Response to Petition for Writ of Mandamus

7/27/2019 Response to Petition for Writ of Mandamus

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MISCELLANEOUS DOCKET NO. 13-168

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

IN RE HO KEUNG TSE,

Petitioner.

On Petition for Writ of Mandamus to the United States

District Court for the Northern District of California in

No. 06-CV-6573, Judge Saundra Brown Armstrong.

RESPONSE TO PETITION FOR WRIT OF MANDAMUS

MICHELLE CARNIAUX

KENYON &KENYON LLP

One Broadway

New York, NY 10004Telephone: (212) 425-7200

Facsimile: (212) 425-5288

[email protected]

[email protected]

MICHAEL A.JACOBS

RICHARD S.J.HUNG

FRANCIS C.HO

MORRISON &FOERSTER LLP425 Market St.

San Francisco, CA 94105

Telephone: (415) 268-7000

Facsimile: (415) 268-7522

[email protected]

For Respondent Apple Inc.

MEGAN WHYMAN OLESEK

KENYON &KENYON LLP

1801 Page Mill Road, Suite 210Palo Alto, CA 94304

Telephone: (650) 384-4667

Facsimile: (650) 384-4701

[email protected]

For Respondent Sony Network

Entertainment Intl LLC

DOUGLAS E.LUMISH

PATRICIA YOUNG

LATHAM &WATKINS LLP140 Scott Dr.

Menlo Park, CA 94025

Telephone: (650) 328-4600

Facsimile: (650) 463-2600

[email protected]

For Respondent MusicMatch, Inc.

Case: 13-168 Document: 16-1 Page: 1 Filed: 10/15/2013 (1 of 2


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CERTIFICATE OF INTEREST (APPLE)

Counsel for Respondent Apple Inc. certifies the following:

1. The full name of every party or amicus represented by me is:

Apple Inc.

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:

N/A.

3. All parent corporations and any publicly held companies that own

10% or more of the stock of the party or amicus curiae represented by me are:

N/A.

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 are

expected to appear in this court are:

MORRISON &FOERSTER LLP: Harold J. McElhinny, Michael A.

Jacobs, Richard S.J. Hung, G. Brian Busey & Francis C. Ho

WHYTE HIRSCHOEBECKDUDEK S.C.: Eugenia G. Carter

Date: October 15, 2013 /s/ Michael A. Jacobs



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CERTIFICATE OF INTEREST (MUSICMATCH)

Counsel for Respondent MusicMatch, Inc. certifies the following:


MusicMatch, Inc.



Yahoo! Inc.



Yahoo! Inc. was the parent corporation and sole owner of

MusicMatch, Inc., which merged into Yahoo! Inc. and no longer

exists as a legal entity. Yahoo! Inc. has no parent corporation and no

publicly held entity owns 10 percent or more of Yahoo! Inc.s stock.




LATHAM &WATKINS LLP: Douglas E. Lumish & Patricia Young

WEIL,GOTSHAL &MANGES LLP: Yar R. Chaikovsky,

Nicholas P. Groombridge, David J. Ball & Barbara Vining

ZUCKERMAN &SPAEDER LLP: Herbert Better

Date: October 15, 2013 /s/ Douglas E. Lumish



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CERTIFICATE OF INTEREST (SONY)

Counsel for Respondent MusicMatch, Inc. certifies the following:


Sony Network Entertainment International LLC



Sony Network Entertainment International LLC



Sony Network Entertainment International LLC is a wholly owned

subsidiary of Sony Corp. of America, which is a subsidiary of

publicly traded Sony Corp. of Japan..




KENYON &KENYON LLP: Megan Olesek, John Flock & MichelleCarniaux

Date: October 15, 2013 /s/ Megan W. Olesek



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TABLE OF CONTENTS

CERTIFICATE OF INTEREST (APPLE) ................................................................ iCERTIFICATE OF INTEREST (MUSICMATCH) ................................................ iiCERTIFICATE OF INTEREST (SONY) ............................................................... iiiTABLE OF CONTENTS ......................................................................................... ivTABLE OF AUTHORITIES ................................................................................... viSTATEMENT OF RELATED CASES ..................................................................... 1INTRODUCTION ..................................................................................................... 2STATEMENT OF FACTS ........................................................................................3

A. The Asserted Patent & the Reexamination Proceedings ....................... 3B. The Errors in the Reexamination Certificate ........................................ 4C. The Proceedings Below .........................................................................6D. Mr. Tses Other Actions Concerning the 797 Patent ........................... 9

SUMMARY OF ARGUMENT ...............................................................................10ARGUMENT ...........................................................................................................11I. STANDARD OF REVIEW ...........................................................................11II. MANDAMUS LIFTING THE STAY SHOULD BE DENIED. .................. 12

A. The District Courts Opinion Moots Mr. Tses Petition andAlso Demonstrates No Abuse of Discretion .......................................14

B. Mr. Tses Allegations of Constitutional Violations Lack Merit .........15C. The Pending Summary Judgment Motion for Invalidity Also

Independently Justifies Maintaining the Stay ..................................... 16



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III. MANDAMUS COMPELLING DISCOVERY SHOULD BEDENIED. .......................................................................................................16

IV. MANDAMUS REASSIGNING THE ACTION TO ANOTHERJUDGE SHOULD BE DENIED. ..................................................................19

V. MANDAMUS TRANSFERRING THIS ACTION SHOULD BEDENIED. .......................................................................................................20

CONCLUSION ........................................................................................................21



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TABLE OF AUTHORITIES

Page(s)

CASES

Allied Chem. Corp. v. Daiflon, Inc.,449 U.S. 33(1980) .............................................................................................. 11

American Ad Mgmt., Inc. v. General Tel. Co.,

190 F.3d 1051 (9th Cir. 1999) ............................................................................ 19

Avila v. Willits Envtl. Remediation Trust,

633 F.3d 828 (9th Cir. 2011) .............................................................................. 16

CMAX, Inc. v. Hall,

300 F.2d 265 (9th Cir. 1962) ............................................................ 11, 12, 13, 16

Commodity Futures Trading Com. v. Savage,

611 F.2d 270 (9th Cir. 1979) .............................................................................. 20

In re Cordis Corp.,

769 F.2d 733 (Fed. Cir. 1985) ...................................................................... 12, 15

Four Pillars Enters. Co. v. Avery Dennison Corp.,

308 F.3d 1075 (9th Cir. 2002) ............................................................................ 18

Gould v. Control Laser Corp.,705 F.2d 1340 (Fed. Cir. 1983) .......................................................................... 12

Hallett v. Morgan,

296 F.3d 732 (9th Cir. 2002) ........................................................................ 16, 17

Jones v. GNC Franchising, Inc.,

211 F.3d 495 (9th Cir. 2000) .............................................................................. 20

Katz Interactive Call Processing Litig. v. American Airlines, Inc.

(In re Katz Interactive Call Processing Patent Litig.),639 F.3d 1303 (Fed. Cir. 2011) .......................................................................... 13

Krechman v. County of Riverside,

723 F.3d 1104 (9th Cir. 2013) ............................................................................ 19



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Landis v. North Am. Co.,

299 U.S. 248 (1936) ............................................................................................ 15

Liteky v. United States,

510 U.S. 540 (1994) ............................................................................................ 19

Mallard v. U.S. Dist. CourtforSouthern Dist.,

490 U.S. 296 (1989) ............................................................................................ 11

In re Medical Components, Inc.,

Misc. Dkt. No. 148, 2013 U.S. App. LEXIS 15972

(Fed. Cir. Aug. 2, 2013) ................................................................................ 12, 15

In re MSTG,

675 F.3d 1337 (Fed. Cir. 2012) ...................................................................... 2, 17

SEC v. Universal Financial,

760 F.2d 1034 (9th Cir. 1985) ............................................................................ 13

In re Shared Memory Graphics LLC,

659 F.3d 1336 (Fed. Cir. 2011) .................................................................... 11, 12

Smith v. Mulvaney,

827 F.2d 558 (9th Cir. 1987) .............................................................................. 19

In re Synthes (U.S.A.),

346 Fed. Appx. 583 (Fed. Cir. 2009) .................................................................. 12

Tse v. Apple Computer, Inc.,

No. L-05-2149, 2006 U.S. Dist. LEXIS 68451

(D. Md. Aug. 31, 2006) ...................................................................................... 21

Tse v. Apple Inc.,

No. 12-cv-21, slip op. (W.D. Wis. May 18, 2012) ............................................. 21

Tse v. Blockbuster LLC,

No. 4:12-cv-328, 2013 U.S. Dist. LEXIS 32060(E.D. Tex. Mar. 7, 2013)............................................................................... 10, 21

Tse v. eBay Inc.,

No. 09-380, slip op. (E.D. Tex. Feb. 15, 2011) .................................................. 21



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Tse v. eBay Inc.,

No. C 11-01812 WHA, 2011 U.S. Dist. LEXIS 96744

(N.D. Cal. Aug. 29, 2011)..................................................................................... 9

Tse v. Google Inc.,

No. 12-cv-356, 2012 U.S. Dist. LEXIS 176509(E.D. Tex. Dec. 12, 2012) ............................................................................... 9, 21

United States v. Reyes,

313 F.3d 1152 (9th Cir. 2002) ............................................................................ 19

STATUTES

28 U.S.C. 1404 ...................................................................................................... 20

35 U.S.C. 112(a) ................................................................................................... 16

35 U.S.C. 254 ........................................................................................................ 14

OTHER AUTHORITIES

Rule 26 of the Federal Rules of Civil Procedure ..................................................... 17



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STATEMENT OF RELATED CASES

There are no related cases.



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INTRODUCTION

Petitioner Ho Keung Tse seeks a variety of extraordinary relief in his writ

petition. None of these requests is meritorious or satisfies the high standard for

mandamus relief.

Mr. Tses first request is that the Court grant mandamus to lift the district

courts stay of the case, allegedly because the district court has not ruled on his

motion. Tse Br. at 1. On September 19, 2013, however, the district court issued a

detailed opinion denying his motion. A158. Mr. Tses request therefore is moot.

Regardless, the district court could not have abused its discretion by maintaining

the stay, in view of the errors in claims 21 and 23 of U.S. Patent No. 6,665,797

(the 797 patent) as issued after reexamination.

Mr. Tses second request is that the Court remand the case with instructions

to compel discovery from Apple relating to its third party developers. Tse Br. at 4.

Commonplace discovery disputes like this, however, are particularly inappropriate

for review by mandamus. See In re MSTG, 675 F.3d 1337, 1341 (Fed. Cir. 2012).

Regardless, Mr. Tse offers no justification for how the district court could have

abused its discretion by declining Mr. Tse this discovery while the stay is in effect

(even assuming his entitlement to it, which is incorrect).

Mr. Tses third request is for reassignment to a different district court judge.

But notably absent from Mr. Tses petition is any justification for such a drastic



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remedy. Among other things, Mr. Tse offers no evidence demonstrating that the

district judge is biased, and he points to no unusual circumstances warranting

reassignment. Mr. Tses alternative request for transfer to another more

speedy venue fares no better. Putting aside the fact that Mr. Tse does not

identify a specific venue or apply the transfer factors, Mr. Tse ignores that five

judges have transferred cases involving Mr. Tse and his patent to the Northern

District of California.

Because Mr. Tse has not demonstrated that mandamus is appropriate as to

any of his requested relief, Respondents ask that the Court deny his petition.

STATEMENT OF FACTS

A. The Asserted Patent & the Reexamination ProceedingsThe 797 patent generally relates to a method for protecting software against

unauthorized use. A28 at col.1:8-10. All of the claims recite providing access to

protected software without performing an electronic commerce operation (e.g.,

without charging for such software). A64-A65.

In July 2007, Respondents requested ex parte reexamination of the 797

patent. A49. During reexamination, Mr. Tse liberally revised his claims,

submitting no fewer than fourteen amendments that amended claims or added new

ones. A64-A65; A170. The amended claims included claims 1, 3, and 21, and the

new claims included claim 23. A62.



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The Patent Office ultimately issued a final Office Action rejecting all claims

for which reexamination was sought, except for claim 16. A163. On appeal to the

Board of Patent Appeals and Interferences (Board), the Board affirmed the

rejection of some claims (14, 15, 18, 19, 22, 24, 25, and 26) and reversed the

rejections of others (1-5, 11, 12, 21, 23, and 27). A244. Although Mr. Tse

subsequently appealed the Boards decision to this Court, his appeal was dismissed

on October 5, 2011 for failure to pay the docketing fee. A210; A313.

B. The Errors in the Reexamination CertificateOn August 7, 2012, the Patent Office issued the reexamination certificate for

the 797 patent. A62. Claims 1, 3, 21, and 23 as issued in the reexamination

certificate did not match the claims as amended during reexamination and allowed

by the Board. This is plain from a comparison of the reexamination certificate

with the appendix of claims that was attached to Mr. Tses appeal brief. Compare

A64-A65 with A174, A175, A185-A187; see also A211-A212.

Mr. Tse is well aware of these errors in the reexamination certificate. For

example, after the reexamination certificate issued (but while the stay remained

pending), Mr. Tse attempted to serve amended infringement contentions. His

August 15, 2012 contentions reflected the claim language in the appendix of claims

attached to his appeal brief to the Board not the incorrect claim language in the

reexamination certificate. A254-A255; A257; A271-A272.



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Acknowledging these errors, on September 12, 2012, Mr. Tse asked the

Patent Office to correct the errors in claim 1 (but not in claims 3, 21, and 23).

A292. Inexplicably, Mr. Tse then withdrew his request. A296. Nevertheless,

acting sua sponte, the Patent Office issued a Certificate of Correction for claims 1

and 3 on December 4, 2012. A110.

Still uncorrected are claims 21 and 23. The chart below summarizes the

discrepancies between what was issued in the reexamination certificate and what

was confirmed by the Board as to these claims:

Claim Limitation in Claims

Confirmed by Board

Corresponding Limitation in

Reexamination Certificate

Claim 21 and said access being provided

independently of, at a site said

access being obtained by user(s),

any hardware specific for

protecting said at least a part of

functionality from unauthorizeduse

and said access being obtained by

human user(s) at a site having no

hardware specific for protecting

said at least a part of functionality

from unauthorized use

Claim 23 and said software desired to be

protected is being made available

to said rightful user(s) in the form

of protected file(s)

No corresponding limitation

A64-A65; A185-A187.



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C. The Proceedings Below1. The Stay of the First California Action

(No. 06-cv-6573, N.D. Cal.)

Mr. Tse filed the underlying district court action in August 2005 in the

District of Maryland (Apple I). A48. Respondents successfully moved to

transfer the case to the Northern District of California. A48.

The district court subsequently stayed the case pending the resolution of

Respondents July 2007 reexamination request. A55. In a detailed, eight-page

opinion, the district court explained its justifications for entering the stay. These

included its recognition that: (i) the litigation remained in its early stages; (ii) the

stay would not impact any deadlines; (iii) the reexamination proceedings might

inform the scope of the claims; and (iv) Mr. Tse would not be unduly prejudiced or

tactically disadvantaged from a stay, as he was seeking monetary damages. A51-

A52. Presciently, the district court observed that it was quite likely that the

reexamination process [would] alter the patent claims at issue. A52.

2. The Filing and Transfer of the Wisconsin Action

(Case. No. 12-cv-2653, N.D. Cal.)

In January 2012, before the reexamination certificate issued and while the

Northern California case was stayed, Mr. Tse filed a duplicate case against Apple

for alleged infringement of the 797 patent in the Western District of Wisconsin



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(Apple II). Along with Apple, Mr. Tse sued Ascedia, Inc., a Wisconsin-based

application developer. A112.

On May 18, 2012, the Wisconsin court dismissed the complaint as to

Ascedia and transferred the action to the Northern District of California. A112;

A114. After transfer, thedistrict judge presiding overApple Iconsolidated the two

actions for judicial economy and to conserve the parties resources. A118.

BecauseApple Iremained stayed,Apple IIwas stayed as well.

3. The Continued Stay of the Consolidated Northern CaliforniaActions against Respondents

On September 25, 2012, Mr. Tse moved to lift the stay. A68. Respondents

opposed the motion, noting the obvious errors in the reexamination certificate as

issued. A163-A166. Respondents explained, among other things, that Mr. Tse had

served infringement contentions asserting claims 1, 3, and 23 and using the correct

language for those claims not the incorrect claim language from the

reexamination certificate. A164-A165.

After the Patent Office issued a Certificate of Correction correcting claims 1

and 3, Mr. Tse filed a Notice Regarding Submitted Second Motion to Lift Stay

that drew attention to the Patent Offices correction of these claims. A130.

Despite implicitly acknowledging that claims 21 and 23 as issued in the

reexamination certificate remain uncorrected, Mr. Tse has not asked the Patent

Office to correct these claims.



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On November 6, 2012, during the stay, Mr. Tse moved to compel discovery

relating to the contact information of Apples third party App developers. A100-

A101. On May 23, 2013, the magistrate judge denied his motion without prejudice

in light of the stay. A150.

4. The District Court Rules on Mr. Tses Motion to Lift the Stay

Two days after Mr. Tse filed his writ petition, the district court issued its

ruling on Mr. Tses motion to lift the stay. A155. In its September 19, 2013

opinion, the district court explained at great length why maintaining the stay was

appropriate. The court noted that the reexamination certificate, even as corrected,

continues to conflict with the claims as allowed by the Board. A157. The court

noted that, because these errors are substantive rather than merely typographical,

[t]he reasons supporting the imposition of the stay still exist. A157. As with its

order originally granting the stay, the district court observed that continuing the

stay would simplify issues for trial by allowing the Patent Office to correct the

erroneous language and would not prejudice or present a clear tactical

disadvantage to Mr. Tse. A157. Finally, the district court noted that Mr. Tse

could request a Certificate of Correction, such that any further delay would be of

a short duration. A157-A158.



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D. Mr. Tses Other Actions Concerning the 797 PatentMr. Tse has filed three other lawsuits asserting the 797 patent. In all of his

lawsuits (and before the Patent Office), Mr. Tse has proceededpro se. All have

been transferred from other districts to the Northern District of California.

eBay et al. (No. 11-cv-1812, N.D. Cal.): In January 2009, even though the

reexamination proceedings remained pending, Mr. Tse brought suit against eBay,

Inc., Ubid Inc., America Online, Inc., and Texas Glamour Publications in the

Eastern District of Texas. The Texas court transferred the case to the Northern

District of California. A334. On August 29, 2011, the district court dismissed the

eBay case due to the absence of a case or controversy, as the lone asserted claim

(claim 21) remained rejected in reexamination. Tse v. eBay Inc., No. C 11-01812

WHA, 2011 U.S. Dist. LEXIS 96744, at *3-4 (N.D. Cal. Aug. 29, 2011). A358-

A359.

Google et al. (No. 13-cv-194, N.D. Cal.): In May 2012, Mr. Tse brought

suit against Google Inc., HTC America Inc., and Samsung Telecommunications

America LLC in the Eastern District of Texas. On December 13, 2012, the Texas

court transferred the case to the Northern District of California. Tse v. Google Inc.,

No. 12-cv-356, 2012 U.S. Dist. LEXIS 176509, at *1-2 (E.D. Tex. Dec. 12, 2012).

A360.



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Pending before the district court is the Google defendants motion for

summary judgment of invalidity. A337. The basis for defendants motion is that

the without charge limitation common to all claims lacks written description.

A341. Discovery has been stayed pending resolution of this motion. A335.

Blockbuster, LLC (No. 13-cv-1204, N.D. Cal.): In May 2012, Mr. Tse

brought suit against Blockbuster LLC in the Eastern District of Texas. On March

8, 2013, the Texas court transferred the case to the Northern District of California.

Tse v. Blockbuster LLC, No. 4:12-cv-328, 2013 U.S. Dist. LEXIS 32060, at *2

(E.D. Tex. Mar. 7, 2013) (Judge Clark). A363. The case remains pending and has

been related to the Google action. Blockbuster LLC has joined the Google

defendants summary judgment motion. A337.

SUMMARY OF ARGUMENT

Mr. Tse has not demonstrated that any of his requests merit mandamus

relief. Although Mr. Tse alleges that the district court has abused its discretion by

not lifting the stay, the court explained its rationale in a detailed opinion.

Moreover, claims in the reexamination certificate remain incorrect. And while

Mr. Tse demands that the Court order discovery from Apple, his discovery

requests are improper and, regardless, the proceedings below remain stayed.

Finally, although Mr. Tse demands reassignment of the case or transfer to a

different venue, he offers no evidence of judicial bias or other unusual



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circumstances that might justify reassignment. He also does not identify the

allegedly more convenient forum or apply the traditional transfer factors. The

Court therefore should deny Mr. Tses petition.

ARGUMENT

I. STANDARD OF REVIEWAn extraordinary remedy, a writ of mandamus should be issued only in

exceptional situations. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35

(1980). The petitioner must demonstrate a clear abuse of discretion orconduct

amounting to usurpation of the judicial power.Mallard v. U.S. Dist. Courtfor

Southern Dist., 490 U.S. 296, 309 (1989) (internal citations and quotations

omitted). The petitioner also must show that [it] lacks adequate alternative

means to obtain the relief [it] seeks and carry the burden of showing that [its]

right to issuance of the writ is clear and indisputable. Id. (internal citations and

quotations omitted).

This Court assesses requests for mandamus relief by applying Federal

Circuit law, except to the extent that underlying procedural issues may be

governed by the law of the regional circuit. In re Shared Memory Graphics LLC,

659 F.3d 1336, 1340 (Fed. Cir. 2011). Here, whether the district court abused its

discretion in maintaining the stay is governed by Ninth Circuit law. See CMAX,



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Inc. v. Hall, 300 F.2d 265, 268 (9th Cir. 1962); Shared Memory Graphics, 659

F.3d at 1340.

Importantly, on mandamus review, [the Courts] role is not to second-guess

the trial courts decision to stay. In re Medical Components, Inc., Misc. Dkt. No.

148, 2013 U.S. App. LEXIS 15972, at *4 (Fed. Cir. Aug. 2, 2013); see also In re

Synthes (U.S.A.), 346 Fed. Appx. 583, 584 (Fed. Cir. 2009) (denying petition for

writ of mandamus to vacate stay, as petitioner could not show abuse of discretion);

Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983) (An appeal

of a stay order, like a mandamus petition (the high standards for which the

appellants cannot meet), seeks interference by an appellate court with management

of proceedings entrusted to the district court.). A court may deny mandamus

relief even though on normal appeal, a court might find reversible error. In re

Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985)).

II. MANDAMUS LIFTING THE STAY SHOULD BE DENIED.It is well established that [a] district court has inherent power to control the

disposition of the causes on its docket in a manner which will promote economy of

time and effort for itself, for counsel, and for litigants. CMAX, 300 F.2d at 268.

Mr. Tse concedes this, noting that it is entirely within the discretion of a district

court to impose a stay. Tse Br. at 17-18.



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The Ninth Circuit has held that a court should weigh various competing

interests in deciding whether to stay proceedings, including the possible damage

which may result from the granting of a stay, the hardship or inequity which a

party may suffer in being required to go forward, and the orderly course of justice

measured in terms of the simplifying or complicating of issues, proof, and

questions of law which could be expected to result from a stay. CMAX, 300 F.2d

at 268. In complex cases . . . the district court needs to have broad discretion to

administer the proceeding. Katz Interactive Call Processing Litig. v. American

Airlines, Inc. (In re Katz Interactive Call Processing Patent Litig.), 639 F.3d 1303,

1313 (Fed. Cir. 2011) (internal quotations omitted). A district court has broad

discretion in deciding to maintain a stay of litigation. See SEC v. Universal

Financial, 760 F.2d 1034, 1039 (9th Cir. 1985) (explaining that district court did

not abuse substantial discretion in refusing to lift stay).

In view of the high standard for mandamus and the district courts broad

discretion to manage its docket, mandamus lifting the stay is not warranted here.

The district court acted reasonably and well within its discretion in maintaining the

stay to allow the Patent Office to resolve the remaining errors in the reexamination

certificate.



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A. The District Courts Opinion Moots Mr. Tses Petition and AlsoDemonstrates No Abuse of Discretion

In his petition, Mr. Tses primary complaint is that the district court abused

its discretion by not acting on his motion to lift the stay. Tse Br. at 9. On

September 19, 2013, however, the district court issued a detailed opinion denying

Mr. Tses motion. That opinion moots the main basis for Mr. Tses petition.

The district courts opinion also demonstrates that it has not abused its

discretion by maintaining the stay after the reexamination certificate issued. In its

opinion, the district court explained that asserted claim 23 as issued in the

reexamination certificate does not match claim 23 as confirmed during

reexamination. A157. In light of the discrepancy, the court elected to maintain the

stay so that the Patent Office can clarify the scope of claim 23. A157. Such

clarification will simplify the issues for trial by enabling the parties to know which

version of claim 23 applies (i.e., whether the version in the reexamination

certificate or as confirmed by the Board).

The district court also explained that the stay presents no prejudice or clear

tactical disadvantage to Mr. Tse. A157. This is because he can avail himself of

the procedures of 35 U.S.C. 254 now and seek a Certificate of Correction to

correct claim 23. A157-A158. Because such certificates are expeditiously

issued, any further delay from the continued stay will be short. A157-158 (citing

Manual of Patent Examining Procedure 1480.01). Mr. Tse cannot claim that he



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is unaware of this procedure, as he previously made (and then withdrew) such a

request. Having offered rational and substantive legal argument supporting its

decision, the district court could not have abused its discretion by maintaining the

stay. Medical Components, 2013 U.S. App. LEXIS 15972, at *4 (quoting In re

Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985) (inner quotes omitted).

B. Mr. Tses Allegations of Constitutional Violations Lack MeritCiting Landis v. North America Co., 299 U.S. 248 (1936), Mr. Tse alleges

that the continued stay of the California proceedings is a severe violation of [his]

constitutional rights of access to [the] judicial process and the prohibition against

immoderate and indefinite stays. Tse Br. at 19. Landis, however, merely

confirms a district courts broad power to stay proceedings as incidental to the

power inherent in every court to control the disposition of the causes on its

docket. Landis, 299 U.S. at 254. Moreover, Mr. Tse ignores that he can end the

stay nowby seeking a Certificate of Correction.

It is important to note that any delay occasioned by the reexamination

proceedings is of Mr. Tses own doing. During reexamination, Mr. Tse filed

fourteen separate amendments, prompting the Patent Office to request that he not

further amend or add any other claims. A287. Even after the Patent Office

confirmed one of the claims and issued its final Office Action (A163), Mr. Tse

elected to prolong the proceedings by appealing to the Board and then to this



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Court. A210; A313. Mr. Tses refusal to seek correction of the remaining

incorrectly-issued claims is just the latest of his self-inflicted delays.

C. The Pending Summary Judgment Motion for Invalidity AlsoIndependently Justifies Maintaining the Stay

As noted above, defendants in co-pending litigation against Mr. Tse have

moved for summary judgment of invalidity. The basis for their motion is that the

without charge limitation common to all claims lacks written description under

35 U.S.C. 112(a). A341.

Discovery and claim construction-related activity in the co-pending cases

have been stayed pending resolution of this motion, as the motions grant will

invalidate all claims that have been asserted against the defendants in that case.

A335. Because this same limitation appears in all claims asserted against

Respondents, the summary judgment motion offers an independent basis for

maintaining the stay of this action. See CMAX, 300 F.2d at 269 (finding no abuse

of discretion where case stayed pending outcome of other proceeding).

III. MANDAMUS COMPELLING DISCOVERY SHOULD BE DENIED.A court has broad discretion . . . to permit or deny discovery. Hallett v.

Morgan, 296 F.3d 732, 751 (9th Cir. 2002); accord Avila v. Willits Envtl.

Remediation Trust, 633 F.3d 828, 833 (9th Cir.), cert. denied, 132 S. Ct. 120

(2011) ([D]istrict judges have broad discretion to manage discovery and to control

the course of litigation). For this reason, its decision to deny discovery will not



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be disturbed except upon the clearest showing that denial of discovery results in

actual and substantial prejudice to the complaining litigant. Hallett, 296 F.3d at

751. Review of discovery orders by mandamus is generally inappropriate,

except where a discovery order raises a novel and important question of power to

compel discovery, or . . . reflects substantial uncertainty and confusion in the

district courts. MSTG, 675 F.3d at 1341 (citations omitted).

Here, Mr. Tse has not made a clear[] showing that denial of discovery

[would] result[] in actual and substantial prejudice. Hallett, 296 F.3d at 751.

Mr. Tse seeks discovery of the confidential contact information of Apples third

party App developers. His justification for desiring this discovery is not entirely

clear, but he apparently would like to send each of them a notification of [alleged]

infringement at their respective email address[es]. Tse Br. at 14. According to

Mr. Tse, this would allow him to join [these developers] into the instant suit (Tse

Br. at 17) and also demonstrate their prior knowledge of the patent (Tse Br. at

25) to show their inducement or contributory infringement.

Mr. Tses desire for discovery from Apple to prove up his potential

infringement allegations against third parties is facially improper. Among other

things, his request violates Rule 26 of the Federal Rules of Civil Procedure. That

rule allows discovery regarding any nonprivileged matter that is relevant to any

partys claim or defense. Here, Mr. Tse seeks discovery not to support an existing



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claim against a current defendant in the action, but to bring a new one against non-

parties. For this same reason, Mr. Tses request contravenes the requirements of

the applicable protective order. The order allows confidential production to be

used only to prosecut[e], defen[d], or attempt[] to settle thislitigation not to

bring actions against non-parties.1

A321 at 7.1 (emphasis added).

Even assuming that Mr. Tse were entitled to this discovery, he has not

demonstrated why he needs it now much less why it is appropriate for

resolution on mandamus petition.The magistrate judge denied Mr. Tses motion to

compel without prejudice, in light of the pending stay. If the stay is lifted, he can

simply re-file his motion to compel. See Four Pillars Enters. Co. v. Avery

Dennison Corp., 308 F.3d 1075, 1080 (9th Cir. 2002) (finding no abuse of

discretion to deny discovery without prejudice, pending resolution at a later time).

For all of these reasons, Mr. Tse cannot show irreparable harm from not

receiving the requested discovery. He is not entitled to it, but even if he were, he

can seek it after the stay is lifted. The court therefore did not abuse its discretion in

denying his motion to compel this discovery without prejudice.

1Because a protective order has not yet been entered, the Interim Model

Protective Order applies to the underlying proceedings. See

http://www.cand.uscourts.gov/stipprotectorder.



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IV. MANDAMUS REASSIGNING THE ACTION TO ANOTHER JUDGESHOULD BE DENIED.

Under applicable Ninth Circuit law, reassignment to another judge is an

extraordinary form of relief. Reassignment requires a demonstration of the

presiding judges personal bias or of other unusual circumstances warranting

reassignment. Smith v. Mulvaney, 827 F.2d 558, 562 (9th Cir. 1987). Absent

proof of personal bias on the part of the district judge, remand to a different judge

is proper only under unusual circumstances. United States v. Reyes, 313 F.3d

1152, 1159 (9th Cir. 2002).

Here, Mr. Tse offers no support for his request that the underlying action be

assigned to a different judge. It is well established that a district courts adverse

rulings alone cannot demonstrate this bias. See Liteky v. United States, 510 U.S.

540, 555 (1994) ([J]udicial rulings alone almost never constitute a valid basis for

a bias.); Krechman v. County of Riverside, 723 F.3d 1104, 1112 (9th Cir. 2013)

(denying reassignment despite erroneous adverse rulings); American Ad Mgmt.,

Inc. v. General Tel. Co., 190 F.3d 1051, 1061 (9th Cir. 1999) (denying

reassignment despite successive adverse summary judgment rulings). Nor has

Mr. Tse demonstrated that the district court display[ed] a deep-seated favoritism

or antagonism that would make fair judgment impossible. Liteky, 510 U.S. at

563. Absent these showings or any other unusual circumstances, Reyes, 313

F.3d at 1159, reassignment is inappropriate.



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V. MANDAMUS TRANSFERRING THIS ACTION SHOULD BEDENIED.

As an alternative form of relief, Mr. Tse asks that this action be

transfer[red] . . . to another more speedy venue, presumably invoking 28 U.S.C.

1404. Tse Br. at 3. Mr. Tses request for a convenience transfer is inappropriate

for at least two reasons:

First, Mr. Tse does not attempt to justify his request at all. In deciding

whether to transfer an action under Section 1404, Ninth Circuit courts consider

factors including:

(1) the plaintiffs choice of forum,

(2) the respective parties contacts with the forum,

(3) the contacts relating to the plaintiffs cause of action in the chosen

forum,

(4) the differences in the costs of litigation in the two forums,

(5) the availability of compulsory process to compel attendance of

unwilling non-party witnesses, and

(6) the ease of access to sources of proof.

See Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-499 (9th Cir. 2000).

Weighing of the factors for and against transfer involves subtle considerations and

is best left to the discretion of the trial judge. Commodity Futures Trading Com.

v. Savage, 611 F.2d 270, 279 (9th Cir. 1979) (citing Van Dusen v. Barrack, 376



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U.S. 612, 622 (1964).) Mr. Tse has not attempted to apply any of these factors or

even identify the allegedly more convenient forum.

Second, even if Mr. Tse had tried to apply them, they would all point to the

Northern District of California as the most convenient forum. Five different

judges in three different forums have already considered these factors in

connection with a patent infringement action brought by Mr. Tse on the 797

patent. All five judges transferred the action to Northern California. See Tse v.

Apple Computer, Inc., No. L-05-2149, 2006 U.S. Dist. LEXIS 68451, at *7-20 (D.

Md. Aug. 31, 2006) (Judge Legg) (A353-A357); Tse v. eBay Inc., No. 09-380, slip

op. at 1 (E.D. Tex. Feb. 15, 2011) (Judge Ward) (A333-A334); Tse v. Apple, Inc.,

No. 12-cv-21, slip op. at 13 (W.D. Wis. May 18, 2012) (Judge Crabb) (A309-

A310); Tse v. Google Inc.,No. 12-cv-356, 2012 U.S. Dist. LEXIS 176509, at *1-2

(E.D. Tex. Dec. 12, 2012) (Judge Davis) (A358-A359); Tse v. Blockbuster LLC,

No. 4:12-cv-328, 2013 U.S. Dist. LEXIS 32060, at *2 (E.D. Tex. Mar. 7, 2013)

(Judge Clark) (A363). Mr. Tses request for mandamus transferring this action to

an unnamed, but speed[ier] forum therefore is inappropriate.

CONCLUSION

Mr. Tse has not carried the heavy burden of showing that the extraordinary

remedy of a writ of mandamus is appropriate here. The district court did not

demonstrate a clear abuse of discretion by declining to lift the stay or compel



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discovery. Reassignment or transfer to an unidentified forum also would be

inappropriate, particularly as Mr. Tse offers no justification for these requests. For

all of these reasons, and as discussed above, Mr. Tses petition should be denied.

Dated: October 15, 2013 Respectfully submitted,

/s/ Megan W. Olesek

MICHELLE CARNIAUX

KENYON &KENYON LLP

One Broadway

New York, NY 10004

Telephone: (212) 425-7200Facsimile: (212) 425-5288

[email protected]

[email protected]

MEGAN WHYMAN OLESEK

KENYON &KENYON LLP

1801 Page Mill Road, Suite 210

Palo Alto, CA 94304


[email protected]

Counsel for Respondent Sony

Network Entertainment Intl LLC

/s/ Michael A. Jacobs

MICHAEL A.JACOBS

RICHARD S.J.HUNG

FRANCIS C.HO

MORRISON &FOERSTER LLP

425 Market StreetSan Francisco, CA 94105

Telephone: (415) 268-7000

Facsimile: (415) 268-7522

[email protected]

Counsel for Respondent Apple Inc.

/s/ Douglas E. Lumish

DOUGLAS E.LUMISHPATRICIA YOUNG

LATHAM &WATKINS LLP

140 Scott Dr.

Menlo Park, CA 94025

Telephone: (650) 328-4600

Facsimile: (650) 463-2600

[email protected]

Counsel for Respondent

MusicMatch, Inc.



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PROOF OF SERVICE

I hereby certify that I electronically filed the foregoing Response and

Supplemental Appendix with the Clerk of the Court for the United States Court of

Appeals for the Federal Circuit by using the appellate CM/ECF system on October

15, 2013. I further certify that all counsel, with the exception of Petitioner Ho

Keung Tse, are registered CM/ECF users and that service will be accomplished via

the CM/ECF system. As to Mr. Tse, service will be accomplished via First Class

mail and electronic mail to:

Ho Keung Tse

P.O. Box 80306

Cheung Sha Wan Post Office

Hong Kong

Telephone: (608) 268-3667

[email protected]

Dated: October 15, 2013 /s/ Michael A. Jacobs



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CERTIFICATE OF COMPLIANCE WITH RULE 32(a)

This Brief for Respondents complies with the type-volume limitation of

Rule 32(a) of the Federal Rules of Appellate Procedure because it contains 4,543

words.

Dated: October 15, 2013 /s/ Michael A. Jacobs



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MISCELLANEOUS DOCKET NO. 13-168

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

IN RE HO KEUNG TSE,

Petitioner

On Petition for Writ of Mandamus to the United States

District Court for the Northern District of California in

No. 06-CV-6573, Judge Saundra Brown Armstrong.

RESPONDENTS SUPPLEMENTAL APPENDIXTO PETITION FOR WRIT OF MANDAMUS

MICHELLE CARNIAUX

KENYON &KENYON LLPOne Broadway

New York, NY 10004Telephone: (212) 425-7200

Facsimile: (212) 425-5288

[email protected]@kenyon.com

MICHAEL A.JACOBS

RICHARD S.J.HUNGFRANCIS C.HO

MORRISON &FOERSTER LLP425 Market St.

San Francisco, CA 94105

Telephone: (415) 268-7000Facsimile: (415) [email protected]

For Respondent Apple Inc.

MEGAN WHYMAN OLESEK

KENYON &KENYON LLP

1801 Page Mill Road, Suite 210Palo Alto, CA 94304


[email protected]

For Respondent Sony Network

Entertainment Intl LLC

DOUGLAS E.LUMISH

PATRICIA YOUNG

LATHAM &WATKINS LLP140 Scott Dr.

Menlo Park, CA 94025Telephone: (650) 328-4600

Facsimile: (650) 463-2600

[email protected]

For Respondent MusicMatch, Inc.



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Respondents Supplemental Appendix

TITLE OFDOCUMENT DATE STARTING

PAGE

DEFENDANTS OPPOSITION TOPLAINTIFFS MOTION TO CLARIFY STAY

STATUS, AND IF THE STAY IS STILL INPLACE, TO LIFT STAY (NO. 06-CV-06573-

SBA)

10/04/12 A161

DECLARATION OF FRANCIS C. HO INSUPPORT OF DEFENDANTS OPPOSITION

TO PLAINTIFFS MOTION TO CLARIFY

STAY STATUS, AND IF THE STAY IS STILLIN PLACE, TO LIFT STAY (ATTACHMENTS

EXHIBITS C-D & F-G) (N.D. CAL. NO. 06-CV-06573-SBA)

10/04/12 A169

PLAINTIFFS REPLY IN SUPPORT OF

MOTION TO CLARIFY STAY STATUS, ANDIF THE STAY IS STILL IN PLACE, TO LIFT

STAY (N.D. CAL. NO. 06-CV-06573-SBA)

10/08/12 A291

PLAINTIFFS NOTICE OF WITHDRAWAL OF

REQUEST FOR CERTIFICATE OFCORRECTION FILED WITH THE PATENT

OFFICE (N.D. CAL. NO. 06-CV-06573-SBA)

11/27/12 A296

OPINION AND ORDER (ECF NO. 29) (W.D.

WIS. NO. 12-CV-21-BBC)

05/18/12 A298

DOCKET SHEET (ECF NO. 2) (FED. CIR. NO.2011-1566)

05/13/13 A311

NORTHERN DISTRICT OF CALIFORNIA

PATENT LOCAL RULE 2-2 INTERIM MODELPROTECTIVE ORDER

A314

ORDER (ECF NO. 60) (E.D. TEX. 09-CV-

00380-TJW)

02/15/11 A333

CIVIL PRETRIAL MINUTES (ECF NO. 95)(N.D. CAL. NO. C-13-0194-SI & C-13-1204-SI)

07/23/13 A335



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ii

TITLE OFDOCUMENT DATE STARTING

PAGE

DEFENDANTS NOTICE OF MOTION AND

MOTION FOR SUMMARY JUDGMENT OF

INVALIDITY BASED ON LACK OFWRITTEN DESCRIPTION UNDER 35 U.S.C. 112; MEMORANDUM OF POINTS AND

AUTHORITIES IN SUPPORT (ECF NO. 97)(N.D. CAL. NO. C-13-0194-SI & C-13-1204-SI)

07/26/13 A336

TSE V. APPLE COMPUTER, INC., NO. L-05-

2149, 2006 U.S. DIST. LEXIS 68451 (D. MD.

AUG. 31, 2006)

08/31/06 A352

TSE V. EBAY INC., NO. C 11-01812 WHA,

2011 U.S. DIST. LEXIS 96744 (N.D. CAL.AUG. 29, 2011)

08/29/11 A358

TSE V. GOOGLE INC., NO. 12-CV-356, 2012

U.S. DIST. LEXIS 176509 (E.D. TEX. DEC. 12,

2012).

12/12/12 A360

TSE V. BLOCKBUSTER LLC, NO. 4:12-CV-328, 2013 U.S. DIST. LEXIS 32060 (E.D. TEX.

MAR. 7, 2013)

03/07/13 A363



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DEFS.OPP. TO PL.S MOT. TO CLARIFY STAY STATUS06-06573 SBA

sf-3199571

[SEE SIGNATURE PAGE FOR COUNSEL LISTINGS]

UNITED STATES DISTRICT COURT


OAKLAND DIVISION

HO KEUNG TSE,

Plaintiff,

v.

APPLE INC. et al.,

Defendant.

Case No. 06-06573 SBA

DEFENDANTS OPPOSITION TOPLAINTIFFS MOTION TO CLARIFYSTAY STATUS, AND IF THE STAY ISSTILL IN PLACE, TO LIFT STAY

Date: Oct. 30, 2012Time: 1:00 p.m.Courtoom: 1, 4

thfloor

Judge: Hon. Saundra B. Armstrong

Case4:06-cv-06573-SBA Document185 Filed10/04/12 Page1 of 8

A161



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DEFS.OPP. TO PL.S MOT. TO CLARIFY STAY STATUS06-06573 SBA 1

sf-3199571

ISSUE TO BE DECIDED

Whether the Courts stay of litigation should be maintained where: (1) the reexamination

certificate contains obvious errors with respect to the asserted claims and (2) the Plaintiff has not

yet sought correction of those errors.

INTRODUCTION

As Mr. Tse admits, there is uncertainty of the status of the instant action. Mot. at 3.

The uncertainty is due to the fact that the recently issued reexamination certificate contains

obvious errors in the claims. Indeed, as admitted in his moving papers, Mr. Tse recognizes these

errors. (Dkt. No. 183 at 5-6.) His purported amended infringement contentions, which were

served afterthe reexamination certificate issued, assert claims with limitations that are nowhere

to be found in the corresponding claims in the reexamination certificate.

The errors are also obvious upon a review of the prosecution history. For instance, severa

claims as issued in the reexamination certificate do not match the corresponding claims that were

appealed to and confirmed by the Board of Patent Appeals and Interferences (BPAI). Some of

these errors are charted below:

Claim Limitation in Plaintiffs Amended

Infringement Contentions / Claims

Confirmed by BPAI

Corresponding Limitation in



protected is being made available to

said rightful user(s) in the form ofprotected files, through a

communication network

And said software desired to be


said rightful user(s) in the form ofprotected file(s), and said access being

obtained by human user(s) at a site

having no hardware specific forprotecting said software desired to be

protected from unauthorized use

Claim 3 and said access being provided

independently of, at the site said access

being obtained by human user(s), anyhardware specific for protecting said

software desired to be protected from

unauthorized use;


Claim 23 and said software desired to beprotected is being made available tosaid rightful user(s) in the form of

protected file(s);



A162



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sf-3199571

In light of the errors in the reexamination certificate, the scope of the asserted claims is

indeterminate. What was issued by the Patent Office plainly does not match the prosecution

history. Defendants have repeatedly explained to Mr. Tse the nature of these errors and the

confusion that will result if the litigation proceeds without correcting them. (Ho. Decl. Exs. A &

B.) Defendants have also noted that this process can be expedited to minimize any additional

delay in lifting the stay until the certificate is corrected to mitigate any alleged prejudice to

plaintiff. Id. To date, however, Mr. Tse has refused to seek correction from the Patent Office.

Accordingly, Defendants respectfully request that this Court maintain the stay in place and

require Mr. Tse to seek and obtain correction of the errors in the reexamination certificate through

the Patent Office pursuant to 35 U.S.C. 254, 255 before the stay will be lifted.

ARGUMENT

The Court stayed this action on October 4, 2007, pending reexamination of the 797

patent. Mr. Tse liberally revised his claims during reexamination, eventually amending all of the

claims subject to the reexamination and adding additional claims. On July 21, 2009, the Patent

Office issued its final Office Action rejecting all claims except for claim 16, which was amended.

Mr. Tse appealed these rejections to the BPAI, filing his appeal brief on March 21, 2010. In his

appeal brief, Mr. Tse attached an appendix of the claims as they currently stood at the time. (Ho

Decl. Ex. C.) Claim 1, as appealed to the BPAI, reads as follows:

1. A method for protecting publicly distributed software from unauthorised use,

comprising the steps of:

determining if identity information, is existing in a processing apparatus; using a

positive result of said determination as a pre-condition for causing said processing

apparatus to provide user access to said software desired to be protected;

wherein: said identity information[, if so existing,] being capable of being used inenabling electronic commerce operation(s) for which rightful user(s) of saidsoftware desired to be protected has to be responsible;

said access to said software desired to be protected is being provided withoutcausing a said operation being performed and said identity information being

specific to said rightful user(s);


A163



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and said software desired to be protected is being made available to said rightfuluser(s) in the form of protected file(s), through a communication network.

1

This correct version of claim 1 also appears in the BPAIs January 11, 2011 Decision on Appeal.

(Ho Decl. Ex. D at 3-4.) The BPAI confirmed this version of claim 1, and no subsequent

amendment to claim 1 was made. On August 7, 2012, the Patent Office issued the reexamination

certificate. (Ho Decl. Ex. E.) However, the version of claim 1 in the reexamination certificate,

did not match the version of claim 1 that was confirmed by the BPAI. The version of claim 1 in

the reexamination certificate reads as follows:

1. A method for protecting publicly distributed software from unauthorised use,

comprising the steps of:

determining if identity information, is existing in a processing apparatus; using apositive result of said determination as a pre-condition for causing said processing

apparatus to provide user access to said software desired to be protected;

wherein: said identity information[, if so existing,] being capable of being used in

enabling electronic commerce operation(s) for which rightful user(s) of saidsoftware desired to be protected has to be responsible;

said access to said software desired to be protected is being provided withoutcausing a said operation being performed and said identity information being

specific to said rightful user(s);

and said software desired to be protected is being made available to said rightful

user(s) in the form of protected file(s) and said access being obtained by human

user(s) at a site having no hardware specific for protecting said software desired

to be protected from unauthorized use.

A comparison of the correct claim 1 and the incorrectly issued claim 1 shows that the

limitation through a communication network in the last clause has been replaced with another

limitation in the reexamination certificate. In other words, claim 1 as issued is not what Mr. Tse

invented. See, e.g., 35 U.S.C. 112 (The specification shall conclude with one or more claims

1Underlined terms indicate terms added during reexamination; bracketed terms indicate

terms deleted during the reexamination.


A164



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particularly pointing out and distinctly claiming the subject matter which the applicant regards as

his invention.).

Other claims in the reexamination certificate are likewise erroneous. For instance, the

versions of claims 3 and 23 in Mr. Tses purported amended infringement contentions, which

presumably assert the claims that he believes he invented, contain limitations that appear nowhere

in the reexamination certificate. (Compare Ho Decl. Ex. E with Ho Decl. Ex. F;see also Ho

Decl. 8.) Again, the version of these claims in the reexamination certificate is not what was

allowed by the Patent Office and the BPAI. Without these limitations, the Patent Office has

mistakenly awarded Mr. Tse with claims broaderthan what he is entitled to. Mr. Tse even

recognized the errors, as his amended infringement contentions were served afterthe

reexamination certificate issued. (Ho Decl. Ex. F.) Indeed, Mr. Tse admitted that the

Reexamination may not be consistent with his version of the claims. (Dkt No. 183-5 (Ex. B to

Mr. Tses Decl. in Support of Mot).)

These mistakes are not surprising. During reexamination, Mr. Tse submitted countless

number of amendments no less thanfourteen of them. (Ho Decl. 4.) The barrage of

attempted amendments to his claims is confusing and overwhelming. Indeed, during the

reexamination, the Patent Office warned Mr. Tse to not further amend or add any other claims.

(Ho Decl. Ex. G.)

Mr. Tses argument that the errors are immaterial in view of the disclosures in the 797

patent specification is unavailing. (Mot. at 5.) Claims alone define the scope of patent

protection. See e.g. Johnson & Johnson Assoc., Inc. v. R.E. Service Co., 285 F.3d 1046, 1052

(Fed. Cir. 2002) (citing Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 146 (1942) (Out

of all the possible permutations of elements which can be made from the specifications, he

reserves for himself only those contained in the claims.)). The Federal Circuit has made clear

that the patent claims, not the specification, provide the measure of the patentees right to

exclude. Id.

Moreover, Defendants do not seek to stall the litigation, as Mr. Tse suggests. (Mot. at

5.) Rather, Defendants merely seek to maintain the stay only until the Patent Office issues the


A165



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correct claims. Although Mr. Tse complains about the additional time it may take to attain a

certificate of correction, Mr. Tse ignores the fact that he can seek expedited issuance of a

certificate of correction. M.P.E.P 1480.01. Indeed, Defendants even informed Mr. Tse of the

expedited procedure of which he could avail himself. (Ho. Decl. Ex. B.) If the Court lifts the

stay before the Patent Office issues a certificate of correction allowing Mr. Tse to assert claims

that are clearly not correct in light of the prosecution history, then there would be unnecessary

costs and inefficiencies incurred by all parties and the Court during the discovery, infringement

and invalidity contentions and claim construction stages of litigation.

Defendants do not seek to maintain the stay longer than necessary and have proposed a

case schedule in the joint case management statement that is triggered off the issuance of an

accurate certificate of correction.

CONCLUSION

Because there is uncertainty of the status of the instant action, as Mr. Tse asserts (Mot.

at 3), the stay should not be lifted. The source of this uncertainty an incorrect reexamination

certificate must first be resolved by the Patent Office before the litigation can proceed.

Defendants urge the Court to deny Mr. Tses request to lift the stay until such time as the

reexamination certificate is corrected. A proposed order is submitted herewith.


A166



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Dated: October 4, 2012

Respectfully submitted by:

__/s/ Richard S.J. Hung__________ __

Michael A. Jacobs (CA SBN 111664)

[email protected] S.J. Hung (CA SBN 197425)

[email protected]

Francis C. Ho (CA SBN 257426)[email protected]

MORRISON & FOERSTERLLP

425 Market StreetSan Francisco, California 94105-2482

Telephone: (415) 268-7000

Facsimile: (415) 268-7522

For Defendant APPLE INC.

___/s/ Michelle Carniaux_______ ____

Frank L. Bernstein (CA SBN 189504)

[email protected] & KENYON LLP

1801 Page Mill Road, Suite 210

Palo Alto, CA 94304-1216

Telephone: (650) 384-4700

Facsimile: (650) 384-4701

John Flock (admittedpro hac vice)[email protected]

Michelle Carniaux (admittedpro hac vice)

[email protected] & KENYON LLPOne Broadway

New York, NY 10004-1007


For Defendant Sony Network EntertainmentInternational LLC

___/s/ Patricia Young________ ____

Douglas E. Lumish

[email protected] Young (admittedpro hac vice)

[email protected]

KASOWITZ, BENSON, TORRES &FRIEDMAN LLP333 Twin Dolphin Drive, Suite 200Redwood Shores, CA 94065Telephone: (650) 453-5410Facsimile: (650) 362-9328

For Defendant MUSICMATCH, INC.

__/s/ Richard Doss_________ ____

Charles K. Verhoeven (CA SBN 170151)[email protected]

Jennifer A. Kash (CA SBN 203679)

[email protected] G. Anderson (CA SBN 239927)

[email protected]

QUINN EMANUEL URQUHART &SULLIVAN LLP

50 California Street, 22nd Floor

San Francisco, California 94111


Michael E. Williams (CA SBN 181299)[email protected]

Richard H. Doss (CA SBN 204078)

[email protected] EMANUEL URQUHART &

SULLIVAN LLP

865 S. Figueroa Street, 10th Floor

Los Angeles, California 90017


For Defendants NAPSTER, INC. &

REALNETWORKS, INC.


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DEFS.OPP. TO PL.S MOT. TO CLARIFY STAY STATUS06-06573 SBA

sf-3199571

I attest that Patricia Young, Michelle Carniaux, and Richard Doss have authorized me to

electronically sign this document on their behalf.

Dated: October 4, 2012 MORRISON & FOERSTER LLP

By: /s/ Richard S.J. HungRichard S.J. Hung


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HO DECL.ISODEFS.OPP. TO PL.S MOT. TO CLARIFY STAY STATUS.06-06573 SBA 1

sf-3200823

MICHAEL A. JACOBS (CA SBN 111664)[email protected] S.J. HUNG (CA SBN 197425)[email protected] C. HO (CA SBN 257426)[email protected] & FOERSTERLLP425 Market StreetSan Francisco, California 94105-2482Telephone: (415) 268-7000Facsimile: (415) 268-7522

Attorneys for DefendantAPPLE INC.

UNITED STATES DISTRICT COURT


OAKLAND DIVISION

HO KEUNG TSE,

Plaintiff,

v.

APPLE INC.,

Defendant.

Case No. 06-06573 SBA

DECLARATION OF FRANCIS C. HO INSUPPORT OF DEFENDANTSOPPOSITION TO PLAINTIFFSMOTION TO CLARIFY STAY STATUS,AND IF THE STAY IS STILL IN PLACE,TO LIFT STAY

I, Francis C. Ho, declare as follows:

1. I am an attorney at Morrison & Foerster LLP. I am licensed to practice in theState of California. I submit this declaration in support of Defendants Opposition to Plaintiffs

Motion to Clarify Stay Status, and if Stay is Still in place, to Lift the Stay. I make this declaration

based on my own personal knowledge. If called as a witness, I could and would testify

competently to the matters set forth herein.

2. On September 19, 2012, September 21, 2012 & October 3, 2012, counsel forNapster, Inc. and RealNetworks, Inc. wrote Mr. Tse, on behalf of Defendants, explaining the

nature of the errors in the reexamination certificate of U.S. Patent No. 6,665,797 (the 797


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sf-3200823

patent) and requesting that Mr. Tse seek a certificate of correction. Attached as Exhibits A & B

are true and correct copies of the e-mail correspondence described in this paragraph.

3. During reexamination, Mr. Tse attached an appendix of his claims to his March21, 2010 appeal brief to the Board of Patent Appeals and Interferences (BPAI). The claims

reflected what Mr. Tse considered to be the claims as they stood at the time and what Mr. Tse

appealed to the BPAI. Attached as Exhibit C is a true and correct copy of Mr. Tses appendix of

his claims, attached to his March 21, 2010 appeal brief to the BPAI.

4. During reexamination, Mr. Tses submitted at least fourteen filings to the U.S.Patent and Trademark Office (PTO) that sought amendments to his claims. These filings

include:

a. December 12, 2007 Preliminary Amendmentb. February 20, 2008 Preliminary Amendmentc. March 20, 2008 Preliminary Amendmentd. May 26, 2008 Preliminary Amendmente. June 26, 2008 Amendmentf. April 2, 2009 Reply to Non-Final Office Action Datedg. April 8, 2009 Formal Reply to Non-Final Office Actionh. May 25, 2009 Formal Reply to Notice of Defective Paper in Ex Parte

Reexamination

i. August 19, 2009 Formal Reply to Final Office Actionj. September 24, 2009 Response to Office Actionk. August 8, 2011 Amendment Before Issuance of Reexamination Certificatel. October 21, 2011 Second Amendment Before Issuance of Reexamination

Certificate

m. January 31, 2012 Response to Non-Final Office Actionn. February 3, 2012 Second Response to Non-Final Office Action


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5. On January 1, 2011, the BPAI issued its decision. On pages 3-4 of its decision, theBPAI recited the appealed version of claim 1. The BPAI confirmed this version of claim 1.

Attached as Exhibit D is a true and correct copy of the January 1, 2011 BPAI decision.

6. On August 7, 2012, the PTO issued the reexamination certificate for the 797patent. Attached as Exhibit E is a true and correct copy of the reexamination certificate for the

797 patent.

7. On August 15, 2012, Mr. Tse attempted to serve amended infringementcontentions on the Defendants. Attached as Exhibit F is a true and correct copy of Mr. Tses

purported amended infringement contentions for Apple Inc.

8. Mr. Tses infringement contentions do not align with the reexamination certificate.For example, Mr. Tses infringement contentions assert non-existentclaims and limitations. Mr.

Tses assertion of at least claims 1, 3, and 23 include limitations that have not been issued by the

PTO. For instance, Mr. Tses chart for claim 1 includes the limitation through a communication

network, but this limitation is not present in the reexamination certificate. This and other

discrepancies between Mr. Tses infringement contentions and the reexamination certificate are

shown below.

Claim Limitation in Plaintiffs Amended

Infringement Contentions




said rightful user(s) in the form ofprotected files, through a

communication network

And said software desired to be


said rightful user(s) in the form ofprotected file(s), and said access being

obtained by human user(s) at a site

having no hardware specific for

protecting said software desired to beprotected from unauthorized use

Claim 3 and said access being providedindependently of, at the site said access

being obtained by human user(s), any

hardware specific for protecting saidsoftware desired to be protected from

unauthorized use;



protected is being made available toNo corresponding limitation


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said rightful user(s) in the form ofprotected file(s);

9. On January 26, 2012, the PTO issued a non-final Office Action. On page 5, theOffice Action states Do not further amend or add any other claims. Attached as Exhibit G is a

true and correct copy of the January 26, 2012 Office Action.

I declare under penalty of perjury that the foregoing is true and correct. Executed in San

Francisco, California this 4th day of October 2012.

/s/ Francis C. Ho

Francis C. Ho

I attest that Francis C. Ho has authorized me to electronically sign this document on his

behalf.

Dated: October 4, 2012 MORRISON & FOERSTER LLP

By: /s/ Richard S.J. HungRichard S.J. Hung


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Case4:06-cv-06573-SBA Document186-3 Filed10/04/12 Page1 of 17

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Case4:06-cv-06573-SBA Do

Response to Petition for Writ of Mandamus

Documents

Transcript of Response to Petition for Writ of Mandamus