Case 4:15-cv PJH Document 48 Filed 12/23/15 Page 1 of 27

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1 Case :-cv-0-pjh Document Filed // Page of QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (CA Bar No. 0) Sean S. Pak (CA Bar No. 0) Jordan R. Jaffe (Cal. Bar No. ) jordanjaffe@quinnemanuel.com Patrick T. Burns (CA Bar No. 00) patrickburns@quinnemanuel.com 0 California Street, nd Floor San Francisco, California () -00 () -00 facsimile Attorneys for Defendant GOOGLE INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION MASTEROBJECTS, INC., Case No. :-cv-0-pjh Plaintiff, v. GOOGLE INC., Defendants. GOOGLE INC. S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT ON COLLATERAL ESTOPPEL AND WRITTEN DESCRIPTION Date: February, 0 Time: :00 a.m. Place: Courtroom - rd Floor Judge: Honorable Phyllis J. Hamilton CASE NO. :-CV-0-PJH

2 Case :-cv-0-pjh Document Filed // Page of TABLE OF CONTENTS Page I. INTRODUCTION II. III. THE CLAIMS OF THE 0 PATENT LACK WRITTEN-DESCRIPTION SUPPORT UNDER MASTEROBJECTS CONSTRUCTIONS... A. MasterObjects Misunderstands The Legal Standard... B. MasterObjects Admits That It Is Seeking To Broaden Its Patent Claims... C. The Written Description Of The 0 Patent Does Not Disclose Re-sending The Entire Search String With Each Successive Message.... The 0 Patent Does Not Expressly Disclose Re-Sending The Entire Search String From A Client To A Server In Successive Messages..... The Disclosure Of Query Messages Does Not Provide Written- Description Support... D. MasterObjects Argument Concerning What A Person Of Skill In The Art Would Recognize Is Irrelevant As A Matter Of Law.... MasterObjects and Its Expert s Obvious Variant Analysis is Irrelevant as a Matter of Law..... MasterObjects Arguments Misapply The Law of Written Description..... The 0 Patent s Statement That The Disclosed Protocol Is Optimized Does Not Provide Written Description Support..... MasterObjects Arguments Confuse The Written-Description Requirement With the Separate Enablement Requirement... COLLATERAL ESTOPPEL PRECLUDES MASTEROBJECTS FROM DISPUTING THE LIMITING EFFECT OF THE SPECIFICATION IN THIS CASE... A. MasterObjects Cannot Re-Litigate The Limiting Effect Of The Identical Specification That Is Now Contained In The 0 Patent.... This Case Presents The Identical Issue That Was Previously Litigated In MasterObjects I..... The Issue Presented Here Was Actually Litigated In MasterObjects I.... The Issue Presented Here Was Necessary to Judgment In MasterObjects I.... -i- CASE NO. :-CV-0-PJH

3 Case :-cv-0-pjh Document Filed // Page of B. MasterObjects Arguments Regarding New Claim Language Miss the Mark.... IV. CONCLUSION ii- CASE NO. :-CV-0-PJH

4 Case :-cv-0-pjh Document Filed // Page of TABLE OF AUTHORITIES Page 0 0 Cases Anascape, Ltd. v. Nintendo of Am., Inc., 0 F.d (Fed. Cir. 00)... Antares Pharma, Inc. v. Medac Pharma Inc., F.d (Fed. Cir. 0)... Ariad Pharms., Inc. v. Eli Lilly & Co., F.d (Fed. Cir. 00) (en banc)..., 0, Bayer AG v. Biovail Corp., F.d 0 (Fed. Cir. 00)... Capon v. Eshar, F.d (Fed. Cir. 00)... Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., F.d (Fed. Cir. 00)..., Collins v. D.R. Horton, Inc., 0 F.d (th Cir. 00)... CreAgri, Inc. v. Pinnaclife, Inc., Case No. -cv-, 0 WL (N.D. Cal. Dec., 0)... e.digital Corp. v. Futurewei Techs., Inc., F.d (Fed. Cir. 0)... Gentry Gallery, Inc. v. Berkline Corp., F.d (Fed. Cir. )... GPNE Corp. v. Apple, Inc., Case No. -cv-, 0 WL 00 (N.D. Cal. Apr., 0)... Honeywell Int'l, Inc. v. ITT Indus., Inc., F.d (Fed. Cir. 00)...,, 0 Hydranautics v. FilmTec Corp., 0 F. d 0 (th Cir. 000)... ICU Medical, Inc. v. Alaris Medical Systems, Inc., F.d (Fed. Cir. 00)... ICU Med., Inc. v. Alaris Med. Sys., Inc., No. 0-cv-00 MRP, 00 WL 00 (C.D. Cal. Jan., 00) aff d, F.d (Fed. Cir. 00)... Invitrogen Corp. v. Clontech Labs., Inc., F.d 0 (Fed. Cir. 00)... -iii- CASE NO. :-CV-0-PJH

5 Case :-cv-0-pjh Document Filed // Page of 0 0 LizardTech, Inc. v. Earth Resource Mapping, Inc., F.d (Fed. Cir. 00)... Lockwood v. Am Airlines, Inc., 0 F.d (Fed. Cir. )..., 0 Mallinckrodt, Inc. v. Masimo Corp., F. Supp. d 0 (C.D. Cal. 00)... Martek Biosciences Corp. v. Nutrinova, Inc., F.d (Fed. Cir. 00)..., MasterObjects, Inc. v. Google Inc., Fed. App x (Fed. Cir. 0)..., 0 MasterObjects, Inc. v. Google Inc., Case No. :-cv-00-pjh (N.D. Cal.), aff d, MasterObjects, Inc. v. Google Inc., Fed. App x (Fed. Cir. 0)...,, -,, -0 Nazomi Comm ns, Inc. v. Nokia Corp., No. C-0-0, 0 WL 0 (N.D. Cal. Jun., 0)... - In re NTP, Inc., F.d (Fed. Cir. 0)... PowerOasis, Inc. v. T-Mobile USA, Inc., F.d (Fed. Cir. 00)..., 0, ScriptPro, LLC v. Innovation Assocs., F.d (Fed. Cir. 0)..., Space Systems/Loral, Inc. v. Lockheed Martin Corp., 0 F.d (Fed. Cir. 00)... Textscape LLC v. Adobe Sys. Inc., Case No. C 0-0, 00 WL (N.D. Cal. June, 00)... 0 Trading Techs. Int'l, Inc. v. espeed, Inc., F.d 0 (Fed. Cir. 00)...,, 0 Tronzo v. Biomet, Inc., F.d (Fed. Cir. )... 0, TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., F.d (Fed. Cir. 00)... Univ. of Rochester v. G.D. Searle & Co., Inc., F.d (Fed. Cir. 00)... In re Westgate-Cal. Corp., F.d (th Cir. )..., Wyeth v. Abbot Labs., Case No. 0-0, 0 WL 0 (D.N.J. 0)... -iv- CASE NO. :-CV-0-PJH

6 Case :-cv-0-pjh Document Filed // Page of I. INTRODUCTION MasterObjects attempts to reargue what it lost in MasterObjects I. It recites oftentimes verbatim the identical arguments that this Court and the Federal Circuit have already rejected. E.g., compare dkt. at ( Allowed is not required. ), with MasterObjects Fed. Cir. Br. at ( Allowed is not required. ). It argues that the specification s description of the present 0 invention does not limit the invention as a whole, even though this Court, evaluating the identical specification in MasterObjects I, held precisely the opposite. See MasterObjects I, dkt. at. Remarkably, it also spends pages arguing about the scope of claim of the patent a claim not at issue here and as to which there is a final, binding judgment of noninfringement from MasterObjects I. In recycling the same arguments this Court and the Federal Circuit already rejected, MasterObjects effectively concedes that it cannot distinguish this case from MasterObjects I. To prevail here, MasterObjects must convince this Court to upend its prior rulings regarding the limiting effect of the specification shared by the and 0 patents. MasterObjects cannot do so. On one the hand, if the specification and the scope of the invention as a whole are limited to sending just the changes as this Court previously held, then MasterObjects claims cannot possibly cover all methods of transmitting information from a client to a server. On the other hand, if MasterObjects were correct that its claims cover subject matter exceeding the scope of its disclosed invention, then the claims are invalid for failing to meet the 0 Citations to MasterObjects Fed. Cir. Br. refer to MasterObjects, Inc. v. Google Inc., Case No. - (Fed. Cir. 0), dkt.. Compare dkt. at ( Far from limiting claim to the client sending only the changes, these remarks make clear that the client sends consecutive queries that include the growing string of characters, such that each query contains a different query string that lengthens or shortens the previous one. ), with MasterObjects Fed. Cir. Br. at ( Far from limiting claim to the client sending only the changes, these remarks make clear that the client sends consecutive queries that include the growing string of characters, such that each query contains a different query string that lengthens or shortens the previous one. ). Citations to MasterObjects I refer to MasterObjects, Inc. v. Google Inc., Case No. :- cv-00-pjh (N.D. Cal.), aff d, MasterObjects, Inc. v. Google Inc., Fed. App x (Fed. Cir. 0). -- CASE NO. :-CV-0-PJH

7 Case :-cv-0-pjh Document Filed // Page of written-description requirement. Either way, MasterObjects case cannot withstand scrutiny. Principles of collateral estoppel also preclude MasterObjects from seeking to revisit this Court s prior holdings regarding the scope of the invention and the limiting effect of the specification. MasterObjects attempts to escape collateral estoppel by arguing that the effect of the specification was not actually litigated and was not necessary to the result of MasterObjects I. But the first contention is counterfactual, as MasterObjects unsuccessfully 0 argued at length in the prior case both before this Court and the Federal Circuit that the specification s references to the present invention were not limiting and directed to a mere embodiment. E.g., MasterObjects I, dkt. at - (Plaintiff s Reply Claim Construction Br.). And the second contention conflicts with long-standing Ninth Circuit precedent, which instructs that two alternative holdings, each of which is sufficient to support the result, are both independently necessary to a judgment for collateral estoppel purposes. Corp., F.d, - (th Cir. ). For all of these reasons, Google is entitled to summary judgment. In re Westgate-Cal. 0 II. THE CLAIMS OF THE 0 PATENT LACK WRITTEN-DESCRIPTION SUPPORT UNDER MASTEROBJECTS CONSTRUCTIONS. As Google explained in its Responsive Claim Construction Brief (dkt. ), the newly drafted claims of U.S. Patent No.,,0 do not cover an embodiment where the entire input string (as opposed to just the changes) is re-transmitted from a client to a server. Nevertheless, if this Court were to find that the claims are as broad as MasterObjects contends, then they are invalid for lack of written description. This Court already has held that the specification of the 0 patent limits the disclosed invention to sending only the changes to the input string with each successive message and has rejected MasterObjects argument that the specification discloses resending the entire input string as the user types a query. MasterObjects I, dkt. at. As a result, MasterObjects cannot argue that the 0 specification contains an express disclosure of what MasterObjects contends its claims cover. Rather, MasterObjects own expert, Dr. Gareth Loy, admitted that his analysis focused on whether the purportedly claimed subject matter is an obvious variation of what the -- CASE NO. :-CV-0-PJH

8 Case :-cv-0-pjh Document Filed // Page of specification discloses. Ex. A (Deposition of Gareth Loy, Ph.D., hereafter Loy Depo. ) at 0:-. That analysis, however, is flatly inconsistent with the written-description requirement and therefore irrelevant as a matter of law. Accordingly, under MasterObjects proposed 0 0 construction, Google is entitled to summary judgment that the claims are invalid for lack of written-description support. A. MasterObjects Misunderstands The Legal Standard. MasterObjects provides an incomplete and misleading statement of the written-description requirement. As the Federal Circuit has recognized, the hallmark of written description is disclosure. Ariad Pharms., Inc. v. Eli Lilly & Co., F.d, (Fed. Cir. 00) (en banc). Thus, the written-description analysis requires an objective inquiry into the four corners of the specification to determine whether the specification actually describe[s] an invention understandable to [a] skilled artisan.... Claims exceeding a patent s written description are invalid. Gentry Gallery, Inc. v. Berkline Corp., F.d, (Fed. Cir. ). For patents issuing from continuation applications which often include claims drafted years after the invention the written-description requirement is an important check, ensur[ing] that the scope of the right to exclude... does not overreach the scope of the inventor s contribution to the field of art as described in the patent specification. Capon v. Eshar, F.d, (Fed. Cir. 00) (quotation and citation omitted; emphasis added); see also ICU Med., Inc. v. Alaris Med. Sys., Inc., No. 0-cv-00-MRP, 00 WL 00, at * (C.D. Cal. Jan., 00) (holding that subsequent claims that differ significantly from the original written description are invalid, particularly [w]hen the scope of a claim has been changed by amendment in such a way as to justify an assertion that it is directed to a different invention than was the original claim.... ) (citation omitted; emphasis added), aff d, F.d (Fed. Cir. 00). Although the specification need not use the precise words of the claims, the writtendescription requirement is not satisfied when the specification discloses only an obvious variant of Citations to Ex. A refer to Exhibit A to the Declaration of Jordan R. Jaffe, filed herewith. -- CASE NO. :-CV-0-PJH

9 Case :-cv-0-pjh Document Filed // Page of what is claimed. PowerOasis, Inc. v. T-Mobile USA, Inc., F.d, 0 (Fed. Cir. 00); Lockwood v. Am Airlines, Inc., 0 F.d, - (Fed. Cir. ) ( [A]ll the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. ). The proper test for written description is whether the specification actually or inherently discloses each claim element. PowerOasis, F.d at 0. Whether a skilled artisan would recognize the claimed variation as an obvious possibility (as MasterObjects argues) is legally irrelevant to the written-description inquiry. See infra Section II.D. If there is no actual or inherent disclosure of the claimed 0 0 subject matter, then the claims are invalid full stop. Compliance with the written-description requirement is a question of fact, but this issue is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party. PowerOasis, F.d at 0 (citing Invitrogen Corp. v. Clontech Labs., Inc., F.d 0, 0- (Fed. Cir. 00)). Courts in this District and around the country have granted summary judgment when a patentee has failed to raise a genuine issue of material fact to dispute the lack of written-description support for a claimed invention, including where the patentee offered expert testimony in opposition. See, e.g., GPNE Corp. v. Apple, Inc., Case No. -cv-, 0 WL 00, at * (N.D. Cal. Apr., 0) (granting summary judgment of invalidity for lack of written description despite expert testimony offered by patentee in opposition); CreAgri, Inc. v. Pinnaclife, Inc., Case No. -cv-, 0 WL, at *- (N.D. Cal. Dec., 0) (same); Wyeth v. Abbot Labs., Case No. 0-0, 0 WL 0, at *0 (D.N.J. 0) (same). B. MasterObjects Admits That It Is Seeking To Broaden Its Patent Claims. MasterObjects indisputably seeks a construction of the 0 patent claims that exceeds the scope of the claims in MasterObjects I. Specifically, MasterObjects contends that the newly drafted claims are broad enough to capture sending the entire input string with each successive message including characters previously sent from a client to a server. Opp. at ( The -- CASE NO. :-CV-0-PJH

10 Case :-cv-0-pjh Document Filed // Page 0 of 0 language of the new 0 claims does not limit the client to sending only the changes ). MasterObjects itself characterizes its claims as drastically different from the claims at issue in MasterObjects I, and it candidly admits that it intentionally drafted these claims in an effort to circumvent Google s non-infringement arguments. Dkt. 0 at. In its Opposition, MasterObjects continues to assert that it has effected a profound change in [claim] language. Opp. at. MasterObjects admission that it sought to broaden its claims after this Court found limiting statements in an identical specification is troubling and raises immediate writtendescription concerns. The Federal Circuit s opinion in ICU Medical, Inc. v. Alaris Medical Systems, Inc., F.d (Fed. Cir. 00), is both instructive and controlling. There, the patents at issue related to medical valves used for intravenous ( IV ) applications. Id. at. The original patent application disclosed only a device comprising a spike. Id. at. decade after the initial filing, however, the patentee added new claims, seeking to cover a A spikeless embodiment without any corresponding changes to the specification. Id. As a result, the spikeless claims sought to cover medical valves generically, while the patent specification describe[d] only medical valves with spikes. Id. at. This transparent 0 attempt to extend the claims beyond the specification s disclosure, the Federal Circuit held, violated the written-description requirement, rendering the new claims invalid. Id. at. The Federal Circuit s reasoning in ICU controls here. This Court has already found that the invention disclosed in the specification of MasterObjects patents is limited to a protocol that send[s] just the changes to the input buffer, instead of sending the entire input buffer. MasterObjects I, dkt. at (quoting U.S. Patent No.,,, hereafter the patent, 0:-). Indeed, in MasterObjects I, Google argued that the key aspect of the invention is that no character is ever re-sent to the server and this Court agreed with defendant here. Citations to Opp. refer to Plaintiff MasterObjects, Inc. s Combined Reply Claim Construction Brief And Opposition To Google Inc. s Motion For Summary Judgment On Collateral Estoppel And Written Description. Dkt.. -- CASE NO. :-CV-0-PJH

11 Case :-cv-0-pjh Document Filed // Page of MasterObjects I, dkt. at. Yet, MasterObjects admits that it deliberately set out to draft claims that attempt to capture an embodiment this Court has previously found to be undisclosed by the specification and which is contrary to the key aspect of the invention. What is more, MasterObjects never submitted to the examiner of the 0 patent this Court s claim construction order and its discussion of the limiting effect of the specification. MasterObjects tactics are 0 0 precisely the sort of claim drafting abuse against which the written-description requirement is intended to guard. C. The Written Description Of The 0 Patent Does Not Disclose Re-sending The Entire Search String With Each Successive Message. In MasterObjects I, this Court held that MasterObjects could not provide adequate support for its argument that the entire character string is re-sent as the user types in a query. MasterObjects I, dkt. at. The 0 patent shares the same specification as the patent previously considered by this Court. MasterObjects expert agreed the 0 and patents describe the same invention. Ex. A (Loy Depo.) at :-. He further conceded that all the language from the 0 patent that he relied on in his declaration is present in the patent. Id. at :-:. MasterObjects thus cannot provide support for its argument that the specification somehow, contrary to this Court s prior findings, now discloses re-sending the entire character string from the client to the server as the user types in a query. A detailed analysis confirms that the specification fails to disclose this subject matter. MasterObjects I, dkt. at. In an attempt to show sufficient disclosure, MasterObjects misconstrues the specification s disclosure and rehashes many of the same arguments previously rejected by this Court and the Federal Circuit.. The 0 Patent Does Not Expressly Disclose Re-Sending The Entire Search String From A Client To A Server In Successive Messages. MasterObjects cites two statements in the specification involving sending several characters at a time, Opp. at :-, and sending the complete string, Opp. at :- (incorporating argument from Opp. :0-). These statements are of no help to MasterObjects, because they never disclose re-sending previously sent characters in a subsequent message. The first statement merely describes an embodiment wherein a user replaces the contents -- CASE NO. :-CV-0-PJH

12 Case :-cv-0-pjh Document Filed // Page of of an entry field with an entirely new string. 0 Pat., :-. In these circumstances, the patent discloses that the Client may then send the entire string all at once to the Server. Id., :-0. Not only does this fail to disclose re-sending previously sent characters in a subsequent message, but it actually indicates that sending an entire string all at once is limited to those situations where the user replaces the previous contents of the entry field. MasterObjects relied on this same disclosure in MasterObjects I, to no avail. See MasterObjects Fed. Cir. Br. at. The second statement cited by MasterObjects also does not disclose re-sending previously sent characters in a subsequent message. Opp. at :0. To the contrary, this statement serves to 0 distinguish the just-the-changes approach of the present invention from the alternate approach of sending the entire input buffer. 0 Pat., 0:- (explaining that the present invention 0 involves sending just the changes to the input buffer, instead of sending the entire input buffer (emphasis added)). MasterObjects approach would turn the written-description requirement on its head, permitting a patentee whose specification explains that the invention is X instead of Y to seek claims directed to an invention involving Y. See Tronzo v. Biomet, Inc., F.d, (Fed. Cir. ) (holding that specification failed to provide written-description support for prior art approach where it specifically distinguishes the prior art as inferior and touts the advantages of the purported invention over the prior art). Consistent with its limitation of the present invention, the 0 patent never once suggests that its disclosure encompasses sending the entire input buffer in successive messages. As it did in MasterObjects I, this Court should reject MasterObjects attempt to sweep within the scope of its claims that which the specification describes as not the invention. MasterObjects I, dkt. at. The testimony of MasterObjects expert highlights the fundamental flaws in MasterObjects position. Dr. Loy testified that when I read this specification, I took the term the invention as being a shorthand for the current preferred embodiment or the preferred embodiment or the embodiment. Ex. A (Loy Depo.) at 0:-0. That understanding flies in the face of this Court s prior holding regarding the specification s use of the present invention. Compare MasterObjects I, dkt. at (holding that the statement in the specification that the -- CASE NO. :-CV-0-PJH

13 Case :-cv-0-pjh Document Filed // Page of invention sends just the changes describes the invention as a whole and not just an embodiment), with Ex. A (Loy Depo.) at :- (testifying that the same statement about the invention is simply shorthand for a preferred embodiment ). Indeed, it is flatly 0 0 contradicted by the Federal Circuit precedent relied on by this Court in MasterObjects I. See MasterObjects I, dkt. at (citing Trading Techs. Int l, Inc. v. espeed, Inc., F.d 0, (Fed. Cir. 00) and Honeywell Int l, Inc. v. ITT Indus., Inc., F.d, (Fed. Cir. 00)). The deposition also demonstrated that Dr. Loy applied the same kind of legally erroneous approach to written description as MasterObjects. Ex. A (Loy Depo.) at 00:0-0: (testifying that, based on his understanding of the law, a claim to a blue car would be adequately supported by a specification disclosing that the invention uses a red car embodiment instead of a blue car embodiment (emphasis added)). Accordingly, MasterObjects arguments are incorrect and premised on the wrong legal standard. Under the correct standard for written description, there is no genuine dispute that the 0 patent fails to disclose re-sending the entire search string from a client to a server.. The Disclosure Of Query Messages Does Not Provide Written- Description Support. MasterObjects next attempts to distort the specification s use of the term query message. Opp. at - (citing 0 Pat., :--). That disclosure, however, does not provide written description support for the asserted claims. Google s expert Dr. Rinard explained that the term query message did not have a generally recognized meaning, and that a person of skill in the art would therefore have to rely on the 0 patent s specification to understand the meaning of this term. Dkt.. MasterObjects expert, Dr. Loy, does not offer any statement to the contrary, so there is no genuine issue of material fact on this issue. In determining the meaning of query message, a person of skill in the art would understand only what the patent specifically discloses. MasterObjects concedes that the one time the term query message is used in the specification is in the context of a server to service transmission, Opp. at :-, not the -- CASE NO. :-CV-0-PJH

14 Case :-cv-0-pjh Document Filed // Page of client-to-server context addressed by the 0 patent claims. In deposition, MasterObjects 0 0 expert also conceded this point, agreeing that the disclosure he relied on was not in the client-toserver context and was instead in the server-to-service context. Ex. A (Loy Depo.) at :-:. Dr. Loy further admitted that the query messages passage does not disclose communications involving a client object. Id. at 0:-0:. Accordingly, there is no dispute between the parties about the patent s sole query message disclosure: it is a message sent between the server and the service, not the client and the server. And, as noted above, there is also no dispute that the term query message had no ordinary meaning in the field. Thus, there can be no written description support for any client-to-server query message. D. MasterObjects Argument Concerning What A Person Of Skill In The Art Would Recognize Is Irrelevant As A Matter Of Law. Apparently recognizing that the 0 specification does not disclose the embodiment it now seeks to claim, MasterObjects offers legally irrelevant arguments about how a person of skill in the art would allegedly [r]ecognize the undisclosed subject matter from the specification s narrow disclosure. Opp. at. MasterObjects arguments are based on an erroneous understanding of the law of written description and should be rejected by this Court.. MasterObjects and Its Expert s Obvious Variant Analysis is Irrelevant as a Matter of Law. Faced with an absence of express or inherent written-description support for its claims, MasterObjects attempts to blur the distinction between server-to-service transmissions (which the specification discloses) and client-to-server transmissions (which it does not). MasterObjects thus argues that what it purportedly claims is merely an obvious variant of what is disclosed, stating that a person of skill in the art would recognize that the techniques for server-to-service transmissions could be readily applied to client-to-server transmissions. Opp. at :- ( You If, as MasterObjects argues, Opp. at :-:, the discussion of a query message between a server and a service in the specification is definitional, then that supports Google s position that the associated transmission protocol cannot be applied to transmissions between other components. See In re NTP, Inc., F.d, (Fed. Cir. 0) (limiting claim term destination processor to mean the final destination processor, and not an intermediate processor, based on definitional statements in the specification). -- CASE NO. :-CV-0-PJH

15 Case :-cv-0-pjh Document Filed // Page of can carry your wallet in your left pocket, says Google, but no one would ever think you could carry the same wallet in your right pocket. ). MasterObjects expert admitted that he took the 0 same approach in analyzing written description: Q. Dr. Loy it is your opinion although this disclosure of query message at the bottom of top of column, does not disclose communications involving a client object, a person of ordinary skill in the art, would view the disclosure as disclosing an obvious variation where the query message is communicated between a server object and a server -- and a client object. Is that your opinion? A. Maybe not in those words, but to that effect. Q. To that effect, correct? A. Sure. Ex. A (Loy Depo.) at 0:- (emphasis added). The approach of MasterObjects and its expert is legally flawed. The Federal Circuit has long held that the written-description requirement is not satisfied merely by disclosing an obvious variant of what the patentee seeks to claim. Lockwood v. Am. Airlines, Inc., 0 F.d, - (Fed. Cir. ) ( [A]ll the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. ). Rather, if an element of a claim is not expressly disclosed in the specification, the specification must inherently disclose the claim element. PowerOasis, F.d at 0 (emphasis added); see also Textscape LLC v. Adobe Sys. Inc., Case No. C 0-0, 00 WL, at * (N.D. Cal. June, 00) ( Plaintiff s contention that the use of GUIs is obvious to one skilled in the 0 arts runs contrary to the Federal Circuit s holding in Ariad. ). Thus, obvious variants that a person of skill in the art might recognize from the query message disclosure are legally irrelevant. Because Dr. Loy s analysis focused on determining whether the claims cover an obvious variation of what is disclosed, his analysis is not material to the written description inquiry. MasterObjects cannot escape summary judgment of no written description by attempting to manufacture a factual dispute that has no legal bearing on the issue at hand. Moreover, in order for a disclosure to qualify as inherent, the missing descriptive matter must necessarily be present in the specification. Tronzo, F.d at (emphasis added). Neither MasterObjects nor its expert even attempt to show how a client sending the entire input -0- CASE NO. :-CV-0-PJH

16 Case :-cv-0-pjh Document Filed // Page of string in successive messages to a server is necessarily present in the specification. Indeed, 0 given that the specification s disclosure of sending just the changes necessarily excludes resending previously transmitted characters, re-sending the entire search string with each successive message cannot conceivably be inherent. MasterObjects arguments are thus grounded in the assertion that sending the entire input string would have been predictable, conventional and simple in other words, obvious based on the specification s disclosure. E.g., Opp. at :- 0 ( Network transmissions between devices including clients and servers, as well as synchronization techniques, were well known in 00 and are a predictable field. ), :- ( [A] PHOSITA would recognize that there are several conventional ways to implement transmission of a string. ), :- (arguing that the claims cover merely one way of accomplishing the broader concept that the inventors clearly described.... ), 0:- ( Simple transmission of a string was a simple and repeatable activity, and a PHOSITA would recognize that the ability to transmit a string from a client to a server once would be performable iteratively. ). That assertion is immaterial to the question of written description. 0 Likewise, MasterObjects expert admitted that he presumed that written description for an undisclosed claim element could be based only on the knowledge of one of ordinary skill in the art. Ex. A (Loy Depo.) at 0:-:0. This understanding of the law is mistaken and cannot form the basis for a genuine issue of fact. As the Federal Circuit has held, [o]bviousness is simply not enough; the subject matter must be disclosed to satisfy the written description requirement. PowerOasis, F.d at 0. Where, as here, a patentee fails to show that its claims are necessarily disclosed in the specification, summary judgment for lack of written description is appropriate, despite conclusory and immaterial expert testimony to the contrary. PowerOasis, F.d at 0; see also Anascape, Ltd. v. Nintendo of Am., Inc., 0 F.d, (Fed. Cir. 00) (setting aside an expert s conclusion because it could not override the objective content of the specification at issue). Even if the disclosure of an obvious variant of the claims were somehow sufficient to satisfy its written-description obligation (and it is not), MasterObjects still would not prevail because a person of skill in the art would not recognize that the disclosed server-to-service -- CASE NO. :-CV-0-PJH

17 Case :-cv-0-pjh Document Filed // Page of 0 messaging technique could be readily applied to the client-to-server context. Dkt. 0 (Rinard Decl.). To the contrary, the 0 patent specification contrasts the character-bycharacter transmissions between client and server, see 0 Pat., :-, with the transmission of the entire search string between server and service, see id., :-0:. This is for good reason the specification is replete with disclosures regarding the unique challenges that client-toserver communications present. E.g., id., :-0; dkt., 0 (Rinard Decl.). Indeed, the whole purpose of the patent is purportedly to improve client-to-server systems by providing a way to synchronize the data entered or displayed on a client system with the data on a server system. 0 Pat., :-:; dkt. (Rinard Decl.). Dr. Loy admitted at his deposition that servers and clients are distinct as described in the 0 patent specification, and that he was not using a specialized definition for these terms. Ex. A (Loy Depo.) at :-0:, :-:, :-:. MasterObjects and its expert cannot seriously suggest that there is nothing special about client-to-server messages when the stated purpose of the patent is to improve such messaging and when the patent itself distinguishes between client-to-server messages and server-to-service messages. See Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., F.d, - (Fed. Cir. 00) (affirming summary judgment that claims were 0 Dr. Loy cites the 0 Patent at :0-, which states that it involves communications between processes and applications. But Dr. Loy also admitted that the claims do not mention these processes or applications and instead expressly require clients and servers. Ex. A (Loy Depo.) at :-:. Because all the asserted claims expressly require client-to-server communication and not communication involving a process or application, this passage in the 0 Patent supports Google s position, not MasterObjects. MasterObjects various other arguments regarding the alleged interchangeability between server-to-service messaging and client-to-server messaging also fail. MasterObjects citation of column, line of the 0 patent, Opp. at :-, establishes only that a [c]lient is not restricted to programs with a user interface, 0 Pat., :-. This passage has nothing to do with how clients send search strings. Equally irrelevant is MasterObjects reliance on dependent claim of the parent patent. Opp. at n.0. Claim of the patent merely provides that client software, in addition to performing its role as a client vis-à-vis a server, may also serve as a content engine for some other software system. This discloses nothing about how the client software communicates with its server. -- CASE NO. :-CV-0-PJH

18 Case :-cv-0-pjh Document Filed // Page of 0 invalid for lack of written description where patentee attempted to claim a broad genus, but the specification taught only a single species that was described as critical to the claimed invention ).. MasterObjects Arguments Misapply The Law of Written Description. According to MasterObjects, the technology at issue is so [s]imple and [p]redictable that a person of skill in the art could infer the claimed embodiment from the patent s statements concerning character-by-character transmissions and send[ing] the entire string all at once. Opp. at :-. This argument is contrary to black-letter law on the written-description requirement. See Ariad, F.d at ( [T]he hallmark of written description is disclosure. ). The Federal Circuit faced a similar set of circumstances in TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., F.d (Fed. Cir. 00). There the patent in question disclosed a system having a spring mounted in only one location. Id. at. In a later-added claim, however, the patentee attempted to claim an embodiment in which the spring was mounted in a different location. Id. at. The patentee argued that locating the spring in this manner was inherent in the original disclosure because one of ordinary skill in the art would recognize that [this was] the only viable location for mounting a spring. Id. (emphasis added). The Federal Circuit disagreed, rejecting the conclusory statements of the 0 patentee s expert witness regarding what a person of skill in the art would recognize. Id. According to the Federal Circuit, the original disclosure [was] completely lacking in any description of the embodiment that the patentee was seeking to claim. The Federal Circuit thus affirmed summary judgment of invalidity because the new claim lacked written-description support. Id. at 0. Just as in TurboCare, if MasterObjects claims broadly cover re-sending the entire input string from a client to a server, then the claims cannot possibly have written description support particularly when the stated objective of the patent was to avoid re-sending the entire input string. For its assertion that a claim can be broader than the specific examples disclosed in the specification, MasterObjects cites inapposite cases including ScriptPro, LLC v. Innovation Assocs., F.d (Fed. Cir. 0), and Martek Biosciences Corp. v. Nutrinova, Inc., -- CASE NO. :-CV-0-PJH

19 Case :-cv-0-pjh Document Filed // Page of F.d (Fed. Cir. 00). Opp. at. Those cases, however, merely recognize that in some circumstances a patent may provide written-description support by indicating that its examples support a broader invention. In ScriptPro, claims lacking a sensor were adequately supported by a statement in the specification that the invention broadly includes... sensors. Id. at - 0 (emphasis added). The term broadly, like the term generally, indicated that the invention did not always require sensors. Id. at 0. strains of microorganisms. F.d at 0. In Martek, the claim recited a mixture of two The specification disclosed the two strains 0 0 individually and stated that cells from several reactors [can be] consolidated into one reactor. Id. This statement indicated that the specification supported consolidat[ing] the two strains into the claimed mixture. Id. ScriptPro and Martek are inapposite here. The 0 patent does not contain language indicating that its examples support a broader invention. To the contrary, the specification is limited to sending just the changes to the input buffer, instead of sending the entire input buffer. 0 Pat., 0:- (emphasis added). Such limiting statements formed the basis for this Court s prior holding that the 0 patent involves sending just the changes with each successive query. MasterObjects I, dkt. at. Such statements also underscore why the asserted claims are invalid for lack of written description if they generically cover all forms of client-server communications.. The 0 Patent s Statement That The Disclosed Protocol Is Optimized Does Not Provide Written Description Support. Referencing the patent s statement that its protocol is optimized for sending single The other cases cited by MasterObjects also fail to support its arguments. In Space Systems/Loral, Inc. v. Lockheed martin Corp., 0 F.d, (Fed. Cir. 00), the Federal Circuit held that where the specification discloses that certain subject-matter is only sometimes required, that does not serve to limit the specification s disclosure. Id. at 0. This case involves a different situation: the subject matter MasterObjects seeks to claim is never disclosed as part of the purported invention. And in LizardTech, Inc. v. Earth Resource Mapping, Inc., F.d, - (Fed. Cir. 00), the Federal Circuit explained that the description of one method for [achieving an objective] does not entitle the inventor... to claim any and all means for achieving that objective. That holding aptly explains why the 0 patent s specification fails to support its claims under MasterObjects interpretation. -- CASE NO. :-CV-0-PJH

20 Case :-cv-0-pjh Document Filed // Page 0 of characters, MasterObjects argues that [d]escribing a system that may be optimized in one particular fashion necessarily discloses both the optimization and the underlying base case. Opp. at :-; see also id. at :-:; 0 Pat., :-0. But an inherent disclosure requires that the subject matter necessarily be present, and the optimized statement that MasterObjects cites does not necessarily disclose all other approaches that the specification regards as sub-optimal. The Federal Circuit explicitly confirmed this legal principle in Tronzo, F.d. There, the claims at issue broadly covered a medical implant that was generic as to the shape of the cup, while the supporting specification expressly disclosed only cups that were conical shaped. Id. The Federal Circuit noted that the specification did contain some 0 references to other shaped cups, but held that such references were entitled to little weight because they were a mere recitation of the prior art. Id. at. Because the specification specifically distinguish[ed] the prior art as inferior and tout[ed] the advantage of the conical shape, the Federal Circuit held that only conically shaped cups and nothing broader were disclosed, and the claims to the generic shaped cup lacked written description support. Id. Tronzo squarely applies here. MasterObjects is attempting to claim in the 0 patent 0 what it characterizes as the broader concept of sending a string to the server. Opp. :-. MasterObjects seeks to claim this generic method of client-to-server communication even though its specification specifically distinguishes the present invention from the prior art approach of sending the entire input buffer. 0 Pat., 0:-. Moreover, as in Tronzo, the patent also touts the advantages of the present invention, stating that the disclosed technique of sending just the changes is optimized. See id., :-0. Thus, this statement not only fails to support MasterObjects arguments regarding written description, it actually indicates the opposite that the patent discloses only an invention using the specific optimized protocol.. MasterObjects Arguments Confuse The Written-Description Requirement With the Separate Enablement Requirement. MasterObjects contends that a person of skill in the art would be capable of practicing the claims based on the limited disclosures in the specification. Opp. at 0:-. Those arguments, however, are also legally irrelevant to the written-description inquiry. By focusing on what a -- CASE NO. :-CV-0-PJH

21 Case :-cv-0-pjh Document Filed // Page of 0 person of skill in the art would be capable of achieving based on the specification, MasterObjects seeks to conflate two distinct patentability requirements: written description and enablement. MasterObjects enablement-focused arguments cannot create a genuine factual dispute on the issue of written description. The Federal Circuit has recognized that an invention may be enabled even though it has not been described. See Univ. of Rochester v. G.D. Searle & Co., Inc., F.d, (Fed. Cir. 00) ( Such can occur when enablement of a closely related invention A that is both described and enabled would similarly enable an invention B if B were described. ). Thus, even where a person of skill in the art could practice the claimed subject matter at the time of the invention, that alone will not satisfy the written-description requirement. Id. The 0 patent discloses using a protocol that sends just the changes from a client to a server, and nothing broader. 0 Pat., 0:-. This protocol is described as optimized and is specifically contrasted with other approaches of re-sending the entire input buffer. This Court need not address the question of whether the 0 patent would enable a person of skill to implement a protocol different from the one that is disclosed. The summary judgment motion before this Court is for lack of written description, not enablement. For all the reasons set forth above and in Google s opening brief, the claims are invalid for lack of written description under MasterObjects construction. 0 III. COLLATERAL ESTOPPEL PRECLUDES MASTEROBJECTS FROM DISPUTING THE LIMITING EFFECT OF THE SPECIFICATION IN THIS CASE. Apart from the written-description problems with MasterObjects claim construction arguments in this case, those arguments also violate well-settled principles of collateral estoppel. Collateral estoppel has the dual purpose of protecting litigants from the burden of relitigating an identical issue with the same party or his privy and of promoting judicial economy by preventing needless litigation. Collins v. D.R. Horton, Inc., 0 F.d, 0 (th Cir. 00) (quotation and citation omitted). Under controlling Ninth Circuit law, collateral estoppel applies if: () the issue necessarily decided in the previous proceeding is identical to the one which is sought to be relitigated; () the first proceeding ended with a final judgment on the merits; and () the party -- CASE NO. :-CV-0-PJH

22 Case :-cv-0-pjh Document Filed // Page of 0 against which collateral estoppel is asserted was a party or in privity with a party at the first proceeding. e.digital Corp. v. Futurewei Techs., Inc., F.d, (Fed. Cir. 0) (citing Hydranautics v. FilmTec Corp., 0 F. d 0, (th Cir. 000) in a case on appeal from a district court in the Ninth Circuit). Because there is no dispute that MasterObjects was a party to the final judgment in MasterObjects I, the parties agree that collateral estoppel here turns on whether MasterObjects I involved (i) an identical issue ; (ii) that was actually litigated ; and (iii) was necessary to the prior judgment. See Opp. at :-. A. MasterObjects Cannot Re-Litigate The Limiting Effect Of The Identical Specification That Is Now Contained In The 0 Patent.. This Case Presents The Identical Issue That Was Previously Litigated In MasterObjects I. The 0 patent is a continuation of the patent, meaning that it is limited to the same invention of the patent, and it contains an identical specification. See Antares Pharma, Inc. v. Medac Pharma Inc., F.d, (Fed. Cir. 0). The scope of the invention to which the 0 patent is limited was previously determined by this Court in MasterObjects I. Additionally, this Court has already determined that the passage at 0:- of the patent (which is included in the identical specification of the 0 Pat., 0:-) limits the scope of what may properly be claimed. MasterObjects I, dkt. at. While MasterObjects argues 0 that the issue is not identical, its repetition verbatim of its arguments and briefing from MasterObjects I belies that claim. Compare dkt. at ( Allowed is not required. ), with MasterObjects Appellant Br. at ( Allowed is not required. ). Under principles of collateral estoppel, MasterObjects may not re-litigate these specific issues.. The Issue Presented Here Was Actually Litigated In MasterObjects I. The scope of the invention and the effect of the specific passage of the patent discussed above was an issue that was hotly contested during MasterObjects I. MasterObjects argues that the parties previously litigated only the meaning of the claim language as defined by the claim language itself. Opp. at :-. But the parties litigated much more than that. MasterObjects itself devoted substantial portions of its claim construction briefing to arguments concerning the effect of the specification. E.g., MasterObjects I, Dkt. at - -- CASE NO. :-CV-0-PJH

23 Case :-cv-0-pjh Document Filed // Page of (Plaintiff s Reply Claim Construction Br.). In light of the specification, this Court ultimately limited the scope of all the claims at issue in the same way, despite varying claim language across multiple patents. MasterObjects I at dkt. at. The debate continued at the Federal 0 Circuit. MasterObjects, Inc. v. Google Inc., Case No. - (Fed. Cir.), Dkt. at -. The scope of the disclosed invention, and the effect of the identical specification, were actually litigated in MasterObjects I.. The Issue Presented Here Was Necessary to Judgment In MasterObjects I. Finally, the identical issue litigated in MasterObjects I was necessary to the judgment. As MasterObjects agrees, Opp. at :-, collateral estoppel is determined under the law of the regional Circuit. See Bayer AG v. Biovail Corp., F.d 0, (Fed. Cir. 00). Under Ninth Circuit law, an alternative holding is sufficiently necessary to a judgment for collateral estoppel to apply. In re Westgate-Cal. Corp., F.d at - (following established rule that preclusion apples to each adjudicated issue necessary to support any of the grounds upon which a judgment rests). As applied here, this Court s finding regarding the effect of the specification in MasterObjects I was at least an alternative, if not the primary, ground upon which the claim construction order rested, which in turn was central to stipulated judgment of noninfringement. That same specification is now at issue here. Because this Court s finding that the specification narrowly defines the present invention was necessary to the prior judgment, that same finding 0 applies to the present claim language in exactly the same way. The invention as a whole remains as limited as when this Court last considered the same patent specification. Collateral estoppel applies, and MasterObjects may not contend that the new claim language sweeps any more broadly than the old claim language. B. MasterObjects Arguments Regarding New Claim Language Miss the Mark. In an attempt to avoid collateral estoppel, MasterObjects sets up a strawman. It repeatedly argues that the claim language of the 0 patent differs from that in the prior asserted patents. But Google s collateral estoppel argument is not that MasterObjects is bound by the specific construction of the terms in MasterObjects I. Instead, Google is arguing that -- CASE NO. :-CV-0-PJH

24 Case :-cv-0-pjh Document Filed // Page of 0 MasterObjects is bound by this Court s previous holding regarding the effect of the specification that is common to both the and 0 patents. A similar scenario was faced by the court in Nazomi Comm ns, Inc. v. Nokia Corp., No. C- 0-0, 0 WL 0 (N.D. Cal. Jun., 0). Although MasterObjects attempts to argue that Nazomi involved the same claim language in the two successive lawsuits, Opp. at :- (emphasis omitted), that simply is not true. Indeed, in Nazomi, the patentee specifically advanced the same argument that MasterObjects makes here: that there are significant differences between the claims of the patents that suggest different meanings and thus the issues are not identical. 0 WL 0, at *. The Court acknowledged that the claims of the newly drafted patents differed from those previously at issued, but noted that such language... must be understood in light of the teachings of the specifications, which are essentially identical. *. Noting that the prior case placed a heavy emphasis on limiting statements in the specification, the Court held that collateral estoppel applied despite the differences in claim Id. at language. Id. at * ( [T]he district court looked to the parent patent specification and construed instructions. The Federal Circuit affirmed the district court s construction, in large part by looking to the specification. ) Similarly, in this case, the holding of MasterObjects I rests on the limiting effect of the very same specification that is now before this Court. The effect of that specification and the scope of the invention may not now be re-litigated. MasterObjects reliance on Mallinckrodt, Inc. v. Masimo Corp., F. Supp. d 0 0 (C.D. Cal. 00), is misplaced. In Mallinckrodt, the court acknowledged that collateral estoppel can apply where the court s findings regarding the specification are sufficient for the claim construction holding, but found that principle inapplicable because in that case the specification alone did not support the narrow claim construction. Id. at. This is distinguishable from the present case where this Court relied upon Trading Technologies and Honeywell cases where the specification was sufficient, standing alone, to limit the claim language. 0 MasterObjects I, 0 This Court correctly described those cases as standing for the propositions that the terms this invention and the present invention [] limit the claims (Honeywell) and a reference to (footnote continued) -- CASE NO. :-CV-0-PJH