Free Stream Media Corp. v. Alphonso Inc.

REPLY

N.D. Cal.February 15, 2019

REPLY RE RULE 59(e) MOTION CASE NO. 3:17-CV-02107-RS 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 MATTHEW D. POWERS (Bar No. 104795) matthew.powers@tensegritylawgroup.com PAUL T. EHRLICH (Bar No. 228543) paul.ehrlich@tensegritylawgroup.com WILLIAM P. NELSON (Bar No. 196091) william.nelson@tensegritylawgroup.com STEFANI C. SMITH (Bar No. 251305) stefani.smith@tensegritylawgroup.com JENNIFER K. ROBINSON (Bar No. 270954) jen.robinson@tensegritylawgroup.com SAMANTHA A. JAMESON (Bar. No. 296411) samantha.jameson@tensegritylawgroup.com NATASHA M. SAPUTO (Bar No. 291151) natasha.saputo@tensegritylawgroup.com ALEX H. CHAN (Bar No. 278805) alex.chan@tensegritylawgroup.com WANLI CHEN (Bar No. 300254) wanli.chen@tensegritylawgroup.com TENSEGRITY LAW GROUP, LLP 555 Twin Dolphin Drive, Suite 650 Redwood Shores, CA 94065 Telephone: (650) 802-6000 Facsimile: (650) 802-6001 Attorneys for Plaintiff Free Stream Media Corp. d/b/a Samba TV UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION FREE STREAM MEDIA CORP., d/b/a SAMBA TV, Plaintiff, vs. ALPHONSO INC., ASHISH CHORDIA, RAGHU KODIGE, and LAMPROS KALAMPOUKAS, Defendants. Case No. 3:17-cv-02107-RS PLAINTIFF’S REPLY IN SUPPORT OF MOTION TO ALTER OR AMEND A JUDGMENT PURSUANT TO FED. R. CIV. P. 59(e) Judge: Hon. Richard Seeborg Dept: Courtroom 3, 17th Floor Time: 1:30pm Date: March 7, 2019 REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 1 of 18 REPLY RE RULE 59(e) MOTION i CASE NO. 3:17-CV-02107-RS 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. Alphonso Fails To Rebut Samba’s Showing That Grant of Summary Judgment Regarding Vizio Data Was Clear Error ............................................... 2 B. Alphonso Fails To Rebut Samba’s Showing That Summary Judgment Based On Computer “Matching” Operations That Are Purportedly Performed By Alphonso Employees Was In Error As To The Beeswax Bidding System................................................................................................... 8 C. Alphonso Fails To Rebut Samba’s Showing That Claims 10, 13 and 18 Do Not Require “Use” of a Mobile Device ............................................................. 11 III. CONCLUSION ............................................................................................................ 15 Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 2 of 18 REPLY RE RULE 59(e) MOTION ii CASE NO. 3:17-CV-02107-RS 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 Akamai Techs., Inc. v. Limelight Networks, Inc. (“Akamai V”), 797 F.3d 1020 (Fed. Cir. 2015) ............................................................................................... 2 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505 (1986) .............................................................................. 10, 15 Centillion Data Systems, LLC v. Qwest Communications International, 631 F.3d 1279 (Fed. Cir. 2011) ............................................................................................. 11 Davidson v. Kimberly-Clark Corp., No. C 14-1783 PJH, 2015 U.S. Dist. LEXIS 64168 (N.D. Cal. May 15, 2015) ........................ 3 Durkee v. Ford Motor Co., No. C 14-0617 PJH, 2015 U.S. Dist. LEXIS 31227 (N.D. Cal. Mar. 13, 2015) .............. 3, 6, 14 Freeman v. Arpaio, 125 F.3d 732 (9th Cir. 1997) ................................................................................................... 7 Grecia v. VUDU, Inc., No. C-14-1220-EMC, 2015 U.S. Dist. LEXIS 16256 (N.D. Cal. Feb. 9, 2015) ........................ 3 HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270 (Fed. Cir. 2012) ......................................................................................... 8, 13 Kinney v. Clark, No. 16-cv-1260-LB, 2016 U.S. Dist. LEXIS 80770 (N.D. Cal. June 21, 2016) ........................ 3 Mankes v. Vivid Seats Ltd., 822 F.3d 1302 (Fed. Cir. 2015) ............................................................................................... 4 Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367 (Fed. Cir. 2008) ......................................................................................... 8, 13 Nalco Co. v. Turner Designs, Inc., 73 F. Supp. 3d 1096 (N.D. Cal. 2014) ..................................................................................... 3 Shetty v. Cisco, No. 17-cv-0933-PJH, 2017 U.S. Dist. LEXIS 79965 (N.D. Cal. May 24, 2017) ...................... 3 Soverain Software LLC v. J.C. Penney Corporation, 899 F. Supp. 2d 574 (E.D. Tex. 2012) ................................................................................... 14 TransPerfect Glob., Inc. v. Motionpoint Corp., No. C 10-2590 CW, 2014 U.S. Dist. LEXIS 159805 (N.D. Cal. Nov. 13, 2014) .................... 14 Travel Sentry, Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017) ....................................................................................... 2, 4, 7 Wyrzykowski v. Cty. of Marin, No. 3:14-cv-03825-LB, 2015 U.S. Dist. LEXIS 147057 (N.D. Cal. Oct. 28, 2015) .................. 3 Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 3 of 18 REPLY RE RULE 59(e) MOTION 1 CASE NO. 3:17-CV-02107-RS 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 Alphonso’s opposition to Samba’s Motion to alter or amend the Court’s summary judgment Order spends more time asking the Court to ignore Samba’s arguments than it does substantively responding to them. That the central theme of Alphonso’s brief is “look away” is no surprise; Alphonso can offer no serious arguments to rebut Samba’s showing that the Court should alter its judgment and set trial for this matter. None of the reasons put forward by Alphonso as to why the Court should disregard Samba’s arguments for amendment of the judgment has merit. Some of those reasons are factually wrong, such as the contention that “Samba agreed to treat claim 10 as representative of the other independent claims” (Opp. at 7), or that Samba “did not raise” any “attempt to distinguish claims 10, 13, and 18 from claim 1. . . during summary judgment briefing.” Opp. at 15. Samba explicitly distinguished between the “system” of claim 1, and the “relevancy-matching server” of the other claims in its summary judgment briefing, see, e.g., ECF No. 338-4 at 19:23-25, and Alphonso cites only its own briefing to suggest that Samba agreed Claim 10 is representative. Opp. at 15. Other reasons are nonsensical, such as that on the Vizio issue, Samba’s opposition to summary judgment failed to “distinguish claims 10, 13, 18, and 20 from claim 1” (Opp. at 9)—even though Alphonso only moved on this ground as to Claim 1. Similarly, within a few lines of each other, Alphonso both contends that in a “Rule 59(e) motion, Samba cannot make the same arguments based on the same case law in the hopes that the Court will change its mind,” and that the Court should ignore any new argument relying on newly cited case law (Opp. at 5-6)—erroneously suggesting that Rule 59 permits a party to make no arguments at all. Alphonso is wrong on all counts, and there is no basis for the Court to disregard Samba’s factual and legal showing, no matter how much Alphonso may wish it. On the merits, Alphonso provides little substantive response to Samba’s showing that amendment of the judgment is warranted, and none have merit. For example, on the Vizio issue, Alphonso never disputes that the Alphonso/Vizio agreement obligates Vizio to provide Alphonso with what the claims require—viewing history derived from television-based fingerprint data (Claim 1), or to communicate that digital data from televisions (Claims 10, 13, 18, and 20). Instead, Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 4 of 18 REPLY RE RULE 59(e) MOTION 2 CASE NO. 3:17-CV-02107-RS 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 Alphonso simply follows the advice it gives to the Court and ignores the facts and law discussed in Samba’s motion. Alphonso similarly offers only limited and unpersuasive substantive responses to the other grounds for amendment advanced by Samba. In any event, none of Alphonso’s limited substantive argument suffices to rebut Samba’s showing that reversal of summary judgment is warranted on all three grounds identified in Samba’s Motion, for the reasons described below. II. ARGUMENT A. Alphonso Fails To Rebut Samba’s Showing That Grant of Summary Judgment Regarding Vizio Data Was Clear Error Alphonso’s opposition never substantively addresses Samba’s showing that the summary judgment Order (the “Order”) applied an unduly restrictive reading of the “direction or control” standard set out by Akamai Techs., Inc. v. Limelight Networks, Inc. (“Akamai V”), 797 F.3d 1020, 1023 (Fed. Cir. 2015) in deciding that Vizio’s conduct in generating viewing history data and communicating it to Alphonso could not be attributed to Alphonso for the purpose of direct infringement. Alphonso simply contends that the Court applied the right standard because Akamai V was discussed at the hearing, without saying what the standard is, or why the right one was applied. Opp. at 4-6. Specifically, Alphonso quotes its own argument at the hearing concerning how Akamai V’s “direction or control” can be met by a contract “for the performance of steps” of a claim, Opp. at 5, and says the Court got it right when it concluded that “the record does not support a conclusion that Alphonso exercised sufficient control or direction.” Id. But Alphonso never addresses what evidence is “sufficient” under the law, or whether the Order got the standard for sufficiency right. As such, Alphonso leaves unrebutted Samba’s showing that: 1) under Akamai V “[w]hether a single actor directed or controlled the acts of one or more third parties is a question of fact”1; 2) the Akamai V framework does not require a contract to mandate how a third party like Vizio will perform a function in order to establish the direct infringement of the contracting party, as the Order suggests—rather, a triable issue of fact over “direction or control” exists if the parties’ 1 See Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1378 (Fed. Cir. 2017) (“Importantly, [in Akamai V] we stated that, ‘[w]hether a single actor directed or controlled the acts of one or more third parties is a question of fact.’”). Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 5 of 18 REPLY RE RULE 59(e) MOTION 3 CASE NO. 3:17-CV-02107-RS 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 relationship, contractual or otherwise, obligates them to perform an act that results in infringement; and 3) Samba’s submission and discussion of the Alphonso/Vizio agreement was sufficient to create a triable issue of fact. Next, and practically in the same breath, Alphonso states that it was improper for Samba to rely on two cases to explain the correct legal standard for “direction or control,” for two contradictory reasons. According to Alphonso, Samba cannot rely on Nalco Co. v. Turner Designs, Inc., 73 F. Supp. 3d 1096 (N.D. Cal. 2014), because Samba already discussed this case in opposition to summary judgment, and Samba cannot rely on Grecia v. VUDU, Inc., No. C-14- 1220-EMC, 2015 U.S. Dist. LEXIS 16256 (N.D. Cal. Feb. 9, 2015), because Samba had never raised it before. Opp. at 5-6. If Alphonso were right, a party seeking amendment of a judgment under Rule 59(e) could make neither new arguments nor old ones. Alphonso is wrong, as the very authority Alphonso relies on demonstrates. Alphonso cites Durkee v. Ford Motor Co., No. C 14- 0617 PJH, 2015 U.S. Dist. LEXIS 31227 (N.D. Cal. Mar. 13, 2015) for the proposition that a “motion for reconsideration ‘may not be used to relitigate old matters, or to raise arguments or present evidence that could have been raised prior to the entry of judgment” Opp. at 1, but neglects to tell the Court that the very next line in Durkee states that the “sole exception” to this rule “is when the court has committed ‘clear’ or ‘manifest’ error.” Durkee, 2015 U.S. Dist. LEXIS 31227 at *5. Such “clear or manifest error” is precisely what Samba contends in its motion, and courts of this district consistently note that new argument or evidence is permitted in support of such a contention. See, e.g., Davidson v. Kimberly-Clark Corp., No. C 14-1783 PJH, 2015 U.S. Dist. LEXIS 64168, at *4 (N.D. Cal. May 15, 2015); Wyrzykowski v. Cty. of Marin, No. 3:14-cv-03825- LB, 2015 U.S. Dist. LEXIS 147057, at *6 (N.D. Cal. Oct. 28, 2015); Kinney v. Clark, No. 16-cv- 1260-LB, 2016 U.S. Dist. LEXIS 80770, at *3 (N.D. Cal. June 21, 2016); Shetty v. Cisco, No. 17- cv-0933-PJH, 2017 U.S. Dist. LEXIS 79965, at *2-3 (N.D. Cal. May 24, 2017). As such, Samba was free to identify the legal authority and evidence it contends demonstrates the errors made in the Order. Samba’s citation to additional cases and evidence is particularly apt as to the Vizio issue, where (as Samba noted in its Motion), the record is underdeveloped because Alphonso did not even raise vicarious liability, or the direction or control Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 6 of 18 REPLY RE RULE 59(e) MOTION 4 CASE NO. 3:17-CV-02107-RS 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 issue and the cases describing it, its motion for summary judgment. Instead, Alphonso argued that it could not infringe because Alphonso “does not provide TVs or use the TVs to generate data.” ECF No. 324-4 at 11. It was Samba’s opposition that identified the appropriate legal framework for vicarious liability, and the evidence that established at least a genuine dispute of fact under that framework that required the issue to go to the jury. ECF No. 338-4 at 3-4. Samba can hardly be faulted for relying now on additional argument and evidence to demonstrate the error resulting from the limited record before the Court. On the merits, Alphonso attempts to distinguish both Nalco and Grecia as inapplicable because they were decided under a now-overturned “mastermind” standard, Opp. at 5-6, but that both misses the point, and supports Samba’s contention regarding the appropriate standard for “direction or control.” In Nalco and Grecia, the contracts in those cases prevented summary judgment or dismissal of direct infringement claims because they created a material dispute of fact over “direction or control” sufficient to hold the defendant liable as a direct infringer for the third party’s conduct, even though those contracts did not specify how the third party must perform its obligations, or obligate them explicitly to perform an infringing step. See Motion at 8-10. It is true that these cases were decided under a “mastermind” standard, as Alphonso notes, but that cuts against Alphonso’s position. Akamai V “broaden[ed] the circumstances in which others’ acts may be attributed to an accused infringer to support direct-infringement liability for divided infringement, relaxing the tighter constraints on such attribution reflected in [its] earlier precedents . . .” Mankes v. Vivid Seats Ltd., 822 F.3d 1302, 1305 (Fed. Cir. 2015). In short, subsequent cases have recognized that no all-knowing mastermind (such as one that specifies all the infringing steps in a contract) is necessary to establish vicarious liability. Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1378 (Fed. Cir. 2017). If the Nalco and Grecia contracts establish a material dispute of fact over “direction or control” under the narrower and stricter “mastermind” standard, so too do they create such triable issues under the relaxed standard set out by Akamai V—and so too does the Alphonso/Vizio agreement. Alphonso next contends that it “is of no moment” that Claim 1 does not recite the phrase “communicatively coupled with a television,” the stated basis for the Order’s ruling on the Vizio Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 7 of 18 REPLY RE RULE 59(e) MOTION 5 CASE NO. 3:17-CV-02107-RS 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 issue. Opp. at 7. To the contrary, that fact is significant, because it establishes that the textual basis for the Court’s decision does not appear in the only claim Alphonso moved on as to the Vizio issue. See ECF No. 324-4 at 11 (moving only as to Claim 1). This further demonstrates the Order’s error in granting summary judgment. Alphonso’s only support for its argument that the absence of the pivotal limitation in the sole moved-upon claim “is of no moment” is its ipse dixit pronouncement that “Samba agreed to treat claim 10 as representative of the other independent claims and it never objected to Alphonso’s arguments discussing the ‘television’ limitations together.” Opp. at 7. Since Alphonso only moved on the Vizio issue as to claim 1, Alphonso’s contention that Samba “agreed” to treat claim 10 as representative is absurd. It is also untrue: Alphonso nowhere identifies where Samba made such an agreement, relying instead on the Order itself (Opp. at 7), or Alphonso’s own pronouncement of representativeness in its motion for summary judgment (Opp. at 15).2 Alphonso offers no substantive rebuttal to Samba’s showing that the Alphonso/Vizio agreement presents a material dispute of fact over “direction or control”, even under the Order’s reading of the Akamai V “direction or control” standard to require contracts to specify how performance is to occur. See ECF No. 374-4 at 10-13. Specifically, Alphonso never disputes that the agreement obligates Vizio to deliver —supporting a finding that Alphonso exercises direction or control over Vizio with respect to Claim 1’s “a television to generate a fingerprint data,” as well as a “content identification server to process the fingerprint data from the television.” Alphonso also never disputes that the agreement specifically mandates that Vizio “ television—supporting a finding that Alphonso exercises direction or control over Vizio with respect to Claim 10, 13, 18, and 20’s requirement that a television be “communicatively coupled” to the relevancy-matching 2 Nor did Samba somehow acquiesce through silence to Claim 10’s representativeness. As discussed in more detail in Section II.C, Samba consistently drew attention to differences in the claims. Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 8 of 18 REPLY RE RULE 59(e) MOTION 6 CASE NO. 3:17-CV-02107-RS 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 server. Nor does Alphonso dispute that, as its technical expert admitted, nothing about “communicative coupling” requires direct communication between the content identification server or the television, and other devices. Nelson Spl. Ex. 33 (ECF No. 338-7) (Shamos Dep.) at 78:8-79:17. (“ ”). Alphonso’s only response to this evidence is a procedural one—that it was improper for Samba to identify “new evidence” in a Rule 59 motion, i.e., additional details from the Alphonso/Vizio agreement. Opp. at 8. As an initial matter, this is not “new evidence.” Samba relied on the Alphonso/Vizio agreement in opposition to summary judgment, and given the grounds on which Alphonso actually moved, as discussed above (“we don’t make televisions”), and the broad nature of the Akamai V “direction or control” standard, Samba was not required to point to the specific details of the agreement concerning television-based fingerprints to establish a material dispute of fact. More fundamentally, Alphonso mischaracterizes the law: Samba is permitted to “raise arguments or present evidence” that were not presented during summary judgment to demonstrate what it contends is “clear” “error” by the Order (as demonstrated by the authority cited by Alphonso). Durkee, 2015 U.S. Dist. LEXIS 31227 at *5 (“A motion for reconsideration ‘may not be used to relitigate old matters, or to raise arguments or present evidence that could have been raised prior to the entry of judgment.’ The sole exception is when the court has committed ‘clear’ or ‘manifest’ error.”). Stripped of Alphonso’s baseless procedural objection, what is left is the unrebutted evidence presented by Samba, which establishes a material dispute of fact concerning Alphonso’s direction or control of how Vizio collected data, and how it communicated it. This question of fact should have gone to the jury, and it was improper to resolve this question in favor of the non-movant at the summary judgment stage under either a narrow or broad reading of the vicarious liability standard.3 Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 3 Alphonso also points to additional language in the Alphonso/Vizio agreement concerning as proof that it did not exercise direction or control over Vizio. Opp. at 8. Alphonso’s Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 9 of 18 REPLY RE RULE 59(e) MOTION 7 CASE NO. 3:17-CV-02107-RS 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 1997) (On summary judgment, district court is “required to draw all inferences in a light most favorable to the non-moving party.”) Finally, Alphonso fails to rebut Samba’s showing that the Akamai V vicarious liability principles relied upon in the Order have no application to Claims 10, 13, 18, and 20 in any event. In its Motion, Samba showed that unlike Claim 1, these claims do not claim a system “comprising,” inter alia, a television, but instead claim a “relevancy-matching server” that is configured to perform certain operations and does not “comprise” a television at all, but must only be “communicatively coupled” to one. Alphonso’s primary response is that Samba’s “attempt to distinguish claims 10, 13, 18 and 20 from claim 1” in connection with the Vizio issue is “untimely” because “Samba did not raise this argument at any point during summary judgment briefing.” Opp. at 9. That response makes no sense, because Alphonso only moved as to Claim 1. See ECF No. 324-4 at 11. Alphonso’s limited motion placed Samba under no obligation to address claims that were not moved on, and Samba is entitled now to contest the application of that ruling to the language of the unmoved-on claims. On the merits, Alphonso’s sole response is that Samba has agreed that the preamble of Claims 10, 13, 18, and 20, which recites “communicatively coupled… to a television,” is limiting, and Samba’s expert admitted that “the ‘structural relationship’ of the claims, as set forth in the preamble, requires that the ‘television’ be ‘communicatively coupled’ to the ‘relevancy-matching server.’” Opp. at 10-11. While true, it does not follow from this admission that, as Alphonso suggests, “[b]ecause Alphonso does not provide such a ‘television,’ it does not directly infringe the claims.” Id. That simply rehashes Alphonso’s legally incorrect “we don’t sell TVs” argument; as Samba has explained, no television need be “provided” to infringe these claims. As Samba demonstrated in its motion, the preamble to Claims 10, 13, 18, and 20, while a limitation, simply describes the environment in which the claimed relevancy matching server must be used to infringe, not that Alphonso must also “use” or “provide” a television. See ECF No. 374- argument only demonstrates what Samba has said all along: the agreement’s terms create a material dispute concerning Alphonso’s “direction or control,” which should have gone to the jury. See Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1378 (Fed. Cir. 2017) (“Importantly, [in Akamai V] we stated that, ‘[w]hether a single actor directed or controlled the acts of one or more third parties is a question of fact.’”). Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 10 of 18 REPLY RE RULE 59(e) MOTION 8 CASE NO. 3:17-CV-02107-RS 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 4 at 16-18. The television performs no role in the claims other than being “coupled”—it performs none of the functional limitations of the claim—and so to infringe, Alphonso need only use a relevancy-matching server by performing the claimed functional operations, and that relevancy- matching server must also be “coupled” with a television. In other words, although being communicatively coupled with a television is a structural element required by the preamble, as Samba’s expert admits, infringement occurs when there is a use of the apparatus which performs the functional limitations within the structural limitation imposed by the preamble. See, e.g., HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1273-74 (Fed. Cir. 2012) (holding that the limiting preamble “A mobile device station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station” “merely describe[s] the network environment in which the mobile station must be used” and so is not indefinite); see also Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1371, 1375 (Fed. Cir. 2008) (holding that an apparatus claim with the preamble “A pipelined processor for executing instructions comprising:” is “clearly limited to a pipelined processor possessing the recited structure”—there, being pipelined, here, being coupled to a television—“and capable of performing the recited functions”). Samba presented ample evidence that Alphonso used the relevancy-matching server of Claims 10, 13, 18, and 20 within the structural limitation of “coupled with. . . a television” throughout its opposition to summary judgment. B. Alphonso Fails To Rebut Samba’s Showing That Summary Judgment Based On Computer “Matching” Operations That Are Purportedly Performed By Alphonso Employees Was In Error As To The Beeswax Bidding System Samba’s motion showed that the Order’s grant of summary judgment concerning purported human performance of the claimed “matching” step of the relevancy-matching server was clear error, because it adopts a version of the facts that is unequivocally contradicted by the evidence Samba brought forward concerning the operation of Alphonso’s Beeswax computerized bidding system. Mot. at 18-22. Alphonso offers only two responses to that showing; neither response has merit. First, Alphonso tells the Court that when the Order found that Alphonso employees, not Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 11 of 18 REPLY RE RULE 59(e) MOTION 9 CASE NO. 3:17-CV-02107-RS 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 the claimed “relevancy matching server,” perform the “matching” step of the claims, it addressed all three of the infringement theories advanced by Samba, including the operation of the Beeswax server alone. Opp. at 11-12. Alphonso’s explanation to the Court concerning what its Order really means has no foundation. Alphonso identifies no discernable discussion of Samba’s Beeswax infringement theory, or how that theory demonstrates impermissible human performance of the matching step, in the Order’s discussion of the “matching” limitation. Nor could it—Alphonso does not dispute that the Beeswax software operations that Samba contends meets the matching limitations are performed by computers, not humans (Opp. at 13), and the Order’s discussion concerns what Alphonso employees do to configure Beeswax, not what happens when it runs following that configuration. MSJ Order at 11-12. Moreover, nowhere does Alphonso explain how the Order’s determination that an “Alphonso employee, not a computer program applying a relevancy factor” performs the “matching” step (id.) can be reconciled with the evidence of infringement through Beeswax alone presented in Samba’s expert reports (described as “Match-Embodiment B”) and recited in Samba’s opposition brief. ECF No. 338-4 at 15. Instead, Alphonso simply avers that the “Background” section of the Order provides a discussion of how Beeswax works, so the Order must have considered and rejected infringement by Beeswax too. Opp. at 12 (quoting from MSJ Order at 5- 6). That is a work of imagination, however; nothing in the Order links that Background discussion to its opinion on the “matching” issue. More fundamentally, the Order’s Background description of Beeswax in operation demonstrates the Order’s error in granting summary judgment, because it articulates facts that cannot be squared with the Order’s disposition of the issue because “humans do it.” The Background section describes Beeswax as follows: Upon receiving a bid request, Beeswax automatically determines whether to submit a bid on behalf of a particular advertiser based on the applicable campaign rules, including checking whether the mobile device ID/IP address in the bid request is one of those in the specified segment or segments. If the bid request satisfies the campaign rules, Beeswax may submit a conforming bid price and URL to the third- party server. MSJ Order at 5-6. That described operation—“automatically” “checking whether the mobile device ID/IP address in the bid request is one of those in the specified segment or segments,” and if so, looking up the Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 12 of 18 REPLY RE RULE 59(e) MOTION 10 CASE NO. 3:17-CV-02107-RS 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 URL of the ad to be displayed—is the “matching” of “primary data” (IP addresses in a segment) with “targeted data” in the Beeswax theory of infringement advanced by Samba. See, e.g. ECF No. 374-4 at 21. As Samba also explained, and Alphonso does not dispute, it is the Beeswax software (and not a human) that performs this operation. In the face of this evidence, including the Court’s own description of how Beeswax functions, the Order’s adoption of facts (such as finding that “Alphonso employees” perform this matching) in contradiction of this evidence was clear error. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505 (1986) (“Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge, whether he is ruling on a motion for summary judgment or for a directed verdict.”) Second, Alphonso contends that the reasoning of the Court’s opinion extends to the Beeswax server operating alone, even if the Order did not discuss Beeswax specifically. Opp. at 13-14. According to Alphonso, since “Alphonso employees configure Beeswax by uploading segment data and identifying what ads should be shown in which campaigns,” that configuration accomplishes the claimed “match,” and it follows that “there is no ‘match’ performed by Beeswax.” Id. As Alphonso explains, “Beeswax merely searches for a previously created association; it does not create any association itself.” Id. Alphonso’s purported distinction between “searching for a previously created association” and “creat[ing] an association” has nothing to do with the actual language of the claims. The claims require neither “searching for” nor “creating” an association; they only require “applying” one (a “relevancy factor”) to match primary data to targeted data. Alphonso never attempts to rebut Samba’s showing that the 356 Patent claims do not require a computer to create a “relevancy factor” used to match primary data with targeted data, rather than simply use one programmatically. ECF No. 374-4 at 21-22. Nor could it—the specification never requires that a computerized artificial intelligence decide what humans may find interesting or relevant based on what they view on television. Instead, a human may decide what is to be “deemed relevant,” in the language of the Order, to what another human watches on television, so long as that criterion for relevance (a relevancy factor) is applied (not “searched for” or “created”) by a computer, as the claims recite. That is what Beeswax does. Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 13 of 18 REPLY RE RULE 59(e) MOTION 11 CASE NO. 3:17-CV-02107-RS 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 There is no merit to Alphonso’s illogical argument that Alphonso employees perform the claimed “matching” in Beeswax by configuring the system in any event. The configuration steps performed by Alphonso employees to set up campaigns in Beeswax (uploading segment data and setting campaign parameters, including the advertising content) perform no “matching” of primary data and targeted data by applying a relevancy factor. This is apparent from the fact that, once these configuration steps have occurred, no matching of any specific IP addresses (primary data) with a specific ad (targeted data) will occur at all, and as such no advertisements will be delivered. That is because the Beeswax system, even once configured, has no way to know that any given IP address that is part of the primary data should now be served with the targeted data (the advertisement). That association occurs only when the Beeswax system aligns an inbound ad request with an IP address, and then searches its storage for the appropriate ad content. That is the “matching” identified in the Beeswax infringement theory advanced by Samba, and it is performed by the Beeswax computer, not an Alphonso employee. Whether Beeswax meets the “matching” limitation should have gone to the jury on this evidence. This clear error warrants amendment of the Court’s judgment. C. Alphonso Fails To Rebut Samba’s Showing That Claims 10, 13 and 18 Do Not Require “Use” of a Mobile Device Samba’s motion demonstrated that summary judgment as to Claims 10, 13, and 18 on the ground that Alphonso does not “use” a mobile device was clear error, because those claims, which are directed to a “relevancy-matching server” that is “communicatively coupled” to a mobile device, do not require “use” of a mobile device under the Centillion standard pertaining to situations where claimed elements are in the control of more than one party. Centillion Data Systems, LLC v. Qwest Communications International, 631 F.3d 1279 (Fed. Cir. 2011). Mot. at 23-25. The most forcefully argued aspect of Alphonso’s response to this showing is its insistence that the Court not read it. Alphonso contends that “Samba’s attempt to distinguish claims 10, 13, and 18 from claim 1 is untimely, as Samba did not raise this argument during summary judgment briefing.” Opp. at 15. That contention is untrue. Samba’s opposition to summary judgment repeatedly and explicitly draws distinctions between the system of Claim 1 that “comprises,” inter alia, a mobile device, Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 14 of 18 REPLY RE RULE 59(e) MOTION 12 CASE NO. 3:17-CV-02107-RS 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 “relevancy matching server” of Claims 10, 13, and 18 that “comprises” instructions to perform various functional steps, and also is “communicatively coupled” with a mobile device. For example, in response to Alphonso’s arguments that it does not control or benefit from mobile device ad placement and does not provide or supply mobile devices, Samba argued “Neither assertion is true, and neither changes the fundamental basis for Alphonso’s direct infringement, which is that Alphonso (and no one else) uses the system of claim 1, and the ‘relevancy matching server’ of Claims 10, 13, 18, and 20....” ECF No. 338-04 at 19:23-25. See also, e.g., ECF No. 338- 04 at 7:8-9 (“Rather, Samba will show that a ‘system’ (claim 1) or a ‘relevancy-matching server” (claims 10, 13, 18, and 20) meeting all the limitations is made or used by Alphonso.”); id. at 16:27- 17:1 (“In fact, it is a specific subset of the entirety of the primary data generated ‘from’ (Claim 1) or ‘using’ (Claims 10, 13, 18, and 20) fingerprint data – the databases of television viewing history data generated and maintained by Alphonso.”); id. at 18 n.7 (“Alphonso mischaracterizes the record. Only claim 1 recites ‘generated from the fingerprint data.’ Claims 10, 13, 18, and 20 recite primary data ‘generated using a fingerprint data.’”) (emphasis in original). Moreover, contrary to Alphonso’s assertion that Samba’s summary judgment opposition did not contend that “Alphonso’s ‘mobile device’ argument turned on any particular claim of the ’356 patent,” Opp. at 15, Samba’s opposition to the “mobile device” issue explicitly argued limitations that are specific to Claims 10, 13, and 18, but not Claim 1. For example, Samba contended that only Alphonso (and not end users) “communicatively coupled” the claimed “relevancy matching server” with a mobile device – the only “mobile device” requirement of Claims 10, 13, and 18: “[W]hen the Alphonso platform causes an advertisement to be delivered to an eligible mobile device, it is Alphonso (not end users of mobile devices) that puts into service the claimed relevancy-matching server, and directs, controls and benefits from that operation. . . .For the same reasons, it is Alphonso that ‘communicatively couples’ (construed as ‘connected in a way that permits communication’) its relevancy-matching server with a mobile device, because it is Alphonso that creates the necessary associations between the IP addresses or device IDs in its database of viewing history data and specific advertising campaigns that can cause the relevancy matching server to communicate an advertisement to mobile device.” Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 15 of 18 REPLY RE RULE 59(e) MOTION 13 CASE NO. 3:17-CV-02107-RS 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 ECF No. 338-04 at 21:1-4, 17-22 (emphasis added). As such, there is simply no merit to Alphonso’s contention that the distinctions between the claims as it pertains to Alphonso’s Centillion argument are either brand new or waived. Alphonso next contends that “Samba again has no basis to argue that the ‘mobile device’ is not a required part of the system claims set forth in claims 10, 13, and 18,” because “Samba’s expert admitted that the preamble of claim 10, which includes the claimed ‘mobile device,’ is limiting and provides a ‘structural relationship’ for the elements recited in the claim.” Opp. at 15. That contention both mischaracterizes Samba’s position, and is beside the point. Samba has not contended that a “mobile device” is not a “required part” of Claims 10, 13, and 18, but the only requirement imposed by the claims is that the claimed “relevancy-matching server” be “communicatively coupled” to one. As Samba demonstrated in its motion, while limiting, the preamble simply describes the environment in which the claimed relevancy-matching server must be used to infringe, not that Alphonso or any infringer must also “use” a mobile device. The mobile device performs none of the functional limitations of the claim; its only role is to be “coupled.” As such, in order to infringe, Alphonso need only use a relevancy-matching server by performing the claimed functional operations, and that relevancy-matching server must also be “coupled” with a mobile device. As with the similarly claimed “television” element, although being communicatively coupled with a mobile device is a structural element required by the preamble, as Samba’s expert admits, infringement occurs when there is a use of the apparatus which performs the functional limitations within that structural limitation. See, e.g., HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1274 (Fed. Cir. 2012) (holding that the limiting preamble “A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station” “merely describe[s] the network environment in which the mobile station must be used” and so was not indefinite). See also Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1371, 1375 (Fed. Cir. 2008) (holding that an apparatus claim with the preamble “A pipelined processor for executing instructions comprising” is “clearly limited to a pipelined processor possessing the recited structure”—there, being pipelined, here, being coupled to a mobile device—“and capable of Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 16 of 18 REPLY RE RULE 59(e) MOTION 14 CASE NO. 3:17-CV-02107-RS 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 performing the recited functions”). Samba presented ample evidence that Alphonso used the relevancy-matching server of Claims 10, 13, 18, and 20 within the structural limitation of “coupled with. . . a mobile device” throughout its opposition to summary judgment. Contrary to Alphonso’s argument, and as Samba explained in its Rule 59(e) Motion (ECF No. 374-4 at 23 n.11) the non-preamble limitations of Claims 10, 13, and 18 referring to a mobile device, or data generated from a mobile device, all describe something the relevancy-matching server does, not the mobile device. These limitations do not make the mobile device part of the apparatus of the relevancy-matching server itself. For example, Claim 13 includes the limitation “a content identification server to: process the fingerprint data from at least one of the television and the mobile device.” This limitation describes the actions taken by the “content identification server”—a component of the relevancy-matching server. This limitation neither makes the mobile device (or television) part of the relevancy-matching server or requires the mobile device (or television) to be used—it simply describes an action taken by the relevancy-matching server. Nor is there any merit to Alphonso’s argument that Samba’s citation to Soverain Software LLC v. J.C. Penney Corporation, 899 F. Supp. 2d 574 (E.D. Tex. 2012) is an impermissible attempt to rehash a point that the Court already rejected in its Summary Judgment Order. Rather, Soverain and the other decisions discussed in Samba’s motion are directly relevant to the existence of an issue of material fact as to Claims 10, 13, and 18 that the Court’s Summary Judgment Order did not address, i.e., whether Alphonso’s use of the relevancy-matching server is infringing even where some end user activity is also involved. Nor, for the reasons described above, is Samba prohibited from relying on previously cited authority to demonstrate “clear or manifest error” in the Order. See Durkee, 2015 U.S. Dist. LEXIS 31227 at *5. None of these arguments rebuts Samba’s showing that, as to Claims 10, 13, and 18, Samba’s evidence creates at least a triable dispute of fact over whether Alphonso “used the system by putting the invention into service, controlling the system as a whole and obtaining benefit from it.” See, e.g., TransPerfect Glob., Inc. v. Motionpoint Corp., No. C 10-2590 CW, 2014 U.S. Dist. LEXIS 159805, at *28 (N.D. Cal. Nov. 13, 2014), and the Order’s resolution of this “triable issue of fact” on summary judgment by finding that end user phones put the invention into service Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 17 of 18 REPLY RE RULE 59(e) MOTION 15 CASE NO. 3:17-CV-02107-RS 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 constituted clear error that warrants amendment of the judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505 (1986) (On a motion for summary judgment, “[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor.”). III. CONCLUSION For the foregoing reasons, Samba respectfully requests that the Court amend its judgment to deny summary judgment to Alphonso on the grounds identified above and in its opening brief. Dated: February 15, 2019 Respectfully submitted /s/ William P. Nelson Matthew D. Powers (Bar No. 104795) Paul T. Ehrlich (Bar No. 228543) William P. Nelson (Bar No. 196091) Stefani C. Smith (Bar No. 251305) Jennifer K. Robinson (Bar No. 270954) Samantha A. Jameson (Bar. No. 296411) Natasha M. Saputo (Bar No. 291151) Alex H. Chan (Bar No. 278805) Wanli Chen (Bar No. 300254) TENSEGRITY LAW GROUP, LLP 555 Twin Dolphin Drive, Suite 650 Redwood Shores, CA 94065 Telephone: (650) 802-6000 Facsimile: (650) 802-6001 Email: matthew.powers@tensegritylawgroup.com paul.ehrlich@tensegritylawgroup.com william.nelson@tensegritylawgroup.com stefani.smith@tensegritylawgroup.com jen.robinson@tensegritylawgroup.com samantha.jameson@tensegritylawgroup.com natasha.saputo@tensegritylawgroup.com alex.chan@tensegritylawgroup.com wanli.chen@tensegritylawgroup.com samba service@tensegritylawgroup.com Attorneys for Plaintiff, Free Stream Media Corp. d/b/a Samba TV Case 3:17-cv-02107-RS Document 395 Filed 02/15/19 Page 18 of 18