2018-05-10 final tpl reply iso motion for judicial notice of appellants... · 18-1439 (lead),...

18-1439 (LEAD), -1440, -1441, -1444, -1445

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

TECHNOLOGY PROPERTIES LIMITED LLC, PHOENIX DIGITAL SOLUTIONS LLC,PATRIOT SCIENTIFIC CORPORATION,

Plaintiffs-Appellants, v.

HUAWEI TECHNOLOGIES CO., LTD., FUTUREWEI TECHNOLOGIES, INC., HUAWEI

DEVICE CO., LTD., HUAWEI DEVICE USA INC., HUAWEI TECHNOLOGIES USA INC.,ZTE CORPORATION, ZTE USA, INC., SAMSUNG ELECTRONICS CO., LTD.,

SAMSUNG ELECTRONICS AMERICA, INC., LG ELECTRONICS, INC., LGELECTRONICS U.S.A., INC., NINTENDO CO., LTD., NINTENDO OF AMERICA, INC.,

Defendants-Appellees,

Appeal from the United District Court for the Northern District of California, Case Nos. 3:12-cv-03786-VC, 3:12-cv-03865-VC, 3:12-cv-03876-VC, 3:12-cv-

03877-VC, 3:12-cv-03880-VC, and 3:12-cv-03881-VC.

The Honorable Vince Chhabria, Judge Presiding.

APPELLANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR JUDICIAL NOTICE OF

ADDITIONAL MATERIALS FROM THE ’336 PATENT FILE HISTORY

Dated: May 10, 2018

DENISE DE MORY (SBN 168076) [email protected] HENRY BUNSOW (SBN 60707) [email protected] AARON HAND (SBN 245755) [email protected] LAUREN ROBINSON (SBN 255028) [email protected]

BUNSOW DE MORY LLP 701 El Camino Real Redwood City, CA 94063 Telephone: (650) 351-7248 Facsimile: (415) 426-4744

Case: 18-1439 Document: 55 Page: 1 Filed: 05/10/2018

-2-

ARGUMENT

Throughout the underlying and prior proceedings, Plaintiffs-Appellants

consistently maintained that there was no file history disclaimer during the

prosecution of the ’336 Patent; Appellants therefore have not waived their

challenges to the application of disclaimer into the construction of the “entire

oscillator” claim term.1 Because Appellants’ argument has not been waived,

Appellants contend that this Court has discretion to consider the additional

materials. Moreover, as detailed in Appellants’ Appeal Brief, the district court did

not simply apply this Court’s prior claim construction holding in its non-

infringement analysis. Rather (at the urging of Defendants-Appellees), the district

court engaged in further claim construction to impose functional limitations and

require that the “entire oscillator” be “free-running” in order to achieve a benefit

attributed to one embodiment described in the specification.2 The result: An

unforeseen situation in which the district court applied disclaimer to read out the

claimed embodiment—indeed, the district court read out the very same structure

that the Applicants asserted was a point of novelty (an argument that the Examiner

accepted). Additional portions of the file history that were not previously

1 Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1251–52 (Fed. Cir. 2005). 2 See Appx6-Appx8. For the Court’s convenience, citations are made to the district court order (“MSJ Order”) included in the Appeal Brief Addendum filed at ECF No. 47, pp. Appx2–Appx8. A copy is also filed at ECF No. 1-2, pp. 61–66.


-3-

considered provide additional context to confirm that the result reached in the

lower court was inconsistent with the prosecution history and this Court’s prior

claim construction holding.

This Court should exercise its discretion to consider the undisputed public

records in performing its legal analysis; at minimum, it is appropriate to defer

consideration of these issues to the merits panel.

I. THE PROFFERED FILE HISTORY EXCERPTS ARE FITTING FORJUDICIAL NOTICE AND SUPPLEMENTATION OF THE RECORD

A. Appellees do not challenge the accuracy or authenticity of theproffered materials, which are amenable to judicial notice.

The proffered file history excerpts fall squarely within the ambit of Federal

Rule of Evidence 201(b)(2) because their source and accuracy are not disputed in

Appellees’ Response.3 Indeed, they are excerpted from the very same source as

the materials relied upon by both the district court and this Court in the prior

appeal. For this reason, Appellees’ citation to Am. Standard Inc. v. Pfizer Inc., 828

F.2d 734, 746 (Fed. Cir. 1987), where no portion of the file history was in the

record, is inapposite.4 Here, the lower court’s revisiting of claim construction on

remand to arrive at a result that contradicts the intrinsic record warrants that this

Court consider additional facts from the intrinsic record.

3 See generally Appellees’ Resp. (ECF No. 54). 4 See Appellees’ Resp. at 4.


-4-

B. The district court engaged in further claim construction onremand, warranting consideration of the intrinsic record.

Appellees assert that it is “too late” to consider the proffered materials

because “this Court already decided claim construction in a prior appeal ….”5 But

that argument overlooks the district court’s foray into claim construction on

remand.

The district court’s summary judgment order is premised on its injection of

functional limitations addressing the behavior of the accused products during

operation to assess the asserted apparatus claims.6 The district court ultimately

held that an accused product must operate as a “free running oscillator” to satisfy

the asserted claims—even though that limitation is not found anywhere in this

Court’s prior opinion.7 Similarly, the district court faulted Plaintiffs in its

summary judgment opinion for failing to “provide[] a definition of ‘command

5 See Appellees’ Resp. at 1–3. 6 E.g., Appx5 (MSJ Order at 3) (“The record shows that, within a PLL, the accused oscillators operate at frequencies comparably stable to those of crystal oscillators.”), Appx7 (MSJ Order at 5) (“But the accused oscillators don’t operate in isolation ….”) (all emphasis added). All asserted claims were apparatus claims. 7 Compare Appx8 (MSJ Order at 6) (“[U]nlike the free-running oscillators described in the patent, the accused oscillators …”) (emphasis added), with Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017).


-5-

input’ that would exclude inputs of these kinds.”8 This again demonstrates that the

lower court was engaged in claim construction on remand.

C. In addition to taking judicial notice, supplementation of therecord is within this Court’s discretion.

As briefly described above, and more fully detailed in Appellants’ Appeal

Brief, the district court’s summary judgment decision rested on the court’s further

claim construction analysis on remand. That analysis is purely an issue of law

which is subject to de novo consideration by this Court on appeal. Appellants’

Appeal Brief demonstrates how, based on the existing record, the lower court erred

in its analysis and conclusions. In addition, Appellants’ current counsel, who were

not counsel of record on the prior appeal or in prior claim construction

proceedings, observed that additional portions of the file history (namely, the

office actions that gave rise to the Applicants’ arguments, and the Examiner’s

record of interview that confirm the reasons for allowance) confirm that the lower

court’s injection of additional functional limitations into the apparatus claims

disregarded the intrinsic record, and call into question the original finding of

disclaimer.

Appellees’ Response does not address the inherent power of an appellate

court to supplement the record on appeal—particularly for legal issues. Indeed,

8 Appx6 (MSJ Order at 4).


-6-

Appellees’ cases are distinguishable because they each refused to consider

additional materials to decide to disputed factual issues.9 See, e.g., Thomas &

Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1581 n.6 (Fed. Cir. 1983) (rejecting

addition of new prior art references on appeal); Datascope Corp. v. SMEC, Inc.,

879 F.2d 820, 824 (Fed. Cir. 1989) (declining to consider facts from an ongoing

litigation and post-appeal reexamination events to assess facts concerning non-

infringing alternatives). And Ballard Med. Prod. v. Wright, 821 F.2d 642, 643

(Fed. Cir. 1987) considered a very different issue, namely whether to impose

sanctions for unauthorized inclusion of materials in the appendix.

II. IF NOT GRANTED OUTRIGHT, APPELLANTS’ MOTIONSHOULD BE REFERRED TO THE MERITS PANEL

Appellees concede that a decision on this Motion involves issues that are

intertwined with consideration of the merits. For example, Appellees assert that

they “will be arguing waiver and law of the case with respect to these new

arguments in their forthcoming merits brief on appeal.”10 Appellants are not privy

to those arguments and are therefore unable to respond to them at this juncture.

Nonetheless, Appellants dispute that there is any waiver or that the “law of the

case” doctrine bars consideration of Appellants’ arguments or confirming evidence

9 Appellees’ Resp. at 3. 10 Appellees’ Resp. at 5.


-7-

from the file history. Instead, the “law of the case” doctrine is a discretionary.11

Thus, if the merits panel declines to find that the law of the case doctrine or the

waiver doctrine bars Appellants’ arguments, then there would be no substantive

bar to considering these materials. Because the propriety of the Court’s

consideration of the certified file history excerpts is dependent on—and relevant

to—its consideration of Appellees’ substantive arguments, the Motion should be

referred to the merits panel if it is not explicitly granted while briefing is

underway.

CONCLUSION

Appellants respectfully request that the Court grant its motion and take

judicial notice of the additional file history excerpts and allow them to be included

in the Record and Joint Appendix. Alternatively, Appellants request that a ruling

on this Motion be referred to the merits panel.

11 E.g., Arizona v. California, 460 U.S. 605, 618 (1983) (“Law of the case directs a court’s discretion, it does not limit the tribunal’s power.”).


-8-

Respectfully Submitted,

Dated: May 10, 2018 /s/ Denise De MoryDENISE DE MORY (SBN 168076) [email protected] HENRY BUNSOW (SBN 60707) [email protected] AARON HAND (SBN 245755) [email protected] LAUREN ROBINSON (SBN 255028) [email protected] BUNSOW DE MORY LLP 701 El Camino Real Redwood City, CA 94063 Telephone: (650) 351-7248 Facsimile: (415) 426-4744

Counsel for Appellants, TECHNOLOGY PROPERTIES LIMITED LLC,PHOENIX DIGITAL SOLUTIONS LLC, PATRIOT SCIENTIFIC CORPORATION

STATEMENT OF COMPLIANCE WITH WORD COUNT LIMITATION

The undersigned certifies that this Reply includes 1275 words (using the

word count feature of Microsoft Word 2016), and therefore complies with the limit

set forth in Fed. R. App. Proc. 27(d)(2) and Fed. Cir. Rule 27(d).

/s/ Denise M. De Mory Denise M. De Mory


FORM 9. Certificate of Interest Form 9 Rev. 10/17


v.

Case No.

CERTIFICATE OF INTEREST

Counsel for the: (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)

certifies the following (use “None” if applicable; use extra sheets if necessary):

1. Full Name of PartyRepresented by me

2. Name of Real Party in interest(Please only include any real party

in interest NOT identified in Question 3) represented by me is:

3. Parent corporations andpublicly held companiesthat own 10% or more of

stock in the party

4. The names of all law firms and the partners or associates that appeared for the party or amicus nowrepresented by me in the trial court or agency or are expected to appear in this court (and who have notor will not enter an appearance in this case) are:

Technology Properties Limited, et al. Huawei Technologies Co., Ltd., et al.

18-1439 (lead)

Technology Properties Limited LLC, Patriot Scientific Corporation, Phoenix Digital Solutions LLC,

Technology Properties Limited LLC Technology Properties Limited LLC n/aPatriot Scientific Corporation Patriot Scientific Corporation n/aPhoenix Digital Solutions LLC Phoenix Digital Solutions LLC

See Attachment A.


ahand

Text Box

with 18-1440, -1441, -1444, -1445 (consolidated)

ahand

Text Box

(1) Technology Properties Limited LLC; and (2) Patriot Scientific Corporation. Patriot Scientific Corporation is a publicly held company and owns 10 percent or more of the membership interest in Phoenix Digital Solutions LLC.

FORM 9. Certificate of Interest Form 9 Rev. 10/17

5. The title and number of any case known to counsel to be pending in this or any other court or agencythat will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).

Date Signature of counsel

Please Note: All questions must be answered Printed name of counsel

cc:

See Attachment B.

5/10/2018 /s/ Denise De Mory

Denise De Mory

All Counsel of Record Via Court's CM-ECF

Reset Fields


1

ATTACHMENT A

Current Counsel of Record for all Plaintiffs/Appellees:

TECHNOLOGY PROPERTIES LIMITED LLC; PHOENIX DIGITAL SOLUTIONS LLC; and PATRIOT SCIENTIFIC CORPORATION.

Henry Bunsow (SBN 60707) [email protected] Denise De Mory (SBN 168076) [email protected] Aaron Hand (SBN 245755) [email protected] Lauren Robinson (SBN 255028) [email protected] BUNSOW DE MORY LLP 701 El Camino Real Redwood City, CA 94063 Telephone: (650) 351-7248 Facsimile: (415) 426-4744


2

Previous Counsel of Record for Plaintiff/Appellee:

TECHNOLOGY PROPERTIES LIMITED LLC

Barry J Bumgardner Edward Reese Nelson, III John Paul Murphy Stacy Greskowiak McNulty

(Terminated on 12/2/15) Thomas Christopher Cecil

(Terminated on 12/2/15) NELSON BUMGARDNER, PC 3131 W 7th St., Suite 300 Ft Worth, Tx 76107 817-377-9111Email: [email protected]: [email protected]: [email protected]: [email protected]: [email protected]: 08/11/2017

Michelle Gail Breit Neustal Law Offices, LTD 2534 South University Drive, Suite 4 Fargo, ND 58103 (701) 281-8822Fax: (701) 237-0544Email: [email protected]: 04/15/2015

Michael William Stebbins Silicon Valley Law Group One North Market Street Suite 200 San Jose, CA 95113 408-573-5700Fax: 408-573-5701Email: [email protected]: 08/11/2017

David L. Lansky Philip William Marsh Thomas T. Carmack (Terminated 4/1/15) Vinh Huy Pham Arnold & Porter Kaye Scholer LLP 3000 El Camino Real Five Palo Alto Square, Suite 500 Palo Alto, CA 94306-3807 650-319-4500Fax: 650-319-4700Email: [email protected] (Inactive)Email: [email protected]: [email protected]: [email protected]: 04/16/2015

William L. Bretschneider Silicon Valley Law Group 50 W. San Fernando Street Suite 750 San Jose, CA 95113 408-573-5700Fax: 408-573-5701Email: [email protected]: 08/11/2017

James Carl Otteson Arnold & Porter Kaye Scholer LLP 1801 Page Mill Road Suite 110 Palo Alto, CA 94304 650-798-2970Fax: 415-356-3099Email: [email protected]: 04/16/2015


3


PHOENIX DIGITAL SOLUTIONS LLC

Barry J Bumgardner Edward Reese Nelson, III John Paul Murphy Stacy Greskowiak McNulty

(Terminated on 12/2/15) Thomas Christopher Cecil

(Terminated on 12/2/15) NELSON BUMGARDNER, PC 3131 W 7th St., Suite 300 Ft Worth, Tx 76107 817-377-9111Email: [email protected]: [email protected]: [email protected]: [email protected]: [email protected]: 08/11/2017

Christopher D. Banys Jennifer Lu Gilbert Richard Cheng-hong Lin BANYS, P.C. 1030 Duane Avenue Santa Clara, CA 95054 650-308-8505Fax: 650-322-9103Email: [email protected]: [email protected]: [email protected]: 06/05/2017

Christopher J Judge BANYS PC 1032 Elwell Ct., No. 100 Palo Alto, CA 94303 650-308-8505TERMINATED: 06/05/2017

David L. Lansky Philip William Marsh Thomas T. Carmack

(Terminated 4/1/15) Vinh Huy Pham ARNOLD & PORTER KAYE

SCHOLER LLP 3000 El Camino Real Five Palo Alto Square, Suite 500 Palo Alto, CA 94306-3807 650-319-4500Fax: 650-319-4700Email: [email protected] (Inactive)Email: [email protected]: [email protected]: [email protected]: 04/16/2015

Eric Miller Albritton ALBRITTON LAW FIRM P.O. Box 2649 Longview, Tx 75606 903-757-8449Fax: 903-758-7397Email: [email protected]: 08/11/2017

James Carl Otteson ARNOLD & PORTER KAYE

SCHOLER LLP 1801 Page Mill Road, Suite 110 Palo Alto, CA 94304 650-798-2970Fax: 415-356-3099Email: [email protected]: 04/16/2015


4

Michelle Gail Breit Neustal Law Offices, LTD 2534 South University Drive, Suite 4 Fargo, ND 58103 (701) 281-8822Fax: (701) 237-0544Email: [email protected]: 04/15/2015


5


PATRIOT SCIENTIFIC CORPORATION

Charles T. Hoge Kirby Noonan Lance & Hoge LLP 350 Tenth Avenue, Suite 1300 San Diego, California 92101 Phone: (619) 231-8666 Fax: (619) 231-9593 [email protected] TERMINATED: 08/11/2017


ATTACHMENT B

Appealed from the Northern District Court:

Tech. Properties Limited v. Huawei, Case No. 3:12-cv-03865

Tech. Properties Limited v. ZTE Corp, Case No. 3:12-cv-3876

Tech. Properties Limited v. Samsung, Case No. 3:12-cv-3877

Tech. Properties Limited v. LG Electronics, Case No. 3:12-cv-3880

Tech. Properties Limited v. Nintendo, Case No. 3:12-cv-3881

Consolidated with Court of Appeals, Federal District:

Tech. Properties Limited v. Huawei, Case No. 18-1438 (LEAD)

Tech. Properties Limited v. ZTE Corp, Case No. 18-1440

Tech. Properties Limited v. Samsung, Case No. 18-1441

Tech. Properties Limited v. LG Electronics, Case 18-1444

Tech. Properties Limited v. Nintendo, Case No. 18-1445


Form 30 Rev. 03/16

FORM 30. Certificate of Service

May 10, 2018


I certify that I served a copy on counsel of record on

Bunsow De Mory LLP

CERTIFICATE OF SERVICE

Law Firm

NOTE: For attorneys filing documents electronically, the name of the filer under whose log-in and password a document is submitted must be preceded by an "/s/" and typed in the space where the signature would otherwise appear. Graphic and other electronic signatures are discouraged.

by:

U.S. Mail

Name of CounselDenise De Mory /s/ Denise De Mory

Fax

Hand

Electronic Means (by E-mail or CM/ECF)

Signature of Counsel

701 El Camino RealAddress

Redwood City,CA 94063City, State, Zip

(650) 351-7248Telephone Number

(415) 426-4744Fax Number

[email protected] Address

Reset Fields


2018-05-10 final tpl reply iso motion for judicial notice of appellants... · 18-1439 (lead),...

Documents