Case 6:22-cv-00031-ADA Document 286 Filed 02/25/24 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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` Civil Action No. 6:22-cv-31-ADA
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` JURY TRIAL DEMANDED
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`FLYPSI, INC. (D/B/A FLYP),
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` Plaintiff,
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` vs.
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`GOOGLE LLC,
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` Defendant.
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`FLYP’S RESPONSE IN OPPOSITION TO GOOGLE’S TRIAL BRIEF REGARDING
`JURY INSTRUCTION NO. 22: PRIOR USE DEFENSE TO INFRINGEMENT
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`Google’s contention that the fourth day of trial is “the first time Flyp’s abandonment theory
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`came up” is wrong. ECF No. 285; Trial Day 4 Tr. at 889:22–890:2 (“This is the first mention of
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`abandonment anywhere. And I would challenge them to show anywhere in an interrogatory
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`response, an expert report, a brief, anywhere where abandonment has been raised as an issue
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`until the morning of the last witnesses in the case.” (emphasis added)).
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`The Court, however, need look no further than Flyp’s opposition to its motion for summary
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`judgment on prior use, where Flyp asserted its abandonment position in clear, bold letters:
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`Case 6:22-cv-00031-ADA Document 286 Filed 02/25/24 Page 2 of 7
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`ECF No. 174 at 10 (excerpted). There was no hiding the ball. Flyp argued in no uncertain terms
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`that Google had “abandoned” the pre-2013 version of Google Voice and explicitly cited Section
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`273(e)(4)—the subsection entitled “Abandonment of Use.” And Flyp went on to provide factual
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`evidence indicating that Google Voice was abandoned, including that the product was overhauled
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`in “a massive undertaking in 2015–2017, involving over a dozen engineers working full time to
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`replace the pre-2013 version of Google Voice, including APIs that control data exchanges between
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`the server and the applications.” Id. at 10-12. The Court considered these arguments and denied
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`Google’s Motion. Pretrial Conference Tr. at 47:2-3.
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`Moreover, Flyp’s contention that Google Voice was abandoned has been a theme since the
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`beginning of the case Flyp cited on article (which it has also introduced at trial) to demonstrate
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`that Google abandoned pre-2013 Google Voice. ECF No. 1 at ¶ 19 (“From 2012 until early 2017,
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`Google made no major revision to Google Voice. Instead, according to industry observers, Google
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`let Google Voice languish in disrepair for five years.”) (citing https://gizmodo.com/five-years-
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`later-google-finally-remembers-google-voice-1791532022); Trial Day 1, Tr. at 133:15–24
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`(admitting PTX 629).
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`During fact discovery, Flyp’s 30(b)(6) notice identified topics relating to abandonment:
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`53. The facts and circumstances surrounding Your decision to rewrite the code
`underlying the Google Voice application, including Your reasons for rewriting the
`code, the costs of rewriting the code, the employee time involved in rewriting the
`code, and the identity of any new features implemented when the code was
`rewritten.
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`55. Your strategic plans, business plans, forecasts, revenue and/or projection, or
`budgets regarding the Accused Products and predecessor products from July 17,
`2013, to the present.
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`Plaintiff Flypsi, Inc.’s Notice of Rule 30(b)(6) Deposition of Defendant Google LLC at ¶ 53, 55.
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`ECF No. 174 at 10. The record demonstrates Google had ample notice of abandonment. And
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`exclusion of abandonment would actually prejudice Flyp because it put Google on notice without
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`even bearing the burden to do so because prior use is Google’s affirmative defense—a prior use
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`that Google did not even plead, at that. ECF No. 245 (Jan. 12, 2024).
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`Recognizing there is no law on this issue, Google attempts to manufacture a burden of
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`production for Flyp by arguing prior use is analogous to the burden-shifting framework of
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`interferences under Pre-AIA Section 102(g) and marking under Section 287. Apotex USA, Inc. v.
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`Merck & Co., 254 F.3d 1031, 1037 (Fed. Cir. 2001); Arctic Cat Inc. v. Bombardier Recreational
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`Prods. Inc., 876 F.3d 1350, 1368 (Fed. Cir. 2017). But the above would satisfy any such burden
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`of production—and there is no basis for applying one, in any event.
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`In the 102(g) context, the challenger of a patent bears the initial clear and convincing
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`burden to prove that the invention was made in this country by another. Apotex, 254 F.3d at 1037.
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`And a four-year delay from reduction to practice to filing date is considered “prima facie
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`suppression or concealment.” Paulik v. Rizkalla, 760 F.2d 1270, 1272 (Fed. Cir. 1985) (emphasis
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`added). Similarly, in the marking context, Arctic Cat provides that the defendant bears the initial
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`burden of production—a low bar—to identify products it believes are unmarked “patented articles”
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`subject to 35 U.S.C. § 287. Arctic Cat, 876 F.3d at 1368.
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`In the context of Section 273, the Federal Circuit recognizes as follows:
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`Congress has considered the implications of patenting secret processes, which prior
`innovators might often choose to conceal as trade secrets, and addressed the issue.
`As part of the AIA, § 5, 125 Stat. 284, 297-99, Congress revised 35 U.S.C. § 273
`to create a prior-use defense for a defendant that "commercially used" a claimed
`"process" or "machine, manufacture, or composition of matter used in a
`manufacturing or other commercial process" "at least 1 year" before the earlier of
`the effective filing date of the claimed invention or a previous disclosure thereof.
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`BASF Corp. v. SNF Holding Co., 955 F.3d 958, 968 n.8 (Fed. Cir. 2020). But even assuming,
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`arguendo, that Flyp carries any initial burden of production (which appears inconsistent with the
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`law), Flyp indisputably satisfied any such burden based on its Complaint, its briefing on summary
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`judgment, and its 30(b)(6) deposition notice.
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`As previously indicated, Section 273 expressly requires that for the prior use defense to
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`apply, the accused infringer’s prior commercial use “would otherwise infringe a claimed
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`invention being asserted against the person.” 35 U.S.C. § 273(a) (emphasis added). Courts have
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`construed the “otherwise infringe” requirement to prohibit applying the defense where less than
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`the complete invention is used. Pelican Int'l, Inc. v. Hobie Cat Co., No. 320CV02390RSHMSB,
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`2023 WL 2127994, at *18 (S.D. Cal. Feb. 10, 2023); Allfasteners USA, LLC v. Acme Operations
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`Pty., Ltd., 2021 WL 4027738, at *15 (C.D. Cal. May 25, 2021) (analyzing a prior use defense
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`under Section 273(a) based on the specific asserted claims in the action); Vaughan Co. v. Glob.
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`Bio-Fuels Tech., LLC, 2013 WL 5755389, at *11-12 (N.D.N.Y. Oct. 23, 2013) (same).
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`As stated in Pelican:
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`When Section 273 uses the term “claimed invention,” it describes it as the “claimed
`invention being asserted against the person” that the person “would otherwise
`infringe.” 35 U.S.C. § 273(a). “It is a ‘bedrock principle’ of patent law that the
`‘claims of a patent define the invention to which the patentee is entitled the right to
`exclude.’ ” Phillips, 415 F.3d at 1312. As such, an infringement analysis requires a
`comparison of the properly construed claims to the allegedly infringing device or
`act. Niazi, 30 F.4th at 1350. And an infringement analysis is performed on a claim-
`by-claim basis. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343,
`1351 (Fed. Cir. 2001). Thus, a person can only “otherwise infringe” a particular
`claimed invention if the person's accused product or act meets each and every
`limitation in a particular claim or claims asserted against it. See SIMO, 983 F.3d at
`1380; Ericsson, 773 F.3d at 1215.
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`2023 WL 2127994, at *19. What is identified to satisfy the “prior commercial use” requirement of
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`Section 273 must meet all of the claim limitations of the claim for which the defense is asserted.
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`Id. at *18 (holding that defendant’s prior use defense based on its “development and prototyping
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`of two interfaces prior to the relevant date of July 9, 2017” failed as a matter of law because the
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`defendant failed to offer any evidence that interface prototypes could satisfy the “watercraft” and
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`“rigid body” limitations in the asserted claims). Consequently, use of only a component of the
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`invention, even if the component is the most material aspect of the claimed invention, will not
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`trigger the defense. Id.
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`Consistent with the statute’s plain language, case law is clear the “good faith” requirement
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`is in addition to—not a substitute for—the language of “that would otherwise infringe”:
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`Under 35 U.S.C. § 273, a party is entitled to a non-infringement defense with
`respect to a “composition of matter used in a manufacturing or other commercial
`process, that would otherwise infringe a claimed invention.” A party claiming the
`non-infringement defense must have acted in good faith and commercially used the
`subject matter at least one year before the earliest effective date of the allegedly
`infringed patent. 35U.S.C. §273(a)(1). “Commercial use,” for the purposes of this
`defense, includes premarketing regulatory review. 35U.S.C. §273(c)(1).
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`Stoller Enterprises, Inc. v. Fine Agrochemicals Ltd., No. 4:20-CV-00750, 2023 WL 8283633, at
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`*13 (S.D. Tex. Nov. 30, 2023).
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`Flyp’s Jury Instruction 22 is not only proper, but Google has plainly failed to identify any
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`reason why the Court should not include the abandonment instruction. Consequently, Flyp
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`respectfully requests that the Court adopt Flyp’s proposed Jury Instruction 22 as follows:
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`Even if an Asserted Claim might appear to be infringed, there can be no
`infringement if Google proves that it commercially used the claimed invention in
`Google Voice, in good faith and in the United States at least one year before July
`17, 2013. If Google abandoned commercial use of Flyp’s Asserted Claims, Google
`may not rely on activities performed before the date of such abandonment in
`establishing a prior use defense.
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`Flyp’s proposed jury instructions more closely aligns with the plain language of the statute
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`and the relevant authorities on the issue.
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`Case 6:22-cv-00031-ADA Document 286 Filed 02/25/24 Page 6 of 7
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`DATED: February 25, 2024
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`Respectfully submitted,
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`/s/ Michael A. Bittner
`Thomas M. Melsheimer
`Texas Bar No. 13922550
`tmelsheimer@winston.com
`M. Brett Johnson
`Texas Bar No. 00790975
`mbjohnson@winston.com
`Michael A. Bittner
`Texas Bar No. 24064905
`mbittner@winston.com
`C. Charles Liu
`Texas Bar No. 24100410
`ccliu@winston.com
`Steven R. Laxton
`Texas Bar No. 24120639
`slaxton@winston.com
`John K. Myers (admitted pro hac vice)
`Texas Bar No. 24137074
`jmyers@winston.com
`WINSTON & STRAWN LLP
`2121 North Pearl Street, Suite 900
`Dallas, TX 75201
`Telephone: (214) 453-6500
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`Matthew R. McCullough
`California Bar No. 301330
`mrmccullough@winston.com
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`Telephone: (650) 858-6500
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`William M. Logan
`Texas Bar No. 24106214
`wlogan@winston.com
`Evan D. Lewis
`Texas Bar No. 24116670
`edlewis@winston.com
`WINSTON & STRAWN LLP
`800 Capitol Street, Suite 2400
`Houston, TX 77002
`Telephone: (713) 651-2766
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`ATTORNEYS FOR PLAINTIFF
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`Case 6:22-cv-00031-ADA Document 286 Filed 02/25/24 Page 7 of 7
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 25, 2024, a true and correct copy of the foregoing
`document was filed electronically with the Clerk of Court using the CM/ECF system. As of this
`date, all counsel of record have consented to electronic service and are being served with a copy
`of this document through the Court’s CM/ECF system. Administrative Policies and Procedures
`for Electronic Filing in Civil and Criminal Cases, Western District of Texas, Section 14.
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`/s/ Michael A. Bittner
`Michael A. Bittner
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