Sound View Innovations, LLC v. Hulu, LLC

MEMORANDUM in Opposition to NOTICE OF MOTION AND MOTION for Summary Judgment as to No Direct Infringement and Partial Summary Judgment of Limited Induced Infringement of U.S. Patent Nos. 6,708,213, 6,757,796, and 9,462,074 and Memorandum in Support 253

C.D. Cal.March 18, 2019

SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT i Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 RUSS AUGUST & KABAT Marc A. Fenster (SBN 181067) mfenster@raklaw.com Benjamin T. Wang (SBN 228712) bwang@raklaw.com Kent N. Shum (SBN 259189) kshum@raklaw.com 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Tel: (310) 826-7474 Fax: (310) 826-6991 DESMARAIS LLP Alan S. Kellman (admitted pro hac vice) Richard M. Cowell (admitted pro hac vice) C. Austin Ginnings (admitted pro hac vice) Jennifer M. Przybylski (admitted pro hac vice) 230 Park Avenue New York, New York 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 Peter C. Magic (SBN 278917) 101 California Street, Suite 3070 San Francisco, CA 94111 Tel: (415) 573-1900 Fax: (415) 573-1901 Attorneys for Plaintiff Sound View Innovations, LLC UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION SOUND VIEW INNOVATIONS, LLC, Plaintiff, v. HULU, LLC, Defendant. Case No. LACV17-04146 JAK (PLAx) PLAINTIFF SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT AND LIMITED INDUCED INFRINGEMENT Date: April 15, 2019 Time: 8:30 a.m. Hon. Judge John A. Kronstadt Courtroom: 10B REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 1 of 25 Page ID #:19120 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT ii Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS Page I. INTRODUCTION ................................................................................................. 1 II. OVERVIEW OF THE ACCUSED PRODUCTS .......................................................... 2 III. LEGAL STANDARDS .......................................................................................... 3 IV. ARGUMENT ....................................................................................................... 4 A. Hulu Directly Infringes All Asserted Claims Under A Correct Application Of Akamai V Because Hulu Directs And Controls All Steps Carried Out By The CDNs. ......................................................... 4 1. Akamai V Does Not Impose A Rule That Accused Infringers Are Direct Infringers Only If They Direct And Control Another Entity That Performs Fewer Than All Of The Claimed Steps. ............................................................................ 4 2. Hulu Directs And Controls The CDNs’ Performance Of Each And Every Step Of The Asserted Claims. ......................... 9 B. Hulu Also Indirectly Infringes The Asserted Claims. ........................ 19 V. CONCLUSION .................................................................................................. 21 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 2 of 25 Page ID #:19121 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT iii Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Cases ............................................................................................................... Page(s) Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) .............................................................. passim Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ........................................................................................ 3 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ........................................................................................ 3 DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) ....................................................................... 4 Finjan, Inc. v. Sophos, Inc., 244 F. Supp. 3d 1016 (N.D. Cal. 2017) .......................................................... 8 Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915 (2014) ........................................................................................ 4 Reagent Chem. & Research, Inc. v. Eurotarget S.R.L., No. 1:16-cv-395, 2016 WL 8200435 (M.D. Pa. May 23, 2016) ..................... 6 Rearden LLC v. Walt Disney Co., 293 F. Supp. 3d 963 (N.D. Cal. 2018) ........................................................ 7, 8 Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325 (Fed. Cir. 2008) ....................................................................... 8 Travel Sentry, Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017) ................................................................... 4, 8 Voit Techs.. LLC v. Drucker Labs, L.P., No. 4:16-cv-00695, 2017 WL 1739922 (E.D. Tex. May 4, 2017) ................. 6 Statutes 35 U.S.C. § 271(a) ................................................................................................. 3, 7 35 U.S.C. § 271(b) ................................................................................................. 4, 7 Rules Fed. R. Civ. P. 56(a) .................................................................................................. 3 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 3 of 25 Page ID #:19122 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 1 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION Hulu’s motion for summary judgment that Hulu does not directly infringe the asserted claims of U.S. Patent Nos. 6,708,213 (the “’213 Patent”), 6,757,796 (the “’796 Patent”), and 9,462,074 (the “’074 Patent”) should be denied.1 First, Hulu’s arguments are premised on a misreading of the Federal Circuit’s decision in Akamai V, which does not require more than one actor to perform each step of a method claim in order to find a defendant liable for direct infringement based on the acts of a third party. Although the facts of Akamai V entailed multiple actors performing the steps of the patents-in- suit, it did not limit direct infringement liability based on direction and control to cases where performance of the claimed steps was split across multiple actors. Instead, liability for direct infringement exists where “the acts of one are attributable to the other such that a single entity is responsible for the infringement.” Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (“Akamai V”). Here, where Hulu directs and controls (a point that Hulu does not even dispute in its brief) a third party CDN to perform all of the steps of the asserted claims, Hulu directly infringes each asserted claim. Second, Hulu also indirectly infringes each asserted claim. In its motion, Hulu does not challenge the merits of Sound View’s indirect infringement theory, but simply argues that the earliest date on which Hulu was put on notice of its infringement was October 10, 2016 for the ’213 Patent, March 28, 2017 for the ’074 Patent, and May 22, 2017 for the ’796 Patent. Sound View agrees. 1 In view the parties’ joint stipulation to dismiss with prejudice (see Dkt. No. 298 filed March 18, 2019) claims, defenses, and counterclaims pertaining to Hulu’s Live TV product, including the parties’ claims, defenses, and counterclaims pertaining to the ’796 Patent as well as claims 1, 7, and 8 of the ’213 Patent, the portions of Hulu’s motions for summary judgment and Daubert motions pertaining to those claims, defenses, and counterclaims are moot. Thus, Sound View in this opposition brief addresses all other subject matter of Hulu’s motion for summary judgment of no direct infringement. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 4 of 25 Page ID #:19123 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 2 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 II. OVERVIEW OF THE ACCUSED PRODUCTS Each of Hulu’s video platforms (e.g., its subscription streaming video on-demand (“SVOD”) Platform) use an origin server (i.e., a “content server”) on which Hulu stores video content that it has created and made available (i.e., “SM objects”), Hulu client software applications (i.e., “clients”) to watch video content, and third party content delivery networks with whom Hulu contracts to provide edge servers (i.e., “helper servers”) that receive requests from client applications for videos, store the video data, and deliver it to the client applications. Hulu utilizes aspects of certain video streaming standards (specifically, the “MPEG-DASH” and “HLS” standards) to deliver content. Hulu exclusively controls how its Platforms work. First, Hulu provides the video content for its customers, as well as software to allow subscribing customers to access such content. See Westin Decl.2 Ex. 29 (Richardson Opening Rpt.)3 ¶¶ 156, 159-160, 208, 213, 324-328, 378-379. See id. ¶ 160, 213. See id. ¶¶ 162-168, 177-183. Hulu’s third party CDNs respond to these requests, For example, Hulu contracts Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 99:25-100:17 ( ); Ex. 4 ( ) at HULU- SOUNDVIEW-00013520-00013551;4 Ex. 1 (Darnault Dep. Tr.) at 192:2-206:4 2 “Westin Decl.” refers to the Omnibus Declaration of Cameron W. Westin and exhibits thereto filed as Dkt. No. 259. Certain exhibits to the Westin Declaration were filed under seal with Dkt. No. 272. 3 Dr. Iain Richardson provided a declaration, dated March 18, 2019, adopting and reaffirming each paragraph of his Opening Report, as filed as Exhibit 29 to the Westin Declaration, under penalty of perjury. See Declaration of Iain E. Richardson, Ph.D., at ¶ 3, concurrently filed. 4 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 5 of 25 Page ID #:19124 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 3 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ( ); Ex. 5 ( ) at LEVEL3-000001- 000019; Ex. 6 ( ) at HULU-SOUNDVIEW-00013563-00013581; Ex. 1 (Darnault Dep. Tr.) at 229:8-234:25 ( ); Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 190, 198. These third party CDNs Przybylski Decl Ex. 1 (Darnault Dep. Tr.) at 222:4-226:6, 232:8-234:5; Ex. 2 (Knox Dep. Tr.) at 189:2-191:12 ( ); Ex. 3 (Newton Dep. Tr.) at 18:5-16, 125:25-127:23 ( ). III. LEGAL STANDARDS Summary judgment is warranted only where “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 burden is on the moving party to show an absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). In deciding a summary judgment motion, “[t]he 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, 269 (1986). A factual issue is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. at 248. “Direct infringement under § 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity.” Akamai, 797 F.3d at 1022 (Fed. Cir. 2015. A party may be “responsible for others’ performance of method steps . . . where that entity directs or controls others’ performance.” Id. A party directs or controls the acts of another if (1) it acts through an agent; (2) it contracts with another to perform one or more steps of a claimed method; or (3) it “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 6 of 25 Page ID #:19125 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 4 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 establishes the manner or timing of that performance.” Id. at 1023. A party “establishes the manner or timing” of performing a method step when it lays out “precise steps” that a third party must follow in order to receive a benefit from the alleged infringer. Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1384 (Fed. Cir. 2017). Pursuant to 35 U.S.C. § 271(b), “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” Induced infringement “must be predicated on direct infringement.” Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 921 (2014). The patentee must also show that the alleged infringer possessed the requisite intent to induce infringement, which requires that the alleged infringer “knew or should have known his actions would induce actual infringements.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc in relevant part). IV. ARGUMENT A. Hulu Directly Infringes All Asserted Claims Under A Correct Application Of Akamai V Because Hulu Directs And Controls All Steps Carried Out By The CDNs. In Akamai V, the Federal Circuit reaffirmed that a defendant may be held liable as a direct infringer even where it does not itself practice the steps of a method claim. The court applied principles of vicarious liability, such as a defendant’s direction and control over the third party, to reach that conclusion. The same principles when applied here lead to Hulu’s direct infringement liability through its direction and control of third party CDNs (e.g., 1. Akamai V Does Not Impose A Rule That Accused Infringers Are Direct Infringers Only If They Direct And Control Another Entity That Performs Fewer Than All Of The Claimed Steps. Hulu’s overarching conclusion that it cannot be held liable for direct infringement if it directs and controls another’s performance of every step of the asserted method REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 7 of 25 Page ID #:19126 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 5 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 claims is based on a misreading of Akamai V. Hulu acknowledges that the principle behind attributing liability to an accused infringer through the acts of a third party is based on “general principles of vicarious liability,” as explained in Akamai V. See Akamai, 797 F.3d at 1022; Dkt. No. 253 at 4-5. Hulu further acknowledges that if an accused infringer itself performs at least one step of an asserted claim and then directs another to perform the remaining steps, the acts of the third party may be attributed to the accused infringer such that the accused infringer may be held liable as a direct infringer. Dkt. No. 253 at 4. Despite acknowledging those principles, Hulu asks the Court to conclude based on Akamai V that if Hulu directs a third party to perform all of the claimed steps, the same principles of vicarious liability suddenly fall by the wayside and Hulu cannot be held liable for direct infringement. Hulu misapplies Akamai V. The Federal Circuit in Akamai V was not faced with the specific scenario here for which Hulu now claims that Akamai V compels a finding of no direct infringement. In Akamai V, the court simply articulated and applied principles of vicarious liability to clarify what constitutes direction and control of a third party. Akamai, 797 F.3d at 1022. Akamai V addressed the specific facts of that case- an accused infringer that performed some of the claimed steps, along with a third party that performed at least one of the steps-and found that application of those principles allowed for a finding that the step performed by the third party could be attributed to the accused infringer. Id. at 1024-1025. The Federal Circuit did not hold that those same principles somehow become inapplicable once an accused infringer directs a third party to perform all-as opposed to all but one-of the claimed steps. In fact, the Federal Circuit clarified that “[i]n the future, other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor. Going forward, principles of attribution are to be considered in the context of the particular facts presented.” Id. at 1023 (emphasis added). In other words, pursuant to Akamai V, performance of each step by a third party is subject to a factual determination of whether that step may be attributed to the accused infringer; if the third party performs all steps REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 8 of 25 Page ID #:19127 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 6 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 and the answer to the question of attribution is yes as to all steps, then nothing in Akamai V prevents holding the accused infringer liable as a direct infringer under the “direction and control” doctrine (or other principles of vicarious liability). Indeed, at least two courts have held that Akamai V supports finding direct infringement by an accused infringer where the accused infringer directs and controls a third party’s performance of all steps of an asserted claim. Relying on Akamai V, the Eastern District of Texas held that a plaintiff sufficiently pled direct infringement where there were no allegations that the defendant itself performed any of the claimed steps: Here, Voit [Plaintiff] alleges in its First Amended Complaint that “Drucker [Defendant] is considered to not perform any of the claimed steps itself.” Voit further alleges that Drucker contracts with another entity “to perform such steps pursuant to a service, and Drucker conditions payment to such entity upon such entity’s performance of such steps.” Taking these facts as true and viewing them in the light most favorable to Voit, the Court determines that Voit pleaded sufficient facts to plausibly allege Drucker directly infringed the ’412 Patent. Voit Techs.. LLC v. Drucker Labs, L.P., No. 4:16-cv-00695, 2017 WL 1739922, at *2 (E.D. Tex. May 4, 2017) (internal citations omitted) (emphasis added); see Reagent Chem. & Research, Inc. v. Eurotarget S.R.L., No. 1:16-cv-395, 2016 WL 8200435, at *4-5 (M.D. Pa. May 23, 2016) (denying motion to dismiss where plaintiff alleged defendant directly infringed because it directed and controlled a third party that “engaged in all four of the steps of the method claim at issue”). The allegations in Voit of a contractual relationship are nearly identical to those alleged in Sound View’s First Amended Complaint: For example, Hulu has directly infringed, and continues to directly infringe, claim 16 of the ’213 patent under 35 U.S.C. § 271(a) . . . at least by directing and/or controlling Akamai (through at least REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 9 of 25 Page ID #:19128 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 7 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 contracting with Akamai and customizing the Akamai CDN) to infringe claim 16. . . . Dkt. No. 40 at ¶ 120; see id. ¶¶ 122, 185-186, 190-191. Further, Hulu not only contracts with the third party CDNs to (see Przybylski Decl. Ex. 4 at HULUSOUNDVIEW-00013520-00013551; Ex. 5 at LEVEL3- 000001-000019); Hulu also exercises direct control over and steps taken by the third party CDNs . Przybylski Decl Ex. 1 (Darnault Dep. Tr.) 222:4-226:6, 232:8-234:5; Ex. 2 (Knox Dep. Tr.) 189:2-191:12 ( ); Ex. 3 (Newton Dep. Tr.) 18:5-16, 125:25-127:23 ( ). Hulu retains the right and ability to stop the infringing acts committed by the CDNs through The cases Hulu cites are factually distinguishable from this case. Rearden LLC v. Walt Disney Co. involved an alleged infringer that simply contracted with a third party to provide a service with no instruction, direction, or control as to how that service was performed. 293 F. Supp. 3d 963, 971-973 (N.D. Cal. 2018). At most, the plaintiff in Rearden claimed that the alleged infringer had knowledge that infringement was occurring. In fact, the plaintiff did not even allege direct infringement under 35 U.S.C. § 271(a) in its complaint; Rearden only alleged infringement under § 271(b) (i.e., indirect infringement) and only asserted § 271(a) in its opposition to the motion to dismiss. Id. at 972. In contrast, Hulu not only has knowledge that the CDNs are infringing the patents-in-suit, but instructs and controls the CDNs such that they perform the claimed method steps. Unlike Rearden, where the alleged infringer merely had knowledge of infringement and contracted a third party to perform it, Hulu uses to specify precisely how the CDNs should perform on an ongoing basis. See, e.g., Przybylski Decl Ex. 1 (Darnault Dep. Tr.) 222:4-226:6, 232:8-234:5; Ex. 2 (Knox Dep. Tr.) 189:2-191:12 ( REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 10 of 25 Page ID #:19129 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 8 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Ex. 3 (Newton Dep. Tr.) 18:5-16, 125:25-127:23 ( ). For example, Hulu specifically Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 224:2- 6. Hulu’s extensive involvement in how the CDNs described in more detail in Section IV.A.2, below, amounts to significantly more direction and control over the infringing activities than the basic claims of knowledge asserted in Rearden. Similarly, Finjan, Inc. v. Sophos, Inc. is factually distinguishable because it involved the sale of software that merely allowed a user to perform infringing acts, something consistently considered to be “indirect infringement.” 244 F. Supp. 3d 1016, 1044 (N.D. Cal. 2017); see Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1334-36 (Fed. Cir. 2008) (“[W]e hold that a party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).” (emphasis added)). Unlike Finjan, Hulu is not merely selling the CDNs a product that the CDNs then use in an infringing manner. In contrast, Hulu controls the services provided by the CDNs. In Finjan, because the software was sold to an end user, the alleged infringer retained zero control over whether the claimed method steps were performed; in contrast, Hulu is continuously directing the CDNs to perform infringing acts so that Hulu can provide its service to Hulu subscribers. In this sense, the relationship between Hulu and a CDN is different from the seller-customer relationship in Finjan. Hulu retains the exclusive right and ability to stop the infringing acts from occurring (e.g., ); the alleged infringers in Finjan did not retain such rights. See Travel Sentry, 877 F.3d at 1385 (“[W]e are satisfied that the context of this case can justify attributing TSA’s performance of the final two claim steps to Travel Sentry. . . . Here, Travel Sentry ‘has the right and ability to stop or limit’ TSA’s ability to practice the final two claim steps . . . .”). REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 11 of 25 Page ID #:19130 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 9 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2. Hulu Directs And Controls The CDNs’ Performance Of Each And Every Step Of The Asserted Claims. Hulu’s direction and control of the third party CDNs arises from a contractual relationship, as well as through Hulu’s continued configuration and direction of how the CDNs should perform. Hulu contracts with third party CDNs to perform the method steps of the Asserted Claims. Przybylski Decl. Ex. 4 ( ) HULUSOUNDVIEW-00013520-00013551; Ex. 5 ( ) LEVEL3- 000001-000019. In particular, Hulu Przybylski Decl. Ex. 4 ) at HULUSOUNDVIEW-00013530-531 (emphasis added); see id. at HULUSOUNDVIEW-00013527 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 12 of 25 Page ID #:19131 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 10 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Przybylski Decl. Ex. 7 at LEVEL3-000958; see id. at LEVEL3-000954-964; Ex. 5 ( ) at LEVEL3-000001 ( ). Hulu’s contracts Przybylski Decl. Ex. 4 ( ) at HULU-SOUNDVIEW-00013550 ( Ex. 5 ( at LEVEL3-000017-19 Ex. 8 at LEVEL3-001079-001082 Ex. 9 (Utz Dep. Tr.) at 72:11-73:7 Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 105:12-107:25 ( ). REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 13 of 25 Page ID #:19132 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 11 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Moreover, Hulu exercises continuous control over the configurations that actually determine how the third party CDNs . Akamai provides the “Luna Property Manager” and “Luna Control Center” to enable its customers-like Hulu-to have the ability to specifically configure settings related to caching, content, and delivery: Przybylski Decl. Ex. 10 (Akamai “Adaptive Media Delivery” Product Description) at AKAM-0013; Przybylski Decl. Ex. 2 (Knox Dep. Tr.) at 189:24-190:4; See id. at 189:2-190:4 ( ); 214:18-215:18 ( ). Level 3 similarly offers the Level 3 “Media Portal” to allow Hulu to customize the service, including to “optimize service delivery” and configure “caching properties”: REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 14 of 25 Page ID #:19133 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 12 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Przybylski Decl. Ex. 11 (“Level 3 Media Portal”) at SVI-HULU00021271; Przybylski Decl. Ex. 3 (Newton Dep. Tr.) at 126:5-127:23. Hulu actually utilizes its ability to configure settings through the portals and technical contacts; for example, REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 15 of 25 Page ID #:19134 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 13 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 222:13-223:1, 224:2-6, 225:13-23 (emphasis added); see Przybylski Decl. Ex. 12 (Defendant’s Responses to Sound View’s First Requests for Admission to Hulu) at RFAs 28-29 See Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 232:8-234:21 Ex. 3 (Newton Dep. Tr.) at 83:13-84:14 Ex. 9 (Utz Dep. Tr.) at 36:7-37:13 ; Ex. 12 (Defendant’s Responses to Sound View’s First Requests for Admission to Hulu) at RFA 30 In addition When a Hulu subscriber requests a video, Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 39:8-40:25, 113:22-114:12, 116:5-15. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 16 of 25 Page ID #:19135 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 14 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 48:6-49:4, 174:1-176:23. Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 41:1-43:8, 45:18-47:6, 174:1-178:21. See Przybylski Decl. Ex. 1 (Darnault Dep. Tr.) at 176:5-23; Ex. 2 (Knox Dep. Tr.) at 47:2-51:19 ( 123:4-11 128:23-129:2 141:24-144:1; Ex. 3 (Newton Dep. Tr.) at 76:14-80:12 103:17-104:24 For example, based at least on the evidence described above, Hulu directs and controls the CDN’s performance in the following ways5: Claimed Method Step Hulu’s Control Over The CDN ’213 Patent Claim 16(a) “receiving a request for an SM object from one of said plurality of clients at one of said plurality of helper servers”  Hulu’s  Hulu configures how the CDNs and  Hulu contracts with the CDNs to provide 5 Hulu does not dispute in its Motion for Summary Judgment of No Direct Infringement the technical merits of whether each claim element is practiced. Therefore, because the technical issues related to infringement are also discussed in Sound View’s Opposition to Hulu’s Motion for Summary Judgment of Non-Infringement, concurrently filed, they are not repeated here. Instead, this brief focuses on the aspects of direct infringement related to direction and control. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 17 of 25 Page ID #:19136 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 15 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Claimed Method Step Hulu’s Control Over The CDN See supra § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 389-394. ’213 Patent Claim 16(b) “allocating a buffer at one of said plurality of HSs to cache at least a portion of said requested SM object”  Hulu configures how the CDNs  Hulu  Hulu and  Hulu contracts with the CDNs to See supra § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 398-399. ’213 Patent Claim 16(c) “downloading said portion of said requested SM object to said requesting client, while concurrently retrieving a remaining portion of said requested SM object from one of another HS and said content server”   Hulu configures how the CDNs and  Hulu contracts with the CDNs to provide See supra § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 406-409. ’213 Patent Claim 16(d) “adjusting a data transfer rate  REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 18 of 25 Page ID #:19137 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 16 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Claimed Method Step Hulu’s Control Over The CDN at said one of said plurality of HSs for transferring data from said one of said plurality of helper servers to said one of said plurality of clients.”  and  Hulu See supra § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 415-417. ’074 Patent Claim 3(a)/9(a) “receiving said SM object”   Hulu configures how the CDNs and  Hulu contracts with the CDNs to provide See § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 733-738, 794-799. ’074 Patent Claim 3(b)/9(b) “determining whether there is a disk space available on said one of said plurality of [HSs/servers]”  Hulu configures how the CDNs  Hulu configures  Hulu and REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 19 of 25 Page ID #:19138 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 17 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Claimed Method Step Hulu’s Control Over The CDN  Hulu contracts with the CDNs to provide See § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 742-743, 803-804. ’074 Patent Claim 3(c) “storing said SM object at said [at least one HS/one of said plurality of servers] if it is determined that there is sufficient disk space available”  Hulu configures how the CDNs  Hulu  Hulu and  Hulu contracts with the CDNs to provide See § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 749-751, 813-815. ’074 Patent Claim 3(d) “performing the following steps, if it is determined that there is insufficient disk space available: a) composing a set of SM objects from among a plurality of SM objects stored on said disk space whose access time is determined to be least recent, where said  Hulu  Hulu and  Hulu contracts with the CDNs to provide See § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 757-758, 763. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 20 of 25 Page ID #:19139 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 18 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Claimed Method Step Hulu’s Control Over The CDN access time corresponds to a time when said SM object was last requested; and b) replacing a portion of each of said SM object belonging to said composed set with chunks of said received SM object.” ’074 Patent Claim 9(d) “if it is determined that there is insufficient disk space available to store the received SM object, for each of a plurality of SM objects stored in said disk space, deleting only a portion of said SM object, whereby the deletion of said portions of said SM object results in sufficient disk space being available for storage of the received SM object.”  Hulu configures how the CDNs  Hulu configures and  Hulu contracts with the CDNs to provide See § IV.A.2 and Westin Decl. Ex. 29 (Richardson Opening Rpt.) ¶¶ 820-821. Therefore, sufficient facts exist that Hulu conditions the third parties’ receipt of a benefit on performance of the claimed steps and that Hulu establishes the manner and timing of the CDN’s performance of the claimed steps (e.g., REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 21 of 25 Page ID #:19140 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 19 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 . Based on these facts, a reasonable jury could conclude that Hulu directed and controlled the third party CDNs, such that their actions are attributable to Hulu and Hulu directly infringes. See Akamai, 797 F.3d at 1023 (“[L]iability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”). B. Hulu Also Indirectly Infringes The Asserted Claims. Hulu also indirectly infringes the Asserted Claims through its inducement of the third party CDNs. In its motion, Hulu does not dispute the merits of Sound View’s indirect infringement claims, but merely argues that Hulu’s liability starts only after Hulu received notice of infringement. Sound View agrees. Hulu had notice of its infringement of the ’213 Patent at least as of October 10, 2016, via letter: Przybylski Decl. Ex. 14 (Mar. 2017 Letter) at SVI-HULU00013732-13735 (showing Oct. 2016 Letter) (emphasis added); see Ex. 13 (Skotarczyk Dep. Tr.) at 24:14-25:5 Ex. 14 (Mar. 2017 Letter) at SVI- HULU00013730-13735; Ex. 15 (May 2017 Letter) at SVI-HULU00013811-3814; Ex. 16 (Hulu’s Supplemental Response to SVI’s Interrogatory No. 1) at 8. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 22 of 25 Page ID #:19141 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 20 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Hulu had notice of its infringement of the ’074 Patent at least as of March 28, 2017, via letter: Przybylski Decl. Ex. 14 (Mar. 2017 Letter) at SVI-HULU00013730-13735 (emphasis added); Ex. 15 (May 2017 Letter) at SVI-HULU00013811-3814. Hulu had notice of its infringement of the ’796 Patent at least as of May 22, 2017, via letter: Przybylski Decl. Ex. 15 (May 2017 Letter) at SVI-HULU00013811-3814 (emphasis added); Ex. 16 (Hulu’s Supplemental Response to SVI’s Interrogatory No. 1) at 8. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 23 of 25 Page ID #:19142 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 21 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V. CONCLUSION For the foregoing reasons, Hulu’s motion for summary judgment should be denied. Dated: March 18, 2019 By: /s/ Kent N. Shum RUSS AUGUST & KABAT Marc A. Fenster Benjamin T. Wang Kent N. Shum 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Tel: (310) 826-7474 Fax: (310) 826-6991 mfenster@raklaw.com bwang@raklaw.com kshum@raklaw.com Of Counsel: DESMARAIS LLP Alan S. Kellman (admitted pro hac vice) Richard M. Cowell (admitted pro hac vice) C. Austin Ginnings (admitted pro hac vice) Jennifer M. Przybylski (admitted pro hac vice) 230 Park Avenue New York, NY 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 akellman@desmaraisllp.com rcowell@desmaraisllp.com aginnings@desmaraisllp.com jprzybylski@desmaraisllp.com Peter C. Magic (SBN 278917) 101 California Street, Suite 3070 San Francisco, CA 94111 Tel: (415) 573-1900 Fax: (415) 573-1901 pmagic@desmaraisllp.com Attorneys for Plaintiff Sound View Innovations, LLC REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 24 of 25 Page ID #:19143 SOUND VIEW INNOVATIONS, LLC’S OPPOSITION TO HULU’S MOTION FOR SUMMARY JUDGMENT OF NO DIRECT INFRINGEMENT 22 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CERTIFICATE OF SERVICE I hereby certify that a copy of the foregoing document was filed electronically in compliance with Local Rule 5-3.2. Therefore, this document was served on all counsel who are deemed to have consented to electronic service. Pursuant to Federal Rule of Civil Procedure 5(d) and Local Rule 5-3.2, all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by email on March 18, 2019. ____/s/ __Kent N. Shum_______________ Kent N. Shum REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:17-cv-04146-JAK-PLA Document 326 Filed 03/18/19 Page 25 of 25 Page ID #:19144