Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page1 of 16
`
`STEFANI E. SHANBERG (State Bar No. 206717)
`JENNIFER J. SCHMIDT (State Bar No. 295597)
`ROBIN L. BREWER (State Bar No. 253686)
`MICHAEL J. GUO (State Bar No. 284917)
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, California 94105
`Telephone:
`(415) 947-2000
`Facsimile:
`(415) 947-2099
`E-Mail:
`sshanberg@wsgr.com
`rbrewer@wsgr.com
`jschmidt@wsgr.com
`mguo@wsgr.com
`
`Attorneys for Defendants
`GOOGLE INC.; YOUTUBE, LLC; and
`ON2 TECHNOLOGIES, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`MAX SOUND CORPORATION and
`VEDANTI SYSTEMS LIMITED,
`
`Plaintiffs,
`
`v.
`
`GOOGLE INC., YOUTUBE, LLC, and ON2
`TECHNOLOGIES, INC.,
`
`Defendants.
`
`Case No. 5:14-cv-04412-EJD
`
`DEFENDANTS GOOGLE INC.,
`YOUTUBE, LLC, AND ON2
`TECHNOLOGIES, INC.’S MOTION TO
`DISMISS FOR FAILURE TO STATE A
`CLAIM
`
`Date: April 30, 2015
`Time: 9:00 am
`Place: Courtroom 4, 5th Floor
`Judge: Honorable Edward J. Davila
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
`
`Google Inc.
`GOOG 1013
`IPR of US Pat. No. 7,974,339
`
`1
`
`

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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page2 of 16
`
`TABLE OF CONTENTS
`
`Page
`
`NOTICE OF MOTION AND MOTION ........................................................................................1
`
`MEMORANDUM OF POINTS AND AUTHORITIES ................................................................1
`
`I.
`
`II.
`
`INTRODUCTION...............................................................................................................1
`
`BACKGROUND.................................................................................................................2
`
`A.
`
`B.
`
`History of the ’339 Patent. ......................................................................................2
`
`Litigation History. ...................................................................................................4
`
`III.
`
`APPLICABLE LEGAL STANDARD................................................................................5
`
`A.
`
`B.
`
`Motion to Dismiss. ..................................................................................................5
`
`Indefiniteness Pursuant to 35 U.S.C. § 112(2)........................................................6
`
`IV.
`
`ARGUMENT ......................................................................................................................7
`
`A.
`
`Claims 1-13 Are Invalid for Failing to Set Forth What the
`Applicants Regarded as Their Invention.................................................................7
`
`1.
`
`2.
`
`3.
`
`Throughout Prosecution, Applicants Regarded Their Invention as
`the Transmission of Data Optimized Without Compression.......................7
`
`The Specification Further Demonstrates that Applicants Regarded
`Their Invention as the Transmission of Data Optimized Without
`Compression................................................................................................9
`
`The Issued Claims Are Broader than What the Applicants Described
`as Their Invention......................................................................................10
`
`The Court Cannot Correct the Errors in Claims 1-13. ..........................................11
`
`Plaintiff Cannot Redeem the Amended Complaint in This Case by
`Filing a Certificate of Correction. .........................................................................11
`
`B.
`
`C.
`
`V.
`
`CONCLUSION .................................................................................................................12
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page3 of 16
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002)..........................................6, 10
`
`Ashcroft v. Iqbal, 556 U.S. 662 (2009) ..............................................................................................5
`
`Bell Atl. Corp. v. Twombly, 550 U.S. 554 (2007) ..............................................................................5
`
`Brandywine Commc’ns Techs., LLC v. AT&T Corp., C.A. No. C 12-2494 CW,
`2014 U.S. Dist. LEXIS 54370 (N.D. Cal. Apr. 18, 2014)....................................................11
`
`Coinstar, Inc. v. CoinBank Automated Sys., 998 F. Supp. 1109 (N.D. Cal. 1998)............................6
`
`Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161 (N.D. Cal. 2003) ...............................6, 10
`
`Grp. One Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir. 2005) ........................1, 2, 6, 7, 11
`
`Linear Tech. Corp. v. Micrel, Inc., 524 F. Supp. 2d 1147 (N.D. Cal. Nov. 11, 2005) ................7, 11
`
`Lucent Techs., Inc. v. Gateway, Inc., C.A. No. 02-cv-02060, slip op. (S. D. Cal.
`Aug. 11, 2005)............................................................................................................6, 10, 11
`
`Mack v. S. Bay Beer Distribs., 798 F.2d 1279 (9th Cir. 1986)...........................................................5
`
`Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190 (Fed.
`Cir. 1999) .........................................................................................................................6, 10
`
`Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) ........................................7
`
`Solomon v. Kimberly-Clark Corp., 216 F.3d 1372 (Fed. Cir. 2000)..................................................6
`
`Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000)...................................7, 11, 12
`
`STATUTES
`
`35 U.S.C. § 112(2) ...........................................................................................................1, 2, 6, 7, 10
`
`35 U.S.C. § 112(1) .............................................................................................................................6
`
`35 U.S.C. § 254 ........................................................................................................................1, 7, 11
`
`RULES
`
`37 C.F.R. § 1.322 .............................................................................................................................12
`
`Federal Rule of Civil Procedure 12(b)(6) ......................................................................................1, 5
`
`MPEP 1480 ......................................................................................................................................12
`
`MISCELLANEOUS
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`TABLE OF ABBREVIATIONS
`
`Plaintiff Max Sound Corporation
`
`Max Sound or Plaintiff
`
`Patent Owner Vedanti Systems Limited
`
`Defendant Google Inc.
`
`Defendant YouTube, LLC
`
`Defendant On2 Technologies, Inc.
`
`Defendants Google, YouTube, and On2,
`collectively
`
`VSL
`
`Google
`
`YouTube
`
`On2
`
`Defendants
`
`U.S. Patent No. 7,974,339
`
`’339 patent or asserted patent
`
`United States Patent and Trademark Office
`
`PTO
`
`Declaration of Jennifer J. Schmidt in Support of
`Defendants’ Motion to Dismiss
`
`Schmidt Decl.
`
`First Amended Complaint, (Dkt. No. 23)
`
`Amended Complaint
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`NOTICE OF MOTION AND MOTION
`
`TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
`
`PLEASE TAKE NOTICE that on April 30, 2015, at 9:00 a.m., or as soon thereafter as the
`
`matter may be heard in courtroom of the Honorable Edward J. Davila, located at Courtroom 4,
`
`Fifth Floor, of the United States District Court for the Northern District of California, San Jose
`
`Division, Defendants will and hereby do move the Court for entry of an order dismissing this
`
`action pursuant to Federal Rule of Civil Procedure 12(b)(6).
`
`This motion is based on this notice of motion and motion, the supporting memorandum of
`points and authorities, the accompanying Schmidt Decl., including exhibits,1 and such additional
`evidence and arguments as may hereinafter be presented.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`I.
`
`INTRODUCTION
`
`Amendments impacting all claims of the ’339 patent were made during prosecution, but
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`are not reflected in the issued claims that form the basis for this litigation. The claims of the ’339
`
`patent are, therefore, invalid as indefinite under 35 U.S.C. § 112(2) for failure to claim what the
`
`inventors regard as their invention, and the Amended Complaint should be dismissed.
`
`35 U.S.C. § 112(2) requires that each claim of a patent must set forth what the patent
`
`applicants regarded as their invention. The Federal Circuit has held that, when a transcription
`
`error renders an issued claim different than an allowed claim, the claim is invalid as indefinite for
`
`failure to specifically claim what the inventor regards as his invention. Grp. One Ltd. v. Hallmark
`
`Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005). Patentees have a duty to correct errors with a
`
`certificate of correction under 35 U.S.C. § 254, but a certificate of correction has no effect in
`
`litigation initiated before the certificate is issued. Id.
`
`Here, the issued claims of the ’339 patent are meaningfully different from the claims
`
`requested by the applicants and allowed during prosecution. When the PTO prepared the ’339
`
`patent for issuance, it made a transcription error that failed to address amendments entered by the
`
`examiner during prosecution and, therefore, omitted key language from the independent claims.
`
`1 All Exhibits referenced herein refer to Exhibits to the Schmidt Decl. filed concurrently herewith.
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`Specifically, the PTO overlooked an amendment entered by the examiner reciting that the alleged
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`invention is directed to data optimization instead of data compression, a distinction repeatedly
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`emphasized by the applicants in the specification and prosecution history. The PTO also did not
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`enter amendments to add the term “frame” to modify “analysis system” and “display,” to remove
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`the term “selection” to modify “pixel data,” and to add the limitation of “transmitting region data”
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`only “for each region.” These omissions render the issued claims broader than those allowed and
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`invalid pursuant to 35 U.S.C. § 112(2).
`
`Further, the language missing from the issued claims cannot be discerned from the face of
`
`the patent, rendering the error one that can only be corrected by the PTO and not by the Court. Id.
`
`Patent Owner VSL has neglected its duty to correct this error by filing a certificate of correction
`
`with the PTO, having done nothing about the error since the July 5, 2011, issuance of the ’339
`
`patent. Even if a certificate of correction were filed now, it would have no effect in litigation
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`initiated before its issuance. Grp. One, 407 F.3d at 1303. Accordingly, Defendants respectfully
`
`request that Plaintiff’s claims for infringement of the ’339 patent be dismissed.
`
`II.
`
`BACKGROUND
`
`A.
`
`History of the ’339 Patent.
`
`The application leading to the ’339 patent was filed on July 16, 2004.
`
`(Amended
`
`Complaint, Ex. 1.) The specification explains that the ’339 patent is directed to “a system and
`
`method for data transmission . . . that use data optimization instead of compression.” (Id., ’339
`
`patent at 1:36-39.)
`
`In an effort to distinguish the prior art during prosecution, applicants also
`
`confirmed that the alleged invention transmits data without compression. (See, e.g., Ex. A (’339
`
`Prosecution History, Amendment dated January 24, 2011) at 17 (“the generated set of pixel data
`. . . will be transmitted without any further processing, due to the fact that the applicants[’]
`invention does not compress nor decompress data.”) (emphasis in original).)
`
`From January to July 2011, the pro se applicants engaged in extensive back and forth with
`
`the examiner in an attempt to put their claims in allowable form, much of which focused on the
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`“optimization instead of compression” distinction.
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`(See Ex. A (’339 Prosecution History,
`
`Amendment dated January 24, 2011); Ex. B (’339 Prosecution History, Interview Summary dated
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`February 7, 2011; Ex. C (’339 Prosecution History, Supplemental Amendment dated January 24,
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`2011; Ex. D (’339 Prosecution History, Notice of Allowance with Interview Summary and
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`Examiner Amendment dated February 24, 2011).) On April 1, 2011, the applicants submitted
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`amended claims 1, 11, and 16, requiring that the claimed system and methods are “for transmitting
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`data optimization instead of compression,” a requirement not included in the examiner’s February
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`22, 2011 amendment.
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`(Ex. E (’339 Prosecution History, Amendment dated April 1, 2011)
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`(emphasis in original).) The applicants’ submission also includes other amendments missing from
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`the issued claims, such as adding the term “frame” to modify “analysis system” and “display” in
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`claim 1, removing the term “selection” to modify “pixel data” in claims 11 and 16, and adding the
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`limitation of “transmitting region data” only “for each region” in claim 16. (Id.) In an interview
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`on April 1, 2011, the examiner agreed to file the amendment to add the words “data optimization
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`instead of compression” and to correct the other errors in claims 1, 11, and 16, as indicated by
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`applicants on April 1, 2011. (Ex. F (’339 Prosecution History, Interview Summary dated April 11,
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`2011).) On June 1, 2011, the examiner entered an amendment matching the applicants’ April 1,
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`2011 amendment, but it is not reflected in the issued claims.
`
`(Ex. G (’339 Prosecution History,
`
`Examiner Amendment dated June 1, 2011).)
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`The issued claims differ from those intended by the applicants and the examiner as
`
`indicated below. Redlines indicate language omitted from the issued claims.
`
`1. A system for transmitting data optimization instead of data
`compression [transmission] comprising:
`a frame analysis system receiving frame data and generating
`region data comprised of high detail and or low detail;
`a pixel selection system receiving the region data and
`generating one set of pixel data for each region forming a new set of
`data for transmission;
`wherein transmitting the data to a data receiving system
`receiving the region data and the pixel data for each region and
`generating a frame display;
`wherein the data receiving system comprises a pixel data
`system receiving matrix definition data and the pixel data and
`generating pixel location data;
`wherein the data receiving system comprises a display
`generation system receiving pixel
`location data and generating
`display data that includes the pixel data placed according to the
`location data.
`
`7. A method for transmitting data optimization instead data
`compression comprising:
`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page8 of 16
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`receiving frame data;
`generating optimized matrix data from the frame data;
`selecting one of two or more sets of pixel data based on the
`optimized matrix data;
`wherein receiving frame data comprises receiving an array
`of pixel data;
`wherein generating the optimized matrix data from the
`frame data comprises setting a matrix size based on pixel selection
`data; and
`transmitting the selection pixel data and the optimized
`matrix data by assembling the optimized matrix data and the
`selection pixel data into a generated display frame.
`
`10. A method for transmitting data optimization instead of data
`compression comprising:
`dividing an array of pixel data into two or more regions;
`selecting a set of pixel data from reach each region;
`wherein dividing the array of pixel data comprises dividing
`the array of pixel data into two or more matrices having a uniform
`size;
`
`wherein dividing the array of pixel data comprises dividing
`the array of pixel data into two or more matrices having two or
`more different sizes;
`and transmitting the region data and the selection pixel data
`and the for each region data by assembling the region data and the
`selection
`pixel
`data
`into
`a
`generated
`display
`frame.
`
`In sum, the issued claims do not reflect any amendments entered after the February 24,
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`2011 examiner amendment (See Ex. D (’339 Prosecution History, Notice of Allowance with
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`Examiner Amendment dated February 24, 2011); Ex. E (’339 Prosecution History, Amendment
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`dated April 1, 2011); Ex. G (’339 Prosecution History, Examiner Amendment dated June 1,
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`2011).) Plaintiff Max Sound and Patent Owner VSL have ignored the errors in claims 1, 7, and
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`10, and these requirements remain missing from the claims.
`
`(Ex. H, Patent Application
`
`Information Retrieval for the ’339 patent).
`
`B.
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`Litigation History.
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`On October 1, 2014, Plaintiff Max Sound filed a Complaint against Defendants alleging
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`infringement of the ’339 patent. (Dkt. No. 1.) On December 11, 2014, Defendants filed a Motion
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`to Dismiss Pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(7) based on Plaintiff
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`Max Sound’s improper joinder of Patent Owner VSL as an involuntary co-plaintiff under Rule 19,
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`requiring VSL’s dismissal from the case.
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`(See Dkt. No. 15 at 4-5.) Without VSL, Max Sound
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`lacks standing to sue as a licensee without proper joinder of the patent owner. (See id. at 6.)
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page9 of 16
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`On January 23, 2015, Plaintiff Max Sound filed an Amended Complaint.
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`(Dkt. No. 23.)
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`In the Amended Complaint, Max Sound refers to VSL both as a plaintiff (Amended Complaint at
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`1) and as a defendant (id. at 2, ¶ 2, ¶ 16). Max Sound further alleges that “VSL is the owner by
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`assignment of all rights, title, and interests in the ’339 Patent and is entitled to sue for past and
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`future infringement
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`thereof.”
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`(Id. at ¶ 14.) The Parties filed a Stipulation Withdrawing
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`Defendants’ Motion to Dismiss the Original Complaint without prejudice on January 26, 2015.
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`(Dkt. No. 24.) Plaintiff Max Sound cannot proceed without Patent Owner VSL.
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`(See generally
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`Dkt. No. 15.) On February 5, 2015, Plaintiff Max Sound filed a Certificate of Service of
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`Summons and First Amended Complaint. (Dkt. No. 27). For the purposes of the instant motion, it
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`is relevant that Plaintiff Max Sound, a claims aggregator that has instituted multiple lawsuits
`against Google worldwide,2 is not the owner of the patent and appears to lack Patent Owner VSL’s
`cooperation to obtain a certificate of correction. (See Amended Complaint at ¶¶ 5, 14-15.)
`
`III.
`
`APPLICABLE LEGAL STANDARD
`
`A.
`
`Motion to Dismiss.
`
`To survive a motion to dismiss under Rule 12(b)(6), a complaint must contain sufficient
`
`factual matter, if accepted as true, to “state a claim to relief that is plausible on its face.” Ashcroft
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`v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570
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`(2007)). “Only a complaint that states a plausible claim for relief survives a motion to dismiss.”
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`Iqbal, 556 U.S. at 679 (citing Twombly, 550 U.S. at 556).
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`On a motion to dismiss under Rule 12(b)(6), the court may consider those facts alleged in
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`the pleadings, the documents attached thereto as exhibits, and matters of judicial notice. Mack v.
`
`S. Bay Beer Distribs., 798 F.2d 1279, 1282 (9th Cir. 1986). “On a motion to dismiss, . . . a court
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`may take judicial notice of facts outside the pleadings.” Id.
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`“Moreover, a court may take
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`judicial notice of ‘records and reports of administrative bodies.’” Id. “Therefore, on a motion to
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`dismiss a court may properly look beyond the complaint to matters of public record and doing so
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`does not convert a Rule 12(b)(6) motion to one for summary judgment.” Id. The prosecution
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`2 See Press Release, Max Sound Corp. (Dec. 9, 2014), http://maxsound.com/news/max-sound-
`help-entrepeneurs/ (last visited Feb. 3, 2015).
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
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`history of the asserted patent is a public record appropriate for judicial notice upon which
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`Plaintiff’s claims are based. Coinstar, Inc. v. CoinBank Automated Sys., 998 F. Supp. 1109,
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`(taking judicial notice of patents and file history documents).
`1114 (N.D. Cal. 1998)
`Accordingly, the Court may consider the prosecution history.3 Id.
`B.
`Indefiniteness Pursuant to 35 U.S.C. § 112(2).
`
`The requirements of 35 U.S.C. § 112(2) include that:
`
`(1) the claim must set forth what
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`“the applicant regards as his invention,” and (2) “it must do so with sufficient particularity and
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`distinctness, i.e., the claim must be sufficiently ‘definite.’” Allen Eng’g Corp. v. Bartell Indus.,
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`299 F.3d 1336, 1348 (Fed. Cir. 2002) (quoting Solomon v. Kimberly-Clark Corp., 216 F.3d 1372,
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`1377 (Fed. Cir. 2000)). Where a transcription error renders the issued claim different than the
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`allowed claim, the claim is invalid as indefinite for failure to specifically claim what the inventor
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`regards as his invention. See Grp. One, 407 F.3d at 1303 (finding uncorrected patent was
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`indefinite because transcription error by PTO omitted phrase from claim); Lucent Techs., Inc. v.
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`Gateway, Inc., C.A. No. 02-cv-02060, slip op. at 7 (S. D. Cal. Aug. 11, 2005) (finding claim
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`indefinite because transcription error rendered allowed claims different than claims applicant
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`presented to PTO that were allowed) (attached as Ex. N). When independent claims are found
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`indefinite, so must all claims dependent therefrom. See, e.g., Allen, 299 F.3d at 1349 (holding
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`dependent claims invalid along with independent claim); Competitive Techs. v. Fujitsu Ltd., 286 F.
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`Supp. 2d 1161, 1175 (N.D. Cal. 2003) (holding “[c]laims 6-11 . . . are also invalid because they
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`are dependent on claim 5,” where independent claim 5 had been held invalid under § 112(2));
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`Lucent, slip op. at 7 (finding dependent claims indefinite for failure to particularly point out what
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`applicants regarded as their invention because independent claims were indefinite as a result of
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`PTO transcription error); Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d
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`1190, 1198 (Fed. Cir. 1999) (“Because dependent claims 2-8 and 10 stand or fall with independent
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`claim 1, we affirm the district court’s judgment that these claims are also invalid under 35 U.S.C.
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`§ 112, paragraph 1.”).
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`3 Defendants request that the Court take judicial notice of the prosecution history of the ’339
`patent.
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`Under 35 U.S.C. § 254, patentees have a duty to correct errors with a certificate of
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`correction filed with the PTO. Grp. One, 407 F.3d at 1303 (citing Sw. Software, Inc. v. Harlequin
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`Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000)); Linear Tech. Corp. v. Micrel, Inc., 524 F. Supp. 2d
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`1147, 1153-56 (N.D. Cal. Nov. 11, 2005) (holding that defendant “should have checked the
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`published version” of reexamination certificate upon issuance “to ensure that it included a
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`complete listing of the claims, and requested a certificate of correction to properly incorporate[]
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`the new claims”). A certificate of correction has no effect in litigation initiated before the
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`certificate is issued. See, e.g., Sw. Software, 226 F.3d at 1295. Courts may correct an error in a
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`patent “only if the error is evident from the face of the patent.” Id. (citing Novo Indus., L.P. v.
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`Micro Molds Corp., 350 F.3d 1348, 1357-58 (Fed. Cir. 2003)).
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`IV.
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`ARGUMENT
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`The specification and prosecution history both discuss systems and methods for
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`“transmitting data” that use “data optimization instead of compression,” but the claims recite only
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`“transmitting data” with no mention that compressed data is excluded. The issued claims also
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`contain other differences from the applicants’ intended claims, such as lacking the term “frame” to
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`modify “analysis system” and “display” in claim 1, including the term “selection” to modify
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`“pixel data” in claims 7 and 10, and adding the limitation of “transmitting region data” only “for
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`each region.” Because the applicants did not regard their invention as the terms in the issued
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`claims reflect and failed to obtain a certificate of correction, claims 1-13 are invalid as indefinite.
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`A.
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`Claims 1-13 Are Invalid for Failing to Set Forth What the Applicants
`Regarded as Their Invention.
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`Because of key missing language, independent claims 1, 7, and 10 are broader than what
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`the applicants described as their invention in both the prosecution history and the specification.
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`Accordingly, no claims of the ’339 patent comply with the 35 U.S.C. § 112(2) requirement that
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`the claims set forth what the “applicant regards as his invention” and are invalid.
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`1.
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`Throughout Prosecution, Applicants Regarded Their Invention as the
`Transmission of Data Optimized Without Compression.
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`During prosecution of the ’339 patent, the applicants repeatedly and consistently stated that
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page12 of 16
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`they regarded their invention as pertaining to the transmission of data that has been optimized
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`without using compression.
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`(See e.g., Ex. I (’339 Prosecution History, Petition and Statement
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`under 37 CFR §1.102(D) and MPEP 708.02 (XI) for Advancement of Examination dated July 21,
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`2006) at 1) (applicant stated “the inventions described in the above identified patent application
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`provide for the optimization of the transmission of video data that, unlike prior art compression
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`techniques, do not require the data to be compressed at the sending end and decompressed at the
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`receiving end . . . .”); Ex. J (’339 Prosecution History, Declaration of Constance Nash dated July
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`20, 2006) at ¶ 4) (named inventor declared same); Ex. K (’339 Prosecution History, Amendment
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`dated July 10, 2010) at 7; Ex. L (’339 Prosecution History, Amendment dated September 3, 2010)
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`at 8; Ex. M (’339 Prosecution History, Amendment dated December 27, 2010) at 18); Ex. A (’339
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`Prosecution History, Amendment dated January 24, 2011) at 17 (to overcome a prior art rejection,
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`applicants emphasized “the generated set of pixel data . . . will be transmitted without any
`further processing, due to the fact that the applicants[’] inventions does not compress nor
`decompress data”) (emphasis in original).)
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`In early 2011, the applicants—representing themselves pro se in the prosecution of their
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`patent application—engaged in multiple discussions with the examiner in an attempt to put their
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`claims in allowable form. Following an interview with the examiner on January 12, 2011, the
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`applicant submitted the above-mentioned January 24, 2011 amendment, which the examiner found
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`failed to put the claims in allowable form. (Ex. B (’339 Prosecution History, Interview Summary
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`dated February 7, 2011); (Ex. A (’339 Prosecution History, Amendment dated January 24, 2011).
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`As a result, another interview was held on February 22, 2011, during which the applicants
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`authorized an examiner amendment that would put the claims in allowable form.
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`(Ex. D (’339
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`Prosecution History, Interview Summary dated February 24, 2011).)
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`But when the applicants saw the examiner’s February 24, 2011 amendment to the claims—
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`which did not specify that
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`the data was transmitted without compression or other further
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`processing—they sought to amend the claims to make explicit what they believed to be the key
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`advancement over the prior art,
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`i.e.,
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`that
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`the claimed system and methods are for “data
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`optimization instead of compression” and urged the examiner in yet another interview to enter
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`12
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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page13 of 16
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`such amendment.
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`(Ex. D (’339 Prosecution History, Notice of Allowance with Examiner
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`Amendment dated February 24, 2011); Ex. E (’339 Prosecution History, Amendment dated April
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`1, 2011); Ex. F (’339 Prosecution History, Interview Summary dated April 11, 2011).) The
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`examiner agreed and, on June 1, 2011, entered an amendment
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`to add the language “data
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`optimization instead of compression” to the independent claims and to correct other errors. (Ex. F
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`(’339 Prosecution History, Interview Summary dated April 11, 2011); Ex. G (’339 Prosecution
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`History, Examiner Amendment dated June 1, 2011).)
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`It was this essential amendment, which added the applicants’ key “data optimization
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`instead of compression” language and which fixed other errors, that the PTO failed to include in
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`the issued claims. Rather, the claims issued in the form of the examiner’s February 24, 2011
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`amendment, which lacked language excluding compression and contained other errors. As a
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`result, the issued claims are broader than the claims entered by the examiner because they lack the
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`limiting language excluding compression and other terms, and are invalid because they do not
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`reflect what the applicants regarded as their invention.
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`2.
`
`The Specification Further Demonstrates that Applicants Regarded
`Their Invention as the Transmission of Data Optimized Without
`Compression.
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`The specification also describes that the data to be transmitted is optimized and not
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`compressed.
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`(See Amended Complaint, Ex. 1, ’339 patent at 1:13-39) (“The goal of the alleged
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`invention is therefore to provide ‘a system and method for data transmission . . . that use data
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`optimization instead of compression.’”).) Similarly, the specification states that “[o]ne important
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`technical advantage of the present invention is a system and method for transmitting data that do
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`not require the data to be compressed at the sending end and decompressed at the receiving end.”
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`(Id., ’339 patent at 1:54-63.) By way of further example, the specification states that “[s]ystem
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`100 allows data such as video data to be transmitted in a manner that does not require the data to
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`be compressed, and which results in significant decreases in bandwidth requirements for data
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`transmission.” (Id., ’339 patent at 2:43-46.)
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`The specification consistently describes the system of the alleged invention as allowing
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`transmission of data that does not require compression. Because of the omission of the term “data
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`DEFENDANTS’ MOT. TO DISMISS FOR
`FAILURE TO STATE CLAIM
`Case No. 5:14-cv-04412-EJD
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`13
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`Case5:14-cv-04412-EJD Document28 Filed02/09/15 Page14 of 16
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`optimization instead of compression” and other amendments by the PTO, the issued claims do not
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`reflect this fundamental aspect of the alleged invention and are invalid.
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`3.
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`The Issued Claims Are Broader than What the Applicants Described as
`Their Invention.
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`In the absence of
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`the “optimization instead of compression” language and other
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`amendments, the issued claims are broader than what was described by the applicants and allowed
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`by the PTO. As a result, Plaintiff may not enforce the uncorrected cl