Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 1 of 13 PageID #: 9800
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 18-937-CFC-MPT
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`)))))))))
`
`RETAILMENOT, INC.,
`Plaintiff and Counterclaim
`Defendant,
`
`v.
`HONEY SCIENCE LLC,
`
`Defendant and Counterclaimant.
`
`HONEY SCIENCE LLC’S OBJECTIONS TO THE JANUARY 23, 2020
`REPORT AND RECOMMENDATION REGARDING RETAILMENOT’S
`MOTION TO STAY HONEY’S ’625 PATENT COUNTERCLAIM
`
`Kelly E. Farnan (#4395)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7705
`farnan@rlf.com
`Robert Steinberg
`bob.steinberg@lw.com
`LATHAM & WATKINS LLP
`10250 Constellation Blvd.
`Suite 1100
`Los Angeles, CA 90067
`Telephone: (424) 653-5500
`
`Attorneys for Defendant and Counterclaimant
`Honey Science LLC
`
`Of Counsel:
`Morgan Chu (mchu@irell.com)
`Richard M. Birnholz (rbirnholz@irell.com)
`Samuel K. Lu (slu@irell.com)
`Keith A. Orso (korso@irell.com)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4211
`(310) 277-1010
`
`Tara D. Elliott
`tara.elliott@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW
`Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`
`Lisa K. Nguyen
`lisa.nguyen@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: (650) 328-4600
`
`Dated: February 6, 2020
`
`REDACTED
`PUBLIC VERSION
`
`Ex. 2022-0001
`
`Honey Science Corp.
`Exhibit 2022
`RetailMeNot v. Honey
`PGR2019-00060
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 2 of 13 PageID #: 9801
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`I.
`
`INTRODUCTION
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`Defendant and counterclaimant Honey Science LLC (“Honey”) respectfully objects to the
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`Report and Recommendation (“R&R”) dated January 23, 2020 (D.I. 218) concerning
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`RetailMeNot, Inc.’s (“RMN”) Motion to Stay Honey’s counterclaim regarding Honey’s U.S.
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`Patent No. 10,140,625 (“the ’625 patent”). RMN moved for a partial stay pending resolution of
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`petitions challenging the validity of the ’625 patent—even though the PTAB has not instituted any
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`reviews. The R&R recommended taking the unusual step of granting a pre-institution stay of
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`Honey’s infringement counterclaim against RMN on the ’625 patent. Such a stay unduly
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`prejudices Honey and creates a clear tactical litigation advantage for RMN by removing Honey’s
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`affirmative counterclaim from the case. This weighs heavily against granting a partial stay.
`
`RMN also is trying to leverage the R&R itself to cement this tactical advantage by sending
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`a copy to the PTAB as a new exhibit in support of its petitions. The PTAB has exercised discretion
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`to deny institution in other cases when, as Honey pointed out to the PTAB here, a District Court’s
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`schedule would resolve the issues in the petitions far sooner than the PTAB. Yet RMN is actively
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`working to discourage the PTAB from exercising this discretion to deny institution under 35
`
`U.S.C. § 314(a). In other words, RMN is trying to make the R&R a self-fulfilling prophecy.
`
`In deciding a stay was appropriate before institution, the R&R unduly relied on an
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`examiner’s rejection of certain claims in another patent application in the ’625 patent family. But
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`the R&R’s recommendation of a pre-institution stay did not have the benefit of additional events
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`that occurred in the Patent Office after the parties completed briefing. In a co-pending application,
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`the same examiner indicated that claims directed to similar subject matter as the ’625 patent would
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`be allowable over the same prior art currently of record. Honey submits that the petitions on which
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`the R&R relied are not likely to succeed. At best, their outcomes are very much in doubt.
`
`The R&R’s recommendation of a premature, partial stay also is fundamentally unfair and
`
`1
`
`Ex. 2022-0002
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 3 of 13 PageID #: 9802
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`would materially disadvantage Honey by effectively stripping Honey of its infringement claim just
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`as the parties were working to complete discovery and prepare expert reports ahead of the February
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`26, 2020 mediation and October 2020 trial. The District Court should deny the motion for stay.
`
`II.
`
`THE DISTRICT COURT SHOULD DENY THE STAY MOTION AND NOT
`ADOPT THE R&R
`
`Standard of Review
`
`A.
`Under Rule 72, “[w]hen a pretrial matter not dispositive of a party’s claim or defense is
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`referred to a magistrate judge to hear and decide,” and a party objects to the resulting order, the
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`district judge must “modify or set aside any part of the order that is clearly erroneous or contrary
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`to law.” Masimo Corp. v. Philips Elec. N. Am. Corp., 62 F. Supp. 3d 368, 388 (D. Del. 2014); see
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`28 U.S.C. § 636(b)(1)(A); Fed. R. Civ. P. 72(a). Under a clearly erroneous standard, the Court will
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`set aside factual findings when it is “left with the definite and firm conviction that a mistake has
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`been committed.” Id. A Magistrate Judge’s order is contrary to law “when the magistrate judge
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`has misinterpreted or misapplied the applicable law.” Id. The District Court never loses discretion
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`to manage the cases on its docket notwithstanding these provisions.
`
`A district court has discretion to grant or deny a motion to stay pending PTAB review. See,
`
`e.g., Siemens Indus., Inc. v. Westinghouse Air Brake Techs. Corp., No. 16-284-LPS, 2018 WL
`
`3046511, at *1 (D. Del. June 20, 2018). When considering motions to stay, courts “must weigh
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`competing interests and maintain an even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254
`
`(1936). To strike the balance when a patent challenger moves to stay a case pending PTAB review,
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`this Court considers three factors: “(1) whether a stay will simplify the issues for trial; (2) the status
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`of the litigation, particularly whether discovery is complete and a trial date has been set; and (3)
`
`whether a stay would cause the non-movant to suffer undue prejudice from any delay or allow the
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`movant to gain a clear tactical advantage.” Siemens Indus., 2018 WL 3046511, at *1. The R&R
`
`2
`
`Ex. 2022-0003
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 4 of 13 PageID #: 9803
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`clearly erred in recommending a stay in these circumstances. See HIP, Inc., v. Hormel Foods
`
`Corp., C.A. 18-cv-615-CFC (D.I. 127) (D. Del. May 16, 2019) (denying pre-institution stay;
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`simplification issue cuts against granting a stay prior to institution, the parties had finished claim
`
`construction, were engaged in substantial fact discovery, and trial was 13 months away).
`
`Procedural Background
`
`B.
`RetailMeNot filed its initial Complaint on June 25, 2018 asserting four patents, U.S. Patent
`
`No. 9,626,688 (“the ’688 patent”); U.S. Patent Nos. 9,639,853 (“the ’853 patent”), 9,953,335 (“the
`
`’335 patent”), and 9,965,769 (“the ’769 patent”). D.I. 1. Shortly thereafter, Honey filed its answer
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`and counterclaims. D.I. 8. On November 27, 2018, the ’625 patent issued to Honey, and on
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`December 20, 2018, Honey amended its counterclaims to assert the ’625 patent. D.I. 28.
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`The same day Honey amended its counterclaims, the Court issued its scheduling order after
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`briefing from both parties related to the appropriate schedule to accommodate all five patents. D.I.
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`29. The Court’s scheduling order provides that fact discovery will close on January 17, 2020;
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`opening expert reports are due on March 6, 2020; and expert discovery will be complete on May
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`29, 2020. D.I. 29. A trial in this case is set to begin on October 26, 2020.1 A mediation also is
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`scheduled before Judge Fallon on February 26, 2020.
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`On April 5, 2019, RMN served on Honey its invalidity contentions related to the ’625
`
`patent. These invalidity contentions included as Exhibit I, a 113-page claim chart allegedly
`
`mapping U.S. Pub. No. 2017/0148046 (“Mashadi”) on the ’625 patent. Subsequently, the parties
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`began the claim construction process, including claim terms from the ’625 patent. On August 27,
`
`
`1 On July 18, 2019, RMN filed a second suit, claiming infringement of three continuation patents.
`RetailMeNot, Inc. v. Honey Science LLC, C.A. No. 19-1345-CFC-MPT. Honey filed its Answer
`on September 10, 2019. (D.I. 8.)
`
`3
`
`Ex. 2022-0004
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 5 of 13 PageID #: 9804
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`2019, the Court held a claim construction hearing, and on November 27, 2019, the Court issued
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`its Report and Recommendation on Claim Construction (D.I. 161).
`
`The parties have conducted significant discovery. Since November 2018, the parties have
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`exchanged numerous requests for written discovery and letters, and engaged in multiple meet and
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`confers. The parties also have produced hundreds of thousands of pages of documents. A
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`significant portion of that discovery has been targeted towards the Honey browser extension, its
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`commercial success, and its development by Honey co-founders and executives Ryan Hudson and
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`George Ruan. The Honey browser extension embodies the ’625 patent, and RMN alleges that the
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`Honey browser extension infringes three of RMN’s patents—all issued nearly five years after the
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`Honey browser extension was originally released. The parties also conducted discovery regarding
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`RMN’s infringing “Genie” browser extension that RMN based on Honey’s browser extension.
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`The parties have conducted twenty-five (25) depositions of party and third-party witnesses to date
`
`and identified nineteen (19) outstanding depositions to be completed. (D.I. 216) (Stipulation and
`
`Order Extending Time). The parties also are working through scheduling and other issues with
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`respect to additional discovery to be completed.
`
`On November 15, 2019, RMN moved to stay Honey’s claims under the ’625 patent. (D.I.
`
`149.) RMN argued for a stay pending IPR and PGR petitions in which RMN contends that the
`
`claims of the ’625 patent are invalid under 35 U.S.C. § 103 as obvious in view of the Mashadi
`
`reference alone and in combination with other references. RMN brought these petitions in August
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`2019, approximately four-and-a half months after serving invalidity contentions. In the stay
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`motion, RMN argued that institution was likely because the same examiner who allowed the ’625
`
`patent issued a final rejection of certain claims in a co-pending Honey continuation application
`
`No. 16/403,036 (the ’036 Application) based on Mashadi. RMN emphasized that the examiner’s
`
`4
`
`Ex. 2022-0005
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 6 of 13 PageID #: 9805
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`rejection in the ’036 Application copied certain content from RMN’s IPR petition. Honey opposed
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`the motion on the grounds that a partial pre-institution stay would be inappropriate and that the
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`factors to be considered weighed against a stay. (D.I. 164.)
`
`On January 23, 2020, the Chief Magistrate Judge issued an R&R recommending that the
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`District Court grant the motion to stay. (D.I. 218.) Even though the PTAB had not instituted the
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`IPR or PGRs, the R&R relied heavily on the examiner’s office action in the co-pending ’036
`
`Application. (D.I. 149-2, Ex. 6, ’036 FH at 46.) Honey now respectfully objects and requests that
`
`the District Court decline to adopt the R&R and deny the stay.
`
`C.
`
`Recent Events In the Patent Office Demonstrate That The R&R Unduly Relied
`On The ’036 Application
`
`There is no dispute that this Court’s general practice is to grant a motion to stay only after
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`the PTAB institutes proceedings. R&R at 5; D.I. 149 at 1 (RMN’s opening brief); see, e.g.,
`
`Invensas Corp. v. Samsung Elecs. Co., No. 17-1363-MN-SRF, 2018 WL 4762957 (D. Del. Oct. 2,
`
`2018); Universal Secure Registry, LLC v. Apple Inc., No. 17-585-CFC-SRF, 2018 WL 4486379
`
`(D. Del. Sept. 19, 2018). Where, as here, the Court examines a pre-institution request for stay,
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`“the Court has become less and less sure about the merit of granting a stay in favor of an [PTAB]
`
`proceeding, when the PTAB has not even weighed in on whether to institute review.” Advanced
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`Microscopy Inc. v. Carl Zeiss Microscopy, LLC, No. 15-516-LPS-CJB, 2016 WL 558615, at *2
`
`(D. Del. Feb. 11, 2016).
`
`To encourage the Court to deviate from this general rule, RMN relied primarily on the
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`examiner’s rejection of certain claims sought in the ’036 application based on Mashadi. D.I. 149
`
`at 1, 5-8. RMN argued that the PTAB likely would institute review in light of the examiner’s
`
`adoption of arguments from the IPR petition in the rejection. Id. Although the standards for
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`institution and claim construction are different than those in examination, the R&R accepted this
`
`5
`
`Ex. 2022-0006
`
`

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`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 7 of 13 PageID #: 9806
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`argument. D.I. 218 at 8 (agreeing “that the PTAB will likely institute” and that the “probability
`
`of institution is greater here in view of the examiner’s rejection” in Honey’s ’036 application).
`
`The R&R did not have the benefit of additional events in the Patent Office. In another
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`continuation application to the ’625 patent, Application No. 16/172,685 (“the ’685 Application”),
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`Honey sought claims directed to similar subject matter as the ’625 patent.2 The same examiner
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`issued a rejection of the claims in that application, once again copying content from RMN’s IPR
`
`petition. Honey countered the rejection based on Mashadi. Honey overcame the rejection based
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`on Mashadi. In an interview with the examiner on December 19, 2019, the examiner confirmed
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`that the claims “would be allowable over the current prior art of record, thereby overcoming the
`
`current prior art rejections….” Ex. A at 178. On December 23, 2019, Honey submitted a response
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`summarizing the interview and stating that Mashadi “failed to disclose a system that, among other
`
`things, directly interfaces with a ‘checkout’ webpage of a retailer’s website and generates a ‘single’
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`graphical trigger that, when selected by the user, ‘automatically’ tests one or more digital codes to
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`determine which digital code provides the greatest discount and apply that code directly on the
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`checkout webpage to give the user that discount.” Id. Honey informed the examiner that it
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`believed these terms were unnecessary to distinguish the present invention over Mashadi but
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`submitted claims with the language the examiner suggested. The examiner agreed that the
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`requested claims “would be allowable over the current prior art of record, thereby overcoming the
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`current prior art rejections . . . .” Id. The terms discussed with the examiner are well within the
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`scope of the claims of the ’625 patent and feature prominently in the ’625 patent. The specification
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`describes at length the retailer’s checkout webpage and automatically testing digital codes based
`
`
`2 The examiner rejected the claims based on obviousness type double patenting, a rejection Honey
`overcame by giving a terminal disclaimer of any term beyond that of the ’625 patent. Ex. A at
`126-27, 179 (File History of the ’685 Application).
`
`6
`
`Ex. 2022-0007
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 8 of 13 PageID #: 9807
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`on a graphical trigger. See, e.g. D.I. 28, Ex. H at 14 (Figure 9 of ’625 describing a “computer-
`
`implemented system [which] determines that consumer has accessed a checkout interface” and
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`creates “a button that is dynamically presented on the checkout interface”); id. at 16 (“when the
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`consumer elects to complete the checkout process, the consumer can access a checkout interface”).
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`The conclusion of the same examiner as the ’625 patent and the ’036 application that the
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`claims in the ’685 application are allowable over the same rejection highlights that the RMN
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`petitions are not likely to succeed. At the very least, these additional events in the Patent Office
`
`that occurred after briefing demonstrate that the R&R placed undue weight on the rejection in the
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`’036 application in recommending a pre-institution stay. The R&R’s conclusion at best is
`
`premature. Honey submits that the requested partial stay should be denied.
`
`The R&R Incorrectly Concluded A Partial Stay Would Simplify The Issues
`
`D.
`Honey respectfully objects to the R&R’s conclusion that a partial, pre-institution stay in
`
`these circumstances would simplify the issues.
`
`First, the R&R focused mainly on predicting whether the PTAB was likely to grant review
`
`based on RMN’s petitions. D.I. 218 at 8-10. While the circumstances here leave the fate of RMN’s
`
`petitions very much in doubt, the R&R’s rationale that the PTAB may invalidate the challenged
`
`patent would favor a stay – and a pre-institution – in every case.3
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`Second, the R&R did not meaningfully address or weigh the overlap with the claims that
`
`would not be stayed. RMN’s motion ignored that the parties’ infringement allegations against one
`
`another implicate overlapping factual and legal issues across the five patents asserted here. This
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`makes the stay considerations unique to this case. Specifically, the discovery and witnesses
`
`
`3 In the event that Honey petitions the PTAB for review of the RMN patents, the same rationale
`would require the Court to institute a parallel pre-institution stay of RMN’s claims.
`
`7
`
`Ex. 2022-0008
`
`

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`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 9 of 13 PageID #: 9808
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`relevant to Honey’s counterclaim substantially overlap with the discovery and witnesses relevant
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`to the rest of the case (i.e., the portion that will not be stayed). For example, the Honey product
`
`that RMN accused of infringement in this case (the Honey browser extension) embodies the ’625
`
`patent claims. The inventors of the ’625 patent are also the Honey co-founders and the original
`
`developers of the Honey browser extension. This discovery, including RMN’s requests for
`
`depositions of the co-founders, is still ongoing.
`
`In preparing the case on RMN’s allegations on RMN’s patents, the parties also are litigating
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`issues relating to the RMN “Genie” browser extension. Genie is the same product that Honey
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`accuses of infringing the ’625 patent. The recommended stay does not simplify the issues because,
`
`no matter what, discovery concerning RMN’s Genie will have to continue. This includes
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`depositions of RMN witnesses regarding Genie, its development, and how it performed in the
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`market. This is important discovery relevant to at least RMN’s claim for damages, the purported
`
`value of RMN’s alleged inventions, alleged secondary considerations of non-obviousness of the
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`RMN patents, and Honey’s defenses to RMN’s claim of infringement, pre-suit damages, including
`
`responding to contentions regarding whether RMN’s Genie browser extension practices its own
`
`patents and failed to mark under 35 U.S.C. § 287. RMN also is using the R&R to block certain
`
`discovery, a disputed issue that has been separately submitted to the Magistrate Judge. These
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`events have already disrupted the current schedule.
`
`If a stay is granted and the PTAB denies the petitions, the parties will have to conduct
`
`additional depositions, supplement expert reports, and set a new schedule to reintegrate Honey’s
`
`counterclaim in the midst of expert discovery. Adding more discovery to what already needs to
`
`be done not only would be highly disruptive and prejudicial to Honey, it would not be feasible.
`
`See 3G Licensing, S.A. et al. v. HTC Corp., No. 17-83-LPS-CJB, slip op. (D. Del. Apr. 16, 2019)
`
`8
`
`Ex. 2022-0009
`
`

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`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 10 of 13 PageID #: 9809
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`(denying partial stay stating, in part, “the Court is concerned as to whether the parties could
`
`integrate the ’667 patent back into the case schedule without experiencing some expert discovery
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`inefficiencies and/or disruption to the District Court’s pre-trial and trial schedule for this case”).
`
`This is not a situation where the entire action is stayed. Indeed, RMN’s cases involved
`
`stays of the entire action. See, e.g., Uniloc USA Inc., 2019 WL 1905161, at *4 (granting motion
`
`to stay entire case); Neuro Cardiac Techs., LLC v. LivaNova, Inc., No. CV H-18-1517, 2018 WL
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`4901035, at *4 (S.D. Tex. Oct. 9, 2018) (same); Qualcomm Inc. v. Apple Inc., No. 3:17-CV-2403-
`
`CAB-MDD, 2018 WL 4104966, at *2 (S.D. Cal. Aug. 29, 2018) (same); Neste Oil OYJ v. Dynamic
`
`Fuels, LLC, No. 12-1744-GMS, 2013 WL 3353984, at *4 (D. Del. July 2, 2013) (same).
`
`E.
`
`The R&R Erroneously Concluded A Partial Stay Would Not Cause Honey To
`Suffer Undue Prejudice Or Provide RMN A Clear Tactical Advantage
`
` The R&R recognized that RMN had a motive “for tactical advantage” in moving for a pre-
`
`institution stay and that this “weighs slightly against a stay.” D.I. 218 at 15. The R&R also found
`
`that Honey’s conduct in promptly asserting its claims was neutral or “weighs slightly against a
`
`stay.” D.I. 218 at 19. Honey respectfully submits that the R&R should have placed a great deal
`
`more weight on the prejudice to Honey and tactical advantage to RMN from a partial, pre-
`
`institution stay and reached a different conclusion.
`
`Honey did not initiate this lawsuit. RMN came to market with its Genie browser extension
`
`well after Honey, and RMN based its Genie on Honey’s patented browser extension. RMN is
`
`infringing Honey’s ’625 patent, and the case should not be presented without the trier of fact
`
`having the whole story. To properly defend itself, the jury needs to have the whole picture that
`
`RMN is infringing Honey’s ’625 patent. As long as this case is progressing toward trial, stripping
`
`Honey of its counterclaim unfairly tips the scales and gives RMN exactly the tactical advantage it
`
`9
`
`Ex. 2022-0010
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 11 of 13 PageID #: 9810
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`hoped to obtain at a critical time in the case and just before the parties attend a mediation before
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`Judge Fallon on February 26, 2020.
`
`The R&R also incorrectly discounted the prejudice to Honey because of the existence of
`
`RMN’s second case and the possibility that Honey’s patent could be integrated into the second
`
`case. If the cases proceeded together as one on a unified schedule, and all the claims were
`
`presented at the same time, this may well be correct. However, if the cases proceed separately, it
`
`is dramatically unfair for RMN to present its claims—and only its claims—in the first case. Honey
`
`asserted its counterclaim on the ’625 patent so the jury should see RMN’s claims in their true light.
`
`Institution rates are trending down,4 and the PTAB has exercised its discretion to deny
`
`institution when the District Court’s schedule in litigation would result in decisions far sooner than
`
`could be rendered in the PTAB. Here, the case is currently has trial set in October 2020, well
`
`before any decisions would be made on any of the Petitions. In such circumstances, the PTAB has
`
`exercised its discretion to deny institution. See, e.g., Samsung Electronics America, Inc. v. Uniloc
`
`2017 LLC, IPR2019-01219 (Paper 7, entered Jan. 9, 2020) (exercising discretion to deny institution
`
`based on district court schedule). Leaving the R&R in place and adopting a partial, pre-institution
`
`stay could have the unintended effect of discouraging the PTAB from exercising its discretion
`
`under section 314(a) to deny institution when it otherwise would have ample grounds to do so.
`
`III. CONCLUSION
`Granting a partial, pre-institution stay of Honey’s claim under the ’625 patent in these
`
`circumstances does not strike an even balance. As set out in its opposition to RMN’s stay motion
`
`(D.I. 164) and herein, the stay RMN requested works a tremendous unfairness to Honey. Honey
`
`respectfully requests that the Court reject the R&R and deny the stay motion.
`
`
`4 www.uspto.gov/sites/default/files/documents/Trial_Statistics_2019-12-31.pdf (55%, slide 6).
`
`10
`
`Ex. 2022-0011
`
`

`

`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 12 of 13 PageID #: 9811
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`
`
`
`/s/ Kelly E. Farnan
`Kelly E. Farnan (#4395)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`farnan@rlf.com
`
`Robert Steinberg
`bob.steinberg@lw.com
`LATHAM & WATKINS LLP
`10250 Constellation Blvd.
`Suite 1100
`Los Angeles, CA 90067
`Telephone: (424) 653-5500
`
`Attorneys for Defendant and Counterclaimant
`Honey Science LLC
`
`
`
`Of Counsel:
`
`Morgan Chu (mchu@irell.com)
`Richard M. Birnholz (rbirnholz@irell.com)
`Samuel K. Lu (slu@irell.com)
`Keith A. Orso (korso@irell.com)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4211
`(310) 277-1010
`
`Tara D. Elliott
`tara.elliott@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW
`Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`
`Lisa K. Nguyen
`lisa.nguyen@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: (650) 328-4600
`
`Dated: February 6, 2020
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`11
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`Ex. 2022-0012
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`

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`Case 1:18-cv-00937-CFC-MPT Document 229 Filed 02/11/20 Page 13 of 13 PageID #: 9812
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on February 6, 2020, true and correct copies of the foregoing
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`document was served on counsel of record in the following manner:
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`BY ELECTRONIC MAIL
`Jack B. Blumenfeld
`Jeremy A. Tigan
`Morris, Nichols, Arsht & Tunnell LLP
`1201 North Market Street
`Wilmington, DE 19801
`
`BY ELECTRONIC MAIL
`Jeanne M. Heffernan P.C.
`Robert A. Appleby
`Jon R. Carter
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022-4611
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`/s/ Kelly E. Farnan
`Kelly E. Farnan (#4395)
`Farnan@rlf.com
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`1
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`Ex. 2022-0013
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`

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`Case 1:18-cv-00937-CFC-MPT Document 229-1 Filed 02/11/20 Page 1 of 189 PageID #:
` 9813
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`Exhibit A
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`Ex. 2022-0014
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`

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`Case 1:18-cv-00937-CFC-MPT Document 229-1 Filed 02/11/20 Page 2 of 189 PageID #:
` 9814
`
`PTO/SB/08a (08-03)
`Approved for use through 12/31/18. 0MB 0651-0031
`Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`n er e aperwor k R d r A t
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`con ro num e
`
`th P
`U d
`f 1995 e UC I0n C 0
`Complete if Known
`Substitute for form 1449A/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`Sheet
`
`(use as many sheets as necessary)
`I
`I
`I
`1
`of
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`1
`
`Application Number
`Filing Date
`First Named Inventor
`Art Unit
`Examiner Name
`Attorney Docket Number
`
`To be assigned
`October 26, 2018
`Ryan David Hudson
`To be assigned
`To be assigned
`HONEY.001 .X1 C1 C1
`
`Examiner
`Initials
`
`Cite No. 1
`
`U.S. PATENT DOCUMENTS
`U.S. Patent Document
`Publication Date
`Number-Kind Code2 (if known)
`MM-DD-YYYY
`
`Name of Patentee or
`Applicant of Cited Document
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
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`2002/0160761 A 1
`2007 /0073580 A 1
`2011/0153401 A1
`2012/0166268 A1
`2013/0046610 A1
`2013/0073448 A 1
`2013/0080235 A 1
`2013/0085807 A 1
`2014/0058834 A1
`2014/0074584 A1
`
`10-31-2002
`03-29-2007
`06-23-2011
`06-28-2012
`02-21-2013
`03-21-2013
`03-28-2013
`04-04-2013
`02-27-2014
`03-13-2014
`
`Wolfe
`Perry et al.
`Jellema, et al.
`Griffiths
`Abraham
`Wall et al.
`Wolfe
`Cincotta
`Libertv et al.
`Fisher
`
`Examiner
`Initials
`
`Examiner
`Initials'
`
`Cite No. 1
`11
`12
`13
`
`Cite
`No. 1
`14
`15
`16
`
`Examiner
`Initials'
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`Cite No. 1
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`17
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`Examiner
`Signature
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`FOREIGN PATENT DOCUMENTS
`Foreian Patent Document
`Publication Date
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`Applicant of Cited Document
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`TB
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`OFFICE ACTIONS/SEARCH REPORTS
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`2
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`item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue number(s),
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`"Loyalty Solutions - Issuing Rewards Services", 2008, First Data Corporation, available at
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`T2
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`Date
`Considered
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`*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant. 'Applicants unique citation designation number (optional). 2See Kinds of U.S. Patent Documents at www.uspto.gov
`or MPEP 901.04. 'Enter Office that issued the document, by the two-letter code (WIPO Standard ST.3). 4For Japanese patent documents, the indication of the year of the reign of
`the Emperor must precede the serial number of the patent document. 5Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST. 16
`if possible. 6Applicant is to place a check mark here if English language Translation is attached.
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`This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 USC 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to complete, including gathering, preparing, and
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`Box 1450, Alexandria, VA 22313-1450
`
`Ex. 2022-0015
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`

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`Case 1:18-cv-00937-CFC-MPT Document 229-1 Filed 02/11/20 Page 3 of 189 PageID #:
` 9815
`Electronic Acknowledgement Receipt
`
`EFSID:
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`Application Number:
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`34135702
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`16172685
`
`International Application Number:
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`Confirmation Number:
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`3723
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`Title of Invention:
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`SYSTEMS AND METHODS FOR INTERFACING WITH A WEBSITE TO MODIFY
`CONTENT
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`First Named Inventor/Applicant Name:
`
`Ryan David Hudson
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`Customer Number:
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`95508
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`Filer:
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`Joseph Kuan Liu/Cody Brown
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`Filer Authorized By:
`
`Joseph Kuan Liu
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`Attorney Docket Number:
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`HONEY.001.Xl Cl Cl
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`Receipt Date:
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`26-OCT-2018
`
`Filing Date:
`
`Time Stamp:
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`21:31:24
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`Application Type:
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`Utility under 35 USC 111 (a)
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`Payment information:
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`Submitted with Payment
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`I no
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`File Listing:
`
`Document
`Number
`
`Document Description
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`File Name
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`File Size(Bytes}/
`Message Digest
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`Multi
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`Pages
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`1561716
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`
`HONEY_00l_XlClCl_ADS.pdf
`
`no
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`7
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`5887b589dd21 0df2596a983eb702e893a91
`eada3
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`Warnings:
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`Ex. 2022-0016
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`

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`Case 1:18-cv-00937-CFC-MPT Document 229-1 Filed 02/11/20 Page 4 of 189 PageID #:
`Information:
` 9816
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`2
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`182426
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`HONEY _00l_Xl Cl Cl_Specifica
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`0de00e 1 0e92e76743eeb 1016f0bb8e56f99
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`Multipart Description/PDF files in .zip description
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`Document Description
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`Start
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`End
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`Abstract
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`Claims
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`Specification
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`Warnings:
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`Information:
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`28
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`24
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`29
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`25
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`HONEY_00l - XlClCl - IDS_Tran
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`96289
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`Information Disclosure Statement (IDS)
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`HONEY_00l - XlClCl - IDS_144
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`107781
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`Warnings:
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`This is not an USPTO supplied IDS fillable form
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`Total Files Size (in bytes)
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`8377956
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`Ex. 2022-0017
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`

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`Case 1:18-cv-00937-CFC-MPT Document 229-1 Filed 02/11/20 Page 5 of 189 PageID #:
` 9817
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indica