Visto Corporation v. Sproqit Technologies, Inc.

Reply Memorandum re MOTION for Preliminary Injunction Visto Corporation's Notice Of Motion And Motion For Preliminary Injunction Against Sproqit Technologies, Inc. // Reply to Visto Corporation's Supplemental Filing Regarding Motion for Preliminary Injuction

N.D. Cal.February 7, 2006

MANATT, PHELPS & PHILLIPS, LLP ATTORNEYS AT LAW PALO ALTO 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 REPLY TO VISTO'S SUPPLEMENTAL FILING REGARDING PI MOTION CASE NO. C 04-0651 EMC MANATT, PHELPS & PHILLIPS, LLP RONALD S. KATZ (State Bar No. 85713) ROBERT D. BECKER (State Bar No. 160648) BRUCE J. MCCUBBREY (State Bar No. 38817) GREG T. WARDER (State Bar No. 209966) 1001 Page Mill Road, Building 2 Palo Alto, CA 94304-1006 Telephone: (650) 812-1300 Facsimile: (650) 213-0260 Attorneys for Plaintiff VISTO CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT SAN FRANCISCO DIVISION VISTO CORPORATION, Plaintiff v. SPROQIT TECHNOLOGIES, INC., Defendant Case No. C 04-0651 EMC REPLY TO VISTO CORPORATION’S SUPPLEMENTAL FILING REGARDING MOTION FOR PRELIMINARY INJUNCTION Hearing Date: January 18, 2006 Time: 10:30 a.m. Courtroom: C, 15th Floor Judge: Hon. Edward M. Chen Sproqit’s argument that Visto is attempting to broaden the scope of the ‘192 patent claims by adding new matter from later applications mischaracterizes the information submitted by Visto and is completely off-point. In response to Visto’s present Motion for Preliminary Injunction, Sproqit has taken the unsupported position that a “workspace element” as recited in the claims must be a complete email, and cannot comprise a different subset of email or other data. (Sproqit’s Opposition to Motion for Preliminary Injunction, Docket No. 110, pp. 4-5.) Sproqit argues that this is consistent with the ‘192 patent’s definition of the term, and selectively cites to the specification for proof. Id. The construction of the Texas court stipulated to by the parties, however, broadly defines a workspace element as “a subset of workspace data,” and the specification of the ‘192 patent clearly does not limit the definition to a complete email as suggested by Sproqit. Case3:04-cv-00651-EMC Document133 Filed02/07/06 Page1 of 3 MANATT, PHELPS & PHILLIPS, LLP ATTORNEYS AT LAW PALO ALTO 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 REPLY TO VISTO'S SUPPLEMENTAL FILING REGARDING PI MOTION CASE NO. C 04-0651 EMC To demonstrate this fact during the motion hearing on January 18, 2006, Visto pointed-out that the ‘192 patent discloses workspace elements may comprise smaller subsets of workspace data than a complete email, such as bookmarks, and that bookmark workspace elements were extensively discussed in specifications related to the ‘192 patent. The Court requested that Visto provide further information on this discussion, which Visto has done in its supplemental filing. This information is not relied on to broaden the scope of the ‘192 patent claims. It merely illustrates that there is nothing in the ‘192 patent to limit the definition of a workspace element in the manner proposed by Sproqit, and that to do so would be improper. “[T]he claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-09 (Fed. Cir. 2004). “A patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification.” Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1357 (Fed. Cir. 2004). There is no basis for Sproqit’s assertion that considering related patents to assist in determining the scope of the invention disclosed in the ‘192 patent is somehow adding new matter. First, the entire specifications of the ‘116 patent and ‘950 application cited by Visto are incorporated by reference into the disclosure of the ‘192 patent. (Visto’s Supplemental Filing, Docket No. 131, pp. 2-3.) The disclosures of patents that are incorporated by reference “are highly relevant to one of ordinary skill in the art for ascertaining the breadth of the claim term.” AquaTex Indus. v. Techniche Solutions, 419 F.3d 1374, 1381 (Fed. Cir. 2005). Second, and contrary Sproqit’s suggestion, it has been well established by case law that related patents may be considered to determine the scope of claim terms. Similar to Jonnson v. Stanley Works, 903 F.2d 812 (Fed. Cir. 1990), which Sproqit attempts to distinguish, the ‘606 patent cited by Visto claims priority to and incorporates the same specifications of the ‘116 patent and ‘950 application that the ‘192 patent does. (Visto’s Supplemental Filing, Exh. E, Col. 1, ll. 7- 15.) Sproqit itself acknowledges that the court in Jonnson considered a sibling patent to construe claims of another continuation-in-part patent where the two had a common parent application. Case3:04-cv-00651-EMC Document133 Filed02/07/06 Page2 of 3 MANATT, PHELPS & PHILLIPS, LLP ATTORNEYS AT LAW PALO ALTO 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 3 REPLY TO VISTO'S SUPPLEMENTAL FILING REGARDING PI MOTION CASE NO. C 04-0651 EMC (Sproqit’s Response to Visto’s Supplemental Filing, Docket No. 132, p. 3.) The ‘708 patent cited by Visto also incorporates the specification of the ‘192 patent, and the ‘221 patent is a continuation-in-part of the ‘192 patent. (Visto’s Supplemental Filing, p. 3.) The Federal Circuit has held that even subsequent, related patent applications may be relevant to construing the claims of earlier patents. Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1349 (Fed. Cir. 2004)(“Multi-Tech’s statement made during prosecution of the ‘627 patent is relevant to an understanding of the common disclosure in the sibling ‘649 and ‘532 patents.”) See also, Id. at 1350, citing Georgia Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322 (Fed. Cir. 1999); and Cummins-Allison Corp. v. Glory, Ltd., 2005 WL 711991 at 8 (N.D. Ill. 2005)(Relying on the specification of a continuation-in-part patent application to construe language in the specification of a patent to which it claimed priority.) In sum, the statement of facts submitted by Visto in its Supplemental Filing does not add new matter or impermissibly broaden the scope of the ‘192 patent claims. Sproqit’s contention that it raises a substantial question or a complicated issue of claim construction is nothing but an attempt to distract the Court. The disclosure from specifications directly related to the ‘192 patent may properly be considered to assist the Court in reaching its conclusions. Dated: February 7, 2006 Respectfully submitted, MANATT, PHELPS & PHILLIPS, LLP /s/ Greg T. Warder Greg T. Warder 1001 Page Mill Road, Building 2 Palo Alto, CA 94304 Telephone: 650-812-1300 Facsimile: 650-213-0260 Attorneys for Plaintiff Visto Corporation Filer’s Attestation: Pursuant to General Order No. 45, Section X(B) regarding signatures, Robert D. Becker hereby attests that concurrence in the filing of this document has been obtained. 20151739.1 Case3:04-cv-00651-EMC Document133 Filed02/07/06 Page3 of 3