Case: Document: 55 Page: 1 Filed: 05/10/2018

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1 Case: Document: 55 Page: 1 Filed: 05/10/ (LEAD), -1440, -1441, -1444, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT TECHNOLOGY PROPERTIES LIMITED LLC, PHOENIX DIGITAL SOLUTIONS LLC, PATRIOT SCIENTIFIC CORPORATION, v. Plaintiffs-Appellants, HUAWEI TECHNOLOGIES CO., LTD., FUTUREWEI TECHNOLOGIES, INC., HUAWEI DEVICE CO., LTD., HUAWEI DEVICE USA INC., HUAWEI TECHNOLOGIES USA INC., ZTE CORPORATION, ZTE USA, INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., NINTENDO CO., LTD., NINTENDO OF AMERICA, INC., Defendants-Appellees, Appeal from the United District Court for the Northern District of California, Case Nos. 3:12-cv VC, 3:12-cv VC, 3:12-cv VC, 3:12-cv VC, 3:12-cv VC, and 3:12-cv VC. The Honorable Vince Chhabria, Judge Presiding. APPELLANTS REPLY IN SUPPORT OF THEIR MOTION FOR JUDICIAL NOTICE OF ADDITIONAL MATERIALS FROM THE 336 PATENT FILE HISTORY Dated: May 10, 2018 DENISE DE MORY (SBN ) ddemory@bdiplaw.com HENRY BUNSOW (SBN 60707) hbunsow@bdiplaw.com AARON HAND (SBN ) ahand@bdiplaw.com LAUREN ROBINSON (SBN ) lrobinson@bdiplaw.com BUNSOW DE MORY LLP 701 El Camino Real Redwood City, CA Telephone: (650) Facsimile: (415)

2 Case: Document: 55 Page: 2 Filed: 05/10/2018 ARGUMENT Throughout the underlying and prior proceedings, Plaintiffs-Appellants consistently maintained that there was no file history disclaimer during the prosecution of the 336 Patent; Appellants therefore have not waived their challenges to the application of disclaimer into the construction of the entire oscillator claim term. 1 Because Appellants argument has not been waived, Appellants contend that this Court has discretion to consider the additional materials. Moreover, as detailed in Appellants Appeal Brief, the district court did not simply apply this Court s prior claim construction holding in its noninfringement analysis. Rather (at the urging of Defendants-Appellees), the district court engaged in further claim construction to impose functional limitations and require that the entire oscillator be free-running in order to achieve a benefit attributed to one embodiment described in the specification. 2 The result: An unforeseen situation in which the district court applied disclaimer to read out the claimed embodiment indeed, the district court read out the very same structure that the Applicants asserted was a point of novelty (an argument that the Examiner accepted). Additional portions of the file history that were not previously 1 Harris Corp. v. Ericsson Inc., 417 F.3d 1241, (Fed. Cir. 2005). 2 See Appx6-Appx8. For the Court s convenience, citations are made to the district court order ( MSJ Order ) included in the Appeal Brief Addendum filed at ECF No. 47, pp. Appx2 Appx8. A copy is also filed at ECF No. 1-2, pp

3 Case: Document: 55 Page: 3 Filed: 05/10/2018 considered provide additional context to confirm that the result reached in the lower court was inconsistent with the prosecution history and this Court s prior claim construction holding. This Court should exercise its discretion to consider the undisputed public records in performing its legal analysis; at minimum, it is appropriate to defer consideration of these issues to the merits panel. I. THE PROFFERED FILE HISTORY EXCERPTS ARE FITTING FOR JUDICIAL NOTICE AND SUPPLEMENTATION OF THE RECORD A. Appellees do not challenge the accuracy or authenticity of the proffered materials, which are amenable to judicial notice. The proffered file history excerpts fall squarely within the ambit of Federal Rule of Evidence 201(b)(2) because their source and accuracy are not disputed in Appellees Response. 3 Indeed, they are excerpted from the very same source as the materials relied upon by both the district court and this Court in the prior appeal. For this reason, Appellees citation to Am. Standard Inc. v. Pfizer Inc., 828 F.2d 734, 746 (Fed. Cir. 1987), where no portion of the file history was in the record, is inapposite. 4 Here, the lower court s revisiting of claim construction on remand to arrive at a result that contradicts the intrinsic record warrants that this Court consider additional facts from the intrinsic record. 3 See generally Appellees Resp. (ECF No. 54). 4 See Appellees Resp. at

4 Case: Document: 55 Page: 4 Filed: 05/10/2018 B. The district court engaged in further claim construction on remand, warranting consideration of the intrinsic record. Appellees assert that it is too late to consider the proffered materials because this Court already decided claim construction in a prior appeal. 5 But that argument overlooks the district court s foray into claim construction on remand. The district court s summary judgment order is premised on its injection of functional limitations addressing the behavior of the accused products during operation to assess the asserted apparatus claims. 6 The district court ultimately held that an accused product must operate as a free running oscillator to satisfy the asserted claims even though that limitation is not found anywhere in this Court s prior opinion. 7 Similarly, the district court faulted Plaintiffs in its summary judgment opinion for failing to provide[] a definition of command 5 See Appellees Resp. at E.g., Appx5 (MSJ Order at 3) ( The record shows that, within a PLL, the accused oscillators operate at frequencies comparably stable to those of crystal oscillators. ), Appx7 (MSJ Order at 5) ( But the accused oscillators don t operate in isolation. ) (all emphasis added). All asserted claims were apparatus claims. 7 Compare Appx8 (MSJ Order at 6) ( [U]nlike the free-running oscillators described in the patent, the accused oscillators ) (emphasis added), with Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). -4-

5 Case: Document: 55 Page: 5 Filed: 05/10/2018 input that would exclude inputs of these kinds. 8 This again demonstrates that the lower court was engaged in claim construction on remand. C. In addition to taking judicial notice, supplementation of the record is within this Court s discretion. As briefly described above, and more fully detailed in Appellants Appeal Brief, the district court s summary judgment decision rested on the court s further claim construction analysis on remand. That analysis is purely an issue of law which is subject to de novo consideration by this Court on appeal. Appellants Appeal Brief demonstrates how, based on the existing record, the lower court erred in its analysis and conclusions. In addition, Appellants current counsel, who were not counsel of record on the prior appeal or in prior claim construction proceedings, observed that additional portions of the file history (namely, the office actions that gave rise to the Applicants arguments, and the Examiner s record of interview that confirm the reasons for allowance) confirm that the lower court s injection of additional functional limitations into the apparatus claims disregarded the intrinsic record, and call into question the original finding of disclaimer. Appellees Response does not address the inherent power of an appellate court to supplement the record on appeal particularly for legal issues. Indeed, 8 Appx6 (MSJ Order at 4). -5-

6 Case: Document: 55 Page: 6 Filed: 05/10/2018 Appellees cases are distinguishable because they each refused to consider additional materials to decide to disputed factual issues. 9 See, e.g., Thomas & Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1581 n.6 (Fed. Cir. 1983) (rejecting addition of new prior art references on appeal); Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 824 (Fed. Cir. 1989) (declining to consider facts from an ongoing litigation and post-appeal reexamination events to assess facts concerning noninfringing alternatives). And Ballard Med. Prod. v. Wright, 821 F.2d 642, 643 (Fed. Cir. 1987) considered a very different issue, namely whether to impose sanctions for unauthorized inclusion of materials in the appendix. II. IF NOT GRANTED OUTRIGHT, APPELLANTS MOTION SHOULD BE REFERRED TO THE MERITS PANEL Appellees concede that a decision on this Motion involves issues that are intertwined with consideration of the merits. For example, Appellees assert that they will be arguing waiver and law of the case with respect to these new arguments in their forthcoming merits brief on appeal. 10 Appellants are not privy to those arguments and are therefore unable to respond to them at this juncture. Nonetheless, Appellants dispute that there is any waiver or that the law of the case doctrine bars consideration of Appellants arguments or confirming evidence 9 Appellees Resp. at Appellees Resp. at

7 Case: Document: 55 Page: 7 Filed: 05/10/2018 from the file history. Instead, the law of the case doctrine is a discretionary. 11 Thus, if the merits panel declines to find that the law of the case doctrine or the waiver doctrine bars Appellants arguments, then there would be no substantive bar to considering these materials. Because the propriety of the Court s consideration of the certified file history excerpts is dependent on and relevant to its consideration of Appellees substantive arguments, the Motion should be referred to the merits panel if it is not explicitly granted while briefing is underway. CONCLUSION Appellants respectfully request that the Court grant its motion and take judicial notice of the additional file history excerpts and allow them to be included in the Record and Joint Appendix. Alternatively, Appellants request that a ruling on this Motion be referred to the merits panel. 11 E.g., Arizona v. California, 460 U.S. 605, 618 (1983) ( Law of the case directs a court s discretion, it does not limit the tribunal s power. ). -7-

8 Case: Document: 55 Page: 8 Filed: 05/10/2018 Respectfully Submitted, Dated: May 10, 2018 /s/ Denise De Mory DENISE DE MORY (SBN ) ddemory@bdiplaw.com HENRY BUNSOW (SBN 60707) hbunsow@bdiplaw.com AARON HAND (SBN ) ahand@bdiplaw.com LAUREN ROBINSON (SBN ) lrobinson@bdiplaw.com BUNSOW DE MORY LLP 701 El Camino Real Redwood City, CA Telephone: (650) Facsimile: (415) Counsel for Appellants, TECHNOLOGY PROPERTIES LIMITED LLC, PHOENIX DIGITAL SOLUTIONS LLC, PATRIOT SCIENTIFIC CORPORATION STATEMENT OF COMPLIANCE WITH WORD COUNT LIMITATION The undersigned certifies that this Reply includes 1275 words (using the word count feature of Microsoft Word 2016), and therefore complies with the limit set forth in Fed. R. App. Proc. 27(d)(2) and Fed. Cir. Rule 27(d). /s/ Denise M. De Mory Denise M. De Mory -8-

9 Case: Document: 55 Page: 9 Filed: 05/10/2018 FORM 9. Certificate of Interest Form 9 Rev. 10/17 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT Technology Properties Limited, et al. v. Huawei Technologies Co., Ltd., et al. with , -1441, -1444, (lead) (consolidated) Case No. CERTIFICATE OF INTEREST Counsel for the: (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party) Technology Properties Limited LLC, Patriot Scientific Corporation, Phoenix Digital Solutions LLC, certifies the following (use None if applicable; use extra sheets if necessary): 1. Full Name of Party Represented by me 2. Name of Real Party in interest (Please only include any real party in interest NOT identified in Question 3) represented by me is: Technology Properties Limited LLC Technology Properties Limited LLC Patriot Scientific Corporation Patriot Scientific Corporation Phoenix Digital Solutions LLC Phoenix Digital Solutions LLC 3. Parent corporations and publicly held companies that own 10% or more of stock in the party n/a n/a (1) Technology Properties Limited LLC; and (2) Patriot Scientific Corporation. Patriot Scientific Corporation is a publicly held company and owns 10 percent or more of the membership interest in Phoenix Digital Solutions LLC. 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are: See Attachment A.

10 Case: Document: 55 Page: 10 Filed: 05/10/2018 FORM 9. Certificate of Interest Form 9 Rev. 10/17 5. The title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court s decision in the pending appeal. See Fed. Cir. R (a)(5) and 47.5(b). (The parties should attach continuation pages as necessary). See Attachment B. 5/10/2018 /s/ Denise De Mory Date Please Note: All questions must be answered All Counsel of Record Via Court's CM-ECF cc: Signature of counsel Denise De Mory Printed name of counsel Reset Fields

11 Case: Document: 55 Page: 11 Filed: 05/10/2018 ATTACHMENT A Current Counsel of Record for all Plaintiffs/Appellees: TECHNOLOGY PROPERTIES LIMITED LLC; PHOENIX DIGITAL SOLUTIONS LLC; and PATRIOT SCIENTIFIC CORPORATION. Henry Bunsow (SBN 60707) hbunsow@bdiplaw.com Denise De Mory (SBN ) ddemory@bdiplaw.com Aaron Hand (SBN ) ahand@bdiplaw.com Lauren Robinson (SBN ) lrobinson@bdiplaw.com BUNSOW DE MORY LLP 701 El Camino Real Redwood City, CA Telephone: (650) Facsimile: (415)

12 Case: Document: 55 Page: 12 Filed: 05/10/2018 Previous Counsel of Record for Plaintiff/Appellee: TECHNOLOGY PROPERTIES LIMITED LLC Barry J Bumgardner Edward Reese Nelson, III John Paul Murphy Stacy Greskowiak McNulty (Terminated on 12/2/15) Thomas Christopher Cecil (Terminated on 12/2/15) NELSON BUMGARDNER, PC 3131 W 7th St., Suite 300 Ft Worth, Tx barry@nelbum.com ed@nelbum.com murphy@nelbum.com stacie@nelbum.com tom@nelbum.com TERMINATED: 08/11/2017 Michelle Gail Breit Neustal Law Offices, LTD 2534 South University Drive, Suite 4 Fargo, ND (701) Fax: (701) michelle@neustel.com TERMINATED: 04/15/2015 William L. Bretschneider Silicon Valley Law Group 50 W. San Fernando Street Suite 750 San Jose, CA Fax: wlb@svlg.com TERMINATED: 08/11/2017 Michael William Stebbins Silicon Valley Law Group One North Market Street Suite 200 San Jose, CA Fax: mws@svlg.com TERMINATED: 08/11/2017 David L. Lansky Philip William Marsh Thomas T. Carmack (Terminated 4/1/15) Vinh Huy Pham Arnold & Porter Kaye Scholer LLP 3000 El Camino Real Five Palo Alto Square, Suite 500 Palo Alto, CA Fax: David.Lansky@apks.com (Inactive) Philip.Marsh@apks.com Tom.Carmack@apks.com vinh.pham@apks.com TERMINATED: 04/16/2015 James Carl Otteson Arnold & Porter Kaye Scholer LLP 1801 Page Mill Road Suite 110 Palo Alto, CA Fax: James.Otteson@apks.com TERMINATED: 04/16/2015 2

13 Case: Document: 55 Page: 13 Filed: 05/10/2018 Previous Counsel of Record for Plaintiff/Appellee: PHOENIX DIGITAL SOLUTIONS LLC Barry J Bumgardner Edward Reese Nelson, III John Paul Murphy Stacy Greskowiak McNulty (Terminated on 12/2/15) Thomas Christopher Cecil (Terminated on 12/2/15) NELSON BUMGARDNER, PC 3131 W 7th St., Suite 300 Ft Worth, Tx barry@nelbum.com ed@nelbum.com murphy@nelbum.com stacie@nelbum.com tom@nelbum.com TERMINATED: 08/11/2017 Christopher D. Banys Jennifer Lu Gilbert Richard Cheng-hong Lin BANYS, P.C Duane Avenue Santa Clara, CA Fax: cdb@banyspc.com jlg@banyspc.com rcl@banyspc.com TERMINATED: 06/05/2017 Christopher J Judge BANYS PC 1032 Elwell Ct., No. 100 Palo Alto, CA TERMINATED: 06/05/2017 David L. Lansky Philip William Marsh Thomas T. Carmack (Terminated 4/1/15) Vinh Huy Pham ARNOLD & PORTER KAYE SCHOLER LLP 3000 El Camino Real Five Palo Alto Square, Suite 500 Palo Alto, CA Fax: David.Lansky@apks.com (Inactive) Philip.Marsh@apks.com Tom.Carmack@apks.com vinh.pham@apks.com TERMINATED: 04/16/2015 Eric Miller Albritton ALBRITTON LAW FIRM P.O. Box 2649 Longview, Tx Fax: ema@emafirm.com TERMINATED: 08/11/2017 James Carl Otteson ARNOLD & PORTER KAYE SCHOLER LLP 1801 Page Mill Road, Suite 110 Palo Alto, CA Fax: James.Otteson@apks.com TERMINATED: 04/16/2015 3

14 Case: Document: 55 Page: 14 Filed: 05/10/2018 Michelle Gail Breit Neustal Law Offices, LTD 2534 South University Drive, Suite 4 Fargo, ND (701) Fax: (701) michelle@neustel.com TERMINATED: 04/15/2015 4

15 Case: Document: 55 Page: 15 Filed: 05/10/2018 Previous Counsel of Record for Plaintiff/Appellee: PATRIOT SCIENTIFIC CORPORATION Charles T. Hoge Kirby Noonan Lance & Hoge LLP 350 Tenth Avenue, Suite 1300 San Diego, California Phone: (619) Fax: (619) TERMINATED: 08/11/2017 5

16 Case: Document: 55 Page: 16 Filed: 05/10/2018 ATTACHMENT B Appealed from the Northern District Court: Tech. Properties Limited v. Huawei, Case No. 3:12-cv Tech. Properties Limited v. ZTE Corp, Case No. 3:12-cv-3876 Tech. Properties Limited v. Samsung, Case No. 3:12-cv-3877 Tech. Properties Limited v. LG Electronics, Case No. 3:12-cv-3880 Tech. Properties Limited v. Nintendo, Case No. 3:12-cv-3881 Consolidated with Court of Appeals, Federal District: Tech. Properties Limited v. Huawei, Case No (LEAD) Tech. Properties Limited v. ZTE Corp, Case No Tech. Properties Limited v. Samsung, Case No Tech. Properties Limited v. LG Electronics, Case Tech. Properties Limited v. Nintendo, Case No

17 Case: Document: 55 Page: 17 Filed: 05/10/2018 FORM 30. Certificate of Service Form 30 Rev. 03/16 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT CERTIFICATE OF SERVICE I certify that I served a copy on counsel of record on by: May 10, 2018 U.S. Mail Fax Hand Electronic Means (by or CM/ECF) Denise De Mory Name of Counsel /s/ Denise De Mory Signature of Counsel Law Firm Address City, State, Zip Telephone Number Fax Number Address Bunsow De Mory LLP 701 El Camino Real Redwood City,CA (650) (415) ddemory@bdiplaw.com NOTE: For attorneys filing documents electronically, the name of the filer under whose log-in and password a document is submitted must be preceded by an "/s/" and typed in the space where the signature would otherwise appear. Graphic and other electronic signatures are discouraged. Reset Fields