Case 8:14-cv-01352-JLS-KES Document 381 Filed 03/11/20 Page 1 of 10 Page ID
` #:19740
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`RUSS AUGUST & KABAT
`Benjamin T. Wang (SBN 228712)
`bwang@raklaw.com
`Minna Y. Chan (SBN 305941)
`mchan@raklaw.com
`Andrew D. Weiss (SBN 232974)
`aweiss@raklaw.com
`Jacob R. Buczko (SBN 269408)
`jbuczko@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`Attorneys for Plaintiff
`PAVO SOLUTIONS LLC
`
`
`PAVO SOLUTIONS, LLC
`
`
`Plaintiff,
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` Case No. 8:14-cv-01352-JLS-KES
`Honorable Josephine L. Staton
`
`PAVO’S OPPOSITION TO
`KINGSTON’S JUDGMENT AS A
`MATTER OF LAW
`
`
`
`v.
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`KINGSTON TECHNOLOGY
`COMPANY, INC.,
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`
`Defendant.
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`PAVO’S OPPOSITION TO KINGSTON JUDGMENT AS A MATTER OF LAW
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`Kingston’s motion for judgment as a matter of law must be denied because
`Pavo has presented more than sufficient evidence for a jury to find that Kingston
`willfully infringes claims 1, 4 and 24, and that Pavo is due more than 1 cent per unit
`for Kingston’s infringement.
`I.
`KINGSTON IS NOT ENTITLED TO JUDGMENT AS A
`MATTER OF LAW AS TO NON-INFRINGEMENT
`Kingston advances five different bases for its argument that it is entitled to
`judgment as a matter of law as to non-infringement. All of Kingston’s arguments are
`supported by little more than attorney argument that mischaracterizes the evidence
`in the record, or relies on arguments that improperly import limitations into the
`limitations of the claims.
`A.
`Parallel Plate Members
`Pavo has presented more than sufficient evidence supporting a jury finding of
`infringement of this claim element. As Kingston admits in its briefing, its own
`corporate representative, John Terpening, admitted at trial that the top and bottom
`arms of the cover are parallel when attached to the case. 3/9 PM Tr. at 111:7-9 (Mr.
`Terpening: “Q Once it’s fully assembled, you agree that the cover is parallel, correct?
`A That’s correct.”). Kingston’s own expert gave similar testimony. 3/9 PM Tr. at
`111:7-9 (Mr. Terpening: “Q Once it’s fully assembled, you agree that the cover is
`parallel, correct? A That’s correct.”); 3/10 PM Tr. at 53:1-4 (“Q. You agree when
`you look at the device fully assembled that the arm of that cover are closer to parallel;
`right professor Rake? A. That’s true.”). Prof. Visser also gave substantial testimony,
`including citing Kingston’s own schematics. 3/5 PM Tr. at 16:5-23:10 (discussing
`his analysis of the actual DT101G2 device, Exs. 18, 19, 42, and admissions from
`Mr. Terpening in deposition); Ex. 13.
`Kingston’s primary argument is that this limitation must be judged from the
`cover only when it has been detached from the case. Kingston’s argument is
`inconsistent, however, with the language of claims 1 and 24. For example, the last
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`PAVO’S OPPOSITION TO KINGSTON JUDGMENT AS A MATTER OF LAW
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`Case 8:14-cv-01352-JLS-KES Document 381 Filed 03/11/20 Page 3 of 10 Page ID
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`clause of the “cover” paragraph is “whereby the USB terminal piece is received in
`an inner space of the cover or exposed outside the cover.” The USB terminal piece
`is located on the flash memory main body, and the flash memory apparatus would
`only include such swivel action if the cover were attached to the body. This argument
`applies similarly to other limitations (such as a “hinge hole receiving the hinge
`protuberance on the case for pivoting the case” limitation from claim 1 and the
`“hinge element which cooperates with the hinge element on the case for pivoting”
`limitation from claim 24). Contrary to Kingston’s argument, the claim language
`itself requires that the cover be evaluated when attached to the body, not separately.
`Kingston also argues that Pavo’s position is contrary to its infringement
`position regarding “open front end,” which Kingston argues is based on the cover
`being detached from the DT101G2. As Kingston notes in footnote 2, however, the
`parties have stipulated to infringement of the “open front end” limitation. Doc. 307
`at 5; 3/10 AM Tr. at 9:20-10:19. The stipulation is not limited to the cover being
`detached. Kingston’s argument also fails because it is a violation of its stipulation
`that it would not argue the “open front end” limitation was not infringed when the
`cover was attached to the device. Furthermore, contrary to Kingston’s argument,
`Prof. Visser never testified that the cover only had an open front end when detached
`from the body or lacked an open front end when attached.
`B.
`“Pair Of”
`As Kingston acknowledges, Kingston has been precluded from arguing that
`this claim limitation is not met. 3/9 AM Tr. at 8:9-16. Indeed, the Court is going to
`instruct the jury “disregard any evidence or argument suggesting that a single piece
`of metal cannot form a pair of parallel plate members.”
`Regardless of whether Kingston’s argument is appropriate, Pavo has provided
`more than sufficient evidence that this claim element is met, including the testimony
`of Prof. Visser, the DT101G2 itself (which plainly shows two thin, flat sheets of
`metal connected by a rounded closed rear end), and schematics. 3/5 PM Tr. at 16:5-
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`Case 8:14-cv-01352-JLS-KES Document 381 Filed 03/11/20 Page 4 of 10 Page ID
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`23:10 (discussing his analysis of the actual DT101G2 device (Ex. 13), Exs. 18, 19,
`42, and admissions from Mr. Terpening in deposition). Indeed, Prof. Visser even
`directly addressed Kingston’s argument when he testified:
`The way in which the cover is formed is not specified in
`the claims of the ‘544 patent. Whether it’s formed from
`one piece of metal that's been stamped and bent into that
`shape or whether it’s made from plastic that’s injection-
`molded or whether it’s made by die cast metal, it doesn’t
`specify how the cover is made. It’s just that when it’s in
`its final configuration, it has a pair of parallel plate
`members.
`3/5 PM Tr. at 18:25-19:7.
`C. Closed Rear End
`Pavo submitted more than sufficient evidence to support a jury finding of
`infringement of the closed rear end limitation of claim 1. 3/5 PM Tr. at 23:11-26:19
`(Prof. Visser testimony analyzing evidence including the DT101G2, the ‘544 patent,
`Exs. 18, 42, 169, 60, and testimony from Mr. Terpening). Kingston’s argument that
`Pavo has not produced evidence showing that the cover of the DT101G2 “fulfills the
`functionality set out in the patent” imports limitations to this claim requirement.
`Indeed, Kingston’s argument admits it is relying on “functionality set out in the
`patent” rather than the claim language to support its position. It would be reasonable
`for a jury to reject Kingston’s argument and instead rely on Prof. Visser’s opinion
`and evidence that is consistent with the plain and ordinary meaning of “closed rear
`end.”
`D. USB Terminal Piece Is Received In An Inner Space Of The
`Cover Or Exposed Outside The Cover
`Pavo produced more than sufficient evidence that this limitation is met,
`including the testimony of Prof. Visser, the DT101G2, Ex. 169 and the testimony of
`Mr. Terpening. 3/5 PM Tr. at 30:11-31:15. Indeed, other evidence in the record
`would also support a jury verdict. E.g., Ex. 42 (showing the terminal end within the
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`Case 8:14-cv-01352-JLS-KES Document 381 Filed 03/11/20 Page 5 of 10 Page ID
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`inner space of the cover). Kingston’s argument that this claim element is a
`“conditional” limitation that “requires that the USB terminal is not exposed when it
`is in the inner space of the cover” is contrary to the actual language of the claim;
`there is no such limitation in claim 24. Instead, claims 1 and 24 require that the
`USB terminal end be received within the inner space of the cover (which Prof. Visser
`showed to be infringed when the cover is closed) or exposed when outside the cover
`(which Prof. Visser also demonstrated to be true).
`E.
`“Electrically Connected” And “Operatively Connected”
`Pavo has produced more than sufficient evidence to support a jury verdict that
`the DT101G2 infringes the “electrically connected” and “operatively connected”
`limitations. 3/9 AM Tr. at 20:23-33:10 (testifying as to two different ways these
`elements are satisfied by the DT101G2). Kingston specifically argues that “Pavo
`(and the documents it relies on) failed to show any such connection continuing on
`from the controller to the memory element.” Kingston’s argument is contrary to the
`actual evidence at trial. Id. at 25:3-17 (“And using the same matching of names from
`the – we can see that the -- that these signals traverse from the controller to the
`memory element.”); Ex. 16 (showing traces labeled FDATA0-7 connecting the
`controller chip to the memory element consistent with Mr. Gomez’s testimony).
`II. KINGSTON IS NOT ENTITLED TO JUDGMENT AS A
`MATTER OF LAW AS TO WILLFULNESS
`Pavo has presented more than sufficient evidence to meet its burden of willful
`infringement. “‘Willfulness’ requires a jury to find no more than deliberate or
`intentional infringement.” Eko Brands, LLC v. Adrian Rivera Maynez Enterprises,
`Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020). To the extent Kingston argues that only
`direct, not circumstantial, evidence is relevant to willful infringement, this argument
`must fail. As the jurors are instructed, “[t]he law makes no distinction between the
`weight to be given to either direct or circumstantial evidence. It is for [the jurors] to
`decide how much weight to give to any evidence.” Doc. 357 at 19.
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`Pavo presented evidence that Kingston was notified of the ’544 patent from
`the PTO Examiner since June 22, 2012. Exs. 96-97; 3/9 PM Tr. at 126:4-133:5.
`Kingston was again notified of the ’544 patent on August 20, 2012, by CATR, the
`patent owner of the ’544 patent at the time. CATR sent a letter to Kingston with an
`accompanying exemplary claim chart comparing one of the claims of the ’544 patent
`to the Accused Product. See Ex. 86; 3/9 PM Tr. at 121:25-123:24. Kingston’s
`witness, John Terpening, confirmed that after receiving notice of the ’544 patent in
`2012, the only internal review of the ‘544 patent that Kingston performed was a
`flawed invalidity analysis conducted by its engineers, looking to see if the patent
`was obvious in 2012 instead of 2010. But the evidence showed that Mr. Terpening
`had no documents, no records, and no proof that an internal review was actually
`conducted. 3/10 AM Tr. at 23:11-35:25. Kingston also confirmed that it has no
`standard policy to seek licenses, and that when designing the Accused Product,
`Kingston did not perform a prior art search to see if the design was infringing the
`patent, did not conduct an infringement analysis against any other parties’ patents.
`Id. Kingston also dropped all challenges of invalidity during trial. 3/10 AM Tr. at
`18:14-17; 33:16-34:19. Moreover, even after CATR initiated this suit, Kingston did
`not stop selling or importing the Accused Product until the end of December 2017.
`03/09 AM Tr. at 46:13-18; 97:24-98:4.
`Kingston’s cited cases do not support its argument either. Each of the cases
`cited by Kingston predate Eko Brands. Further, Pavo has presented more evidence
`of willfulness than the plaintiffs in each of the cited cases. In Erfindergemeinschaft
`UroPep GbR v. Eli Lilly & Co., No. 2:15-CV-1202-WCB, 2017 U.S. Dist. LEXIS
`75517, at *3 (E.D. Tex. May 18, 2017), the sole evidence that the plaintiff relied on
`at trial was a “single one-page letter…notifying [defendant] about the ’124 patent
`and stating that the sale of [the accused product] ‘appears to require a license of the
`’124 patent.’” Id. at *3 (characterizing the letter as “a barebones assertion of
`infringement”). Further, the defendant in UroPep provided no evidence or
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`Case 8:14-cv-01352-JLS-KES Document 381 Filed 03/11/20 Page 7 of 10 Page ID
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`explanation as to why they failed to respond to the notice letter. Id. at 5-6. Similarly,
`in Radware, Ltd. v. F5 Networks, Inc., No. 5:13-CV-02024-RMW, 2016 WL
`4427490, at *3-4 (N.D. Cal. Aug. 22, 2016), the Court found that a single citation to
`the asserted patent in correspondence from the Patent Office was insufficient to
`support a willfulness where there was no other evidence that the defendant was
`actively aware of the asserted patent. Likewise, in Intellectual Ventures I LLC v.
`Symantec Corp., 234 F. Supp. 3d 601, 611-612 (D. Del. 2017), the Court granted the
`defendant’s motion for summary judgment of no willful infringement because the
`sole evidence was that the asserted patent was cited on the face of two patents owned
`by the defendant. In TecSec Inc., v. Adobe Inc., No. 1:10-cv-115 (E.D. Va. March
`14, 2019) (Doc. 1375), the plaintiff relied solely on the defendant’s post-suit
`conduct.
`Unlike each of Kingston’s cited cases, here, Pavo’s letter was accompanied
`by an exemplary claim chart and Kingston was notified by both the PTO and CATR
`of Kingston’s infringement of the ’544 patent. Yet, Kingston did not perform any
`infringement or invalidity analysis of the ’544 patent, and did not stop selling the
`DT101G2 until the end of 2017, nearly two years after this case was initiated. Exs.
`86, 96-97; 3/9 AM Tr. at 46:13-18, 97:24-98:4; 3/9 PM Tr. at 121:25-133:5; 3/10
`AM Tr. at 23:11-37:6, 48:12-51:15. Accordingly, the Court should deny Kingston’s
`motion for judgment as a matter of law with respect to willfulness.
`III. KINGSTON IS NOT ENTITLED TO JUDGMENT AS A
`MATTER OF LAW AS TO DAMAGES
`At trial, Pavo produced significant evidence to support its damages case,
`which seeks a per unit royalty of 40 cents. Though he was not legally required to
`address every single Georgia Pacific factor, Pavo’s damages expert Jim Bergman
`did indeed address Georgia Pacific factors 9 and 13, challenged in Kingston’s
`motion. See Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 31 (Fed. Cir.
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`2012) (“We do not require that witnesses use any or all of the Georgia–Pacific
`factors when testifying about damages in patent cases.”).
`Kingston argues that Pavo did not address “the utility and advantages of the
`patent over the old modes or devices.” But Pavo did indeed provide testimony
`through its experts Jim Bergman and Professor Visser, who both opined that the ‘544
`patent had significant utility and advantages over, e.g., prior cap drives and
`Kingston’s proposed noninfringing alternatives. See 3/5 PM Tr. at 54:4-56:25; 3/9
`AM Trial Tr. (Bergman) at 49:20-50:5, 78:24-80:16. Pavo also introduced
`documents and elicited testimony from Kingston showing that Kingston’s identified
`purported alternative devices were commercial failures compared to the accused
`product. 3/10 AM Tr. at 119:6-120:24.
`Kingston also argues that Pavo failed to address “the portion of the realizable
`profit that should be credited to the invention as distinguished from non-patented
`elements…” But Mr. Bergman did indeed testify that his damages opinion
`apportions non-patented features in multiple ways, including: (1) using the
`apportionment built into the IP Media license agreement; (2) choosing the base
`accused product model; (3) excluding cost items; and (4) accounting for Kingston’s
`brand and higher profitability by lowering the IP Media license profit split in favor
`of Kingston. 3/9 AM Tr. at 64:3-78:23. Kingston argues that Mr. Bergman “relies
`on undated cost inputs that contradict other cost information presented by Mr.
`Bergman himself.” Kingston’s motion fails to cite to any particular input that it
`contends is not dated or contradictory in any way. Assuming Kingston is referring
`to cost entries on its bill of materials document, Mr. Bergman explained that he relied
`on the only cost data Kingston produced, which was produced in relation to a product
`that Kingston only sold in approximately one year (2010). 3/9 AM Tr. at 65:1-11,
`69:2-16. In addition, Kingston itself admitted that this bill of materials document is
`“relevant to the value of the accused product at the point of the hypothetical
`negotiation.” 3/10 AM Tr. (Ewing) at 98:3-17.
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`Regarding the IP Media agreement, Pavo produced evidence that the
`agreement was negotiated based on a framework of a percentage of profit split. Mr.
`Bergman considered the negotiations and circumstances of the agreement to arrive
`at his final per unit rate. 3/9 AM Tr. (Bergman) at 64:3-78:23. Mr. Bergman
`considered the 1 cent per unit result of the framework for IPMedia and concluded
`that it would be inapplicable to Kingston, who achieved much higher profits from
`the accused product than IPMedia achieved with the licensed product. Id.
`Accordingly, Pavo produced sufficient evidence to support its damages case
`and Kingston’s motion should be denied.
`IV. CONCLUSION
`For the foregoing reasons, the Court should deny Kingston’s motion for
`judgment as a matter of law.
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`DATED: March 11, 2020
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`Respectfully submitted,
`
`RUSS AUGUST & KABAT
`
`By:
`
`/s/ Benjamin T. Wang
`Benjamin T. Wang
`
`Attorneys for Plaintiff
`PAVO Solutions, LLC
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`CERTIFICATE OF SERVICE
`I hereby certify that the counsel of record who are deemed to have consented
`to electronic service are being served with a copy of this document via the Court’s
`CM/ECF system per Local Rule CV-5(a)(3). Unless service is governed by F.R.
`Civ. P. 4 or L.R. 79-5.3, service with this electronic NEF will constitute service
`pursuant to the Federal Rules of Civil and Criminal Procedure, and the NEF itself
`will constitute proof of service for individuals so served.
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`DATED: March 11, 2020
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`By: /s/ Benjamin T. Wang
`Benjamin T. Wang
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