton should be allowed to
testify as to the functioning of the Footprint CDN and about documents supporting
his understanding of the Footprint CDN. To find anticipation, a jury would not
need Mr. Newton to testify as to what a hypothetical person skilled in the art would
know or what was claimed by the asserted patents—indeed, Dr. Richardson himself
states that he will provide such testimony in discussing why the asserted patents are
infringed. Given the close similarities between the Footprint CDN and the current
Level 3 CDN, the jury could reasonably conclude that although the Level 3 CDN
infringes one or more claims of the patent, that same application of the claims
shows that those claims are invalid over the Footprint CDN.
III. CONCLUSION
For all of the foregoing reasons, the Court should deny Sound View’s motion
for summary judgment of no anticipation by the Footprint CDN.
Dated: March 18, 2019
O’MELVENY & MYERS LLP
BRETT J. WILLIAMSON
JOHN C. KAPPOS
CAMERON W. WESTIN
BO K. MOON
BRADLEY M. BERG
By: /s/ Brett J. Williamson
Brett J. Williamson
Attorneys for Defendant and
Counterclaim-Plaintiff
HULU, LLC
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