Case 6:22-cv-00031-ADA Document 285 Filed 02/25/24 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC., (D/B/A FLYP),
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`CIVIL ACTION NO. 6:22-cv-00031-ADA
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`JURY TRIAL DEMANDED
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`§
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`GOOGLE’S RESPONSIVE BRIEF REGARDING JURY INSTRUCTION NO. 22:
`PRIOR USE DEFENSE TO INFRINGEMENT
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`Flyp floated abandonment as an exception to Google’s longstanding prior use defense on
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`day four of trial through a newly proposed modification to the jury instructions. That was the first
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`time Flyp’s abandonment theory came up during the years-long pendency of this case. When con-
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`fronted with the obvious prejudice to Google—which by then had already finished putting on all
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`of its fact witnesses—Flyp rationalized by invoking burdens: “This is their burden, Your Honor.
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`This is an affirmative part of the statute they must prove.” Tr. 884:16–886:2, see also Tr. 889:6–
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`890:8. And on that basis, the Court agreed to accept Flyp’s late-breaking abandonment instruction.
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`Tr. 941:8–943:25 (“I’m making this decision because I think it’s Google’s burden.”).
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`But the issue is not so simple, and Google is not alone bearing a burden under § 273. Flyp
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`bore a threshold burden of its own—a burden of production to properly raise abandonment under
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`§ 273(e)(4) as an exception to Google’s prior use defense. Unless Flyp satisfied that initial burden,
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`Google had no obligation to spin its wheels trying to forecast and disprove undefined abandonment
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`theories. Such burden shifting applies in closely analogous contexts. See Apotex USA, Inc. v. Merck
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`& Co., 254 F.3d 1031, 1037 (Fed. Cir. 2001); Arctic Cat Inc. v. Bombardier Recreational Prods.
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`Case 6:22-cv-00031-ADA Document 285 Filed 02/25/24 Page 2 of 6
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`Inc., 876 F.3d 1350, 1368 (Fed. Cir. 2017). And it prevents exactly the type of inefficiency and
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`prejudice inherent in Flyp’s surprise abandonment theory here. The Court should apply the same
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`approach and disregard Flyp’s long overdue attempt to assert the statutory abandonment exception.
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`Flyp did not, and at this point cannot, carry its burden of production to properly raise abandonment
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`in this case.
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`To be sure, Google bears the ultimate burden of proving its prior use defense by clear and
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`convincing evidence. 35 U.S.C. § 273(b). The statute sets forth the elements required for a defend-
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`ant to “be entitled to a defense” based on prior commercial use. 35 U.S.C. § 273(a). In addition,
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`the statute separately identifies several limitations and exceptions to that defense, including aban-
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`donment. 35 U.S.C. § 273(e)(1)–(5). While § 273 remains largely uncharted territory within the
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`Patent Act,1 analogous provisions that likewise establish exceptions to a claim or defense—includ-
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`ing another exception premised on abandonment—require the party asserting such an exception to
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`raise the issue and satisfy an initial burden of production to proceed.
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`For example, under pre-AIA § 102(g), a defendant can challenge the validity of an asserted
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`pre-AIA patent based on prior invention by another. But the statute includes three exceptions to
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`that invalidity defense: the earlier inventor must not have “abandoned, suppressed, or concealed”
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`the purported prior-art invention. 35 U.S.C. § 102(g)(2) (emphasis added). In that context, the de-
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`fendant raising § 102(g) as a defense always bears the ultimate burden of persuasion to prove in-
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`validity by clear and convincing evidence. But the Federal Circuit has also held that, if the plaintiff
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`wants to raise abandonment, suppression, or concealment to negate an asserted prior invention
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`defense, it must satisfy its own burden of production as to those exceptions. Apotex, 254 F.3d at
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`1 Google is not aware of any previous case in any court that has addressed the abandonment ex-
`ception of § 273(e)(4).
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`-2-
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`Case 6:22-cv-00031-ADA Document 285 Filed 02/25/24 Page 3 of 6
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`1037; see also Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1304 (Fed. Cir. 2012); Flex-Rest, LLC
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`v. Steelcase, Inc., 455 F.3d 1351, 1360 (Fed. Cir. 2006); Dow Chem. Co. v. Astro-Valcour, Inc.,
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`267 F.3d 1334, 1339 (Fed. Cir. 2001). Absent such an affirmative showing, the plaintiff may not
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`go forward with attempting to defeat a § 102(g) defense based on alleged abandonment, suppres-
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`sion, or concealment of the prior invention.
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`The Federal Circuit has similarly allocated an initial burden of production to parties assert-
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`ing failure to mark under § 287(a) as an exception to patent-infringement damages. Even though
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`a defendant alleging insufficient marking has no burden of persuasion on the ultimate claim for
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`damages, it nonetheless “bears an initial burden of production to articulate the products it believes
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`are unmarked ‘patented articles’ subject to § 287.” Arctic Cat Inc. v. Bombardier Recreational
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`Prods. Inc., 876 F.3d 1350, 1368 (Fed. Cir. 2017). Only then must the plaintiff prove it had no
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`marking obligation as to the specifically identified products. The Federal Circuit explained why
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`such burden shifting is important—without initial notice, the marking exception “could lead to a
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`large scale fishing expedition and gamesmanship,” with the plaintiff left guessing about which
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`products, if any, it needed to address with contrary evidence in its own case. Id. at 1368–69.
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`The same principles apply to the abandonment exception at issue here. While Google bears
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`the ultimate burden of persuasion on its prior use defense, it was not Google’s burden to prove a
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`negative regarding each and every version and feature of Google Voice that Flyp might someday
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`argue had been abandoned.2 Otherwise, any defendant relying on the prior use defense would be
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`put to a potentially endless guessing game during discovery and when presenting its case at trial.
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`2 The Court noted that it would not make sense to impose on Google an independent burden to
`take up and disprove every exception listed in § 273(e) to prevail on its prior use defense. See Tr.
`943:11–19 (referencing the exception under § 273(e)(5): “Well, you’re not raising that, and they
`probably didn’t think to put on any evidence of that. No one cares.”).
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`-3-
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`Case 6:22-cv-00031-ADA Document 285 Filed 02/25/24 Page 4 of 6
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`And the immense prejudice Google now faces from Flyp waiting to articulate any abandonment
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`theory until the middle of trial would become widespread and routine in cases involving § 273. In
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`fact, Google still does not know, on the eve of closing, the details of Flyp’s abandonment theory.
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`Efficiency and fairness demand a different approach—one the Federal Circuit has already imple-
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`mented in other like contexts.
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`Accordingly, Google respectfully submits the Court should conclude that Flyp bore an in-
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`itial burden of production to articulate and support any abandonment argument it intended to pur-
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`sue under § 273(e)(4) long before trial, and Flyp’s choice to spring that issue on Google and on
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`the Court for the first time during trial came far too late to satisfy that burden. The Court should
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`therefore decline to present Flyp’s proposed instruction on abandonment to the jury.
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`DATED: February 25, 2024
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`Respectfully submitted,
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`/s/Robert W. Unikel
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Pro Hac Vice)
`johncotiguala@paulhastings.com
`Daniel J. Blake (Pro Hac Vice)
`danielblake@paulhastings.com
`Grayson S. Cornwell (Pro Hac Vice)
`graysoncornwell@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
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`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`Ariell N. Bratton (Pro Hac Vice)
`ariellbratton@paulhastings.com
`PAUL HASTINGS LLP
`4655 Executive Drive, Suite 350
`San Diego, CA 92121
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`-4-
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`Case 6:22-cv-00031-ADA Document 285 Filed 02/25/24 Page 5 of 6
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`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
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`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
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`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
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`Dan L. Bagatell (Pro Hac Vice)
`dbagatell@perkinscoie.com
`PERKINS COIE LLP
`3 Weatherby Road
`Hanover, NH 03755
`Telephone: (602) 351-8250
`Facsimile: (602) 648-7150
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`Andrew T. Dufresne (Pro Hac Vice)
`adufresne@perkinscoie.com
`PERKINS COIE LLP
`33 E. Main St. Ste. 201
`Madison, WI 53703
`Telephone: (608) 663-7460
`Facsimile: (608) 663-7499
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`Paige Arnette Amstutz
`State Bar No.: 00796136
`pamstutz@scottdoug.com
`SCOTT, DOUGLASS & MCCONNICO, LLP
`303 Colorado Street, Suite 2400
`Austin, TX 78701
`Telephone: (512) 495-6300
`Facsimile: (512) 495-6399
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`Attorneys for Defendant Google LLC
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`-5-
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`Case 6:22-cv-00031-ADA Document 285 Filed 02/25/24 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 25th day of February, 2024, a true and correct copy of the
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`foregoing document was filed electronically with the Clerk of Court using the CM/ECF system.
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`As of this date, all counsel of record have consented to electronic service and are being served
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`with a copy of this document through the Court’s CM/ECF system.
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`/s/Robert W. Unikel
`Robert W. Unikel
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`-6-
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