Google Response

01980.51928/6304679.
2
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

I/P ENGINE, INC.,

Plaintiff-Cross Appellant,

v.

AOL INC., GOOGLE INC., IAC SEARCH &
MEDIA, INC., GANNETT COMPANY, INC., AND
TARGET CORPORATION,

Defendants-Appellants.

No. 2013-1307, -1313

DEFENDANTS-APPELLANTS OPPOSITION TO I/P ENGINES
PETITION FOR RE-HEARING EN BANC
Dave Nelson
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
500 West Madison St., Suite 2450
Chicago, IL 60661
(312) 705-7400
(312) 705-7401 (fax)

David A. Perlson
Antonio R. Sistos
Margaret P. Kammerud
Joshua L. Sohn
& SULLIVAN LLP
50 California Street, 22nd Floor
San Francisco, California 94111
(415) 875-6600
(415) 875-6700 (fax)

Attorneys for Defendants-Appellants AOL Inc., Google Inc., IAC
Search & Media, Inc., Gannett Company, Inc., and Target Corporation.

Case: 13-1307 Document: 142 Page: 1 Filed: 11/03/2014
01980.51928/6304679.2
Daryl L. Joseffer
KING & SPALDING LLP
1700 Pennsylvania Avenue NW
Suite 200
Washington, D.C. 20006
(202) 737-0500
(202) 626-3737 (fax)

Adam M. Conrad
KING & SPALDING LLP
100 N Tryon Street
Suite 3900
Charlotte, NC 28202
(704) 503-2600
(704) 503-2622
Attorneys for Defendant-Appellant Google Inc.
01980.51928/6304679.2 i
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

I/P ENGINE, INC.,

Plaintiff-Cross Appellant,

v.

AOL INC., GOOGLE INC., IAC SEARCH &
MEDIA, INC., GANNETT COMPANY, INC., AND
TARGET CORPORATION,

Defendants-Appellants.

No. 2013-1307, -1313

CERTIFICATE OF INTEREST
Counsel for the Defendants-Appellants certifies as follows:
1. The full name of every party or amicus represented by me is:
AOL Inc., Google Inc., IAC Search & Media, Inc., Gannett Corporation, Inc.,
Target Corporation
2. The name of the real party in interest (if the party named in the caption is
not the real party in interest) represented by me is:
Gannett Co., Inc.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me
are:
a) AOL Inc. AOL has no corporate parent. Filings made with the Securities and
Exchange Commission indicate that Dodge & Cox and FMR LLC each own ten
percent (10%) or more of AOLs stock.
01980.51928/6304679.2 ii
b) Google Inc. None.
c) IAC Search & Media, Inc. IAC/InterActiveCorp, a publicly traded company,
owns all of the stock of IAC Search & Media, Inc.
d) Gannett Company, Inc. None.
e) Target Corporation None.
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 are:
Quinn Emanuel Urquhart & Sullivan: David A. Perlson, David L. Bilsker, Robert
Wilson, David A. Nelson, Jennifer Kash, Emily C. OBrien, Margaret P.
Kammerud, Antonio R. Sistos, Howard Chen, Jennifer Ghaussy, Jennifer Polse,
Joshua L. Sohn, Sarah Agudo; Kaufman & Canoles: Stephen E. Noona; Finnegan
Henderson Farabow Garrett & Dunner: Robert L. Burns, II; King and Spalding:
Daryl L. Joseffer, Adam M. Conrad.

Dated November 3, 2014 Respectfully submitted,

By: /s/ David A. Perlson
David A. Perlson
& SULLIVAN, LLP
50 California Street, 22
nd
floor
San Francisco, CA 94131
Telephone: (415) 875-6344
Facsimile: (415) 875-6700
davidperlson@quinnemanuel.com
Attorney for Defendants-Appellants

01980.51928/6304679.2 iii
TABLE OF CONTENTS
Page
INTRODUCTION ..................................................................................................... 1
SUMMARY OF THE COURTS OPINION ............................................................ 2
ARGUMENT ............................................................................................................. 5
I. THIS NON-PRECEDENTIAL DECISION IS AN INHERENTLY
POOR CANDIDATE FOR EN BANC REVIEW ........................................... 5
II. I/P ENGINES ALLEGATION THAT THE COURT ERRED BY
REVIEWING THE ENTIRE OBVIOUSNESS QUESTION DE
NOVO DOES NOT WARRANT EN BANC REVIEW .................................. 6
III. THERE IS NO CONFLICT IN AUTHORITY REGARDING WHO
SHOULD APPLY THE COMMON SENSE OF A SKILLED
ARTISAN ...................................................................................................... 12
CONCLUSION ........................................................................................................ 15

01980.51928/6304679.2 iv
TABLE OF AUTHORITIES
Page
Cases
Amgen Inc. v. Hoechst Marion Roussel, Inc.,
469 F.3d 1039 (Fed. Cir. 2006) .......................................................................... 12
Constant v. Adv. Micro-Devices, Inc.,
848 F.2d 1560 (Fed. Cir. 1988) .......................................................................... 10
Johns Hopkins Univ. v. CellPro, Inc.,
152 F.3d 1342 (Fed. Cir. 1998) .......................................................................... 11
KSR Intl Co. v. Teleflex Inc.,
550 U.S. 398 (2007) .................................................................................. 9, 13, 14
Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 11
Mintz v. Dietz & Watson, Inc.,
679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 13
Perfect Web Tech., Inc. v. InfoUSA, Inc.,
587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 13
PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 10
Statutes
Fed. R. App. P. 35(a)(1) ....................................................................................... 5, 15
Fed. R. App. P. 35(a)(2) ............................................................................................. 5
Fed. Cir. Rule 32.1(d) ................................................................................................ 5
Fed. Cir. Rule 35 .................................................................................................... 2, 5

1
INTRODUCTION
I/P Engines En Banc Petition expresses disagreement with this Courts
decision, but provides no basis for the extraordinary step of en banc review.
Although I/P Engine asserts that this Court contravened precedent by
explicitly reject[ing] deferential review for factual findings underlying a
determination of obviousness (Pet., 4), I/P Engine cannot point to a single
statement from the Courts decision purporting to apply de novo review to any
underlying factual question. Thus, I/P Engines real complaint is not with the
standard of review that the Court applied, but merely with the obviousness
conclusions that the Court reached based on the factual record before it. Needless
to say, I/P Engines dissatisfaction with the outcome of this case would be no basis
for en banc review, even if the Courts decision were incorrect. And it is not.
I/P Engine also alleges an intra-circuit split about whether the common sense
of a skilled artisan is a legal question for the court or a factual question for the jury.
But there is no such split. The common sense of a skilled artisan is something that
a court can look to in answering the legal question of obviousness, and the factual
record developed in the litigation helps inform the court about what would be
within the common sense of a skilled artisan. All of the precedents cited by I/P
Engine are consistent with this settled framework.
I/P Engine itself previously told this Court that Defendants ha[ve] not
pointed to one significant, complex, unique or precedent-setting issue within [their]
2
appeal. (Dkt. 23 at 6.) In apparent agreement with I/P Engine, this Court
designated its decision non-precedential. That designation reflects the absence of
any important legal holdings in the decision and confirms that this case is a very
poor candidate for en banc review. As this Courts Practice Notes state: A
petition for rehearing en banc is rarely appropriate if the appeal was the subject of
a nonprecedential opinion by the panel of judges that heard it. Practice Note to
Fed. Cir. Rule 35. This case is no exception to that rule, as the Court applied
settled legal principles to the record of this case.
SUMMARY OF THE COURTS OPINION
As this Courts opinion explained, the two Asserted Patents relate to a
method for filtering Internet search results that utilizes both content-based and
collaborative filtering. (Slip Op., 3.) Specifically, the asserted claims describe a
filter system that combines content and collaborative data in filtering each
informon or information item for relevance to a users query. (Id.)
The district court submitted interrogatories to the jury concerning factual
determinations relevant to obviousness, but did not ask the jury to opine on the
ultimate question of obviousness, which is a question of law. (A4170-72.) The
district court then issued a brief, two-page order reciting the jurys findings and
declaring the asserted claims non-obvious, but did not provide any reasoning or
analysis to bridge the gap between the jurys subsidiary findings and the courts
own holding of non-obviousness. (A39-40.)
3
In reviewing the district courts decision, this Court noted that Defendants
had proffered three lead obviousness references Rose, WebHound, and Fab.
(Slip Op., 6.) All three references combined content-based and collaborative
filtering to filter information items. For example, the Court quoted a passage from
Fab explaining that [b]y combining both collaborative and content-based filtering
systems, many of the weaknesses in each approach can be eliminated. (Id. at 9
(quoting J.A. 5511).) And the Court quoted a passage from WebHound explaining
that content-based and automated collaborative filtering are complementary
techniques, and the combination of [automated collaborative filtering] with some
easily extractable features of documents is a powerful information filtering
technique for complex information spaces. (Id. (quoting J.A. 5427) (Courts
brackets).) Indeed, the Court noted that I/P Engine does not dispute that the prior
art disclosed hybrid content-based and collaborative filtering. (Id. at 10.)
Nonetheless, as the Court explained, I/P Engine did contend that it would
not have been obvious to a person of ordinary skill in the art to filter items for
relevance to a users query using combined content and collaborative data. (Id.
(emphasis added).) In the words of I/P Engines litigation metaphor, references
like Rose, WebHound, and Fab threw search results over a proverbial wall to a
filtering system, but did not also throw the search query over the wall for use in
the filtering process. (Id. (citing I/P Engine Appeal Br. at 6-7; 40-43.)) Thus, the
obviousness question for the Court was whether it would have been obvious to
4
bridge the gap between the claims and the obviousness references by performing
content/collaborative filtering for relevance to the query i.e., throwing the query
over the wall along with the search results so that the query could be used in the
filtering process.
The Court cited several pieces of record evidence to conclude that it would
indeed have been obvious to use the query in the filtering process. First, the Court
quoted the shared specification for the Asserted Patents themselves, which
admitted in the Background section that conventional search engines initiate a
search in response to an individual users query and use content-based filtering to
compare the query to accessed network informons. (Id. (Courts emphasis).)
Given that its own patents acknowledge that using the original search query for
filtering was a conventional technique, I/P Engine cannot now evade invalidity
by arguing that integrating the query into the filtering process was a non-obvious
departure from the prior art. (Id. at 10-11.)
Second, the Court cited a separate reference, the Culliss reference, and noted
that the plain language of Culliss discloses using content and collaborative filtering
to filter Internet articles for relevance to a users search query. (Id. at 11.)
Third, the Court reasoned that [v]ery basic logic dictates that a users
search query can provide highly pertinent information in evaluating the overall
relevance of search results. (Id. at 14.) Because the query was readily available
and closely correlated to the overall relevance of search results and the prior art
5
unequivocally disclosed hybrid content-based/collaborative filtering retaining the
query for use in filtering combined content and collaborative data was entirely
predictable and grounded in common sense. (Id. at 15.)
Based on all this evidence and reasoning, the Court found that all asserted
claims were invalid for obviousness.
ARGUMENT
I. THIS NON-PRECEDENTIAL DECISION IS AN INHERENTLY
POOR CANDIDATE FOR EN BANC REVIEW
A petition for rehearing en banc is rarely appropriate if the appeal was the
subject of a nonprecedential opinion by the panel of judges that heard it. Practice
Note to Fed. Cir. Rule 35. As this case confirms, that rule makes good sense. One
of the two reasons that the Federal Rules give for en banc review is to secure or
maintain uniformity of the courts decisions, by preventing an erroneous panel
decision from steering the law in an anomalous direction. Fed. R. App. P.
35(a)(1). Nonprecedential decisions have no precedential force and do not bind
future panels, so they cannot steer the law. See Fed. Cir. Rule 32.1(d).
The other reason that the Federal Rules give for en banc review is that the
proceeding involves a question of exceptional importance. Fed. R. App. P.
35(a)(2). As its own prior statements make clear, I/P Engine cannot satisfy this
criterion, either. Specifically, when resisting Defendants motion to re-designate
Defendants as Appellants instead of Cross-Appellants, I/P Engine told the Court
6
that Defendants appeal does not raise any issues that are significant, complex,
unique or precedent-setting. (Dkt. 23 at 6.) I/P Engine further told the Court that
the validity issues in Defendants appeal are typically party- and patent-specific,
and are not likely to impact numerous future cases. (Id.) Yet I/P Engine now
says that this appeal requires resolution of . . . legal questions of exceptional
importance. (Pet., 1.) These inconsistent positions underscore why I/P Engine
has not shown entitlement to the extraordinary remedy of en banc review.
II. I/P ENGINES ALLEGATION THAT THE COURT ERRED BY
REVIEWING THE ENTIRE OBVIOUSNESS QUESTION DE
NOVO DOES NOT WARRANT EN BANC REVIEW
Even apart from its non-precedential nature, this Courts decision does not
warrant en banc review. I/P Engine argues that the decision controverts precedent
by applying de novo review to the entire obviousness question, without giving
deference to the factual findings below. (Pet., 4.) But that assertion is baseless.
The Court faithfully applied precedent, in holding that [w]hether the subject
matter of a patent is obvious is a question of law and is reviewed de novo. The
factual findings underlying an obviousness determination include: (1) the scope
and content of the prior art; (2) the differences between the claimed invention and
the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia
of non-obviousness. (Slip Op., 8 (citations omitted).) This formulation is
completely consistent with the lengthy summary of case law that I/P Engine recites
7
on pages 6-8 of its Petition. Nowhere did the Court state that it reviewed these
underlying factual questions de novo, and I/P Engine does not show otherwise.
Unable to point to any statement where the Court purported to apply de novo
review to the underlying factual questions, I/P Engine simply misstates the Courts
opinion. For example, I/P Engine argues that the Court explicitly rejected
applying substantial evidence review to the jurys factual findings when the Court
actually stated the following: I/P Engine . . . argues that on appeal the only
question is whether substantial evidence supports the jurys findings. There are a
number of reasons why we do not find this reasoning persuasive. (Pet., 4 (quoting
Slip Op., 16) (I/P Engines ellipses).) Thus, the Court simply did not find
persuasive I/P Engines argument that the only question is whether substantial
evidence supports the jurys findings. (Slip Op., 16.) Instead, the Court held that
whether the jurys findings are supported by substantial evidence was not the only
question in determining obviousness, given the legal nature of the ultimate
obviousness question and the record in this case.
There were good, case-specific reasons for this holding. First, as the Court
noted, some of the jury findings were inconsistent. (Id.) Second, some of the jury
findings supported obviousness, not non-obviousness. (Id.) And third, while the
jury made underlying determinations as to the differences between the asserted
claims and the prior art, it did not address the ultimate legal conclusion as to
obviousness. Thus, while the jury found that the prior art did not disclose all of the
8
elements of the asserted claims, it never determined whether it would have been
obvious to one skilled in the art to bridge any differences between the prior art and
the claimed invention. (Id. at 17.) Because the jury did not even reach the issue
of whether the differences between the claims and the art would have been obvious
to overcome, I/P Engines argument that the only question is whether substantial
evidence supports the jurys findings was clearly wrong. (Id.)
I/P Engines real complaint is not with the Courts legal framework, but
merely with the outcome of this case. I/P Engine disagrees with the Courts
holding that the asserted claims are obvious, so it argues that the Court must have
reviewed the jurys factual findings de novo to reach its holding. But the Courts
decision neither applied nor depended on de novo review of the jurys findings.
I/P Engine contends that [t]he jury found that there were patentable
differences between the scope of the claimed invention and what was known in the
prior art at the time of the claimed invention. (Pet., 10 (I/P Engines emphasis).)
But this is simply untrue. The jury was presented with a special interrogatory as to
the second Graham factor what difference if any existed between the claimed
invention and the prior art and was given two choices. The what was known in
the prior art language that I/P Engine points to was in the portion of the special
interrogatory that the jury did not adopt:
9

(A4170.) What the jury checked was explicitly limited to five specific prior art
referencesnot the far more general what was known in the prior art that I/P
Engine represents to the Court. (Id.) That is important because, unlike
anticipation, obviousness depends in part on the general background knowledge of
a person skilled in the art, and the creative inferences such a person would make,
not only on the content of specific prior art references. See, e.g., KSR Intl Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007); Slip Op., 14-15.
In ruling that the differences between the claims and the art would have been
obvious to overcome, the Court relied on the admission from the Asserted Patents
that filtering for relevance to the query was a conventional prior art technique.
(Slip Op., 10-11.) This ruling did not contravene any jury findings, because the
jury interrogatories never addressed any admissions from the Asserted Patents
when determining the scope and content of the prior art. In any event, no jury
finding could have erased the admission from the Asserted Patents that filtering for
relevance to the query was a conventional prior art technique. It is well-settled that
10
[a] statement in a patent that something is in the prior art is binding on the
applicant and patentee for determinations of anticipation and obviousness.
Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988).
The Court did also cite several passages from the Culliss reference to hold
that Culliss plainly discloses using combined content and collaborative data when
analyzing information for relevance to a users search query. (Slip Op., 11.) In
that one respect, this Court did reject a jury finding, but it did not do so under an
improper standard of review. Nowhere did the Court state that it applied de novo
review to the jurys findings on Culliss. Rather, the Court quoted several passages
from Culliss to explain why Culliss plainly discloses content analysis and
filtering for relevance to a query. (Slip Op., 11-12.) That is perfectly consistent
with the substantial evidence standard. This Court has held that it is proper to rely
on the plain language of a prior art reference to find that it discloses certain
elements for invalidity, even if a jury held otherwise. See PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1361 (Fed. Cir. 2007) (granting
JMOL of invalidity, despite contrary jury verdict, where the jury verdict and the
testimony of Plaintiffs expert cannot be reconciled with statements made by the
inventors in the joint specification and with the prior art references themselves).
11
The Courts finding that Culliss plainly discloses the contested elements, despite
the contrary jury finding, is just an application of this settled rule.
1

Finally, despite I/P Engines references to Judge Chens dissent, Judge Chen
never suggested that the Court applied de novo review to the jurys factual
findings. Instead, Judge Chen noted that we should tread lightly when reviewing
a legal conclusion reached by the trial court that rests upon a jurys findings of
fact. (Slip Op., 2 (Chen, J., dissenting).) And Judge Chen stated that, [b]ased on
the record, he would not have disturbed the jurys factual findings on Culliss. (Id.
at 4 n.1.) But that simply expressed Judge Chens disagreement with the result the
Court reached in this case, based on this specific factual record.
I/P Engines lengthy footnote on pages 10-11, purporting to list substantial
evidence . . . distinguishing each prior art reference from the asserted claims,
confirms that I/P Engines real quarrel is with the conclusions the Court reached,

1
Equally unavailing is I/P Engines complaint that the panel majority sua
sponte treated Culliss as a stand-alone obviousness reference . (Pet., 9 n.3.) First,
there is no such thing as a stand-alone obviousness reference. Rather, in an
obviousness analysis the prior art must be considered as a whole for what it
teaches. (Slip Op., 9 n.5 (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1166 (Fed. Cir. 2006) (emphasis in original)).) Second, Defendants asserted
Culliss for obviousness, as both the trial transcript (A3164-65) and the jurys
Graham interrogatories (A4170-71) make clear. While Defendants also asserted
Culliss for anticipation, anticipation is the epitome of obviousness. Johns
Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998). So the
fact that Defendants argued anticipation based on Culliss does not make it
improper for the Court to consider Culliss as part of the overall art for obviousness.
12
given the extensive factual record in the footnote.
2
(Pet., n.5.) The Courts
decision is correct, for the reasons the Court gave. But even if it were not, en banc
review would not be warranted just to revisit the Courts application of settled
legal principles to the record in this case. As Judge Lourie has stated, not every
error by a panel is enbancable. A panel is entitled to err without the full court
descending upon it. Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039,
1043 (Fed. Cir. 2006) (Lourie, J., concurring in denial of re-hearing en banc).
III. THERE IS NO CONFLICT IN AUTHORITY REGARDING WHO
SHOULD APPLY THE COMMON SENSE OF A SKILLED ARTISAN
I/P Engines second ground for en banc review is that the Court needs to
resolve the conflict among this Courts decisions regarding who should apply the
common sense of a person having ordinary skill in the art. (Pet., 4.) I/P Engine
argues that some of this Courts opinions treat common sense as part of the legal

2
I/P Engines amici also assail the Courts obviousness conclusion
arguing, for example, that the Asserted Patents were confirmed in re-examination.
(See Amicus Br. of i4i et al., at 8.) But amici do not mention that every re-
examination was an ex parte re-examination, in which Defendants had no ability to
defend the initial claim rejections against I/P Engines subsequent attacks. Nor did
the re-examinations (individually or collectively) include the full range of prior art
asserted in this litigation and cited in the Courts opinion.
One of I/P Engines amici also lacks credibility before this Court. Professor
Dan Ravicher the author of the Patent Law Professors amicus brief is an active
trader in the stock of I/P Engines corporate parent, Vringo, Inc. The Appendix to
this brief attaches a lengthy email string in which Mr. Ravicher sought consent for
an amicus brief, did not deny Defendants stated position that he owns stock in
Vringo, and threatened to have Defendants counsel disbarred or reported to law
enforcement for pointing out his ownership in Vringo (ownership that Mr.
Ravicher repeatedly disclosed in public online articles, which are also attached).
13
question of obviousness while others correctly hold[] that common sense is a
factual issue requiring record support showing that this knowledge would reside
in the ordinarily skilled artisan. (Id. at 14 (emphasis in original).)
This supposed conflict is wholly illusory. Common sense, like obviousness
itself, is informed by the factual record but applied by a court to the legal question
of whether a skilled artisan would have found the claims obvious. For example,
I/P Engines cited case of Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377
(Fed. Cir. 2012) states that invocation of the words common sense cannot
invalidate a patent without any record support showing that this knowledge would
reside in the ordinarily skilled artisan. The other cases cited by I/P Engine
recognize that courts can use whatever common sense is supported by the record to
find claims obvious, either at summary judgment or JMOL. Even the cases that I/P
Engine puts on the fact side of the line, like this Courts Perfect Web case and
the Supreme Courts KSR case, involve courts invoking common sense to
invalidate patents at summary judgment. See KSR, 550 U.S. at 407, 427; Perfect
Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1325 (Fed. Cir. 2009). So these
cases are perfectly consistent with the rule that courts can invoke a skilled artisans
common sense to determine whether claims are obvious as a matter of law, and
that deciding what concepts would have been within a skilled artisans common
sense is informed by the factual record at summary judgment or trial.
14
Indeed, KSR refutes I/P Engines suggestion that this Court should grant en
banc review because the Supreme Court will otherwise grant certiorari. (Pet., 5-6,
13 n.6.) The Supreme Court has already addressed the standards for determining
obviousness, in KSR itself. KSR clearly holds that a court must determine whether
the differences between the claims and the art would have been obvious for a
skilled artisan to overcome. KSR, 550 U.S. at 407 (If a court, or patent examiner,
conducts this analysis and concludes the claimed subject matter was obvious, the
claim is invalid under 103.) KSR likewise holds that the court may determine
and apply the common sense of a skilled artisan in making this analysis.
3
Id. at
418 ([A] court can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.).
The Court here faithfully followed this rule. It cited numerous aspects of the
record, including expert testimony, prior art, and the Asserted Patents themselves,
to determine that a skilled artisan would have found it obvious to filter for
relevance to the query. (Slip Op., 14-15.) So not only does I/P Engine fail to show
any split in authority, it fails to show any legal error in the Courts decision.
4

3
It is telling that I/P Engine does not discuss KSR until the final paragraph
of its Petition. If the Courts opinion were truly inconsistent with KSR the
leading Supreme Court case on obviousness one would expect I/P Engine to
discuss KSR sooner and in greater depth.
4
I/P Engine suggests a split in authority as members of this Court have
conflicting views on the proper deference to be given to jury findings that underlie
obviousness and the appropriateness of appellate fact-finding. (Pet., 4 (emphasis
15
Contrary to I/P Engines position that common sense can only be invoked by
the fact-finder, Judge Chens dissent also recognized that a court may invoke
common sense in reviewing obviousness. The dissent simply noted that the court
must exercise caution in doing so, and disagreed with the majority about whether
on this record it was would have been common sense to use the query for
filtering. (Slip Op., 2 (Chen, J., dissenting ) (I find that the majoritys use of
common sense to bridge the gap between the prior art and the claims is
unsupported by sufficient evidence and reasoning.).) Again, such determinations
based on a case-specific factual record are not a proper subject of en banc review.
CONCLUSION
For the foregoing reasons, Defendants respectfully request that the Court
deny I/P Engines Petition for Re-Hearing En Banc.

DATED: November 3, 2014

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
By /s/ David A. Perlson
David A. Perlson
nd
floor
Telephone: (415) 875-6344
Facsimile: (415) 875-6700
Attorneys for Defendants-Cross Appellants

added).) It supports this argument by contrasting two Federal Circuit opinions
with a dissent. (Id. at 4-5.) But en banc review is intended to ensure uniformity of
decisions, Fed. R. App. P. 35(a)(1), not dissenting views of individual judges.

PROOF OF SERVICE
I hereby certify that on November 3, 2014, I caused to be served
electronically on all counsel of record the foregoing Opposition to I/P Engines
Petition for Re-Hearing En Banc, together with the Appendix thereto.

DATED: November 3, 2014
QUINN EMANUEL URQUHART &
SULLIVAN, LLP

By /s/ David A. Perlson
David A. Perlson
& SULLIVAN, LLP
nd
floor
Telephone: (415) 875-6344
Facsimile: (415) 875-6700
Attorney for Defendants-Appellants


APPENDIX

1
From: Adam Mossoff [amossoff@gmu.edu]
Sent: Friday, October 24, 2014 1:37 PM
To: David Perlson; Daniel B. Ravicher
Cc: J oe.Re; Craig Nard; risch@law.villanova.edu; dschwartz@kentlaw.iit.edu;
tholbrook@emory.edu; sean.seymore@vanderbilt.edu; ccotropi@richmond.edu
Subject: RE: 13-1307 I/P Engine, Inc. v. AOL Inc.: Request for Consent to File Amicus Brief
In email communications with Craig Nard earlier this month, I specifically stated that I would not be joining the
proposed amicus brief drafted by Mr. Ravicher given my substantive disagreements with the content of the brief.

I have never had any communication with Mr. Ravicher about this brief. I had assumed my demurer to the
invitation to join the brief would have been passed on to Mr. Ravicher by Mr. Nard.

It is inappropriate and unprofessional for me to be included in the list of amici in email communications with
counsel in this case given my express disavowal of the invitation to join the brief.

I am forced to share my earlier email with Nr. Nard so that I know with absolute certainty that I am not being
misrepresented in communications or in the final brief. I am traveling at the moment, but I will do so immediately
upon my return to the office later today or this evening when I will have access to my email client on my
computer.

Sincerely,

Adam Mossoff

Sent from my Samsung Galaxy Note 3

Adam Mossoff
Professor of Law

Co-Director of Academic Programs & Senior Scholar,
Center for the Protection of Intellectual Property

George Mason University School of Law

-------- Original message --------
From: David Perlson
Date:10/24/2014 1:21 PM (GMT-05:00)
To: "Daniel B. Ravicher"
Cc: "J oe.Re" ,Craig Nard ,risch@law.villanova.edu,dschwartz@kentlaw.iit.edu,Adam Mossoff
,tholbrook@emory.edu,sean.seymore@vanderbilt.edu,ccotropi@richmond.edu
Subject: RE: 13-1307 I/P Engine, Inc. v. AOL Inc.: Request for Consent to File Amicus Brief

Mr.Ravicher,
IamccingtheotherproposedamiciProfessorsNard,Risch,Schwartz,Mossoff,Holbrook,Seymore,andCotropia.Wefeelitwould
bestifeveryonewasonthesamepagesothatthereisnomisunderstanding.Tothisend,Ihaveincludedthefullstringwithourprior
communicationsbelowsothattheotherproposedamicicanreview.
DefendantsobjecttoyouMr.Ravicherhavinganyroleinanamicusbriefforthiscase,duetoyourhistoryofactivetradinginthe
stockofI/PEnginescorporateparent,Vringo.Thus,Defendantsobjecttoyouservingasanamedamicus,andDefendantsalsoobject
toyouhavinganyroleindraftingorotherwiseassistinginanyamicusbrieffiledunderothersnames.This,ofcourse,extendstoany
2
workproductthatyoucreatedinthepast.Thus,DefendantswouldobjectifyouhandedadraftbriefthatyoucreatedtoProfessors
Nard,Risch,Schwartz,Mossoff,Holbrook,Seymore,and/orCotropiaforthemtofileundertheirnames,evenifyouhaveno
involvementwiththisbriefgoingforward.
Bycontrast,ifProfessorsNard,Risch,Schwartz,Mossoff,Holbrook,Seymore,and/orCotropiawishtowriteandfileanamicusbriefab
initiothathasnothingtodowithanypastorfutureinvolvement,support,orworkbyyou,thenwehavenoobjectiontothat.
WenotethatFederalCircuitRules29and47.4requireanamicusbrieftolistallamici,allrealpartiesininterestbesidesnamedamici,
andallattorneyswhoparticipatedintheamicusbrief.Weexpectthatanybrieffiledbyanyoftheabovementionedprofessorswould
complywiththeserulesandfairlydisclosewhetheryouhadanyroleinthecreationofsuchbrief.Similarly,weexpectthatthese
professorswouldnotfileabriefthatyouwereatallinvolvedwithorcontributedtoandtelltheCourtthatthisbriefisunopposed,since
Defendantsdoopposeanyamicusbriefthatyouhadanyinvolvementwithorcontributionto.
David

OriginalMessage
From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOfDanielB.Ravicher
Sent:Thursday,October23,20141:28PM
To:DavidPerlson
Cc:Joe.Re;CraigNard
Subject:Re:131307I/PEngine,Inc.v.AOLInc.:RequestforConsenttoFileAmicusBrief

DoDefendantsbelievetheothersevenindividualsarenotproperamiciaswell?IfIwerenota
namedamici,wouldDefendantsthenconsenttothebrief?Idonotbelieveyou'vecitedanybasisto
objecttotheothersevenindividuals,butIwanttomakesureIamclearaboutDefendant'sposition
regardingtheirpropriety.
OnThu,Oct23,2014at4:21PM,DavidPerlson<davidperlson@quinnemanuel.com>wrote:
>Forreasonsalreadystated,Defendantsdonotconsent.Thedisclosurebelowdoesnotrefuteour
previouslystatedunderstandingbasedonpublicallyavailableinformationthatyouhavebeenan
activetraderandspeculatorofVringostockandthusnotaproperamicus.
>
>OriginalMessage
>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOf
>DanielB.Ravicher
>Sent:Wednesday,October22,20142:15PM
>To:DavidPerlson;Joe.Re
>Cc:CraigNard
>Subject:Re:131307I/PEngine,Inc.v.AOLInc.:RequestforConsent
>toFileAmicusBrief
>
>Messrs.PearlsonandRe,
>
>ProfessorsNard,Risch,Schwartz,Mossoff,Holbrook,SeymoreandIherebyenlargeourrequestfor
consenttoincludeProfessorChristopherA.CotropiaoftheUniversityofRichmondSchoolofLaw.
>
>Mr.Re,Pleaseletmeknowatyourconveniencewhetheryouenlargeyourconsenttoinclude
ProfessorCotropia.
>
>Mr.Perlson,Pleaseletmeknowatyourconveniencewhetheryoumaintainyouoppositiontoour
requestforconsent.Inthehopesthatitmayhelpyoureconsideryourposition,pleasebeadvised
thatourmotionandbriefwillmakethefollowingdisclosure:
>
>"Nopartyorcounselforapartyhasauthoredanyportionofthisbrief,andnooneotherthan
amicihasmadeafinancialcontributiontoit.OneofamicihasafinancialinterestinDefendant
AppellantGoogle.NoneofamicihasafinancialinterestinPlaintiffCrossAppellantI/PEngine."
>
>AsImentionedpreviously,ProfessorNardandImaycontinuetoenlargeourrequestforconsentto
includeadditionalpersons.
>
3
>Warmregards,
>
>DanielB.Ravicher,Esq.
>2000PonceDeLeonBlvd,Ste600
>CoralGables,Florida33134
>dan@ravicher.com786.505.1205
>
>OnThu,Oct16,2014at1:48PM,DavidPerlson<davidperlson@quinnemanuel.com>wrote:
>>Mr.Ravicher,Googlecontinuestoopposeforthereasonsalreadystated.
>>
>>OriginalMessage
>>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOf
>>DanielB.Ravicher
>>Sent:Thursday,October16,20145:27AM
>>To:DavidPerlson;Joe.Re
>>Cc:CraigNard
>>Subject:Re:131307I/PEngine,Inc.v.AOLInc.:Requestfor
>>ConsenttoFileAmicusBrief
>>
>>Messrs.PearlsonandRe,
>>
>>ProfessorsNard,Risch,Schwartz,MossoffandIherebyenlargeourrequestforconsenttoinclude
ProfessorsTimothyR.HolbrookofEmoryLawandSeanB.SeymoreofVanderbiltLaw.
>>
>>Mr.Re,Pleaseletmeknowatyourconveniencewhetheryouenlargeyourconsenttoinclude
ProfessorsHolbrookandSeymore.
>>
>>Mr.Perlson,Pleaseletmeknowatyourconveniencewhetheryoumaintainyouoppositiontoour
requestforconsent.
>>
>>AsImentionedpreviously,ProfessorNardandImaycontinuetoenlargeourrequestforconsent
toincludeadditionalpersons.
>>
>>Warmregards,
>>
>>DanielB.Ravicher,Esq.
>>2000PonceDeLeonBlvd,Ste600
>>CoralGables,Florida33134
>>dan@ravicher.com786.505.1205
>>
>>OnWed,Oct1,2014at7:15PM,DavidPerlson<davidperlson@quinnemanuel.com>wrote:
>>>Mr.Ravicher,Googlecontinuestoopposeforthereasonsalreadystated.
>>>
>>>OriginalMessage
>>>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOf
>>>DanielB.Ravicher
>>>Sent:Wednesday,October01,201412:08PM
>>>To:DavidPerlson;Joe.Re
>>>Cc:CraigNard
>>>Subject:Re:131307I/PEngine,Inc.v.AOLInc.:Requestfor
>>>ConsenttoFileAmicusBrief
>>>
>>>Messrs.PearlsonandRe,
>>>
>>>ProfessorNardandIherebyenlargeourrequestforconsenttoincludeProfessorsMichaelRisch
ofVillanovaSchoolofLaw,DavidSchwartzoftheIITChicagoKentCollegeofLawandAdamMossoff
ofGeorgeMasonSchoolofLaw.
>>>
>>>Mr.Re,Pleaseletmeknowatyourconveniencewhetheryouenlargeyourconsenttoinclude
ProfessorsRisch,SchwartzandMossoff.
>>>
4
>>>Mr.Perlson,Pleaseletmeknowatyourconveniencewhetheryoumaintainyouoppositiontoour
requestforconsent.
>>>
>>>AsImentionedpreviously,ProfessorNardandImaycontinuetoenlargeourrequestforconsent
toincludeadditionalpersons.
>>>
>>>Warmregards,
>>>
>>>DanielB.Ravicher,Esq.
>>>2000PonceDeLeonBlvd,Ste600
>>>CoralGables,Florida33134
>>>dan@ravicher.com786.505.1205
>>>
>>>OnTue,Sep2,2014at2:35PM,DavidPerlson<davidperlson@quinnemanuel.com>wrote:
>>>>Mr.Ravicher,Googlecontinuestoopposeforthereasonsalreadystated.
>>>>
>>>>OriginalMessage
>>>>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOf
>>>>DanielB.Ravicher
>>>>Sent:Tuesday,September02,20148:39AM
>>>>To:DavidPerlson;Joe.Re
>>>>Cc:CraigNard
>>>>Subject:Re:131307I/PEngine,Inc.v.AOLInc.:Requestfor
>>>>ConsenttoFileAmicusBrief
>>>>
>>>>Messrs.PerlsonandRe:
>>>>
>>>>Iherebyenlargemyrequestforconsenttoinclude,inadditiontomyself,ProfessorCraigNard
ofCaseWesternLawSchool.ProfessorNardisapreeminentpatentlawscholarandexpertwhoclerked
forbothJudgesNiesandRichontheFederalCircuit.MoreinformationaboutProfessorNardis
availablefrom:
>>>>http://law.case.edu/OurSchool/FacultyStaff/MeetOurFaculty/FacultyDetail.aspx?id=139.
>>>>
>>>>Mr.Re,Pleaseletmeknowatyourconveniencewhetheryouenlargeyourconsenttoinclude
ProfessorNard.
>>>>
>>>>Mr.Perlson,Pleaseletmeknowatyourconveniencewhetheryoumaintainyouoppositiontothe
requestforconsent.
>>>>
>>>>Also,soyouarenotsurprisedandsoyoucandiscussitwithyourclientsinconsiderationof
thisenlargedrequest,ProfessorNardandImayfurtherenlargeourrequesttoincludeadditional
patentlawscholarsandexperts.Ifandwhenwewishtofurtherenlargeourrequest,wewilldoso
immediatelysoastonotdelayyourconsideration.Fornow,yourresponsetoourjointrequestfor
consentwouldbegreatlyappreciated.
>>>>
>>>>Warmregards,
>>>>
>>>>DanielB.Ravicher,Esq.
>>>>2000PonceDeLeonBlvd,Ste600
>>>>CoralGables,Florida33134
>>>>dan@ravicher.com786.505.1205
>>>>
>>>>
>>>>OnFri,Aug29,2014at3:58PM,DanielB.Ravicher<dan@ravicher.com>wrote:
>>>>>AndyetonJuly31,2013,youdidnotopposemyrequestfor
>>>>>consenttosubmitanamicusbriefatthepanelmeritsstageofthisappeal.
>>>>>Sevenofthosearticlesyoucitewerepublishedwellbeforethat
>>>>>date,sowhatisdifferentnowthatIpublishedonemorearticlesubsequent?
>>>>>Andhowdoesanarticlepublishednearlyfourmonthsagoby
>>>>>someoneyouallegeisafrequenttraderprovideanybasisto
>>>>>assertyouhaveknowledgeoftheircurrentpositions,ifany.The
5
>>>>>bottomlineisyoudonotdenyIameminentlycompetenttoprovide
>>>>>assistancetotheCourt,thatIamindeedunlikeanyotherpatent
>>>>>attorneyasfarasrepresentingthepublicinterestisconcerned,
>>>>>andthatyouhavenotasingleshredofevidenceofmyhavingany
>>>>>financialinterestinanypartyinthecase,butyetyoustill
>>>>>opposemyrequestforconsentbasedonsomearticlesIauthored
>>>>>months,andevenyears,ago.Thatisafrivolousposition,utterlybaselessonfactsorlaw.
>>>>>Iwillmakemymotionforleave,youcanwasteyourclient'smoney
>>>>>andthecourt'stimesubmittinganopposition,andthenwewill
>>>>>seewhatthecourtdecidesonthematter.
>>>>>
>>>>>OnFri,Aug29,2014at3:39PM,DavidPerlson
>>>>><davidperlson@quinnemanuel.com>wrote:
>>>>>>Mr.Ravicher,asIindicated,ourunderstandingisbasedon
>>>>>>publicallyavailableinformation.Atnumeroustimesduringthe
>>>>>>courseofthislawsuit,youhavepubliclydisclosedonthe
>>>>>>SeekingAlphawebsitethatyouholdeitheralongorashort
>>>>>>positioninVringostock.IwouldreferyoutoyourSeeking
>>>>>>AlphaarticlesofNovember7,2012,December5,2012,December
>>>>>>13,2012,January3,2013,January4,2013,January23,2013,June17,2013,andMay7,
2014.Wemaintainouropposition.
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOfDanielB.
>>>>>>Ravicher
>>>>>>Sent:Friday,August29,201410:53AM
>>>>>>
>>>>>>
>>>>>>To:DavidPerlson
>>>>>>Cc:Joe.Re
>>>>>>Subject:RE:131307I/PEngine,Inc.v.AOLInc.:Requestfor
>>>>>>ConsenttoFileAmicusBrief
>>>>>>
>>>>>>
>>>>>>
>>>>>>WhatfinancialinterestdoIhaveexactly?I'dliketoknowwhat
>>>>>>accountsofmineyouhaveillegallyaccessedinordertomake
>>>>>>suchassertions.Iwillassuredlynotifyallappropriatelaw
>>>>>>enforcementagencies,inadditiontoallapplicablebar
>>>>>>associations.Illegalaccesstopersonalfinancialinformationisacrimeandgroundsfor
disbarment.
>>>>>>
>>>>>>If,instead,youhaveabsolutelynoevidencewhatsoeverofmy
>>>>>>havinganyfinancialinterestinanypartyinthissuit,Itrust
>>>>>>youwillwithdrawyourfrivolousoppositiontomyappearanceas
>>>>>>anamici.Youcandosonoworyoucantrytoexplainyourpositiontothecourt.
>>>>>>I'dratheryounotwastetheCourt'stime,butthat'syourchoice.
>>>>>>
>>>>>>Ifyou'dliketodiscussonthephone,inthehopesthatwecan
>>>>>>resolvethisprivately,pleasejustnameyourtimeonTuesdayor
>>>>>>Wednesdaywhenwecandoso.
>>>>>>
>>>>>>OnAug29,20141:36PM,"DavidPerlson"
>>>>>><davidperlson@quinnemanuel.com>
>>>>>>wrote:
>>>>>>
>>>>>>Mr.Ravicher,wedonotbelievethatouroppositiontoyour
>>>>>>requestbasedonyourfinancialinterestisfrivolous,andwe
6
>>>>>>maintainourposition.Ifyouwouldliketodiscussthematterfurtherbyphonewecando
so.
>>>>>>
>>>>>>OriginalMessage
>>>>>>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalfOfDanielB.
>>>>>>Ravicher
>>>>>>Sent:Thursday,August28,20146:02PM
>>>>>>To:DavidPerlson
>>>>>>Cc:Joe.Re
>>>>>>Subject:Re:131307I/PEngine,Inc.v.AOLInc.:Requestfor
>>>>>>ConsenttoFileAmicusBrief
>>>>>>
>>>>>>David,
>>>>>>
>>>>>>Thankyouforyourreply.
>>>>>>
>>>>>>MybriefwillofferassistancetotheCourtbecauseIam
>>>>>>undeniablytheworld'sforemostpublicinterestpatentattorney.
>>>>>>Nootherpatentattorneyontheplanethasprovidedanywhere
>>>>>>closetoasmanyhoursofprobonoservicetotheindigent
>>>>>>public.Nootherpatentattorneyhasevertakenacasetothe
>>>>>>SupremeCourt,muchlesswon,onaprobonomatterfor
>>>>>>economicallydisadvantagedAmericanswithnootheraccessto
>>>>>>adequatecounsel.Nootherpatentattorneyhasfiledasmany
>>>>>>reexaminationsonbehalfofthepubliconaprobonobasis.I
>>>>>>haveappearedrepeatedlybeforetheFederalCircuit,andthe
>>>>>>SupremeCourt,onpatentlawandpolicyissues.Ihavealsobeen
>>>>>>calledtwiceasawitnessbyCongresstotestifyonpatent
>>>>>>reform.Iamalsoalawprofessorthathastaughtpatentlawandpolicyforseveralyears,
includingteachingU.S.patentlawandpolicytoseveralinternationalbodies,suchastheChinese
SIPOandtheUnitedNations.
>>>>>>Indeed,yourclientGoogleitselfhastwiceinvitedmetospeak
>>>>>>onitscampustoprovidecommentaryaboutpatentlawandpolicy.
>>>>>>Icouldcontinue,butIthinkImakethepointquiteclearlythat
>>>>>>yourargumentIamunqualifiedtoprovideassistancetothe
>>>>>>FederalCircuitonimportantissuesofpatentpolicyispurelyfrivolousand,frankly,
insulting.
>>>>>>
>>>>>>Mysometimesinvestinginvarioussecuritiesorderivatives
>>>>>>neitherprovidesnoreliminatesmyabilitytoofferassistancetotheCourt.
>>>>>>Therefore,thatissueisirrelevant.Iencourageyourclientsto
>>>>>>reconsidertheirpositiononmyrequest,becausefailingtogrant
>>>>>>consentwillforcemetofileamotionwiththecourt,burdening
>>>>>>itwithoutjustification.IwouldhopethatyouandIcould
>>>>>>resolvethissothatwedon'thavetowastethecourt'stimeand
>>>>>>attentionwithsuchafrivolousopposition.Ifyouwouldliketo
>>>>>>discussthiswithmefurther,Iamhappytospeakbyphoneatyourconvenience.
>>>>>>IfIdonotreceiveareplytothismessage,Iwillrepresentto
>>>>>>theCourtthatyourclientshaverefusedtograntconsentdespite
>>>>>>myundeniablequalificationsanddespitemyrequestthatyourclientsreconsidertheir
positiononmyrequest.
>>>>>>
>>>>>>Warmestregards,
>>>>>>Dan
>>>>>>
>>>>>>OnThu,Aug28,2014at4:44PM,DavidPerlson
>>>>>><davidperlson@quinnemanuel.com>wrote:
>>>>>>>Mr.Ravicher,Iapologizefornotrespondingearlier,Iwasout
>>>>>>>oftheofficelastweek.
>>>>>>>
>>>>>>>Defendantsdonotconsent.Itisourunderstandingbasedon
7
>>>>>>>publicallyavailableinformationthatyouareanactivetrader
>>>>>>>andspeculatorofVringostockandthusnotaproperamicus.
>>>>>>>
>>>>>>>David
>>>>>>>
>>>>>>>
>>>>>>>
>>>>>>>OriginalMessage
>>>>>>>From:ravicher@gmail.com[mailto:ravicher@gmail.com]OnBehalf
>>>>>>>OfDanielB.Ravicher
>>>>>>>Sent:Thursday,August28,20147:13AM
>>>>>>>To:Joe.Re
>>>>>>>Cc:DavidPerlson
>>>>>>>Subject:Re:131307I/PEngine,Inc.v.AOLInc.:Requestfor
>>>>>>>ConsenttoFileAmicusBrief
>>>>>>>
>>>>>>>Mr.Perlson:
>>>>>>>
>>>>>>>Tofollowuponmymessagelastweek,whileIhavereceived
>>>>>>>consentfromI/PEngine,Ihavenotreceivedaresponsefromyouregardingmyrequest.
>>>>>>>Canyoupleaseconfirmthatyouhavereceivedmyrequest?
>>>>>>>Thankyou.
>>>>>>>
>>>>>>>Warmregards,
>>>>>>>Dan
>>>>>>>
>>>>>>>OnWed,Aug20,2014at9:27PM,Joe.Re<Joe.Re@knobbe.com>wrote:
>>>>>>>>IPEngineherebyconsentstoanamicusbrief.Thankyou.
>>>>>>>>
>>>>>>>>JosephRe.
>>>>>>>>
>>>>>>>>>OnAug20,2014,at6:52AM,"DanielB.Ravicher"
>>>>>>>>><dan@ravicher.com>
>>>>>>>>>wrote:
>>>>>>>>>
>>>>>>>>>DearMessrs.PerlsonandRe:
>>>>>>>>>
>>>>>>>>>PursuanttoFed.R.App.P.29,Iwritetorequestconsentto
>>>>>>>>>myfilinganamicusbriefwiththeFederalCircuitin131307
>>>>>>>>>I/PEngine,Inc.v.AOLInc.onbehalfof
>>>>>>>>>Plaintiff/CrossAppellant,I/PEngine,Inc.uponanypetition
>>>>>>>>>forrehearingorrehearingenbancthatmaybefiled.
>>>>>>>>>
>>>>>>>>>Warmregards,
>>>>>>>>>
>>>>>>>>>DanielB.Ravicher,Esq.
>>>>>>>>>RavicherLawFirm
>>>>>>>>>2000PonceDeLeonBlvd,Ste600CoralGables,Florida33134
>>>>>>>>>(786)5051205|dan@ravicher.com

I have written previously (here and here) about the patent infringement suit brought by Vringo
(NASDAQ:VRNG) against Google (NASDAQ:GOOG), which appears to be highly material to Vringo's
valuation. After the jury found Vringo's patents valid and infringed, and awarded Vringo $31M in damages, both
sides proceeded to file several post-trial motions. Those motions are not yet fully briefed, and so I haven't drawn
any conclusions on their respective merits.
However, Google has asked the judge to postpone ruling on one of the motions filed by Vringo requesting the
implementation of an ongoing royalty Google must pay Vringo for continued infringement of the patents. Not
only do I find such a request abnormal, as judges frequently prefer to address all post-trial motions at once, rather
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Daniel B. Ravicher, Ravicher.com (340 clicks)
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Google Flip Flops, Concedes Vringo Entitled To
Ongoing Royalties
Jan. 3, 2013 10:30 AM ET | 191 comments | About: Vringo, Inc. (VRNG), GOOG by: Daniel B. Ravicher
Disclosure: I am long VRNG. (More...)
Google Flip Flops, Concedes Vringo Entitled To Ongoing Royalties - Vr... http://seekingalpha.com/article/1092911-google-flip-flops-concedes-vrin...
1 of 12 9/1/2014 9:41 AM
than in series, Google made a specific argument in its December 21 request for postponement that caught me
completely off guard. Specifically, Google said,
... allowing the Court to first rule on the other pending post-trial motions would give the parties an
opportunity to negotiate post-judgment royalties themselves.
My jaw literally hit the floor when I saw that in Google's papers, as I believed they were not at all willing to
consider paying any ongoing royalties to Vringo whatsoever. Throughout the litigation, Google has consistently
argued that even if Vringo's patents are valid and infringed, Vringo is not entitled to royalties, but instead is only
entitled to a single lump-sum one-time payment for a total license to the patents.
To be sure, in its post-trial motion for Judgment as a Matter of Law on Damages filed December 18, Google
argued,
In this case, none of the evidence relied on by I/P Engine or Dr. Becker to justify a running royalty
was admissible or reliable. ...
By contrast, Defendants introduced evidence that the hypothetical negotiation would have resulted in
a lump-sum.
It's absolutely shocking to me to see Google so severely undercut that argument just three days later in its request
to postpone Vringo's post-trial motion for ongoing royalties by saying,
[T]ime would also provide the parties with an opportunity to negotiate an agreeable post-judgment
reasonable royalty, an approach strongly endorsed by the Federal Circuit. See Telecordia Tech, Inc. v.
Cisco Sys., Inc., 612 F.3d 1365, 1378 (Fed. Cir. 2010) ("If the district court determines that a
permanent injunction is not warranted, the district court may, and is encouraged, to allow the parties
to negotiate a license . . . . The district court may step in to assess a reasonably royalty should the
parties fail to come to an agreement.").
This statement by Google not only contradicts their previous position that Vringo is not entitled to any royalties
whatsoever, but it also concedes that a reasonable royalty for ongoing infringement is something the Court of
Appeals has "strongly endorsed" judges assessing if the parties can't negotiate such terms themselves.
I don't see how Google can continue to argue Vringo is not entitled to an ongoing royalty if it is now saying it
wants time to negotiate an ongoing royalty with Vringo privately and, if the parties are unable to reach a deal, the
judge should step in and assess an ongoing royalty himself. To do so, as it appears Google intends to do, in my
opinion seriously erodes Google's credibility on the issue and virtually admits Vringo is indeed entitled to an
ongoing royalty and not just a lump-sum payment. This is a substantial concession on Google's part and I do not
see the strategic sense in effectively giving up on the argument that Vringo is only entitled to a lump sum.
On New Year's Eve, Vringo filed its opposition to Google's postponement request, saying in pertinent part,
Defendants' claim that a delay is necessary for the parties to negotiate post-judgment royalties
themselves is disingenuous. Defendants have not contacted I/P Engine at all since the jury's verdict to
convene any such negotiations. While I/P Engine remains available - no matter the briefing schedule
- to negotiate a resolution to this litigation in good faith, there is no justification to delay this Court's
determination of what is inevitable (the awarding of post-judgment royalties based on an in-hand
verdict). Such a delay would likely achieve the opposite, allowing Defendants to postpone any
meaningful discussions given that there are no imminent rulings or deadlines looming over them.
2 of 12 9/1/2014 9:41 AM
Vringo's argument is extremely persuasive to me. If it is true that Google has not attempted to initiate any
negotiations with Vringo regarding a license with ongoing royalties instead of a lump sum payment, then
Google's argument that it needs time to do so as an excuse to delay the court's consideration of imposing such
ongoing royalties to Vringo seems extremely disingenuous to me. I expect the judge will deny Google's request to
postpone the resolution of Vringo's post-trial motion for ongoing royalties and while I won't draw a final
conclusion until I see all the briefing, I think Google's argument that Vringo is not entitled to ongoing royalties is
very unlikely to prevail.
Additional disclosure: This content was originally issued as a Ravicher Report on January 3, 2013. It is now
being made available for free to the public for the first time here. I was previously short VRNG, as disclosed in
my Nov 1, Nov 7, Dec 5, Dec 12 and Dec 13 articles. My articles of Oct 11, Oct 17, Oct 22 and Oct 26 correctly
disclosed I had no position in VRNG. In light of the issues addressed in this article and the fact that VRNG
recently fell below $3, I closed my short position and initiated a long position. VRNG is, in my opinion, highly
volatile, as is the litigation process in which it is involved. Therefore, I may change my position in VRNG at any
moment for any reason. I have never directly held shares in GOOG, although I am sure I have and do effectively
own such shares through mutual funds and ETF's. Neither I nor any entity that I direct (i.e. I am a member of the
Board of Directors) has any business relationship with VRNG, GOOG or any other party involved in this matter. I
am Legal Director of the Software Freedom Law Center, a non profit that has in the past received support from
GOOG, but I have been on an unpaid leave of absence from SFLC since August 2011. A client I have represented
in litigation in the past, the Software Freedom Conservancy, may have received or be receiving support from
GOOG, but no such support has ever been used to compensate me for my services to the client, as I provide all
my services to that client either pro bono or on contingency. I have in the past been invited by GOOG to give two
public speeches on issues relating to patent law. Those two speeches are available through YouTube by searching
my name. I was not compensated by GOOG or any other party for those speeches, nor were any of my travel
expenses even reimbursed. I have a couple friends who work at GOOG. Some of them are patent attorneys, but
I've never talked to them or any of my other friends at GOOG about VRNG. I use GOOG products, such as
Gmail, Google Search, Android and Chrome.
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3 of 12 9/1/2014 9:41 AM
I have followed the Vringo (NASDAQ:VRNG) vs. Google (NASDAQ:GOOG) patent infringement trial (actually
called I/P Engine v AOL et al.) extensively. Previously I provided a preview of the trial, a summary of the
opening day of the trial, which I attended in person, updates on the other days of the trial (here, here and here),
my prediction for what the jury would decide, a discussion of risks to the jury's verdict, and my opinion that
Google flip flopped on the issue of whether the court should award Vringo an ongoing royalty. At various points I
have been long VRNG, short VRNG, and had no position in VRNG. I am a trader. I do not fall in love or hate
with a stock. I buy when I think it is underpriced and sell when I think it is overpriced. I indeed have done this
within a day when the stock price moved dramatically.
As of now, there are two open threads in the case. First, both sides have filed appeals with the Court of Appeals
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Vringo Vs. Google: Ongoing Royalty Prediction
Jun. 17, 2013 10:54 AM ET | 56 comments | About: Vringo, Inc. (VRNG), Includes: GOOG by: Daniel B.
Ravicher
Vringo Vs. Google: Ongoing Royalty Prediction - Vringo, Inc. (NASD... http://seekingalpha.com/article/1505402-vringo-vs-google-ongoing-royal...
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for the Federal Circuit, which is the exclusive Court of Appeals for patent cases. Vringo is appealing the District
Court judge's decisions to not allow a new trial on damages and to limit Vringo's damages period under laches.
Google is appealing the judge's claim construction, certain evidentiary rulings, and refusal to overturn the jury's
verdict of infringement, validity, and damages. The opening appeal brief is due from Google on July 22, and then
there will be a couple of rounds of briefs, followed by an oral argument before any decision is issued. In short,
that process is still in its early stages.
The second open thread is the lone remaining issue for the District Court judge, Judge Raymond Jackson, to
decide, which is what, if any, royalty to require Google to pay for continuing to infringe Vringo's patents after the
jury's verdict. That issue was fully briefed by the parties as of May 24, and the judge has not indicated he wants to
have a hearing on it. So, he could issue his decision any day.
Parties' Positions: I reviewed the briefs submitted by the parties and have come to a conclusion regarding how I
predict Judge Jackson will rule on the issue. Before I provide my prediction, I first want to summarize the parties'
positions.
Vringo argues in its briefs (here and here) that Judge Jackson should:
[E]nter an Order requiring that, for the period from November 20, 2012 through April 4, 2016,
Defendants pay I/P Engine ongoing royalties computed on a base of 20.9% of Defendants' U.S.
AdWords revenues, at a running royalty rate of 7% of that base for Defendants' continued willful
infringement.
FYI, the November 20, 2012, date is the date Judge Jackson entered Judgment on Vringo's behalf after the jury
verdict, which was issued on November 7. The April 4, 2016 date is the date Vringo's patents will expire.
Google, on the other hand, argues in its brief that Judge Jackson should deny Vringo's request for any
post-judgment royalty in its entirety. Google makes this argument because it says it no longer infringes Vringo's
patents, due to a change it says it recently made to its systems, and also because Vringo is only entitled to a lump
sum payment, which is covered by the jury's damages award for past infringement.
ActiveVideo: In forming my opinion, I also reviewed his ruling on post-verdict royalty in another case he presided
over called ActiveVideo v Verizon. As an aside, in that case Judge Jackson noted, "[t]he parties have provided the
Court vastly dissimilar submissions regarding the appropriate royalty rate." So, the vast difference between
Vringo's and Google's arguments is not unusual for the judge.
In the ActiveVideo case, the jury awarded the patent holder a royalty for past infringement of $1.13 per subscriber,
while Judge Jackson awarded the patent holder a post-verdict ongoing royalty of $2.74 per subscriber, more than
double the jury verdict. The patentee had proposed $3.40 per subscriber, a tripling of the jury's verdict, while the
infringer had proposed only $0.17 per subscriber. In his analysis coming to the $2.74 figure, Judge Jackson said:
[I]t would have been reasonable for the parties to make an agreement whereby Verizon would receive
60% of the profits and ActiveVideo would receive 40% of the profits from the FiOS TV system.
I conclude from this that Judge Jackson is not uncomfortable with awarding a patentee a very large percentage of
the profits derived by an infringer from continued infringement. Nor is Judge Jackson uncomfortable with
awarding post-verdict royalties that are more than double what the jury awarded for past damages. Further, Judge
Jackson can feel confident in issuing such a decision because the Court of Appeals blessed his ActiveVideo
analysis, saying "we see no error in its post-verdict royalty calculation."
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My Opinion: I believe it is more likely than not that the Judge will grant Vringo an ongoing royalty against
Google's continued patent infringement and that he will set a royalty rate of between 5 and 6% applied against a
base of 20.9% of Google's AdWords revenues. I explain how I came to this opinion below.
First, Google has, for better or worse, given the judge an all or nothing proposition, which is exactly what they
did at trial, where Google presented no evidence of a different royalty base or royalty rate than what Vringo
proposed. Both at trial and again now in the post-trial royalty briefing, Google has maintained its position that the
proper award is a one-time lump-sum amount. That is a very bold, but very dangerous litigation strategy, because
the fact that it didn't work at trial means it is unlikely the judge will adopt it in the post-trial motion. As such, I
expect the judge will reject completely Google's argument that Vringo is not entitled to an ongoing royalty. (I
wrote previously about Google flip-flopping on this issue, which it seems to have done now yet again. If Judge
Jackson is anything like me, at this point he likely gives Google very little credibility on the issue.)
Royalty Rate: The next question is what royalty will he award. This involves two parts. The judge must
determine a royalty rate and a royalty base. The royalty rate is the percentage to be paid to Vringo and the royalty
base is the revenues of Google against which the royalty rate is to be applied. Vringo argues the rate should be 7%
and the base should be 20.9% of Google's U.S. AdWords revenues. Google, after arguing there should be no
royalty whatsoever, argues the rate, if any, should be less than 3.5% and the base should be no greater than 2.8%.
It is my opinion that Vringo is correct when it points out in its briefs that the case law supports post-judgment
royalties being higher than the royalty awarded at trial both because the patent holder is in a stronger bargaining
position and because the infringer is now fairly considered to be willfully infringing. In this case, the jury found
that an appropriate royalty rate for past damages would have been 3.5%. Thus, the royalty rate I expect the judge
to award for post-verdict infringement will be higher than that.
Vringo's argument that it should be double (7%) seems reasonable and well within the judge's discretion to award,
especially given his decision in ActiveVideo. However, because Google has appealed the issues of infringement
and validity, I do not think it is appropriate to over penalize them for willfulness, at least not unless and until the
Court of Appeals affirms that they are infringing valid patents. For that reason, I expect the Judge will award a
royalty rate that is higher than the 3.5% found by the jury, but not as high as 7% as Vringo proposes. I expect he
will award a royalty rate of between 5 and 6%. Google's argument that it should be less than 3.5% is a non-starter.
Royalty Base: Once the judge determines the proper royalty rate, he must also determine the proper royalty base
against which to apply that rate. On this issue, the jury was not asked to provide its determination, so it's uncertain
what they used to calculate the damages awarded to Vringo at trial. Google argues the royalty base must be much
lower than 20.9%, because the total jury verdict against Google of approximately $16M does not work out
mathematically. Specifically, Google suggests that if you take the $16M total amount of damages awarded against
them and apply a 3.5% royalty rate to Google's U.S. AdWords revenues for the relevant pre-verdict time frame,
the algebra indicates the jury applied a 3.5% royalty rate against only 2.8% of Google's U.S. AdWords revenues,
not the 20.9% royalty base Vringo argued to the jury during trial and now argues to Judge Jackson in the ongoing
royalty motion.
There is no conclusive proof of what the jury believed was an appropriate royalty base. Unlike the royalty rate
they were expressly asked to determine, the jury was not asked to say in its verdict what royalty base it found was
appropriate. Therefore, it isn't possible to know for sure whether the jury rejected Vringo's 20.9% royalty base
argument or not. Given the options of a 20.9% royalty base, which Vringo presented at trial, and a 2.8% royalty
base, which Google argues can be inferred from the jury verdict, but which it did not argue at trial, it is my
opinion that the judge will adopt the 20.9% royalty base of U.S. AdWords revenues. This is because it's the better
choice between the two being presented to him, and there's no evidence for him to rely on to say some other
3 of 14 9/1/2014 9:44 AM
royalty base is appropriate. He'd literally have to make one up out of thin air and I don't see him doing that.
Google's Purported Design Around: It is important to note that Google told the judge in its brief that it has
implemented a change to its systems such that it is no longer infringing Vringo's patents. If this is true, then no
matter what ongoing royalty the judge imposes, Google will not have to pay any money to Vringo as of the date
Google stops (or stopped) infringing Vringo's patents.
However, in my opinion, Vringo is correct when it argues that the currently pending motion for an ongoing
royalty is not the appropriate time to deal with that issue. If/when the issue of Google's purported non-infringing
alternative is before the court, I hope to have time to analyze it then. For now, I (and I assume Judge Jackson as
well) will withhold having an opinion on that issue, while keeping in mind that Google argued its previous system
also did not infringe the patents (and it maintains that argument in its appeal), and yet the jury disagreed.
Timing of Decision: Lastly, on when we can expect a decision from Judge Jackson, as I said above, the ongoing
royalty motion was fully briefed as of May 24. I generally expect district court judges to rule on motions within
two months, and Judge Jackson does not appear to me to be outside of the normal range. In fact, in the
ActiveVideo case, the judge made his ruling just eight days after the ongoing royalty issue was fully briefed.
In this case, Judge Jackson ruled on four other post-verdict motions made by the parties in little over six weeks.
Therefore, I fully expect Judge Jackson will rule on the ongoing royalty motion anytime between now and mid
July at the latest. I indeed wouldn't be surprised if he ruled by the end of June.
Risk Factor: I am human, and therefore might be completely wrong with my opinions and predictions.
Therefore, before making any investment decision based on what I have written here, please spend some time
evaluating the situation on your own, and also please evaluate my credibility. Without question, I can be and have
been wrong many times. For example, in January 2011, I predicted Rambus (RMBS) would win two appeals in its
patent cases, but that didn't exactly happen. I was long RMBS based on my prediction, but the stock went down
more than 20% when things didn't go as I predicted.
Even in this case, I've made mistakes. For example, in my December 13 article, I said:
The judge will decide whether the claims are invalid for obviousness, although the jury did find
several preliminary factual questions for the judge to consider on that issue in Vringo's favor... Vringo
must have the judge rule the patents are not obvious.
However, the judge had already ruled on the issue of obviousness in Vringo's favor. I unfortunately missed that in
my review of the docket, which was a mistake, and I immediately apologized in the comments of the article once
it was brought to my attention. I had, however, assumed in the article that the judge would rule in Vringo's favor
on obviousness, so even if I had known about the judge's decision, it wouldn't have materially changed the
opinions I expressed in that article. But, regardless, it was a mistake, and I could very well make such mistakes
again. I am human. This is why you must review what I've said for yourself to make sure I haven't made a
mistake.
As another example of my being incorrect, in January I wrote an article saying Google's request to postpone
Vringo's ongoing royalty motion had been ignored, which was disproven a few hours later when the judge granted
the motion, quite to my surprise and embarrassment.
Warning: Finally, even though I firmly believe in what I've said here, I also strongly discourage anyone from
investing in VRNG, or any other volatile stock, with money they can't afford to lose. I really do not want the guilt
of people losing their savings because of my prediction, since it is extremely possible that I could be completely
4 of 14 9/1/2014 9:44 AM
wrong. I strongly encourage investors to consult with their own patent attorney on these issues to get a second
(and possibly different) opinion.
Additional disclosure: This content was originally published as a Ravicher Report on June 13, 2013. It is now
being made available for free to the public for the first time here. While I am long VRNG as of the submission of
this article for publication to the Seeking Alpha editors, VRNG is, in my opinion, highly volatile, as is the
litigation process in which it is involved, and therefore I may change my position in VRNG at any moment for
any reason or no reason at all. I have been asked by the Seeking Alpha editors to state the price at which I would
change my position in VRNG. At the precise moment that I am submitting this article to the Seeking Alpha
editors I would be willing to close my long position in VRNG if it reached $3.50-3.75. In stating these prices, I
am not providing any investment advice or making any buy or sell recommendation. I am merely saying what
prices I would at the moment of submission of this article I would be willing to close my long position. My
opinion on this may very well change, rapidly. Also, when asked, I have given my opinions about VRNG to
private parties, some of whom had positions in VRNG at the time I gave my opinions to them. Sometimes I gave
my opinions in exchange for a fee and I may very well continue to do so.
Google's Traffic Acquisition Costs Could Soon Stabilize
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Summary
Oral argument in the Vringo vs. Google patent infringement appeal took place Tuesday.
Google appealed several issues, and Vringo cross-appealed one.
I expect the lower court judgment will be completely affirmed.
On Tuesday, the Court of Appeals for the Federal Circuit heard oral argument in an appeal of the patent infringement case I/P Engine vs. AOL, better known as Vringo (NASDAQ:VRNG) vs. Google (NASDAQ:GOOG). Here I
provide a brief overview of the case, give my thoughts on Tuesday's oral argument, and project what I expect the Court of Appeals will decide in the appeal.
Overview of Case
In November 2012, a jury in Virginia found that Google infringed Vringo's 6,314,420 and 6,775,664 patents, and awarded it $31 million in damages. The judge overseeing the case refused to overturn the jury's verdict, and ordered
Google to pay an additional $17 million for interest and damages accruing since the verdict. The district court judge has also since ordered Google to pay an ongoing royalty for continued infringement of Vringo's patents of 6.5%
of a 20.9% royalty base on U.S. AdWords revenues (i.e. 1.36% of Google's AdWords revenues).
Google has appealed several issues to the Court of Appeals for the Federal Circuit in DC, which is the exclusive Court of Appeals for patent cases. The first appeal filed by Google raises the issues decided by the jury and not
overturned by the district court judge. A second, more recent, appeal filed by Google raises the issues of additional damages and ongoing royalty.
In the first appeal, Google raised three main issues. First, Google appealed the finding of infringement, arguing that its accused systems do not perform all of the required steps of the asserted patents. Second, Google appealed the
finding that the patents are valid, in particular arguing that the patents are invalid for being obvious in light of the prior art. Lastly, Google appealed the award of $30M in damages to Vringo, arguing that the evidence did not
support such an amount. Vringo cross-appealed the issue of laches, which the district court judge held limited the amount of damages Vringo was entitled to receive from Google.
Briefing in the first appeal was submitted late last year, and oral argument took place on Tuesday before Circuit Judges Wallach, Mayer, and Chen. An mp3 of the oral argument is available from the Federal Circuit's website. I did
not attend the oral argument in person, but I reviewed the submitted briefs and listened to the mp3 recording.
Infringement
As the appellant, Google went first. Google began by discussing its non-infringement argument based on the requirement that the patents "combine" collaborative feedback with content filtering. The Court of Appeals pointed out,
however, that Google had not appealed the district court's construction of the word "combine", and thus, Google must show there was no substantial evidence in the record on which the jury could have ruled in Vringo's favor on
the issue. Google resorted to rearguing the evidence, which is not sufficient to carry its burden. It must instead show that no reasonably jury could have ruled for Vringo on the issue. Vringo's attorney pointed out how expert
testimony supported the jury's verdict. I do not think Google has overcome its very high hurdle for reversal on this issue. Thus, I expect the Court of Appeals will affirm the finding of infringement.
Validity
The Court of Appeals seemed much more interested in the second issue Google appealed, validity, and specifically the issue of obviousness. Indeed, one of the Court of Appeals judges actually interrupted Google's attorney while
he was discussing infringement and asked him to move on to discuss obviousness. The Court of Appeals was confused by the jury's specific finding that there had been both copying of the patented invention and independent
invention of the accused systems by Google. Vringo's attorney conceded this inconsistency, but argued it was insufficient to reverse the finding that the patents were valid, because the jury found that the prior art did not teach all
of the elements of the patented inventions, and those two issues (copying and independent invention) are merely "secondary considerations" that can help tilt an obviousness finding if, and only if, all of the elements in a patented
invention are found in the prior art, leaving one to ask whether it would have been obvious to combine the prior art's teachings to achieve the patented invention.
Indeed, if one looks at the jury verdict form specifically, the jury did not make inconsistent findings on these two questions for the '420 patent. They only did it for the '664 patent. There's also no dispute on other secondary
considerations, such as commercial success, long-felt need, and unexpected results, all of which the jury found supported a conclusion that the patents were not obvious. In my opinion, even if the Court of Appeals were to assume
there was no copying and there was independent invention, the other secondary considerations weigh in favor of nonobviousness, and there is still no evidence to fill the gap between the prior art's combined teachings and the
patents in the first place. Thus, I do not believe the Court of Appeals will find that Google has proven with clear and convincing evidence (the standard it must satisfy) that Vringo's patents are obvious. Indeed, towards the end of
the oral argument, one of the Court of Appeals judges pointed out how the U.S. Patent & Trademark Office, in evaluating reexaminations of Vringo's patents, had itself found them not to be obvious in light of similar prior art.
One of the Court of Appeals judges raised the issue of 101, which deals with patent-eligible subject matter. Indeed, the Supreme Court is currently considering a case on the issue of whether business methods can be patented
(much like the Bilski case from a couple years ago). Thus, the question may have been that particular judge's way of asking Google to explain whether it thought Vringo's patents violated 101. Another Court of Appeals judge
pointed out with his questioning how the only patents found invalid under 101 by the Court of Appeals were on business processes like hedging risk, and regardless, Google had not raised the issue below or noted it as an issue on
appeal (something Google said was a calculated litigation decision). Thus, I do not expect the Court of Appeals will even address the 101 issue, since Google did not raise it itself, and even if the Court of Appeals does raise the
issue on its own, I doubt they will find Vringo's patents invalid under it.
Damages / Laches
There was no discussion of the damages issue appealed by Google, and very little mention of the laches issue appealed by Vringo during the oral argument. I took this to mean those issues were of no interest to the judges, and
thus, are likely to be affirmed, because it is very rare that the Court of Appeals will reverse a lower court decision on an issue without asking at least some questions about it during oral argument.
Expected Decision
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Analysis Of Oral Argument In Vringo Vs. Google Patent Infringement Appeal
May. 7, 2014 12:39 PM ET | 104 comments | About: Vringo, Inc. (VRNG), GOOG, GOOGL by: Daniel B. Ravicher
Analysis Of Oral Argument In Vringo Vs. Google Patent Infringement ... http://seekingalpha.com/article/2198683-analysis-of-oral-argument-in-vr...
1 of 6 9/1/2014 9:45 AM
As I say above, I expect the Court of Appeals will affirm the district court decision in all respects. Thus, I expect Google will lose all of the issues it has appealed in this first appeal and Vringo will lose on the issue that it has
appealed. As for timing, the Court of Appeals could issue a Rule 36 Judgment, which is a simple one-page 100% affirmance, within days (usually 3-4 court days from oral argument). If, instead, the Court of Appeals decides to
write a full written opinion, that takes on average 2-4 months, although it could take longer, depending upon schedules of the judges. Once this appeal is decided, the Court of Appeals will consider Google's more recent appeal of
the additional damages and ongoing royalty decision by the district court judge. I plan to follow that appeal as well, as it progresses.
Additional disclosure: I may change my positions at any time for any reason, or no reason at all.
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Thank you for your update.
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