Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 1 of 31 PageID #: 18770
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`Case No. 6:16-cv-961-RWS-JDL
`
`
`
`
`
`
`
`REALTIME DATA LLC d/b/a IXO,
`
`
`
`
`
`RACKSPACE US, INC.; NETAPP, INC.;
`AND SOLIDFIRE, LLC,
`
`
`
`
`
`Defendants.
`
`
`
`PROPOSED JOINT PRETRIAL ORDER
`
`Pursuant to the Amended Docket Control Order (Dkt. No. 241) and Rule 16 of the
`
`Federal Rules of Civil Procedure, Plaintiff Realtime Data LLC d/b/a/ IXO (“Realtime”) and
`
`Defendants NetApp, Inc. and SolidFire, LLC (collectively “NetApp” or “Defendants”) submit
`
`this Proposed Joint Pretrial Order.
`
`I.
`
`COUNSEL FOR THE PARTIES
`
`Attorneys for Plaintiff Realtime:
`
`Marc A. Fenster
`Reza Mirzaie
`Adam S. Hoffman
`Brian D. Ledahl
`C. Jay Chung
`James N. Pickens
`Paul Anthony Kroeger
`Philip X. Wang
`Christian W. Conkle
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, Suite 1200
`Los Angeles, CA 90025
`Phone: 310-826-7474
`Fax: 310-826-6991
`
`sf-3844418
`
`NetApp, Inc. Exhibit 1015 Page 1
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 2 of 31 PageID #: 18771
`
`
`Email: mfenster@raklaw.com
`Email: rmirzaie@raklaw.com
`Email: ahoffman@raklaw.com
`Email: bledahl@raklaw.com
`Email: jchung@raklaw.com
`Email: jpickens@raklaw.com
`Email: pkroeger@raklaw.com
`Email: pwang@raklaw.com
`Email: cconkle@raklaw.com
`
`T. John Ward, Jr.
`Texas State Bar No. 00794818
`E-mail: jw@wsfirm.com
`Claire Abernathy Henry
`Texas State Bar No. 24053063
`E-mail: claire@wsfirm.com
`Andrea Fair
`State Bar No. 24078488
`E-mail: Andrea@wsfirm.com
`Ward, Smith & Hill, PLLC
`PO Box 1231
`Longview, Texas 75606-1231
`(903) 757-6400 (telephone)
`(903) 757-2323 (facsimile)
`
`Attorneys for Defendants:
`
`Melissa R. Smith
`State Bar No. 24001351
`GILLAM & SMITH, L.L.P.
`303 S. Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`Michael A. Jacobs (CA SBN 111664)
`(admitted in the Eastern District of Texas)
`Robert J. Esposito (CA SBN 267031)
`Christopher J. Wiener (CA SBN 280476)
`(admitted in the Eastern District of Texas)
`Shaelyn K. Dawson (CA SBN 288278)
`(admitted pro hac vice Eastern District of Texas)
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Telephone: (415) 268-7000
`
`
`sf-3844418
`
`2
`
`NetApp, Inc. Exhibit 1015 Page 2
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 3 of 31 PageID #: 18772
`
`
`Facsimile: (415) 268-7522
`mjacobs@mofo.com
`resposito@mofo.com
`cwiener@mofo.com
`shaelyndawson@mofo.com
`
`Colette Reiner Mayer (CA SBN 263630)
`(admitted in the Eastern District of Texas)
`Diek Van Nort (CA SBN 273823)
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 813-5600
`Facsimile: (650) 494-0792
`crmayer@mofo.com
`dvanort@mofo.com
`
`II.
`
`STATEMENT OF JURISDICTION
`
`1.
`
`This Court has subject-matter jurisdiction over the patent infringement claims
`
`asserted by Realtime pursuant to 28 U.S.C. §§ 1331 and 1338(a), because this action arises under
`
`the patent laws of the United States, including 35 U.S.C. § 1 et seq. Subject matter jurisdiction,
`
`personal jurisdiction, and venue are not disputed in this case.
`
`III. NATURE OF THE ACTION
`
`A.
`
`1.
`
`Realtime’s Statement Regarding Description of the Case
`
`In this patent-infringement action, Realtime alleges that Defendants NetApp and
`
`Solidfire (collectively, “NetApp”) have infringed and continue to infringe certain claims of U.S.
`
`Patent Nos. 7,161,506 (“’506 patent”); 7,415,530 (“’530 patent”), 7,378,992 (“’992 patent”),
`
`8,643,513 (“’513 patent”), 9,054,728 (“’728 patent”), and 9,116,908 (“’908 Patent”)
`
`(collectively, the “Patents-in-Suit” or “Asserted Patents”). Realtime has asserted the following
`
`claims of the Patents-in-Suit (collectively, the “Asserted Claims”):
`
`’506 patent claim 105;
`
`’530 patent claims 1, 2, 12, 20;
`
`3
`
`
`sf-3844418
`
`NetApp, Inc. Exhibit 1015 Page 3
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 4 of 31 PageID #: 18773
`
`
`’992 patent claim 48;
`
`’513 patent claims 1, 14, 15;
`
`’728 patent claims 1, 10, 17, 20, 24; and
`
`’908 patent claims 1, 3.
`
`2.
`
`The accused products in this case are: (1) ONTAP products and services
`
`(“ONTAP”), including products and services that utilize ONTAP (e.g., versions 8.0.1 and
`
`forward, including, e.g., 8.1, 8.2, 8.3, 9.0, 9.1), including, e.g., NetApp’s AFF (All Flash FAS)
`
`storage arrays (e.g., AFF A-Series, AFF A2/3/7xx, AFF8000 Series, AFF8080 EX Series,
`
`AFF8060 Series, AFF8040 Series, etc.), FAS hybrid (SSD + HDD) storage arrays (e.g.,
`
`FAS9000 Series, FAS8200 Series, FAS8000 Series, FAS8080 Series, FAS8060 Series, FAS8040
`
`Series, FAS8020 Series, FAS8000 Series, FAS6290 Series, FAS6280 Series, FAS6250 Series,
`
`FAS6240 Series, FAS6220 Series, FAS6210 Series, FAS6200 Series, FAS6080 Series, FAS6040
`
`Series, FAS6000 Series, FAS3270 Series, FAS3250 Series, FAS3240 Series, FAS3220 Series,
`
`FAS3210 Series, FAS3200 Series, FAS3170 Series, FAS3160 Series, FAS3140 Series, FAS3100
`
`Series, FAS3040 Series, FAS3000 Series, FAS2650 Series, FAS2620 Series, FAS2600 Series,
`
`FAS2554 Series, FAS2552 Series, FAS2520 Series, FAS2500 Series, FAS2240 Series, FAS2220
`
`Series, FAS2200 Series, FAS2050 Series, FAS2040 Series, FAS2020 Series, FAS2000 Series,
`
`V6200, V6210, V6220, V6240, V6250, V6280, V6290, V6000, V6040, V6080, V3210, V3220,
`
`V3240,V3250, V3270, V3170, V3160, V3140 etc.), N-Series (re-branded FAS systems sold
`
`through IBM, including, e.g., N3150, N3220, N3240, N3300, N3400, N3700, N3600, N6040,
`
`N6060, N6070, N6210, N6240, N6250, N6270, N7600, N7700, N7800, N7900, N7950T),
`
`FlexPod (e.g., FlexPod Datacenter, FlexPod Express, FlexPod Select, etc.), ONTAP Select,
`
`FlexArray, NetApp Private Storage (NPS), and ONTAP Cloud systems, products and services;
`
`
`sf-3844418
`
`4
`
`NetApp, Inc. Exhibit 1015 Page 4
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 5 of 31 PageID #: 18774
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`
`(2) AltaVault products and services (“AltaVault”), including products and services that utilize
`
`AltaVault (e.g., versions 4.0, 4.1, 4.2) / SteelStore (e.g., versions 3.2, 3.3), including, e.g., Cloud-
`
`integrated Solutions (e.g., AVA-c4, AVA-c8, AVA-c16), physical appliances (e.g., AVA400,
`
`AVA800, SS3030), and virtual appliances (e.g., AVA-v2, AVA-v8, AVA-v16, AVA-v32); and
`
`(3) SolidFire products and services (“SolidFire”), including products and services that utilize
`
`SolidFire / Element OS (all versions), including, e.g., SF2405, SF3010, SF4805, SF6010,
`
`SF9010, SF9605, SF19210, Element X, Element X Utility, and SolidFire All-Flash products and
`
`services. Realtime seeks a reasonable royalty for Defendants’ alleged infringement. Realtime
`
`seeks its costs, expenses, and attorneys’ fees under 35 U.S.C. § 285, and any other relief the
`
`Court deems appropriate.
`
`B.
`
`1.
`
`NetApp’s Statement Regarding Description of the Case
`
`NetApp seeks a judgment that the Asserted Claims of the Patents-in-Suit are
`
`invalid and not infringed. NetApp also seeks to recover its costs and reasonable attorneys’ fees
`
`from Realtime as provided in 35 U.S.C. § 285 or as otherwise allowed by law, together with any
`
`other relief the Court deems appropriate
`
`2.
`
`NetApp denies that any accused product (ONTAP, AltaVault, or SolidFire)
`
`directly or indirectly infringes any claim of any of the Asserted Patents, either literally, or under
`
`the doctrine of equivalents.
`
`3.
`
`NetApp also alleges that the asserted claims of the asserted patents do not recite a
`
`patentable invention, but merely obvious variations on what others had done before. NetApp
`
`also alleges that the asserted claims of the Asserted Patents are invalid as anticipated. NetApp
`
`also alleges that the asserted claims of the Asserted Patents are invalid for failing to satisfy the
`
`enablement and written description requirements.
`
`
`sf-3844418
`
`5
`
`NetApp, Inc. Exhibit 1015 Page 5
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 6 of 31 PageID #: 18775
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`
`
`
`4.
`
`NetApp denies that Realtime is entitled to damages, other monetary relief, or any
`
`other kind of relief. NetApp denies that Realtime is entitled to pre-judgment or post-judgment
`
`interest. NetApp denies that this case is exceptional as to NetApp’s actions and denies that
`
`Realtime is entitled to recover any of its attorneys’ fees and costs from NetApp.
`
`IV. CONTENTIONS OF THE PARTIES
`
`A.
`
`1.
`
`Realtime’s Statement of Its Contentions1
`
`This is a patent infringement case. Realtime is the owner of the Patents-in-Suit.
`
`As the owner, Realtime has the right to exclude others from using the inventions, and to enforce,
`
`sue and recover damages for past and future infringement of the patents. The accused products
`
`infringe the Patents-in-Suit, and Realtime is entitled to monetary compensation for this
`
`infringement.
`
`2.
`
`The inventions at issue in the Patents-in-Suit relate to improved, particularized
`
`systems of digital-data compression to address problems specific to the compression of “digital
`
`data.” Defendants directly and/or indirectly infringes, either literally or under the Doctrine of
`
`Equivalents, each of the asserted claims by making, using, offering for sale, and/or selling within
`
`the United States, importing into the United States, contributing to infringement, and/or inducing
`
`third parties to use Defendants’ products or services that meet or are used to meet the limitations
`
`of the Asserted Claims of the Patents-in-Suit.
`
`3.
`
`Realtime seeks both pre-verdict and post-verdict damages to compensate
`
`Realtime for Defendants’ infringement, but in no event less than a reasonable royalty. Realtime
`
`
`1 By providing these contentions, Realtime does not concede that all of these issues are appropriate for trial, nor does
`Realtime waive any of its motions in limine.
`
`
`sf-3844418
`
`6
`
`NetApp, Inc. Exhibit 1015 Page 6
`
`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 7 of 31 PageID #: 18776
`
`
`also seeks prejudgment and post-judgment interests and costs, including enhanced damages
`
`pursuant to 35 U.S.C. § 284 and attorneys’ fees pursuant to 35 U.S.C. § 285.
`
`B.
`
`1.
`
`NetApp’s Statement of Contentions
`
`By providing these contentions, NetApp does not concede that all of these issues
`
`are appropriate for trial. Nor does NetApp waive any of its motions in limine.
`
`2.
`
`NetApp contends that Realtime will be unable to prove that NetApp directly or
`
`indirectly infringed any of the Patents-in-Suit, either literally or under the doctrine of
`
`equivalents, as set forth below. NetApp contends that it has not infringed, and does not infringe,
`
`directly or indirectly, any of the Patents-in-Suit, either literally or under the doctrine of
`
`equivalents, for at least the reasons set forth in the rebuttal expert of Dr. James Storer.
`
`3.
`
`NetApp contends that the Accused Products (ONTAP, AltaVault, and/or
`
`SolidFire) do not infringe, either directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’530 patent.
`
`4.
`
`NetApp contends that Realtime is barred by ensnarement from asserting the
`
`doctrine of equivalents in connection with the asserted claims of the ’530 patent.
`
`5.
`
`NetApp contends that, because consumers do not directly infringe the ’530 patent,
`
`NetApp does not induce any infringement of the ’530 patent or contribute to any infringement of
`
`the ’530 patent.
`
`6.
`
`NetApp contends that the asserted claims of the ’530 patent do not recite a
`
`patentable invention, but merely obvious variations on what had been done before. The asserted
`
`claims are therefore invalid for obviousness under 35 U.S.C. § 103.
`
`
`sf-3844418
`
`7
`
`NetApp, Inc. Exhibit 1015 Page 7
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 8 of 31 PageID #: 18777
`
`
`7.
`
`NetApp contends that the asserted claims of the ’530 patent fail to satisfy the
`
`written description requirement. The asserted claims are therefore invalid under 35 U.S.C.
`
`§ 112.
`
`8.
`
`NetApp contends that the asserted claims of the ’530 patent fail to satisfy the
`
`enablement requirement. The asserted claims are therefore invalid for under 35 U.S.C. § 112.
`
`9.
`
`NetApp contends that, because it has not infringed the ’530 patent, and because
`
`the asserted claims of that patent are invalid, NetApp is not liable for any damages to Realtime.
`
`10.
`
`NetApp contends that the Accused Products (ONTAP, AltaVault, and/or
`
`SolidFire) do not infringe, either directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’908 patent.
`
`11.
`
`NetApp contends that, because consumers do not directly infringe the ’908 patent,
`
`NetApp does not induce any infringement of the ’908 patent or contribute to any infringement of
`
`the ’908 patent.
`
`12.
`
`NetApp contends that the asserted claims of the ’908 patent do not recite a
`
`patentable invention, but merely obvious variations on what had been done before. The asserted
`
`claims are therefore invalid for obviousness under 35 U.S.C. § 103.
`
`13.
`
`NetApp contends that the asserted claims of the ’908 patent fail to satisfy the
`
`written description requirement. The asserted claims are therefore invalid under 35 U.S.C.
`
`§ 112.
`
`14.
`
`NetApp contends that the asserted claims of the ’908 patent fail to satisfy the
`
`enablement requirement. The asserted claims are therefore invalid under 35 U.S.C. § 112.
`
`15.
`
`NetApp contends that, because it has not infringed the ’908 patent, and because
`
`the asserted claims of that patent are invalid, NetApp is not liable for any damages to Realtime.
`
`
`sf-3844418
`
`8
`
`NetApp, Inc. Exhibit 1015 Page 8
`
`

`

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`16.
`
`NetApp contends that the ’513 Patent is not entitled to December 11, 1998, as a
`
`priority date.
`
`17.
`
`NetApp contends that the Accused Products (ONTAP, AltaVault, and/or
`
`SolidFire) do not infringe, either directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’728 patent.
`
`18.
`
`NetApp contends that Realtime is barred by ensnarement from asserting the
`
`doctrine of equivalents in connection with the asserted claims of the ’728 patent.
`
`19.
`
`NetApp contends that, because consumers do not directly infringe the ’728 patent,
`
`NetApp does not induce any infringement of the ’728 patent or contribute to any infringement of
`
`the ’728 patent.
`
`20.
`
`NetApp contends that the asserted claims of the ’728 patent do not recite a
`
`patentable invention, but merely obvious variations on what had been done before. The asserted
`
`claims are therefore invalid for obviousness under 35 U.S.C. § 103.
`
`21.
`
`NetApp contends that the asserted claims of the ’728 patent do not recite a
`
`patentable invention, but was anticipated by what had been done before. The asserted claims are
`
`therefore invalid as anticipated under 35 U.S.C. § 102.
`
`22.
`
`NetApp contends that the asserted claims of the ’728 patent fail to satisfy the
`
`written description requirement. The asserted claims are therefore invalid under 35 U.S.C.
`
`§ 112.
`
`23.
`
`NetApp contends that the asserted claims of the ’728 patent fail to satisfy the
`
`enablement requirement. The asserted claims are therefore invalid under 35 U.S.C. § 112.
`
`24.
`
`NetApp contends that, because it has not infringed the ’728 patent, and because
`
`the asserted claims of that patent are invalid, NetApp is not liable for any damages to Realtime.
`
`
`sf-3844418
`
`9
`
`NetApp, Inc. Exhibit 1015 Page 9
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 10 of 31 PageID #:
` 18779
`
`
`25.
`
`NetApp contends that the Accused Products (ONTAP, AltaVault, and/or
`
`SolidFire) do not infringe, either directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’506 patent.
`
`26.
`
`NetApp contends that Realtime is barred by ensnarement from asserting the
`
`doctrine of equivalents in connection with the asserted claims of the ’506 patent.
`
`27.
`
`NetApp contends that, because consumers do not directly infringe the ’506 patent,
`
`NetApp does not induce any infringement of the ’506 patent or contribute to any infringement of
`
`the ’506 patent.
`
`28.
`
`NetApp contends that the asserted claims of the ’506 patent do not recite a
`
`patentable invention, but merely obvious variations on what had been done before. The asserted
`
`claims are therefore invalid for obviousness under 35 U.S.C. § 103.
`
`29.
`
`NetApp contends that the asserted claims of the ’506 patent do not recite a
`
`patentable invention, but was anticipated by what had been done before. The asserted claims are
`
`therefore invalid as anticipated under 35 U.S.C. § 102.
`
`30.
`
`NetApp contends that the asserted claims of the ’506 patent fail to satisfy the
`
`written description requirement. The asserted claims are therefore invalid under 35 U.S.C.
`
`§ 112.
`
`31.
`
`NetApp contends that the asserted claims of the ’506 patent fail to satisfy the
`
`enablement requirement. The asserted claims are therefore invalid under 35 U.S.C. § 112.
`
`32.
`
`NetApp contends that, because it has not infringed the ’506 patent, and because
`
`the asserted claims of that patent are invalid, NetApp is not liable for any damages to Realtime.
`
`
`sf-3844418
`
`10
`
`NetApp, Inc. Exhibit 1015 Page 10
`
`

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` 18780
`
`
`33.
`
`NetApp contends that the Accused Products (ONTAP, AltaVault, and/or
`
`SolidFire) do not infringe, either directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’513 patent.
`
`34.
`
`NetApp contends that Realtime is barred by ensnarement from asserting the
`
`doctrine of equivalents in connection the asserted claims of the ’513 patent.
`
`35.
`
`NetApp contends that, because consumers do not directly infringe the ’513 patent,
`
`NetApp does not induce any infringement of the ’513 patent or contribute to any infringement of
`
`the ’513 patent.
`
`36.
`
`NetApp contends that the asserted claims of the ’513 patent do not recite a
`
`patentable invention, but merely obvious variations on what had been done before. The asserted
`
`claims are therefore invalid for obviousness under 35 U.S.C. § 103.
`
`37.
`
`NetApp contends that the asserted claims of the ’513 patent do not recite a
`
`patentable invention, but was anticipated by what had been done before. The asserted claims are
`
`therefore invalid as anticipated under 35 U.S.C. § 102.
`
`38.
`
`NetApp contends that the asserted claims of the ’513 patent fail to satisfy the
`
`written description requirement. The asserted claims are therefore invalid under 35 U.S.C.
`
`§ 112.
`
`39.
`
`NetApp contends that the asserted claims of the ’513 patent fail to satisfy the
`
`enablement requirement. The asserted claims are therefore invalid under 35 U.S.C. § 112.
`
`40.
`
`NetApp contends that, because it has not infringed the ’513 patent, and because
`
`the asserted claims of that patent are invalid, NetApp is not liable for any damages to Realtime.
`
`
`sf-3844418
`
`11
`
`NetApp, Inc. Exhibit 1015 Page 11
`
`

`

`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 12 of 31 PageID #:
` 18781
`
`
`41.
`
`NetApp contends that the Accused Products (ONTAP, AltaVault, and/or
`
`SolidFire) do not infringe, either directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’992 patent.
`
`42.
`
`NetApp contends that Realtime is barred by ensnarement from asserting the
`
`doctrine of equivalents in connection with the asserted claims of the ’992 patent.
`
`43.
`
`NetApp contends that, because consumers do not directly infringe the ’992 patent,
`
`NetApp does not induce any infringement of the ’992 patent or contribute to any infringement of
`
`the ’992 patent.
`
`44.
`
`NetApp contends that the asserted claims of the ’992 patent do not recite a
`
`patentable invention, but merely obvious variations on what had been done before. The asserted
`
`claims are therefore invalid for obviousness under 35 U.S.C. § 103.
`
`45.
`
`NetApp contends that the asserted claims of the ’992 patent do not recite a
`
`patentable invention, but was anticipated by what had been done before. The asserted claims are
`
`therefore invalid as anticipated under 35 U.S.C. § 102.
`
`46.
`
`NetApp contends that the asserted claims of the ’992 patent fail to satisfy the
`
`written description requirement. The asserted claims are therefore invalid under 35 U.S.C.
`
`§ 112.
`
`47.
`
`NetApp contends that the asserted claims of the ’992 patent fail to satisfy the
`
`enablement requirement. The asserted claims are therefore invalid under 35 U.S.C. § 112.
`
`48.
`
`NetApp contends that, because it has not infringed the ’992 patent, and because
`
`the asserted claims of that patent are invalid, NetApp is not liable for any damages or reasonably
`
`royalty to Realtime.
`
`
`sf-3844418
`
`12
`
`NetApp, Inc. Exhibit 1015 Page 12
`
`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 13 of 31 PageID #:
` 18782
`
`
`49.
`
`NetApp denies that Realtime is entitled to its costs and expenses, or its attorneys’
`
`fees.
`
`§ 285.
`
`50.
`
`NetApp denies that Realtime is entitled to any enhanced damages under 35 U.S.C.
`
`51.
`
`NetApp contends Realtime’s assertion of the Asserted Patents is exceptional and
`
`that NetApp is entitled to recover reasonable attorneys’ fees and costs (and consultant fees and
`
`costs) pursuant to 35 U.S.C. § 285.
`
`
`V.
`
`STIPULATIONS AND UNCONTESTED FACTS
`
`A.
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`a.
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`1.
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`2.
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`3.
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`Statement of Uncontested Facts
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`Jurisdiction:
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`This Court has subject matter jurisdiction over this case.
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`This Court has personal jurisdiction over the parties.
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`Realtime filed its Complaint against NetApp on June 29, 2016, styled Realtime
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`Data LLC v. NetApp, Inc. Tyler Division, Civil Action No. 6:16-cv-961-RWS-JDL.
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`b.
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`1.
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`2.
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`3.
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`Colorado.
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`4.
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`c.
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`1.
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`2.
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`sf-3844418
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`Parties:
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`Realtime Data, LLC d/b/a IXO is a New York limited liability company.
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`NetApp, Inc. is a Delaware corporation headquartered in Sunnyvale, California.
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`SolidFire, LLC is a Delaware limited liability company based in Boulder,
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`Since February 2, 2016, NetApp has owned 100% of the interest in SolidFire.
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`Patents-In-Suit:
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`Realtime is the owner of the Patents-in-Suit.
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`The ’506 patent has a priority date of October 29, 2001.
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`13
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`NetApp, Inc. Exhibit 1015 Page 13
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`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 14 of 31 PageID #:
` 18783
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`3.
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`The U.S. Patent application that led to the ’506 patent was filed September 22,
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`2003, and the patent issued on January 9, 2007.
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`4.
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`The ’506 Patent is entitled “Systems and Methods for Data Compression Such as
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`Content Dependent Data Compression.”
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`5.
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`6.
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`7.
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`8.
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`9.
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`Claim 105 of the ’506 patent is at issue and asserted in this action.
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`The named inventor of the ’506 patent is James J. Fallon.
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`The ’506 patent expires on December 11, 2018.
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`The ’513 patent has a priority date of October 29, 2001.
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`The U.S. patent application that led to the ’513 patent was filed June 6, 2011, and
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`the patent issued on February 4, 2014.
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`10.
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`11.
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`12.
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`13.
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`14.
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`15.
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`The ’513 patent is entitled “Data compression systems and methods.”
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`Claims 1, 4, 15 of the ’513 patent are at issue and asserted in this action.
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`The named inventor of the ’513 patent is James J. Fallon.
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`The ’513 patent expires on November 2, 2019.
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`The ’530 patent has a priority date of March 11, 1999.
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`The U.S. patent application that led to the ’530 patent was filed October 26, 2006,
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`and the patent issued on August 19, 2008.
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`16.
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`The ’530 patent is entitled “System and methods for accelerated data storage and
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`retrieval.”
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`17.
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`18.
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`19.
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`20.
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`sf-3844418
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`Claims 1, 2, 12, and 20 of the ’530 patent are at issue and asserted in this action.
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`The named inventor of the ’530 patent is James J. Fallon.
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`The ’530 patent expires on March 11, 2019.
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`The ’908 patent has a priority date of March 11, 1999.
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`14
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`NetApp, Inc. Exhibit 1015 Page 14
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`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 15 of 31 PageID #:
` 18784
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`21.
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`The U.S. patent application that led to the ’908 patent was filed June 12, 2014,
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`and the patent issued on August 25, 2015.
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`22.
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`The ’908 patent is entitled “System and methods for accelerated data storage and
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`retrieval.”
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`23.
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`24.
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`25.
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`26.
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`27.
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`Claims 1 and 3 of the ’908 patent are at issue and asserted in this action.
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`The named inventor of the ’908 patent is James J. Fallon.
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`The ’908 patent expires on March 11, 2019.
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`The ’992 patent has a priority date of October 29, 2001.
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`The U.S. patent application that led to the ’992 patent was filed April 8, 2006, and
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`the patent issued on May 27, 2008.
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`28.
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`The ’992 patent is entitled “Content Independent Data Compression Method And
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`System.”
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`29.
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`30.
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`31.
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`32.
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`33.
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`Claim 48 of the ’992 patent is at issue and asserted in this action.
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`The named inventor of the ’992 patent is James J. Fallon.
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`The ’992 patent expires on December 11, 2018.
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`The ’728 patent has a priority date of October 29, 2001.
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`The U.S. patent application that led to the ’728 patent was filed September 24,
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`2014, and the patent issued on June 9, 2015.
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`action.
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`34.
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`35.
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`36.
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`37.
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`sf-3844418
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`The ’728 patent is entitled “Data Compression System and Methods.”
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`Claims 1, 10, 17, 20, and 24 of the ’728 patent are at issue and asserted in this
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`The named inventor of the ’728 patent is James J. Fallon.
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`The ’728 patent expires on December 11, 2018.
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`15
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`NetApp, Inc. Exhibit 1015 Page 15
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`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 16 of 31 PageID #:
` 18785
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`d.
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`1.
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`Person of Ordinary Skill in the Art:
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`Realtime’s Proposal: The person of ordinary skill in the art of the patented
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`technology at the time of the invention of the asserted patents would have a bachelor’s degree in
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`electrical engineering, computer engineering, computer science, or the equivalent or 2-3 years of
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`work experience with data compression, storage, retrieval, processing, and transmission, or the
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`equivalent.
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`2.
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`NetApp Proposal: A person of ordinary skill in the art for these patents would
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`hold a Bachelor of Science (B.S.) degree in Computer Science (CS) or Computer Engineering
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`(CE) with at least two years of course work in the area of programming and data compression.
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`Such course work would provide exposure to topics such as programming languages, data
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`structures, computer architecture, and data compression. A person who did not satisfy the
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`identified education level could still qualify as a person of ordinary skill if she had two years of
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`relevant work experience.
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`e.
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`1.
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`Accused Products:
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`The accused products in this case are: (1) ONTAP products and services
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`(“ONTAP”), including products and services that utilize ONTAP (e.g., versions 8.0.1 and
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`forward, including, e.g., 8.1, 8.2, 8.3, 9.0, 9.1), including, e.g., NetApp’s AFF (All Flash FAS)
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`storage arrays (e.g., AFF A-Series, AFF A2/3/7xx, AFF8000 Series, AFF8080 EX Series,
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`AFF8060 Series, AFF8040 Series, etc.), FAS hybrid (SSD + HDD) storage arrays (e.g.,
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`FAS9000 Series, FAS8200 Series, FAS8000 Series, FAS8080 Series, FAS8060 Series, FAS8040
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`Series, FAS8020 Series, FAS8000 Series, FAS6290 Series, FAS6280 Series, FAS6250 Series,
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`FAS6240 Series, FAS6220 Series, FAS6210 Series, FAS6200 Series, FAS6080 Series, FAS6040
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`Series, FAS6000 Series, FAS3270 Series, FAS3250 Series, FAS3240 Series, FAS3220 Series,
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`sf-3844418
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`16
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`NetApp, Inc. Exhibit 1015 Page 16
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`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 17 of 31 PageID #:
` 18786
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`FAS3210 Series, FAS3200 Series, FAS3170 Series, FAS3160 Series, FAS3140 Series, FAS3100
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`Series, FAS3040 Series, FAS3000 Series, FAS2650 Series, FAS2620 Series, FAS2600 Series,
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`FAS2554 Series, FAS2552 Series, FAS2520 Series, FAS2500 Series, FAS2240 Series, FAS2220
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`Series, FAS2200 Series, FAS2050 Series, FAS2040 Series, FAS2020 Series, FAS2000 Series,
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`V6200, V6210, V6220, V6240, V6250, V6280, V6290, V6000, V6040, V6080, V3210, V3220,
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`V3240,V3250, V3270, V3170, V3160, V3140 etc.), N-Series (re-branded FAS systems sold
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`through IBM, including, e.g., N3150, N3220, N3240, N3300, N3400, N3700, N3600, N6040,
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`N6060, N6070, N6210, N6240, N6250, N6270, N7600, N7700, N7800, N7900, N7950T),
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`FlexPod (e.g., FlexPod Datacenter, FlexPod Express, FlexPod Select, etc.), ONTAP Select,
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`FlexArray, NetApp Private Storage (NPS), and ONTAP Cloud systems, products and services;
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`(2) AltaVault products and services (“AltaVault”), including products and services that utilize
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`AltaVault (e.g., versions 4.0, 4.1, 4.2) / SteelStore (e.g., versions 3.2, 3.3), including, e.g., Cloud-
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`integrated Solutions (e.g., AVA-c4, AVA-c8, AVA-c16), physical appliances (e.g., AVA400,
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`AVA800, SS3030), and virtual appliances (e.g., AVA-v2, AVA-v8, AVA-v16, AVA-v32); and
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`(3) SolidFire products and services (“SolidFire”), including products and services that utilize
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`SolidFire / Element OS (all versions), including, e.g., SF2405, SF3010, SF4805, SF6010,
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`SF9010, SF9605, SF19210, Element X, Element X Utility, and SolidFire All-Flash products and
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`services.
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`VI. CONTESTED ISSUES OF FACT AND LAW
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`1.
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`The parties identify the following issues that remain to be litigated. To the extent
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`any issue of law discussed below is deemed to be an issue of fact, or any issue of fact deemed to
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`be an issue of law, it is incorporated into the appropriate section. The parties reserve the right to
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`sf-3844418
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`17
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`NetApp, Inc. Exhibit 1015 Page 17
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`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 18 of 31 PageID #:
` 18787
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`identify additional factual or legal issues that may arise, including those issues raised in any
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`motions in limine.
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`A.
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`Realtime’s Statement Regarding Issues to be Decided by the Jury
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`Infringement
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`1.
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`Whether Realtime has shown by a preponderance of the evidence that Defendants
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`have directly or indirectly infringed and are directly or indirectly infringing any of the Asserted
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`Claims of the Patents-in-Suit, literally, or under the doctrine of equivalents.
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`Invalidity
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`2.
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`Whether Defendants have shown by clear and convincing evidence the invalidity
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`of any of the Asserted Claims.
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`Patent Damages/Remedies
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`3.
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`Whether Realtime is entitled to a reasonable royalty under 35 U.S.C. section 284
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`for Defendants’ infringement of the Patents-in-Suit if proven, and the total amount of such royalty
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`/ damages.
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`B.
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`a.
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`1.
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`NetApp’s Statement Regarding Issues to be Decided by the Jury
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`Invalidity of the Asserted Patent Claims
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`Whether the earliest priority date that the ’506, ’728, ’513, and ’992 patents are
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`entitled to is October 29, 2001.
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`2.
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`Whether the asserted claims of the Patents-in-Suit are invalid for obviousness
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`under 35 U.S.C. § 103.
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`3.
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`Whether the asserted claims of the ’506, ’728, ’513, and ’992 patents are invalid
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`as anticipated under 35 U.S.C. § 102.
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`sf-3844418
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`18
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`NetApp, Inc. Exhibit 1015 Page 18
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`

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`Case 6:16-cv-00961-RWS-JDL Document 263 Filed 12/04/17 Page 19 of 31 PageID #:
` 18788
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`4.
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`Whether the asserted claims of the Patents-in-Suit are invalid due to written
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`description and/or lack of enablement under 35 U.S.C. § 112.2
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`5.
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`Whether there exist objective indicia or secondary considerations of non-
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`obviousness, including but not limited to, any long-felt need that has been resolved by the
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`subject matter embodied by the asserted claims of the Patents-in-Suit; any failed attempts of
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`others that reflect any non-obviousness of the asserted claims of the Patents-in-Suit; any
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`skepticism on the part of those skilled in the art as concerns the subject matter of the asserted
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`claims of the Patents-in-Suit; any licensing of the subject matter of the asserted claims of the
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`Patents-in-Suit that may be reflective of non-obviousness of these patent claims; any commercial
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`success; any recognition in the industry for the subject matter of the asserted claims of the
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`Patents-in-Suit; any acquiescence to the validity of the asserted claims of the Patents-in-Suit; any