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HULU LLC’S OPPOSITION TO
SOUND VIEW’S MSJ RE REJAIE REFERENCE
CASE NO. LA CV17-04146 JAK (PLAx)
BRETT J. WILLIAMSON (SB # 145235)
(bwilliamson@omm.com)
JOHN C. KAPPOS (SB # 171977)
(jkappos@omm.com)
CAMERON W. WESTIN (SB # 290999)
(cwestin@omm.com)
BO. K. MOON (SB # 268481)
(bmoon@omm.com)
BRADLEY M. BERG (SB # 300856)
(bmberg@omm.com)
O’MELVENY & MYERS LLP
610 Newport Center Drive, 17th Floor
Newport Beach, California 92660
Telephone: (949) 823-6900
Facsimile: (949) 823-6904
Attorneys for HULU, LLC
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
SOUND VIEW INNOVATIONS,
LLC,
Plaintiff,
v.
HULU, LLC,
Defendant.
Case No. LA CV17-04146 JAK (PLAx)
HULU, LLC’S OPPOSITION TO
SOUND VIEW’S MOTION FOR
MOTION FOR SUMMARY
JUDGMENT OF NO INVALIDITY
BASED ON THE REJAIE
REFERENCE
Hon. Judge John A. Kronstadt
HULU, LLC,
Counter-
Claimant,
v.
SOUND VIEW INNOVATIONS,
LLC,
Counter-
Defendant.
Date: April 15, 2019
Time: 8:30 AM
Courtroom No.: 10B
Discovery Cutoff: February 11, 2019
Trial Date: TBD
Case 2:17-cv-04146-JAK-PLA Document 313 Filed 03/18/19 Page 1 of 9 Page ID #:17619
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HULU LLC’S OPPOSITION TO
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CASE NO. LA CV17-04146 JAK (PLAx)
TABLE OF CONTENTS
Page
I. INTRODUCTION ........................................................................................... 1
II. LEGAL STANDARDS ................................................................................... 2
III. ARGUMENTS ................................................................................................ 2
A. The Rejaie Reference Was Publicly Available ..................................... 2
B. At a Minimum, A Material Factual Dispute Exists As To Public
Availability Of The Rejaie Reference .................................................. 5
IV. CONCLUSION ............................................................................................... 6
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HULU LLC’S OPPOSITION TO
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CASE NO. LA CV17-04146 JAK (PLAx)
I. INTRODUCTION
The record in this case is replete with strong evidence that the “Rejaie
Reference”— Reza Rejaie, et al., “Proxy Caching Mechanism for Multimedia
Playback Streams in the Internet”—was publicly available well before the filing
dates of Sound View’s patents. The alleged inventors of the ’796 and ’213 Patents
cited the Rejaie Reference in their own writings, which they submitted before the
priority date of the ’796 and ’213 Patents. See Westin Decl. ¶ 2, Ex. 11, Hoffman et
al., “Caching Technique for Streaming Multimedia over the Internet” (the
“Hoffman Article”), at 10; id. at 11 (listing Rejaie Reference as reference No. 19).
Then, during prosecution of both the ’796 and the ’213 Patents, the examiner at the
USPTO cited the very same reference as prior art, and rejected several claims of the
’796 Patent based on that reference. The applicants never once disputed the public
availability of the Rejaie Reference. Finally putting any dispute about the
reference’s public availability to rest, Dr. Reza Rejaie, the author of the Rejaie
Reference, has now testified that he publicly distributed the Rejaie Reference in
April 1999, more than 8 months before the earliest possible priority date of the ’213
Patent and more than a year before the earliest possible priority date of the ’796
Patent.
Sound View, however, is attempting to avoid dealing with the Rejaie
Reference’s invalidating disclosure on the merits by moving for summary judgment
that it was not publicly available. The sole basis for its motion is that Hulu’s
experts did not establish its publication date. There is no requirement, however,
that Hulu prove the publication date through its experts. The evidence in this case,
including the writings of the alleged inventors of the ’213 and ’796 Patents, the
testimony of one of those inventors, the testimony of Dr. Rejaie himself, and the
1 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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CASE NO. LA CV17-04146 JAK (PLAx)
file history of the ’213 and ’796 Patents, reveals a wealth of factual evidence that
precludes Sound View’s request for summary judgment.
II. LEGAL STANDARDS
Summary judgment is not appropriate unless “the movant shows that there is
no genuine dispute as to any material fact and the movant is entitled to judgment as
a matter of law.” Fed. R. Civ. P. 56(a). “The evidence of the nonmovant is to be
believed, and all justifiable inferences are to be drawn in his favor.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). “[A]ny doubt as to the presence or
absence of disputed issues of material fact must be resolved in favor of the presence
of disputed issues ….” Lemelson v. TRW, Inc., 760 F.2d 1254, 1260-61 (Fed. Cir.
1985). “[A] showing of sufficient evidence supportive of the existence of the
claimed factual dispute” is “[a]ll that is required” to mandate resolution at trial. Id.
at 1261.
III. ARGUMENTS
A. The Rejaie Reference Was Publicly Available
As Dr. Rejaie himself explains, the Rejaie Reference was available to the
public by no later than April 1, 1999, when Dr. Rejaie presented it at the Fourth
International Web Caching Workshop (the “Workshop”) in San Diego. Declaration
of Reza Rejaie, Ph. D. (“Rejaie Decl.”), ¶¶ 4-6. Printed copies of the Rejaie
Reference were distributed to the Workshop attendees on April 1, 1999, without
any restrictions on confidentiality. Id. at ¶¶ 5-6, Ex. A. The attendees at the
Workshop were persons of ordinary skill in the subject matter of the presentation.
The Rejaie Reference was included in the printed volume of Proceedings of the
Fourth International Web Caching Workshop. Id. at ¶ 7. The Rejaie Reference was
also converted to HTML format and it was made available on the conference
organizers’ website by no later than April 1, 1999. Id. at ¶¶ 5, 10, Ex. C. Later in
April 1999, Dr. Rejaie also posted a copy of Rejaie Reference on University of
California’s Department of Computer Science website, where it was freely
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CASE NO. LA CV17-04146 JAK (PLAx)
available to the public. Id. at ¶ 11, Ex. D; Westin Decl. ¶ 3, Ex. 2 (Internet
Archive’s snapshot of the website dated April 23, 1999, showing Rejaie Reference
listed on the website). These facts establish that the Rejaie Reference qualifies as a
“publication” under 35 U.S.C. § 102. See Massachusetts Inst. of Tech. v. AB
Fortia, 774 F.2d 1104, 1108–09 (Fed. Cir. 1985) (a paper presented at a conference
before persons “interested and of ordinary skill in the subject matter” and
distributed “on request, without any restrictions, to as many as six persons”
qualifies as a “printed publication”).
The writings and testimony of the alleged inventors of the ’213 and ’796
Patents also establish that the Rejaie Reference was publicly available before the
earliest possible priority date of those patents. In early 1999, Mark Hoffman (a
named inventor of both the ’213 and ’796 Patents) and Katherine Guo (a named
inventor of the ’213 Patent) authored an article titled “Caching Techniques For
Multimedia Streaming Over the Internet” (the “Hoffman Article”). See Westin
Decl. Ex. 3 (Guo Dep. Tr.) at 93:11-22; Westin Decl. Ex. 1. The Hoffman Article
discuses literature in the field of proxy caching architecture in the “Related Work”
section. See Westin Decl. Ex. 1 at 10 (“Recently, work has been presented on
proxy caching architecture for improving video delivery over a wide area network. .
. . In [the Rejaie Reference], a proxy caching mechanism is used for improving
delivered quality of layered-encoded multimedia streams.”); id. at 11 (listing Rejaie
Reference as reference No. 19). The alleged inventors of the ’213 and ’796 Patents
knew of Dr. Rejaie and the co-authors of the Rejaie Reference through technical
conferences. Westin Decl. Ex. 3 at 232:4-19. In mid-1999, several months before
the earliest possible priority date of the ’213 and ’796 Patents,2 the alleged
inventors submitted the Hoffman Article (with its citation to the Rejaie Reference)
for publication in IEEE Infocom 2000. Westin Decl. Ex. 3 at 124:6-23; Westin
2 The earliest possible priority date of the ’213 Patent is December 6, 1999, and the
earliest possible priority date of the ’796 Patent is May 15, 2000.
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HULU LLC’S OPPOSITION TO
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CASE NO. LA CV17-04146 JAK (PLAx)
Decl. Ex. 4.
The ’213 Patent lists the Rejaie Reference on its face as cited prior art. Dkt.
No. 259-1, Ex. 31 (’213 Patent) at Cover. The ’796 Patent list on its face the Rejaie
Reference as well as the Hoffman Article that cites the Rejaie Reference. Dkt. No.
259-1, Ex. 32 (’796 Patent) at Cover. The Rejaie Reference was also discussed
extensively as a ground for rejection during prosecution of the ’796 Patent. In an
office action dated March 20, 2002, the examiner rejected then-pending claims over
the Rejaie Reference.3 See Westin Decl. Ex. 5, ’796 File History, Office Action
dated September 27, 2002, at 3-6. The applicants (who had cited it in their earlier
submission) did not dispute the public availability of the Rejaie Reference. Over
the following 18 months, the examiner repeatedly used the Rejaie Reference as a
basis for rejection in later office actions, but the applicant never once disputed the
publication date of the Rejaie Reference. See Westin Decl. Ex. 6, ’796 File History,
Office Action dated March 26, 2003, at 4-6; Westin Decl. Ex. 7, Applicant’s
Response dated June 26 2003, at 6-9; Westin Decl. Ex. 8, Office Action dated
August 1, 2003, at 4-5, 7-9; Westin Decl. Ex. 9, Applicant’s Response dated
February 2, 2004. This is not surprising, since the alleged inventors of the ’796 and
’213 Patents themselves—who only knew the authors of the Rejaie Reference
through technical conferences—plainly had access to the Rejaie Reference many
months before the priority date of the ’213 and ’796 Patents. See Guo Dep. Tr.
232:4-19.
This stands in sharp contrast to the applicants’ actions when there was some
basis to dispute public availability of a reference. In the same September 27, 2002
Office Action that first raised the Rejaie Reference, the examiner also rejected the
claims over an on-line version of the Hoffman Article (“Hoffman II”), stating that
3 The examiner based his rejection on a version of Rejaie Reference that was posted
on the Workshop’s website. See Rejaie Decl. Ex. C. Sound View’s motion refers
this version as “Rejaie II.”
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HULU LLC’S OPPOSITION TO
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CASE NO. LA CV17-04146 JAK (PLAx)
the publication of Hoffman II on the internet more than 1 year before the filing of
the application on May 15, 2000, caused a “loss of right” under pre-AIA 35 U.S.C.
§ 102(b).4 Westin Decl. Ex. 5 at 2. In response, the applicant disputed the
publication date of Hoffman II, arguing that the website that published Hoffman II
“merely indicates that the document was written in 1999. The internet webpage
does not indicate that the document was publicly available in 1999.” The applicant
further emphasized that the Hoffman II was “maintained as a confidential internal
publication (see the upper left-hand corner, which is marked as ‘2000 draft’). It
was not until the end of 2000 that document was publicly available.” See Westin
Decl. Ex. 11, ’796 File History, Applicants’ Remarks dated January 3, 2003, at 2.
The applicant thus argued that “the Examiner has submitted no evidence indicating
that either the internet webpage was available in 1999 or, more importantly, that the
document itself was available in 1999.” Id.
All of this evidence demonstrates that the Rejaie reference was available to
public before the earliest possible priority date of the ’213 and ’796 Patents.
B. At a Minimum, A Material Factual Dispute Exists As To Public
Availability Of The Rejaie Reference
While the evidence in this case establishes that the Rejaie Reference was in
fact publicly available before the priority date of the ’213 and ’796 Patents as
discussed above, the Court does not need to make that determination now. A
reasonable juror, considering the evidence discussed above and drawing all
inferences in favor of Hulu, could reach the conclusion that the Rejaie Reference
was publicly available before the earliest possible priority date of the ’213 and ’796
Patents. In other words, there is at least a material factual dispute as to the
publication date of the Rejaie Reference that should prevent the Court from
4 Like the Hoffman Article, Hoffman II also included discussion of the Rejaie
Reference and a citation thereto. See Westin Decl. Ex. 10 at SVI-HULU00001652
- 1653.
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CASE NO. LA CV17-04146 JAK (PLAx)
granting Sound View’s motion.
Sound View argues that, because “Hulu’s expert Dr. Chase provides no
information about the Rejaie Reference’s publication or availability” and “other
Hulu witnesses [did not] provide[] such information,” the Rejaie Reference should
be deemed not to have been published before the priority date of the ’213 and ’796
Patents. Dkt. No. 241 at 6. But this assertion is incorrect. The opinion of an expert
is but one of many possible ways to establish the date of publication. Nor is Hulu
restricted to the testimony of its own witnesses to establish the publication date. At
trial, Hulu can establish the public availability through the testimony of one of the
authors of the Rejaie Reference, or through the testimony of persons who had
access to the Rejaie Reference before the priority date of the ’213 and ’796 Patents,
such as the alleged inventors of the ’213 and ’796 Patents. Whether or not the jury
will ultimately find that the Rejaie Reference was published before the priority date
based on such evidence is irrelevant in resolving Sound View’s motion. The
evidence in this case shows that there is at least a significant factual dispute
regarding the publication date of the Rejaie Reference.
IV. CONCLUSION
For all the reasons stated herein, Hulu respectfully requests that the Court
deny Sound View’s motion for summary judgment of no invalidity based on the
Rejaie Reference.
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HULU LLC’S OPPOSITION TO
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CASE NO. LA CV17-04146 JAK (PLAx)
Dated: March 4, 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
Case 2:17-cv-04146-JAK-PLA Document 313 Filed 03/18/19 Page 9 of 9 Page ID #:17627
