Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 1 of 15 PageID #: 6190
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`DEFENDANTS’ REPLY IN SUPPORT OF THEIR RENEWED
`MOTION TO DISMISS FOR OBVIOUSNESS-TYPE DOUBLE PATENTING
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`
`
`
`
`
`OF COUNSEL:
`
`Jordan R. Jaffe
`Amy H. Candido
`Catherine Lacey
`WILSON SONSINI GOODRICH & ROSATI,
`P.C.
`One Market Plaza, Suite 330
`San Francisco, CA 94105-1126
`
`November 10, 2023
`
`
`
`Frederick L. Cottrell, III (#2555)
`Griffin A. Schoenbaum (#6915)
`RICHARDS, LAYTON & FINGER, P.A.
`One Rodney Square
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`cottrell@rlf.com
`schoenbaum@rlf.com
`
`Attorneys for Defendants YouTube, LLC and
`Google LLC
`
`
`
`C.A. No. 22-304 (RGA)
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`
`
`
`
`
`
`
`
`
`
`))))))))))))
`
`ROBOCAST, INC.
`a Delaware corporation,
`
`
`
`
`
`YOUTUBE, LLC, a Delaware limited
`liability company; and GOOGLE LLC,
`a Delaware limited liability company,
`
`
`
`
`Plaintiff,
`
`v.
`
`Defendants.
`
`

`

`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 2 of 15 PageID #: 6191
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`
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`I.
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`TABLE OF CONTENTS
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`Page
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`DEFENDANTS HAVE MET THEIR BURDEN TO SHOW THE ’451 PATENT
`CLAIMS ARE INVALID FOR ODP ................................................................................. 2
`
`A.
`
`B.
`
`C.
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`The Prosecution History of the Asserted Patents Supports ODP ........................... 2
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`Robocast’s Own Allegations Establish ODP .......................................................... 4
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`The Asserted Patent Claims Demonstrate ODP...................................................... 4
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`II.
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`ROBOCAST’S PROCEDURAL ARGUMENTS LACK MERIT ..................................... 7
`
`A.
`
`B.
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`Claim Construction Is Not Required for the ODP Analysis ................................... 7
`
`Factual Determinations Are Not Required for the ODP Analysis .......................... 8
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`
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`
`i
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 3 of 15 PageID #: 6192
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`
`
`TABLE OF AUTHORITIES
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`Page(s)
`
`CASES
`Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Tr.,
`764 F.3d 1366 (Fed. Cir. 2014)........................................................................................5, 9
`Allergan USA, Inc. v. MSN Lab’ys Priv. Ltd.,
`No. 19-1727-RGA, 2023 WL 6295496 (D. Del. Sept. 27, 2023) ........................................1
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001)........................................................................................7, 8
`Arunachalam v. Kronos Inc., No. 14-91-RGA,
`2021 WL 1174530 (D. Del. Mar. 29, 2021) ........................................................................7
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)............................................................................................5
`Blackbird Tech LLC v. Serv. Lighting & Elec., No. 15-53-RGA,
`2015 WL 12868236 (D. Del. Dec. 1, 2015).........................................................................8
`
`Boehringer Ingelheim Int’l GmbH v. Barr Lab’ys, Inc.,
`592 F.3d 1340 (Fed. Cir. 2010)........................................................................................3, 4
`D&M Holdings Inc. v. Sonos, Inc., No. 16-141-RGA,
`2017 WL 1395603 (D. Del. Apr. 18, 2017) .........................................................................8
`
`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`958 F.3d 1178 (Fed. Cir. 2020)............................................................................................7
`Eli Lilly & Co. v. Teva Parenteral Meds., Inc.,
`689 F.3d 1368 (Fed. Cir. 2012)............................................................................................9
`Georgia-Pac. Corp. v. U.S. Gypsum Co.,
`195 F.3d 1322 (Fed. Cir. 1999)............................................................................................8
`In re: Cellect, LLC,
`81 F.4th 1216 (Fed. Cir. 2023) ........................................................................................1, 4
`In re Janssen Biotech, Inc.,
`880 F.3d 1315 (Fed. Cir. 2018)............................................................................................3
`MAZ Encryption Techs., LLC v. Blackberry Ltd.,
`347 F. Supp. 3d 283 (N.D. Tex. 2018) ................................................................................2
`Merck & Cie v. Gnosis S.P.A.,
`808 F.3d 829 (Fed. Cir. 2015)............................................................................................10
`Novartis AG v. Ezra Ventures, LLC, No. 15-150-LPS,
`2016 WL 5334464 (D. Del. Sept. 22, 2016) ........................................................................8
`
`
`ii
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 4 of 15 PageID #: 6193
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`
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`Novo Nordisk A/S v. Caraco Pharm. Lab’ys, Ltd.,
`719 F.3d 1346 (Fed. Cir. 2013)..........................................................................................10
`Pfizer Inc. v. Apotex Inc.,
`731 F. Supp. 2d 741 (N.D. Ill. 2010) ...................................................................................2
`SIPCO, LLC v. Streetline, Inc.,
`230 F. Supp. 3d 351 (D. Del. 2017) .....................................................................................8
`Tokai Corp. v. Easton Enters, Inc.,
`632 F.3d 1358 (Fed. Cir. 2011)......................................................................................9, 10
`White v. Dunbar,
`119 U.S. 47 (1886) ...............................................................................................................8
`REGULATIONS
`37 C.F.R. § 1.321 .............................................................................................................................3
`
`
`
`iii
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 5 of 15 PageID #: 6194
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`Robocast’s Answering Brief in Opposition to Defendants’ Motion to Dismiss (D.I. 114
`
`“Opposition”) only confirms that all of Robocast’s claims for infringement of the ’451 patent
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`earlier-expiring ’819 and ’932 patents. The following points are undisputed:
`
`● Robocast’s own complaint alleges that “all the claims of the Patents-in-
`Suit are narrowly drawn and circumscribed so as to be directed to only
`one unconventional discrete way of providing such Internet content that
`requires creating the recited ‘show structures of nodes.’” D.I. 1 ¶ 23.1
`● The Patent Examiner found the asserted claims of the ’451 patent “not
`patentably distinct from each other”—i.e. from the ’932 reference patent
`pending claims—“because the differences are in language only, and do
`not affect the scope of the features claimed.” D.I. 110-1, Ex. 2 at 96.
`● The Patent Examiner found the asserted claims of the ’451 patent not
`patentably distinct from the pending claims of the ‘819 patent. “Although
`the conflicting claims are not identical, they are not patentably distinct
`from each other.” Id., Ex. 3 at 48.
`
`Viewed past its irrelevant detours and empty legal conclusions, the Opposition does not
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`and cannot change the clear import of the pleadings and intrinsic record: the claims of the ’451
`
`patent are not patentably distinct from the claims of its earlier-expiring family members, the ’819
`
`and ’932 patents. They are therefore invalid for ODP over the earlier-expiring reference patents.
`
`See In re: Cellect, LLC, 81 F.4th 1216, 1229 (Fed. Cir. 2023); Allergan USA, Inc. v. MSN Lab’ys
`
`Priv. Ltd., No. 19-1727-RGA, 2023 WL 6295496, at *22 (D. Del. Sept. 27, 2023) (holding
`
`“equitable concerns” and earlier-issue of challenged patent were not exceptions to ODP).
`
`Most telling is the lack of substantive argument in the Opposition. Even in a section
`
`where Robocast asserts in a heading that “Extensive Claim Construction” is required, Robocast
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`identifies no term or proposed claim construction that would have any effect on the ODP
`
`analysis. Similarly, although in its “Statement of Facts,” Robocast lists various allegedly
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`“absent” limitations from the reference claims, it fails to provide any factual allegations,
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`1 All emphasis added unless otherwise specified.
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`1
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 6 of 15 PageID #: 6195
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`
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`analysis, or argument as to why these trivial differences would plausibly create a patentable
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`distinction. Instead, the only alleged distinction Robocast mentions in its arguments is between
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`“displaying” as compared to “presenting.” See D.I. 114 at 19. But this argument is plainly
`
`wrong. Regardless, in claim construction in this case, both parties have proposed constructions
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`such that the word “displayed” would be inserted into the reference patent claims. See D.I. 92 at
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`36. In other words, both parties agree the reference claims include the same “displayed”
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`limitation. Regardless, it is not plausible that this minor semantic difference could render the
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`asserted ’451 patent claims patentably distinct from the claims of the ’819 and ’932 patents.
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`Robocast’s legal arguments are simply incorrect. As repeatedly explained in three
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`different briefs but continued to be ignored by Robocast, Courts have analyzed ODP on a motion
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`to dismiss. E.g., Pfizer Inc. v. Apotex Inc., 731 F. Supp. 2d 741, 754 (N.D. Ill. 2010) (holding
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`terminal disclaimer to address ODP necessary to avoid dismissal on Rule 12(b)(6) motion). And
`
`the question of whether a claim is patentably distinct is again something courts regularly
`
`encounter in the context of claim preclusion and resolve at the motion to dismiss stage. E.g.,
`
`MAZ Encryption Techs., LLC v. Blackberry Ltd., 347 F. Supp. 3d 283, 290 (N.D. Tex. 2018)
`
`(finding asserted claims not “patentably distinct” from claims asserted in prior litigation and
`
`granting motion to dismiss for claim preclusion). The asserted claims of the ’451 Patent are
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`clearly invalid and should be dismissed with prejudice.
`
`I.
`
`DEFENDANTS HAVE MET THEIR BURDEN TO SHOW THE ’451 PATENT
`CLAIMS ARE INVALID FOR ODP
`
`It is undisputed that the ’451 patent’s term is longer than the ’819 and ’932 patents’, and
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`there is no plausible dispute its claims are patentably indistinct from the ’819 and ’932 claims.
`
`A.
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`The Prosecution History of the Asserted Patents Supports ODP
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`The prosecution history of the Asserted Patents shows the ’451 patent claims are not
`
`2
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 7 of 15 PageID #: 6196
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`patentably distinct from the reference claims, notwithstanding Robocast’s attempts to rewrite the
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`prosecution history. During prosecution of the pending claims of the ’819 and ’932 patents, the
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`Patent Office examiner expressly found asserted claims of the ’451 patent and the pending
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`claims were “not patentably distinct from each other because the differences are in language
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`only [and] do not affect the scope of the features claimed.” See D.I. 110 at 3-5, 11-12.
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`Robocast filed terminal disclaimers for the ’819 and ’932 patents but not for the ’451 patent. See
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`id. at 11-12. Afterwards, the ’819 and ’932 patent claims only became narrower. See id. at 4-5.
`
` In describing these office actions, Robocast ignores and omits the plain statement that
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`the claims were “not patentably distinct from each other” and insists that the “examiner did not
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`make a reciprocal reverse finding that any ’451 claims would be unpatentable over any
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`application claims.” D.I. 114 at 4. This assertion is directly contradicted by the office actions
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`themselves in which the examiner’s findings clearly applied to both the ’451 patent claims and
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`the pending claims. See D.I. 110 at 3-5, 11-12. Robocast cites a single case to argue the
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`reciprocal finding of ODP was improper, but this case affirmed the PTAB’s ODP rejection
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`during prosecution; it has no applicability here. See In re Janssen Biotech, Inc., 880 F.3d 1315,
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`1326 (Fed. Cir. 2018).
`
`In describing the prosecution of the ’451 patent, Robocast also misleadingly states
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`“Robocast had no reason to file a terminal disclaimer relative to the ’932 application during
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`the ’451 patent prosecution.” D.I. 114 at 3. Nothing, however, prevented Robocast from filing
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`a terminal disclaimer after the ’451 patent issued when the examiner’s determinations as to the
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`lack of patentable distinctiveness were made. See 37 C.F.R. § 1.321. A terminal disclaimer
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`would have been effective so long as Robocast filed it before the reference patents expired. See
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`Boehringer Ingelheim Int’l GmbH v. Barr Lab’ys, Inc., 592 F.3d 1340, 1349 (Fed. Cir. 2010).
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`3
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 8 of 15 PageID #: 6197
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`Robocast failed to do so, and thus the asserted ’451 patent claims are simply invalid. In any
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`event, the type of equitable argument Robocast is attempting to make based on the sequencing of
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`these events was expressly rejected as immaterial in Cellect. 81 F.4th at 1229.
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`B.
`
`Robocast’s Own Allegations Establish ODP
`
`Robocast alleged in its complaint that “all the claims of the Patents-in-Suit are narrowly
`
`drawn and circumscribed so as to be directed to only one unconventional discrete way of
`
`providing such Internet content that requires creating the recited ‘show structures of nodes.’”
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`D.I. 1 ¶ 23. Robocast similarly and repeatedly referred to all of the patents providing one
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`singular “solution” and having the same “heart.” See D.I. 110 at 13 (collecting cites).
`
`In response, Robocast argues its “Complaint fails to even identify what ’451 patent
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`claims Robocast is asserting” (D.I. 114 at 20), but this ignores the plain language that “all the
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`claims of the Patents-in-Suit” are “directed to only one” solution. In other words, it is of no help
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`that the complaint did not identify the asserted claims; the relevant allegation by Robocast points
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`at “all the claims of the Patents-in-suit.” D.I. 1 ¶ 23. Robocast’s reference to other allegations in
`
`its complaint also does not undermine this and other similar express allegations in the complaint,
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`which Robocast weakly “acknowledges” but does not materially distinguish. See D.I. 114 at 2,
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`20. For example, Robocast’s reference to “several new paradigms” is not specific to the
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`Asserted Patents; instead, it is about Robocast generally. See D.I. 1 ¶ 12.
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`C.
`
`The Asserted Patent Claims Demonstrate ODP
`
`Robocast does not meaningfully dispute that ’451 patent claim 1 is representative of all of
`
`the asserted ’451 patent claims, and there is clearly no patentable distinction between ’451 patent
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`claim 1 and, e.g., ’819 patent claim 1. See D.I. 110 at 14-16. Robocast simply contends that “all
`
`of the asserted claims plainly have different scope and limitations from one another” and
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`gestures toward the claim language. See D.I. 114 at 18. This sort of hand waving is not enough
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`4
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 9 of 15 PageID #: 6198
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`to overcome a motion to dismiss, as Robocast “does not present any meaningful argument for the
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`distinctive significance of any claim limitations not found in the representative claim.”
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`Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018).
`
`That claim 1 is representative is confirmed by the fact that, in its “Arguments,” Robocast
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`addresses only one limitation it contends distinguishes the ’451 patent claims from the reference
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`claims: the ’451 patent recites the term “displaying” whereas the reference patents recite the term
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`“presenting.” D.I. 114 at 18-19. There is no plausible allegation that this minor difference
`
`creates a patentable distinction, especially in light of the parties’ claim construction positions.
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`Both parties have proposed constructions of “interactively variable duration information”
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`that would insert the term “displayed” into most of the reference claims. See, e.g., D.I. 92 at 36.
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`This means, for example, both ’819 and ’932 patent claim 1 will expressly recite “displayed”
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`once construed. See D.I. 110-1, Ex. 4 at 1. Robocast’s argument that ’451 patent claim 1 is
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`narrower because it recites displaying fails for this reason alone. D.I. 114 at 18-19. Moreover, a
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`claim is not patentably distinct merely because it is narrower in some respect to the reference
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`patent claims. Here, “a reader of the [’819 patent] could have easily envisioned a species limited
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`to” “displaying” content rather than the genus of “presenting” content as shown by the
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`“Background of the Invention” itself. See Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of
`
`Rheumatology Tr., 764 F.3d 1366, 1379 (Fed. Cir. 2014); see, e.g., D.I. 1-1, ’451 patent at 1:30-
`
`34 (describing “displaying” by prior art browsers). A challenged claim that is obvious over the
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`reference claim, like the ’451 patent claims, is invalid for ODP. Id. at 1374.
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`In its “Statement of Facts,” Robocast identifies certain allegedly “absent” limitations in
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`other claims of the ’451 patent without any explanation. D.I. 114 at 5-8. Defendants addressed
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`why those differences could not plausibly create a patentable distinction in their opening brief,
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`5
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`

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`which Robocast largely ignores. See D.I. 110 at 16-17; D.I. 110-1 at Ex. 4. For example, in
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`claim 37 and dependent claim 38, Robocast points to the limitations “at least two of said nodes
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`are spanned concurrently” and “at least two nodes are displayed during an overlapping time
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`period” as “absent.” Id. at 5-6. But Robocast itself alleged in its complaint that “each of the
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`independent claims of the ’819 and ’932 Patents, recite and capture” these “multidimensional
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`features.” D.I. 1 ¶ 19 (non-bold emphasis original); see also D.I. 110 at 16. Robocast
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`specifically alleged “an ordinarily skilled artisan would have understood these claimed
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`multidimensional features” would allow users to “simultaneously consume Internet content from
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`a plurality of different Internet-accessible resources.” Id. Thus, accepting Robocast’s own
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`allegations as true, each of the reference claims discloses being able to consume content from
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`different resources simultaneously— “at least two nodes are displayed during an overlapping
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`time period” and thus “at least two of said nodes are spanned concurrently.” D.I. 110 at 16.
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`As another example, Robocast points out the limitation “wherein said dynamic content is
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`an advertising message” in claim 29, but the ’451 patent itself admits that dynamic content being
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`an advertising message was well known in the art. See, e.g., D.I. 1-1, ’451 patent at 2:28-29
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`(noting prior art browsers were “new distribution method for publishers and advertisers”).
`
`Robocast’s own infringement allegations confirm that it does not view any of the minor
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`differences between the claims of the Asserted Patents significant; the only factual allegations
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`relating to infringement in Robocast’s complaint are not specific to any one patent. Instead,
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`Robocast alleges for example, “the YouTube internet platform infringed the Patents-in-Suit by
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`virtue of generating/embodying, providing, and operating/streaming automated video playlists to
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`and for the web browsers, and/or the YouTube apps. . . .” D.I. 1 ¶ 25; id. ¶¶ 25-28. None of the
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`minor differences between the’451 and reference patents save the ’451 patent claims from ODP.
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`6
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`

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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 11 of 15 PageID #: 6200
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`
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`II.
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`ROBOCAST’S PROCEDURAL ARGUMENTS LACK MERIT
`A.
`
`Claim Construction Is Not Required for the ODP Analysis
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`Robocast’s argument that claim construction is required to dismiss the ’451 patent for
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`ODP is unsupported by any plausible factual allegations, or by law. In its arguments, Robocast
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`still fails to allege that ODP would turn on construing any of the terms the parties asked the
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`Court to construe. Robocast does not identify any terms that would impact the ODP analysis.
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`Courts in this District regularly grant motions to dismiss based on invalidity over
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`arguments that claim construction is required where, as here, the patentee “does not suggest any
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`particular claim constructions that would make any difference to the pending motion. Nor does
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`[patentee] suggest even more generally some idea of a claim construction that would make any
`
`difference.” See Arunachalam v. Kronos Inc., No. 14-91-RGA, 2021 WL 1174530, at *1 n.2 (D.
`
`Del. Mar. 29, 2021). 2 Moreover, as Robocast must acknowledge, “the regularly scheduled claim
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`construction process in this case is currently underway” (D.I. 114 at 16), the parties have
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`identified terms for construction, and Robocast still does not identify any terms relevant to ODP.
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`With nothing in the “regularly scheduled claim construction process” to support its
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`argument, Robocast desperately suggests that the Court should engage in a separate “ODP claim
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`construction” and issue “ODP-related constructions.” Id. Robocast unsurprisingly cites no
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`support for this position, as it flies in the face of more than 130 years of patent law. It is black
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`letter law that a “patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation
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`and another to find infringement.” Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d
`
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`2 See Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1183-84 (Fed.
`Cir. 2020) (affirming dismissal where patentee “asserts in conclusory fashion that the district
`court should have engaged in claim construction before deciding claim 11’s eligibility under
`§ 101” but “has not identified a single claim term that it believes requires construction before the
`eligibility of claim 11 can be decided, much less how this construction could affect the
`analysis”).
`
`7
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`

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`1343, 1351 (Fed. Cir. 2001) (citing White v. Dunbar, 119 U.S. 47, 51 (1886)). The “claims must
`
`be interpreted and given the same meaning for purposes of both validity and infringement
`
`analyses.” Id. Claim construction is not required to grant the Motion.3 Regardless, because
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`Robocast has not raised any disputes relevant to this Motion or ODP based on the parties’
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`already proposed constructions, the Court can grant this Motion based on either Google’s or
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`Robocast’s proposed constructions.
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`B.
`
`Factual Determinations Are Not Required for the ODP Analysis
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`“Double patenting is a question of law” because it “is a matter of what is claimed” like
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`claim construction. Georgia-Pac. Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1326 (Fed. Cir.
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`1999). This includes consideration of whether a reference claim “anticipates” a challenged
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`claim. See id. at 1329. None of the cases Robocast cites to argue the contrary involved double
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`patenting, and they are therefore inapposite. See D.I. 114 at 14. As shown in Defendants’
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`opening brief and above, every element of representative ’451 patent claim 1 is present in
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`exemplary reference claims, and therefore it is invalid under ODP. See D.I. 110 at 14-16.
`
`Robocast nevertheless insists that, as far as obviousness, factual determinations must be
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`made as to the Graham factors. However, Robocast does not identify any plausible factual
`
`disputes as to how these factors requiring resolution in the ODP analysis here. D.I. 114 at 9.
`
`Graham Factor 1: Robocast does not identify any dispute as to “the scope of the prior art”
`
`in its Opposition. After Cellect, there is no plausible dispute that, for ODP purposes, the claims
`
`
`3 The cases cited by Robocast on this issue are inapposite. D&M Holdings Inc. v. Sonos, Inc.,
`No. 16-141-RGA, 2017 WL 1395603, at *12 (D. Del. Apr. 18, 2017) (granting motion to dismiss
`without claim construction); SIPCO, LLC v. Streetline, Inc., 230 F. Supp. 3d 351, 353 (D. Del.
`2017) (same); Blackbird Tech LLC v. Serv. Lighting & Elec., No. 15-53-RGA, 2015 WL
`12868236 (D. Del. Dec. 1, 2015) (declining to decide “inadequate written description” issue
`without claim construction); Novartis AG v. Ezra Ventures, LLC, No. 15-150-LPS, 2016 WL
`5334464, at *3 (D. Del. Sept. 22, 2016) (opining claim construction might be required for ODP
`analysis where patents were from different assignees and families).
`
`8
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`of the ’819 and ’932 patents serve as invalidating references. These claims alone clearly render
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`the claims of the asserted ’451 patent claims anticipated or obvious. See D.I. 110-1 at Ex. 4.
`
`Graham Factor 2: As addressed earlier, the only “differences between the prior art and
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`the claims at issue” Robocast raises is between “displaying” and “presenting,” which is not a
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`plausibly patentable distinction. Moreover, the Court compares the claims in the ODP context.
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`See, e.g., Abbvie, 764 F.3d at 1374 (The “court . . . determines the differences”).
`
`Graham Factor 3: Robocast does not identify any plausible factual disputes relating to the
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`“level of ordinary skill in the pertinent art” that would impact the ODP analysis, either, and the
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`differences in the claims are so trivial that there is no plausible level so low that would render the
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`asserted ’451 claims patentably distinct.
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`Graham Factor 4: Robocast gives alleged “secondary considerations of non-obviousness”
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`somewhat more attention, but Robocast still fails to identify a single consideration that allegedly
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`distinguishes the asserted ’451 patent claims from those of the ’819 or ’932 patents, which
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`issued from the same application, by the same applicant, and with the same specification and
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`figures. As the cases cited by Robocast acknowledge, “inquiry into secondary considerations is
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`not required in every obviousness-type double patenting analysis.” Eli Lilly & Co. v. Teva
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`Parenteral Meds., Inc., 689 F.3d 1368, 1381 (Fed. Cir. 2012).
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`Robocast argues that the “commercial success” of the YouTube platform is a relevant
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`secondary indicium of non-obviousness but provides no allegations or even attorney argument
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`for how this could plausibly distinguish the claims of the ’451 patent from the reference ’819
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`and ’932 patents when Robocast accuses the YouTube platform of infringing all three patents.
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`See, e.g., D.I. 1 ¶ 25. For “commercial success” to have relevancy, “a nexus must exist between
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`the commercial success and the claimed invention,” and there is no nexus if “commercial success
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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 14 of 15 PageID #: 6203
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`is due to an element in the prior art.” Tokai Corp. v. Easton Enters, Inc., 632 F.3d 1358, 1369
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`(Fed. Cir. 2011). Robocast cannot plausibly plead facts supporting commercial success to
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`overcome ODP when it accuses exactly the same commercially-successful product and features
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`of infringing both the reference patent claims and the ’451 patent; no “commercial success” can
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`be attributed to the ’451 patent rather than the “prior art”—the reference claims in the ODP
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`analysis. See Novo Nordisk A/S v. Caraco Pharm. Lab’ys, Ltd., 719 F.3d 1346, 1354 (Fed. Cir.
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`2013) (“burden of production” for secondary considerations shifts to patentee).
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`Similarly, Robocast alleges it received “industry praise” from Microsoft but does not
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`allege or explain how such praise had to do with one specific patent—or any of the Asserted
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`Patents. D.I. 1 ¶ 12. Like “commercial success,” the proponent of “industry praise” must
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`establish a nexus to “what is both claimed and novel in the claim.” Merck & Cie v. Gnosis
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`S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015) (original emphasis). Here, Robocast cannot make out
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`a plausible nexus between any “industry praise” and the trivial distinctions between the ’451
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`claims and the ’819 and ’932 claims. Robocast applied for all three patents, with the same
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`inventor, and now contends, without distinction, that all of the Asserted Patents were practiced
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`by its beta website, http://beta.robocast.com/. See Ex. 6 at 10.
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`Robocast does not point to any “unexpected results” or any “long felt and unresolved
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`need” in its Opposition, and such considerations could not have any plausible nexus for ODP
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`given the minimal differences between the Asserted Patents and Robocast’s allegations.
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`Robocast’s cases are inapposite because each involved a nexus between the secondary
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`considerations proffered and the differences in the claims, unlike here. There are no factual
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`determinations required to dismiss the ’451 patent, and it should be dismissed with prejudice.
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`Case 1:22-cv-00304-RGA-JLH Document 117 Filed 11/10/23 Page 15 of 15 PageID #: 6204
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`OF COUNSEL:
`
`Jordan R. Jaffe
`Amy H. Candido
`Catherine Lacey
`WILSON SONSINI GOODRICH & ROSATI,
`P.C.
`One Market Plaza, Suite 330
`San Francisco, CA 94105-1126
`
`November 10, 2023
`
`
`
`
`
`
`
`/s/ Frederick L. Cottrell, III
`Frederick L. Cottrell, III (#2555)
`Griffin A. Schoenbaum (#6915)
`RICHARDS, LAYTON & FINGER, P.A.
`One Rodney Square
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`cottrell@rlf.com
`schoenbaum@rlf.com
`
`Attorneys for Defendants YouTube, LLC and
`Google LLC
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`11
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