Sound View Innovations, LLC v. Hulu, LLC

REPLY in support of NOTICE OF MOTION AND MOTION for Summary Judgment as to NO ANTICIPATION BASED ON THE FOOTPRINT CDN 246

C.D. Cal.March 25, 2019

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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) Kerri-Ann Limbeek (admitted pro hac vice) Jennifer M. Przybylski (admitted pro hac vice) Steven M. Balcof (admitted pro hac vice) 230 Park Avenue New York, New York 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 DESMARAIS LLP Peter C. Magic (SBN 278917) pmagic@desmaraisllp.com 101 California Street San Francisco, CA 94111 Tel: (415) 573-1900 Fax: (415) 573-1901 Attorneys for Plaintiff Sound View Innovations, LLC IN THE 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’S REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN Date: April 15, 2019 Time: 8:30am Hon. John A. Kronstadt Courtroom 10B Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 1 of 15 Page ID #:20406 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 I. INTRODUCTION ................................................................................................ 1 II. ARGUMENT........................................................................................................ 2 A. Dr. Chase’s Footprint CDN “Analysis” Does Not Satisfy Rule 26(a)(2) And Cannot Meet Hulu’s Burden To Prove Invalidity By Clear And Convincing Evidence. ........................................ 2 B. None Of The Cases On Which Hulu Relies Establishes That The Approach Dr. Chase Takes Is Sufficient Or Permissible. .................. 6 C. Hulu Cannot Prove Its Footprint CDN Anticipation Theory Through Lay Witness Mr. Newton’s Testimony. ...................................... 9 III. CONCLUSION .................................................................................................. 10 Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 2 of 15 Page ID #:20407 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 AUTHORITIES Cases 01 Communique Lab., Inc. v. Citrix Sys., Inc., 889 F.3d 735 (Fed. Cir. 2018) .............................................................................. 7 Aspex Eyewear, Inc. v. Concepts In Optics, Inc., 111 Fed. Appx. 582 (Fed. Cir. 2004) ................................................................... 6 Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir. 2001) ............................................................................ 5 Edge Sys. v. Aguila, 635 F. App’x 897 (Fed. Cir. 2015) ....................................................................... 9 Hynix Semiconductor Inc. v. Rambus Inc., No. C-00-20905 RMW, 2009 WL 112834 (N.D. Cal. Jan. 16, 2009) ............... 10 Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 87 F. Supp. 3d 928 (N.D. Cal. 2015).................................................................... 8 Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004) .......................................................................... 10 Konvin Assocs. v. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006) ............................. 6 Mettler-Toledo, Inc. v. Fairbanks Scales, Inc., No. 9:06-CV-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) ................... 4, 5 Milos Misha Subotincic v. 1274274 Ontario Inc., No. SACV 10-01946 AG, 2013 WL 3964994 (C.D. Cal. Apr. 9, 2013) ............. 4 Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc., 725 F.3d 1377 (Fed. Cir. 2013) ............................................................................ 6 Schumer v. Laboratory Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002) ........................................................................ 1, 6 STS Software Sys., Ltd. v. Witness Sys., Inc., No. CIV.A. 1:04-CV-2111-, 2008 WL 660325 (N.D. Ga. Mar. 6, 2008) ........... 5 Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 3 of 15 Page ID #:20408 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991) ............................................................................ 8 TI Group Automotive Sys. (North Am.), Inc. v. VDO North Am., L.L.C., 375 F.3d 1126 (Fed. Cir. 2004) ............................................................................ 9 Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d 1348 (Fed. Cir. 2008) ............................................................................ 1 Rules Fed. R. Civ. P. 26(a)(2) ............................................................................................... 1, 2 Fed. R. Evid. 602 ............................................................................................................ 9 Fed. R. Evid. 702 ............................................................................................................ 9 Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 4 of 15 Page ID #:20409 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 inaccurately insists that Dr. Chase performed a “limitation-by-limitation analysis” comparing the Footprint CDN to the asserted claims of the ’213, ’796, and ’074 patents.1 The reality—which Hulu does not genuinely dispute through any evidence—is that Dr. Chase performed no “analysis”; he simply included charts in his expert report that consist solely of citations and excerpts without explanation, and prefaced the charts with a high level statement that Footprint anticipates because it is “substantially the same” as the accused products. Those charts contain no analysis from Dr. Chase (or anyone else), no discussion of the Court’s constructions, and no discussion of Dr. Richardson’s “interpretation” of the claims (on which Dr. Chase’s invalidity theory supposedly rests). Instead, for each claim preamble and step, those charts merely contain screenshots of various documents and generic citations to entire deposition transcripts. Such analyses are insufficient to sustain Hulu’s burden of proof on anticipation. See, e.g., Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (anticipation “requires showing that each element of the claim at issue, properly construed, is found in a single prior art reference”); Schumer v. Laboratory Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002) (“[T]estimony concerning anticipation . . . must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.”) (emphasis added). Hulu’s arguments that there is a genuine dispute of material fact about the Footprint CDN are equally meritless. First, Hulu’s argument that Dr. Chase’s report is adequate under Federal Rule of Civil Procedure 26(a)(2) because it “explains in detail how each element is disclosed in the prior art” is inaccurate, as Dr. Chase’s charts contain no explanation of any kind. Second, Hulu’s argument that it could prove 1 As a result of the parties’ joint stipulation to dismiss certain claims, defenses, and counterclaims, the following aspects of this motion are now moot because invalidity is no longer at issue regarding the following: (1) all asserted claims of the ’796 Patent; and (2) claims 1, 7, and 8 of the ’213 Patent (claim 16 is still asserted and at issue). Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 5 of 15 Page ID #:20410 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 anticipation by the Footprint CDN at trial through a fact witness instead of Dr. Chase is incorrect here, where presenting the theory would require discussing the claim language and Sound View’s expert’s infringement opinions, which a fact witness cannot do. Thus, summary judgment of no anticipation based on the Footprint CDN is appropriate. II. ARGUMENT The Court should grant summary judgment that the Footprint CDN does not anticipate any asserted claim of the ’213, ’796, and ’074 patents. Hulu argues that summary judgment is inappropriate for three reasons: (1) Dr. Chase’s Footprint CDN theory is not based on comparing the Footprint CDN the accused products, but is instead a “limitation-by-limitation analysis” of the asserted claims against the Footprint CDN; (2) Dr. Chase’s report is allegedly sufficient under Federal Rule of Civil Procedure 26(a)(2); and (3) Hulu could present its Footprint CDN anticipation theory at trial without Dr. Chase’s testimony. None of those arguments is sufficient to avoid summary judgment because: (1) Dr. Chase asserted in his report that the Footprint CDN anticipates under Hulu’s expert’s claim “interpretation” because Footprint is “substantially the same” as the accused products, as a substitute for explaining what exactly in the prior art meets each limitation of the claims; (2) Dr. Chase’s report is in fact deficient under Rule 26(a)(2) because it fails to contain a complete statement of his Footprint CDN opinions in the level of detail required under controlling law; and (3) Hulu cannot rely on testimony from a fact witness to establish a genuine dispute of material fact regarding any comparison of the Footprint CDN to the claim elements because fact witnesses cannot engage in such a comparison. A. Dr. Chase’s Footprint CDN “Analysis” Does Not Satisfy Rule 26(a)(2) And Cannot Meet Hulu’s Burden To Prove Invalidity By Clear And Convincing Evidence. Hulu does not genuinely dispute that Dr. Chase’s “analysis” of the Footprint CDN is contained in two paragraphs of his opening report (paragraphs 435 and 436), the first of which asserts that Footprint anticipates under the claims as “interpreted” by Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 6 of 15 Page ID #:20411 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 Dr. Richardson because the accused products and Footprint are “substantially the same,” and the second of which contains claim charts that consist of nothing more than excerpts of Footprint-related documents and citations to the entirety of the deposition testimony concerning the Footprint CDN. Hulu’s primary argument is that Dr. Chase’s report complies with Federal Rule of Civil Procedure 26(a)(2) as to his opinions regarding the Footprint CDN because the report allegedly “identifies each claim element at issue, addresses that claim element in light of the intrinsic record and [Sound View’s expert] Dr. Richardson’s opinion, and explains how each claim element is disclosed in the Footprint CDN.” Opp. at 5. However, no portion of Dr. Chase’s Footprint CDN charts addresses any “claim element in light of the intrinsic record”; indeed, the charts contain no discussion of the claim language, any of the three patent specifications, or the prosecution histories of any of the three patents, nor do they address a single one of the Court’s claim constructions. See generally Dkt. No. 246-3 at 297-358. Indeed, Dr. Chase does not discuss the Court’s constructions because he argues that Footprint “would not anticipate under a proper understanding of the claims” but instead only anticipates under the “interpretation” of claims Dr. Richardson applied (something Dr. Chase never expounds on or articulates) in his infringement analysis. Dkt. No. 246-3, ¶ 435 n.12. And, no portion of Dr. Chase’s report “explains how each claim element is disclosed in the Footprint CDN,” since the charts are merely screenshots of Footprint-related documents with no explanation of any kind. See generally id.2 Hulu then argues that “[o]ther portions of Dr. Chase’s [opening report] provide further relevant analysis,” and that other paragraphs “appl[y] equally to the Footprint 2 Hulu contends that Dr. Chase’s deposition testimony demonstrates that his report complies with Rule 26. Opp. at 5-6. But, Dr. Chase’s statements at his deposition concerning two terms (“content server” and “helper server”) are not in his report. Hulu also quotes testimony that Dr. Chase provided “60 pages of claim charts” concerning Footprint. Opp. at 6 (quoting Dkt. No. 315-10 at 201:9-24). But Hulu omits the next line of testimony: “It is true that I did not write any of that text.” Id. at 201:24-25. Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 7 of 15 Page ID #:20412 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 CDN, even if not set forth at length again in that section.” Opp. at 6. In making that assertion, Hulu cites to paragraph 96 of Dr. Chase’s opening report, which is shown in full below: Dkt. No. 246-3 at 34-35. But nothing in paragraph 96 (or the remainder of that “section” of the report) says anything about the Footprint CDN, or discusses the Court’s constructions in a manner that could be (let alone was identified by Dr. Chase as) applicable to Dr. Chase’s Footprint CDN opinions. Also, despite Hulu’s repeated emphasis that Dr. Chase’s Footprint opinions are based on Dr. Richardson’s “interpretation” of the asserted claims, nothing in that “section” of the report discusses Dr. Richardson’s “interpretations.” Hulu’s attempts to distinguish the cases Sound View cites in its motion also fail. For example, Hulu attempts to analogize Dr. Chase’s charts to those at issue in Milos Misha Subotincic v. 1274274 Ontario Inc., No. SACV 10-01946 AG, 2013 WL 3964994 (C.D. Cal. Apr. 9, 2013). Opp. at 7. There, the court found that the plaintiff’s expert “uses charts to show what he designates as the specific structures embodied in the [claim] limitations,” and while the “charts may be similar to those in the [contentions], [. . .] they do contain additional designations and additional pictures, as well as the Court’s claim construction, which was not in the [contentions].” 2013 WL 3964994, at *13. Dr. Chase’s charts contain no such “designations” of what aspects of the Footprint CDN he claims meet any portion of the claim language; nor do they discuss the Court’s constructions. See generally Dkt. No. 246-3 at 297-358. Similarly, Hulu attempts to distinguish Mettler-Toledo, Inc. v. Fairbanks Scales, Inc., No. 9:06-CV-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) by arguing that Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 8 of 15 Page ID #:20413 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 Dr. Chase “has excerpted specific portions of various documents regarding the Footprint CDN.” Opp. at 7. However, Hulu ignores the court’s statement that striking the expert’s charts was appropriate “where the claim chart is the sum total of the expert's opinion and provides no analysis whatsoever beyond reference to the depositions and deposition exhibits of other individuals.” Mettler-Toledo, 2008 WL 11348468, at *4. Hulu cannot dispute that Dr. Chase’s charts consist merely of references to Mr. Newton’s deposition transcripts and the Footprint documents that were exhibits to his depositions, and that Dr. Chase “provides no analysis whatsoever” beyond his references to those materials.3 See generally Dkt. No. 246-3 at 297-358. Whether the charts actually show pictures from the pages that are cited, as opposed to just citing the pages without showing pictures of those pages, is simply a matter of convenience for the reader, not a substantive difference in the level of disclosure, and certainly does not bring the charts any closer to constituting “analysis.” Similarly, Hulu’s attempts to distinguish STS Software Sys., Ltd. v. Witness Sys., Inc., No. CIV.A. 1:04-CV-2111-, 2008 WL 660325 (N.D. Ga. Mar. 6, 2008) and Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir. 2001) also fail. Hulu’s purported basis for distinguishing STS is that STS relates to obviousness charts, not anticipation charts. Opp. at 8. But Hulu cites no authority for the idea that Rule 26’s disclosure requirements differ for opinions concerning obviousness instead of anticipation, let alone in any way relevant here. And, while Hulu attempts to distinguish Biotec by arguing that Dr. Chase’s “selection of specific portions of specific documents for each element illustrates his thought process” concerning the Footprint CDN (Opp. at 8), mere illustration of Dr. Chase’s “thought process” falls far 3 Hulu also alleges that the “claim charts are not the ‘sum total’ of Dr. Chase’s opinions” and that Dr. Chase “provides a detailed analysis of the claim language under both his interpretation and Dr. Richardson’s interpretation earlier in the report.” Opp. at 7-8. In support, Hulu cites paragraph 96 of Dr. Chase’s report, which is reproduced on page 4 above. That three-sentence paragraph does not offer any “detailed analysis of the claim language,” nor does it mention Dr. Richardson’s interpretation of the claim language. Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 9 of 15 Page ID #:20414 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 short of providing actual explanation, let alone a complete statement of opinions and the bases therefor. It is also unclear how the charts could show “his selection” of citations and “his thought process,” given that the charts contain no analysis or explanation of any of the excerpts.4,5 B. None Of The Cases On Which Hulu Relies Establishes That The Approach Dr. Chase Takes Is Sufficient Or Permissible. Hulu relies on three cases to argue that Dr. Chase’s Footprint CDN opinions are adequate, but none demonstrates that Dr. Chase’s “analysis” could possibly be sufficient for Hulu to meet its burden to prove invalidity by clear and convincing evidence. Specifically, none of those cases approves of the notion that an expert can merely make a general assertion that prior art invalidates under the opposing expert’s claim interpretation because the art and the accused products are “substantially the same,” and follow that with claim charts that consist solely of citations (or pictures of the source material at a given citation) and provide no explanation from the expert of 4 Hulu attempts to distinguish other cases (specifically, Schumer, Aspex Eyewear, Inc. v. Concepts In Optics, Inc., 111 Fed. Appx. 582 (Fed. Cir. 2004), and Konvin Assocs. v. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006)) because they concerned defendants’ motions for summary judgment of anticipation, and not plaintiffs’ motions for summary judgment of no anticipation. Opp. at 9. However, Hulu does not dispute the propositions for which Sound View cites those cases, e.g., Schumer’s guidance that “testimony concerning anticipation . . . must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.” 308 F.3d at 1315. 5 As the Federal Circuit has recognized, the purpose of Rule 26’s disclosure requirements is “to ‘provide opposing parties reasonable opportunity to prepare for effective cross examination . . . .’” Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc., 725 F.3d 1377, 1381 (Fed. Cir. 2013). Dr. Chase’s failure to provide a complete statement of his Footprint CDN opinions in derogation of Rule 26(a)(2) prevents Sound View, its experts, and the Court from knowing what Dr. Chase will allege at trial concerning how the Footprint CDN meets each claim element, and which of Dr. Richardson’s claim “interpretations” are supposedly the basis for Dr. Chase’s assertion that the Footprint CDN “would anticipate if the claims are broadened . . . as proposed by [Dr. Richardson].” Opp. at 2. Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 10 of 15 Page ID #:20415 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 exactly what claim scope he is applying and provide no explanation of what exact feature or component in the art meets each element. First, Hulu argues that Dr. Chase’s analysis is similar to the opinions that the Federal Circuit endorsed in 01 Communique Laboratory, Inc. v. Citrix Sys., Inc., 889 F.3d 735 (Fed. Cir. 2018). Opp. at 2-3. However, in that case, the defendant’s expert provided specific opinions that explained that a particular claim element (the “location facility”) was not met, but that “if [the plaintiff] relied upon an ‘overbroad application’ of its claims to ensnare [the accused product], then the asserted claims would also cover [the prior art product].” Id. at 743. Specifically, the defendant provided analysis that “if Communique attempted to expand the scope of its claims to include systems in which a location facility merely ‘directs’ other components, such as the end point computers, to create the communication channel,” then the claims would be invalid. Id. Here, Dr. Chase’s report provides no such analysis. Hulu alleges in its Opposition that “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 adjusting a data transfer rate on selecting different representations of a video, then the claims would be invalid in light of the Footprint CDN.” Opp. at 2. But, Dr. Chase in fact never made such statements in his report. He did not assert that “read[ing] adjusting a data transfer rate on selecting different representations of a video” was claim scope he applied to any claim element in his Footprint analysis. See, e.g., Dkt. No. 246-3 at 336-338 (failing to mention any aspect of Dr. Richardson’s infringement analysis). Rather, in discussing the Footprint CDN, Dr. Chase does not identify what he believed to be any allegedly “overbroad application” of the claims, which specific claim elements were impacted (and how) by such “overbroad application,” or analyze how the Footprint CDN meets such claim scope. His charts consist entirely of excerpts of high-level Footprint documents and generic citations to the entirety of deposition transcripts. Despite Hulu’s assertion to the contrary, nowhere has Dr. Chase “compare[d] the Footprint CDN to the asserted claims . . . , using specific evidence (and applying Dr. Richardson’s Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 11 of 15 Page ID #:20416 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 interpretation of how the claim language should be applied).” See Opp. at 4. Second, Hulu relies on Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991) for the proposition that it is not improper for an “expert’s opinions [to] rel[y] solely on claim charts.” Opp. at 6. Sound view agrees with that basic proposition, but the issue here is the level of analysis provided by the expert, not the format in which the analysis appears. And Symbol concerned the expert’s use of summary charts to present his trial testimony, not the use of or content of charts in his expert report. See 935 F.2d at 1574 (“The court admitted into evidence charts and drawings used by Barkan to demonstrate infringement of the asserted claims . . . .”). Thus, unlike here, the issue in Symbol was not the sufficiency of the expert’s report or analysis. See id. at 1575-76. Third, Hulu relies on Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 87 F. Supp. 3d 928 (N.D. Cal. 2015)—which was discussed in Sound View’s Motion (Dkt. No. 246 at 12 n.4)—for the proposition that the claim charts there were “sufficiently detailed to satisfy Specialized’s disclosure requirements.” Opp. at 6-7. The claim charts at issue in the portion of Icon’s motion that Hulu quotes from (which are included herewith as Ginnings Supp. Decl., Ex. 1) contain significantly more detail than Dr. Chase’s charts. The Icon charts contain annotated pictures of the prior art devices showing where Specialized’s expert contends various claim elements are shown—i.e., they contain analysis and explain where exactly in the art each claim element is met. Moreover, various portions of Specialized’s expert’s analysis set forth how the prior art met certain claim elements under Icon’s expert’s interpretation of the claim language. Id. at chart F-9, p. 8 (“Icon’s infringement contentions reflect an interpretation of this term that includes a rail that is in direct and permanent contact with a lower surface of a saddle. [. . .] This interpretation is irreconcilably different from what is taught in the specification, and from the court’s construction. If it is found that such a rail structure satisfies this limitation, then the Turbo saddle also includes such a structure.”). In contrast, Dr. Chase’s charts do not provide any such annotated explanations, nor do they explain how the Footprint CDN meets any claim element Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 12 of 15 Page ID #:20417 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 under Dr. Richardson’s interpretation of the claims. See Dkt. No. 246-3 at 297-358. C. Hulu Cannot Prove Its Footprint CDN Anticipation Theory Through Lay Witness Mr. Newton’s Testimony. As a last resort, Hulu argues that even if Dr. Chase’s Footprint CDN opinions were improper and were excluded, Hulu could still prove anticipation at trial by calling Mr. Newton to testify as a fact witness. Opp. at 10. Hulu alleges that “[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.” Id. But Hulu’s argument rests on a critical misunderstanding of patent law: (1) proof of invalidity requires comparing claim elements to the prior art (see, e.g., TI Group Automotive Sys. (North Am.), Inc. v. VDO North Am., L.L.C., 375 F.3d 1126, 1139 (Fed. Cir. 2004) (“[A] validity analysis . . . involves determining whether the limitations of the claims as properly interpreted are met by the prior art.”)); (2) a lay witness such as Mr. Newton cannot make that comparison at trial; and (3) Dr. Richardson’s application of the claims “to the Level 3 CDN” is a legally distinct inquiry from Hulu’s burden to prove invalidity and cannot serve as a substitute for Hulu offering a comparison of the claims to the Footprint CDN. Mr. Newton indisputably has not been disclosed as an expert in this case and has not provided an expert report; his trial testimony would therefore be limited to his personal knowledge (see Fed. R. Evid. 602, 702), and he could not, e.g., offer opinions about the claim language, apply the Court’s constructions, discuss Dr. Richardson’s interpretations of the claim language (upon which Hulu’s Footprint CDN invalidity theory supposedly depends), or compare any feature of the Footprint CDN to any claim. Such explanations are unquestionably the province of expert testimony, and Hulu does not contend otherwise. Without testimony connecting Mr. Newton’s factual description of the Footprint CDN to the claim language, the Court could not sustain any verdict finding any asserted claim invalid in view of the Footprint CDN. See, e.g., Edge Sys. v. Aguila, 635 F. App’x 897, 904 (Fed. Cir. 2015) (finding evidence of invalidity Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 13 of 15 Page ID #:20418 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 insufficient when defendant merely offered prior art into evidence “without any expert testimony or anticipation analysis”); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (same); Hynix Semiconductor Inc. v. Rambus Inc., No. C- 00-20905 RMW, 2009 WL 112834, at *6 (N.D. Cal. Jan. 16, 2009), aff’d, 645 F.3d 1336 (Fed. Cir. 2011) (“Without specific testimony about what limitations or ‘elements’ of a claimed invention also appear in a prior art reference, it is impossible to determine whether or not an element of an invention was known in the prior art.”). Hulu cites Digital Reg of Texas, LLC v. Adobe Sys., Inc., No. C 12-1971 CW, 2014 WL 4090550 (N.D. Cal. Aug. 19, 2014) in alleging that Mr. Newton could offer testimony about the Footprint CDN. Opp. at 10. However, Digital Reg did not find that a defendant can prove anticipation through a fact witness alone (either generally, or for a theory like Hulu’s that depends on the plaintiff’s expert’s interpretation of the claims). In Digital Reg, the defendant offered an expert witness to opine on how the “Softlock” system invalidated the claims, but also offered a fact witness to discuss aspects such as “research of which he was personally aware” and the “authenticity . . . of documents related to the Softlock system.” 2014 WL 4090550, at *8; see Digital Reg, Adobe Systems Inc.’s Responses to Digital Reg’s Motions in Limine, 2014 WL 10209869 (N.D. Cal. Aug. 6, 2014) (indicating Adobe would offer testimony from an expert (Dr. Wicker) concerning the Softlock system). Thus, Digital Reg merely reaffirms the unremarkable point that a fact witness may offer factual testimony on prior art for which an expert offers testimony of invalidity by comparing the claims to the art; it does not support the notion that a fact witness alone may serve as the basis for a defendant’s attempt to prove invalidity. And Digital Reg does not endorse the notion that where an expert offers a legally insufficient analysis to carry a defendant’s burden to prove invalidity, the defendant can merely have a fact witness fill the void. III. CONCLUSION Sound View respectfully requests that the Court grant its motion for summary judgment of no anticipation of the ’213, ’796, and ’074 patents by the Footprint CDN. Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 14 of 15 Page ID #:20419 REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NO ANTICIPATION BASED ON THE FOOTPRINT CDN 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 Dated: March 25, 2019 By: /s/ Kent N. Shum 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) Kerri-Ann Limbeek (admitted pro hac vice) Jennifer M. Przybylski (admitted pro hac vice) Steven M. Balcof (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) pmagic@desmaraisllp.com 101 California Street San Francisco, CA 94111 Tel: (415) 573-1900 Fax: (415) 573-1901 Attorneys for Plaintiff Sound View Innovations, LLC Case 2:17-cv-04146-JAK-PLA Document 358 Filed 03/25/19 Page 15 of 15 Page ID #:20420