Case 1:18-cv-00001-RGA-SRF Document 341 Filed 04/25/24 Page 1 of 48 PagelD #: 38803
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IPA TECHNOLOGIESINC.,
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`Plaintiff,
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`v.
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`MICROSOFT CORPORATION,
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`Civil Action No. 18-1-RGA
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`Defendant.
`
`
`
`MEMORANDUM OPINION
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`Stephen B. Brauerman, Emily L. Skaug, BAYARD, P.A., Wilmington, DE; Paul J. Skiermont
`(argued), Jaime K. Olin (argued), Steven W. Hartsell (argued), Kevin P. Potere (argued), Todd
`A. Martin, Alexander E. Gasser, Sarah E. Spires, SETIERMONT DERBY LLP,Dallas, TX;
`Mieke K. Malmberg, SCSIERMONT DERBY LLP,Los Angeles, CA,
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`Attormeysfor Plaintiff.
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`Rodger D. Smith II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
`Nathaniel C. Love, SIDLEY AUSTIN LLP,Chicago, IL; Joseph A. Micallef (argued), Matthew
`Mahoney, SIDLEY AUSTIN LLP, Washington, D.C.; Scott M. Border, WINSTON &
`STRAWN LLP, Washington, D.C.; Richard A. Cederoth (argued), CEDEROTH LAW,Oak
`Park, IL,
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`Attorneys for Defendant.
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`Case 1:18-cv-00001-RGA-SRF Document 341 Filed 04/25/24 Page 1 of 48 PageID #: 38803
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`April 1b 2024
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`ANDREWS,
`| Y, ISTRICT
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`JUDGE:
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`-
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`Before meare Plaintiffs “Motion for Summary Judgment and Daubert” (D.I. 236) and
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`Defendant’s “Motion for Summary Judgment and to Exclude IPA Technologies Inc.’s Expert
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`Opinions” (D.I. 239).
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`I have considered the parties’ briefing (D.I. 237, 258, 282 (Plaintiff's
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`motion);'D.I. 240, 259, 280 (Defendant’s motion)).
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`I heard oral argument on March 19, 2024
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`(Hearing Tr.).! The parties submitted supplementalletters in response to requests I made during
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`oral argument. (D.I. 298, 299). At my request, the parties submitted supplemental claim
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`construction briefing. (D.I. 312).
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`For the reasonsset forth below, Plaintiff's summary judgment and Daubert motions are
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`GRANTEDIN PART, DENIED IN PART, and DISMISSED AS MOOTIN PART.
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`Defendant’s summary judgment and Daubert motions are GRANTED IN PART, DENIED IN
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`PART,and DISMISSED AS MOOTIN PART.
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`I.
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`BACKGROUND
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`Plaintiff owns U.S. Patent No. 6,851,115 (“the ’115 patent”) and U.S. Patent No.
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`7,069,560 (“the ?560 patent”). The patents are directed to software-based architecture that
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`“supports cooperative task completion by flexible and autonomouselectronic agents.” (115
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`patent, Abstract; 560 patent, Abstract). Plaintiff filed this case in 2018, alleging infringement of
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`its patents by products that incorporate Cortana,a virtual assistant developed by Defendant.
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`(D.I. 1). More specifically, the infringement claims are directed towards twoiterations of
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`Cortana software called the Legacy Architecture and the Cortex Architecture. (Hearing Tr.at
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`46:23-47:7). The accused products include both client devices running Defendant’s Windows
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`' Citations to the transcript of the argument, which is docketed as D.I. 305, are in the format
`“Hearing Tr. at.”
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`10 operating system and Defendant’s server systems that process commandsreceived from these
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`Cortana-enabled client devices. (D.I. 263-1, Ex. 1975). “[T]he only way for a user to access
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`Cortana... is through client devices running Windows10, into which Cortana is embedded.”
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`(D.L. 259 at 18).
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`The Second Amended Complaintraised infringement claims based on six patents. (D.I.
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`16). Plaintiff now only asserts claims 29, 33, 38, 41, and 43 of the ’115 patent and claims 50,53,
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`and 54 of the ’560 patent. (D.I. 216). Claims 33, 38, 41, and 43 of the *115 patent depend from
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`independent claim 29 of the same patent. (115 patent, 32:55, 33:18, 33:44, 33:59). Claim 54 of
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`the ’560 patent depends from claim 53 of the same patent. (560 patent, 36:28—29).
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`Plaintiff previously asserted the patents at issue against Amazon. See IPA Techs. Inc. v.
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`Amazon.com, Inc., No. 16-cv-1266 (D. Del. filed Dec. 19, 2016) (the “Amazon case”); [PA
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`Techs., Inc. v. Amazon.com, Inc., 2021 WL 5003254 (D. Del. Oct. 28, 2021), aff'd, 2023 WL
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`234192 (Fed.Cir. Jan. 18, 2023). The parties agreed to many ofthe claim constructions adopted
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`in the Amazon case. (See D.I. 143; Amazon case, D.I. 128). Of relevance here, the term
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`“request for service”/“service request” was construed as “the ‘request for a service’/’ service
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`request’ mustberecited in the claimed ICL and must meet every requirement of the claimed
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`ICL,”the term “inter-agent language”/"inter-agent communication language”/“ICL” was
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`construed as “an interface, communication, and task coordination language,” and the term
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`“compound goal’”/“complex goal” was construed as “a single-goal expression comprising
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`multiple sub-goals.” (D.I. 143 at 4-5).
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`Il.
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`LEGAL STANDARD
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`A. Summary Judgment
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`

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`“The court shall grant summary judgment if the movant showsthat there is no genuine
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`dispute as to any material fact and the movantis entitled to judgmentas a matter of law.” Fed.
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`R. Civ. P. 56(a). The movingparty has the initial burden of proving the absence of a genuinely
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`disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
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`323 (1986). Material facts are those “that could affect the outcome”of the proceeding. Lamont
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`v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011). “[A] dispute about a material fact is ‘genuine’
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`if the evidence is sufficient to permit a reasonable jury to return a verdict for the non-moving
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`party.” Id. The burden on the moving party may be discharged by pointing out to the district
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`court that there is an absence of evidence supporting the non-moving party’s case. Celotex, 477
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`USS. at 323.
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`The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
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`for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);
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`Williams v. Borough of West Chester, 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party
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`asserting that a fact is genuinely disputed must support such an assertion by: “(A)citing to
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`particular parts of materials in the record, including depositions, documents, electronically stored
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`information, affidavits or declarations, stipulations .
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`.
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`. , admissions, interrogatory answers, or
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`other materials; or (B) showing that the materials cited [by the opposing party] do not establish
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`the absence... of a genuine dispute... .” Fed. R. Civ. P. 56(c)(1). The non-moving party’s
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`evidence “must amount to more than a scintilla, but may amountto less (in the evaluation of the
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`court) than a preponderance.” Williams, 891 F.2d at 460-61.
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`Whendetermining whether a genuine issue of material fact exists, the court must view
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`the evidence in the light most favorable to the non-moving party and drawall reasonable
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`inferences in that party’s favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter,
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`476 F.3d 180, 184 (3d Cir. 2007). If the non-moving party fails to make a sufficient showing on
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`an essential element of its case with respect to which it has the burden of proof, the moving party
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`is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S. at 322.
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`B. Infringement
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`A patentis directly infringed when a person “without authority makes,uses, offers to sell,
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`or sells any patented invention, within the United States or imports into the United States any
`patented invention during the term ofthe patent.” 35 U.S.C. § 271(a). Determining
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`infringement is a two-step analysis. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
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`(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). First, the court must construe the asserted
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`claims to ascertain their meaning and scope. Jd. Thetrier of fact must then compare the
`properly construed claims with the accused infringing product. Jd. This secondstep is a
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`question offact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). The patent
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`ownerbears the burden of proving infringement by a preponderance of the evidence. SmithKline
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`Diagnostics, Inc. v. Helena Lab’ys Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).
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`“Literal infringement of a claim exists when every limitation recited in the claim is found
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`in the accused device.” Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). “If
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`any claim limitation is absent from the accused device, there is no literal infringement as a matter
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`of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). Ifan
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`accused product does notinfringe an independent claim,it also does notinfringe any claim
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`depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir.
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`1989). However, “[o]ne may infringe an independentclaim and not infringe a claim dependent
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`on that claim.” Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007)
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`(internal quotations omitted). A productthat doesnotliterally infringe a patent claim maystill
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`infringe under the doctrine of equivalents if the differences between an individuallimitation of
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`the claimed invention and an element of the accused product are insubstantial. See Warner—
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`Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24 (1997). The patent owner has the
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`burden of proving infringement and must meet its burden by a preponderance of the evidence.
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`See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988)
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`(citations omitted).
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`When an accused infringer moves for summary judgment of non-infringement, such
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`relief may be granted onlyif at least one limitation of the claim in question does not read on an
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`element of the accused product,either literally or under the doctrine of equivalents. See Chimie
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`v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also TechSearch, L.L.C. v. Intel
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`Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) (“Summary judgment of noninfringementis...
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`appropriate where the patent owner's proofis deficient in meeting an essential part of the legal
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`standard for infringement, because such failure will render all other facts immaterial.”). Thus,
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`summary judgment of non-infringement can only be granted if, after viewing the facts in the
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`light most favorable to the non-movant, there is no genuine issue as to whether the accused
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`product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. Hewlett—
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`Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
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`C. Claim Construction
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`“It is a bedrock principle of patent law that the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (cleaned up). “‘[T]here is no magic formula or catechism for
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`conducting claim construction.’ Instead, the court is free to attach the appropriate weightto
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`appropriate sources ‘in light of the statutes and policies that inform patent law.’” SoftView LLC
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`v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (alteration in original) (quoting
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`Phillips, 415 F.3d at 1324). When construing patent claims, a court considerstheliteral
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`languageofthe claim, the patent specification, and the prosecution history. Markmanv.
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`Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370
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`(1996). Of these sources, “the specification is always highly relevant to the claim construction
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`analysis. Usually,it is dispositive; it is the single best guide to the meaning of a disputed term.”
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`Phillips, 415 F.3d at 1315 (cleaned up). “While claim terms are understoodin light of the
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`specification, a claim construction must not import limitations from the specification into the
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`claims.” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (citing Phillips,
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`415 F.3d at 1323).
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`“(T]he words of a claim ‘are generally given their ordinary and customary meaning.’ ...
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`[It is] the meaning that the term would haveto a person of ordinary skill in the art in question at
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`the time of the invention,i.e., as of the effective filing date of the patent application.” Phillips,
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`415 F.3d at 1312-13 (citations omitted). “[T]he ‘ordinary meaning’ of a claim term is its
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`meaningto [an] ordinary artisan after reading the entire patent.” Jd. at 1321. “In somecases, the
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`ordinary meaning of claim language as understood by a person of skill in the art may be readily
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`apparent even to lay judges, and claim construction in such cases involves little more than the
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`application of the widely accepted meaning of commonly understood words.” Jd. at 1314.
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`Whena court relies solely on the intrinsic evidence—the patent claims, the specification,
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`and the prosecution history—the court’s construction is a determination of law. See Teva
`Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). The court may also make factual
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`findings based on consideration of extrinsic evidence, which “consists of all evidence externalto
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`the patent and prosecution history, including expert and inventor testimony, dictionaries, and
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`learned treatises.” Phillips, 415 F.3d at 1317-19 (quoting Markman, 52 F.3d at 980). Extrinsic
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`evidence mayassist the court in understanding the underlying technology, the meaning of terms
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`to one skilled in the art, and how the invention works. Jd. Extrinsic evidence, however, is less
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`reliable and less useful in claim construction than the patent and its prosecution history. Jd.
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`D. Daubert
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`Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and
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`states:
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`A witness whois qualified as an expert by knowledge, skill, experience, training,
`or education maytestify in the form of an opinion or otherwise if the proponent
`demonstrates to the court that it is more likely than not: (a) the expert’s scientific,
`technical, or other specialized knowledge will help the trier of fact to understand
`the evidence or to determinea fact in issue;(b) the testimony is based on sufficient
`facts or data; (c) the testimony is the product of reliable principles and methods;
`and (d) the expert’s opinion reflects a reliable application of the principles and
`methodsto the facts of the case.
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`Feb. R. Evip. 702 (amended Dec.1, 2023). The Third Circuit has explained:
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`Rule 702 embodies a trilogy of restrictions on expert testimony: qualification,
`reliability and fit. Qualification refers to the requirement that the witness possess
`specialized expertise. We have interpreted this requirementliberally, holding that
`“a broad range of knowledge, skills, and training qualify an expert.” Secondly, the
`testimony must bereliable; it “must be based on the ‘methods and procedures of
`science’ rather than on ‘subjective belief or unsupported speculation’; the expert
`must have ‘good grounds’ for his ofr] her belief.
`In sum, Daubert holds that an
`inquiry into the reliability of scientific evidence under Rule 702 requires a
`determination asto its scientific validity.” Finally, Rule 702 requires that the expert
`testimony must fit the issues in the case.
`In other words, the expert’s testimony
`must be relevant for the purposes of the case and must assist the trier of fact. The
`Supreme Court explained in Daubert that “Rule 702’s ‘helpfulness’ standard
`requires a valid scientific connection to the pertinent inquiry as a precondition to
`admissibility.”
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`By meansof a so-called “Daubert hearing,” the district court acts as a gatekeeper,
`preventing opinion testimony that does not meet the requirements of qualification,
`reliability and fit from reaching the jury. See Daubert (“Faced with a proffer of
`expert scientific testimony, then, the trial judge must determine at the outset,
`pursuant to Rule 104(a) [of the Federal Rules of Evidence] whether the expert is
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`proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact
`to understand or determinea fact in issue.”).
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`Schneider ex rel. Estate ofSchneiderv. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (footnote
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`and internal citations omitted).
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`III.
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`DISCUSSION
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`A. Plaintiff's Motions
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`1.
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`IPR Estoppel
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`Defendant’s validity expert, Dr. Sycara, asserts invalidity of the °115 patent and the ’560
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`patent based on the CNET OAA System, the RETSINA System, and combinationsofeither
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`system with the Martin Paper. (D.I. 237 at 9-14). Plaintiff maintains Defendant is estopped
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`from raising these invalidity theories.
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`a. System Art
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`Plaintiff argues that IPR estoppelattaches to invalidity theories relying on the CNET
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`OAA and RETSINASystems because they are not “systems,”but sets of printed publications.
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`(Id. at 10-14).
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`I gather that Plaintiff is not arguing that the claimed functional systems do not exist. The
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`record appears to foreclose such a position. Plaintiff's counsel conceded video evidence showed
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`demonstration of the CNET OAA System. (Hearing Tr. at 7:7-14). Plaintiff did not contest
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`Defendant’s claim that “the RETSINA System was a system that was conceived of and reduced
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`to practice by Dr. Sycara during the course of her work at Carnegie Mellon University.” (D.I.
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`258 at 6; HearingTr. at 17:3-9). The “printed publications” that Plaintiff insists are the
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`2 The Court of Appeals wrote underan earlier version of Rule 702. Subsequent amendments
`affect the substance ofthe rule, but I do not think they alter the applicability of the quoted
`discussion.
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`“system,” include source code, a recorded demonstration,a tutorial document, and other
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`documentation which tend to suggest the existence and operation of these systems. (D.I. 237 at
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`4-5 (citing D.I. 238-15, Ex. O ff 80, 91)).
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`Plaintiff's position instead appears to be that the evidence Defendantand its expert rely
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`on to demonstrate the systems’ existence and functionality are all printed publications, andthat I
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`therefore should treat Defendant’s invalidity theory as relying on these printed publications and
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`not the underlying system.’ This framing mischaracterizes Defendant’s position. Defendant’s
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`invalidity theories are that the CNET OAA System is prior art due to public use under pre-AIA
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`35 U.S.C. § 102(b) and the RETSINAsystemis prior art as a prior invention under § 102(g).
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`(Hearing Tr. at 19:14~29). Defendantis not arguing that the evidence of the system art was
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`publicly used or constituted a prior invention. The fact that printed publicationsare used as
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`evidence does not change what Defendant’s invalidity theories are based on—the underlying
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`system itself.4 Even the district court case that Plaintiff heavily rests its argument on
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`distinguished between “prior-art systems” and “evidence of prior-art systems.” See Singular
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`Computing LLC v. Google LLC, 668 F. Supp. 3d 64, 73-74 (D. Mass. 2023) (identifying
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`“VFLOAT, CNAPS, and GRAPE-3”astheprior-art systems and identifying “prior-art
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`publications describing the three systems[,] .
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`.
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`. source code, oral presentations, expert
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`3 Plaintiff cites district court and P.T.A.B. case law suggesting that video recordings and source
`code qualify as “printed publications” that could be raised in an IPR. (D.I. 237 at 12-13 (citing
`Medtronic Inc. v. Barry, IPR2015-00780, Paper No. 51, at 8-9 (P.T.A.B. Sept. 7, 2016); Trs. of
`Columbia Univ. in the City ofNew York v. Symantec Corp., 390 F. Supp. 3d 665, 674 (E.D. Va.
`2019))). As it does not affect my conclusion, I assume source code and video recordings qualify
`as printed publications for the purposes of this motion.
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`4Tnote the question at handis different from the question of whether the system art and printed
`publications are duplicative. See Wasica Fin. GmbH v. Schrader Int'l, Inc., 432 F. Supp. 3d 448,
`454 (D. Del. 2020).
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`10
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`

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`testimony” and other documents as the evidence ofthe prior-art system).
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`I do not accept
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`Plaintiffs attempt to equate the system art that Defendant’s invalidity theory is based on with the
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`evidence Defendant uses to support its anticipation and obviousness arguments.
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`b. “Grounds”
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`Plaintiff contends that Defendant is estopped, under 35 U.S.C. § 3 15(e)(2), from raising
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`invalidity theories based on the CNET OAA and RETSINA Systemsbecauseit raised, or could
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`have reasonably raised, invalidity theories based on patents or printed publications describing
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`those systemsat IPR. (D.I. 282 at 1-3, Hearing Tr. at 21:7-23:1). Plaintiff argues similarly with
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`regard to Defendant’s reliance on combinations of the CNET OAA System or the RETSINA
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`System with the Martin paper. (D.I. 237 at 9-10). Defendant maintains that IPR estoppel
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`“extends only to invalidity theories based solely on patent and printed publication prior art.”
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`(D.I. 258 at 2). Resolution of the parties’ dispute turns on the proper interpretation of “grounds”
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`as used in § 315(e)(2).
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`“In general, IPR estoppel does not apply to deviceart, because ‘a petitioner cannot use an
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`IPR to challenge the validity of a patent claim .
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`.
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`. based on prior art products or systems.’”
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`IOENGINE, LLC v. PayPal Holdings, Inc., 607 F. Supp. 3d 464, 511 (D. Del. 2022) (quoting
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`Medline Indus., Inc. v. C.R. Bard, Inc., 2020 WL 5512132,at *3 (N.D. IIL. Sept. 14, 2020)).
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`Section 315 extends IPR estoppelto “any groundthat the petitioner raised or reasonably could
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`have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). District courts are split
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`between the “two plausible ways of interpreting ‘grounds’ in the IPR context.” Prolitec Inc.v.
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`ScentAir Techs., LLC, 2023 WL 8697973, at *22 (D. Del. Dec. 13, 2023). “One interpretation is
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`that ‘grounds’refers to the underlying legal arguments, which incorporate patents, printed
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`publications, and cumulative device art.” Id; see, e.g., Wasica Fin. GmbH v. Schrader Int'l, Inc.,
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`11
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`432 F. Supp. 3d 448, 453-54 (D. Del. 2020); see also Singular Computing, 668 F. Supp. 3d at
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`71-74 (concluding estoppel applied when a defendant’s invalidity theory “rel[ied]—even in
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`part—on publicationsor patents that [the defendant] knew of, or could have reasonably
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`discovered,” even if the underlying legal argument incorporated non-cumulative deviceart).
`“The otheris that ‘grounds’ are the particular patents and printed publications on which
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`invalidity arguments are based, and that the supporting affidavits, declarations, and thelike are
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`evidence, not ‘grounds.’” Id; see, e.g., Chemours Co. FC, LLC v. Daikin Indus., Ltd., 2022 WL
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`2643517, at *1-2 (D. Del. July 8, 2022).
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`I, like the majority ofjudges who have consideredthis issue, interpret
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`oes
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`“‘ground,”’ as that
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`term is used in 35 U.S.C. § 315(e)(2), to mean the specific piece ofprior art or combination of
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`prior art that a petitioner raised, or could haveraised, to challenge the validity of a patent claim
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`during an IPR.” Medline, 2020 WL 5512132,at *4; see, e.g. Prolitec, 2023 WL 8697973, at
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`+23; EIS, Inc. v. IntiHealth Ger GmbH, 2023 WL 6797905,at *5—6 (D. Del. Aug. 30, 2023);
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`Chemours, 2022 WL 2643517 at *1—2; Pavo Sols. LLC v. Kingston Tech. Co., Inc., 2020 WL
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`1049911, at *3 (C.D. Cal. Feb. 18, 2020). I agree with Judge Noreika’s rationale in Chemours:
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`[Section 315(e)(2)] was the product of considered debate and careful thought.
`Congress could have broadened the categories of prior art on which IPR could be
`requested. Congress could have dictated that estoppel applies to products covered
`by the paper art underlying the IPR where the paper art discloses the same claim
`limitations as the product. But Congress did not do so. Adhering to well-accepted
`canons of construction, it is not for this Court to ignore Congress's omission and
`create additional bases for estoppel.
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`2022 WL 2643517, at *2. This interpretation “is consistent with the way the term ‘grounds’ is
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`used in a related context in section 312, whichstates that an IPR petition must be based on ‘the
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`grounds .. . and the evidence that supports the groundsfor the challenge to each claim,’ thus
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`distinguishing between ‘grounds’ and the evidence supporting those grounds.” Prolitec, 2023
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`12
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`WL 8697973, at *23. “[This reading] is also consistent with the way the term ‘grounds’ has
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`been used by the Federal Circuit in the IPR context—to mean a legal argument based on a
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`specific combination of references.” Jd. (citing Koninklijke Philips N.V. v. Google LLC, 948
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`F.3d 1330, 1335 (Fed. Cir. 2020); Nike, Inc. v. Adidas AG, 955 F.3d 45, 53 (Fed. Cir. 2020);
`Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1298 (Fed. Cir. 2016)).
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`Underthe correct reading of “grounds,” “§ 315(e)(2) does not estop an IPR petitioner's
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`use in litigation of an invalidity theory that relies upon a [system] as a priorart reference because
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`a prior art [system] cannot be usedasa reference to challenge the validity of a patent claim in an
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`IPR.” Medline, 2020 WL 5512132,at *4. “Therefore, any invalidity theory relying upon that
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`[system] as a priorart reference is not a ‘ground’ that reasonably could have been raised during
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`the IPR.” Jd. Any invalidity theory relying on a combination of that system and a patent or
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`printed publication similarly could not have been raised during the IPR. Defendantis not
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`estopped from raising invalidity theories based on the CNET OAA System, the RETSINA
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`System, or a combination of either system with the Martin Paper.
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`2. Dr. Sycara’s Invalidity Opinions
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`Plaintiff moves to exclude Dr. Sycara’s testimony regarding public availability of SRI
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`Code, functionality of the code shown at SRI Demonstrations, and inventorship of the patents at
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`issue. Plaintiff argues that Dr. Sycara’s expert report improperly opines on questions of law and
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`facts requiring personal knowledge. (D.I. 235 at 14—15).
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`a. Public Availability of the CNET OAA Source Code
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`Oneof Dr. Sycara’s invalidity theories relies on the CNET OAA System as public use
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`prior art.
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`(D.I. 238-15, Ex. O ff 77). The system was publicly demonstrated on the media
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`website CNET in 1997 (the “1997 Demonstration”). Ud. §{ 77-78). The parties agree that the
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`version of the source code demonstrated (““OAA Version 1”) is not the same as the version
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`produced during discovery and analyzed by Dr. Sycara (“OAA Version 2”). (Hearing Tr. at
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`24:1-11, 31:5-17). The parties do not dispute that, due to the evolving nature of code, some
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`source codefiles remained the same between OAA Version 1 and OAA Version 2, some may
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`have been updated, and some new files may have been introduced. Ud. at 27:10—19; 31:5-17).
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`Plaintiffs opening brief asks that I “preclude Dr. Sycara from opining that any specific
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`version of SRI or OAA code waspublicly available or used in any particular alleged public
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`demonstration, including the [1997 Demonstration].” (D.I. 237 at 20). Though Defendant
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`asserts that Dr. Sycara is also a fact witness in relationto thepriorart, I understand her personal
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`knowledge does not extend to the dates certain code was publicly available. (See Hearing Tr. at
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`30:7-13, 31:20-33:25). Defendant maintains that Dr. Sycara does not opine on the public
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`availability of the source code. (D.I. 258 at 11). Though I accept Defendant’s representation,|
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`grant Plaintiffs motion to the extent that Dr. Sycara is opining on public availability.
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`At oral argument, the parties focused on the related question of whether Dr. Sycara could
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`rely on the OAA Version 2 source code duringhertrial testimony. (Hearing Tr. at 24:20-28:4,
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`29:9-31:17). Plaintiff insists Dr. Sycara should not be able to discuss any source code for which
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`no evidenceis presented of the code’s contemporaneous existence with the 1997 Demonstration.
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`(Id, at 26:22-27:19). Plaintiffs counsel asked the court to “strike any of the source codefiles ..
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`. that were created after the date of the video.” (Ud. at 28:1-4). As the relief requested in
`Plaintiff's briefwas directed towards a different, narrower resolution (excluding certain
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`|
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`testimony from Dr. Sycara), I decline to grant Plaintiff's request to strike source codefiles.
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`Furthermore, resolution of this dispute seems to require a line-by-line determination as to which
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`portions of code were in existenceat the time of the 1997 Demonstration.
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`(See id. at 27:20-23).
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`I believe it appropriate to reserve this issue forlater.
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`b. Functionality of the CNET OAA System
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`Plaintiff maintains that Dr. Sycara’s testimony regarding the functionality of the CNET
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`OAA System shown at the 1997 Demonstration should be precludedin its entirety. (D.I. 237 at
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`16; Hearing Tr. at 24:20-25:9). Plaintiffs brief states, “The key questions are: (1) what
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`functionality was allegedly demonstrated and (2) how that specific functionality was
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`implemented in [the 1997 Demonstration].” (D.I. 237 at 16). “Because of the nature of the
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`claim limitations,” Plaintiff asserts that the only way to analyze the functionality of the CNET
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`OAA System,as it existed at the time of the 1997 Demonstration,is “to examine the specific
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`source code used[at the time].” (/d.).
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`Even ignoring the undisputed fact that Dr. Sycara did analyze the OAA version 2 code,
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`which contains at least some unchanged code from OAA version 1, Plaintiff cites no authority in
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`support of its assertion. Nor does Plaintiff explain why “the nature of the claim limitations”or
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`the “ever-evolving and changing” nature of the OAA system requires an expert to limit her
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`opinionto analysis of the source code. (/d.). It is unclear why, for example, a demonstration of
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`the system in action would not provide useful insight into the system’s functionality. “That the
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`offered productis in fact the claimed invention may be established by any relevant evidence,
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`such as memoranda, drawings, correspondence, and testimony of witnesses.” RCA Corp. v. Data
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`General Corp., 887 F.2d 1056, 1060 (Fed. Cir. 1989); see also Finjan, Inc. v. Symantec Corp.,
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`2013 WL 5302560, at *12 (D. Del. Sept. 19, 2013), aff'd, 577 F. App’x 999 (Fed. Cir. 2014) “[I]t
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`was appropriate for [Defendant’s invalidity expert] to rely on the [alleged publicly used prior
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`art’s] executable software, user manual, and source code to show how[the alleged publicly used
`
`15
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`prior art] operated.”). Dr. Sycara is not prohibited from basing her functionality analysis on
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`evidence outside the source code.
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`(See D.I. 258 at 7 & n.6 (citing D.I. 238-15, Ex. O { 80)).
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`Plaintiff argues that “public use requires each and every element be publicly used.”
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`(Hearing Tr. at 25:7-9). It contends that, because Defendant has not shown the source code in
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`use at the time of the 1997 Demonstration was publicly available, Defendant cannotrely on the
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`use of the CNET OAA Sy