UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

APPLIANCE COMPUTING III, INC.

d/b/a SUREFIELD,

Plaintiff,

v.

REDFIN CORPORATION,

Defendant.

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Case No. 6:20-cv-00376-ADA

REDFIN’S OPPOSITION TO PLAINTIFF’S MOTION FOR NEW TRIAL OR TO 

ALTER OR AMEND THE JUDGMENT

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TABLE OF CONTENTS

I. LEGAL STANDARD......................................................................................................... 1

II. THE VERDICT OF NON-INFRINGEMENT AND INVALIDITY IS NOT AGAINST 

THE GREAT WEIGHT OF EVIDENCE........................................................................... 2

III. THE COURT DID NOT ERR IN ITS JURY INSTRUCTIONS....................................... 2

A. It Was Not Error to Exclude a Jury Instruction Regarding Inducement of Redfin 

Website Users ......................................................................................................... 2

B. It Was Not Error to Refuse a No Ordered Combination Jury Instruction .............. 6

C. The Court Did Not Err in Declining to Include an Instruction on Prior Art 

Systems................................................................................................................... 7

IV. IT WAS NOT ERROR TO EXCLUDE EVIDENCE REGARDING PTAB DECISIONS

........................................................................................................................................... 10

A. The Excluded PTAB Decisions Were Not Relevant to the Issues Presented at 

Trial....................................................................................................................... 10

B. The Court Was Within Its Discretion to Exclude the PTAB Decisions............... 13

C. The Court Properly Found that Counsel Did Not Open the Door to Introduction of 

the PTAB Decisions.............................................................................................. 14

D. Surefield Was Not Prejudiced by Exclusion of the PTAB Decisions .................. 16

V. CONCLUSION................................................................................................................. 17

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TABLE OF AUTHORITIES

Cases

Acantha LLC v. DePuy Orthopaedics Inc.,

No. 15-C-1257, 2018 WL 2431852 (E.D. Wis. May 30, 2018) ....................................... 13

Andover Healthcare, Inc. v. 3M Co.,

No. CV 13-843-LPS, 2016 WL 6404111 (D. Del. Oct. 27, 2016) .................................. 12

Apple v. Samsung Elec., 

2012 WL 2576136 (N.D. Cal. July 3, 2012)..................................................................... 10

C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 

911 F.2d 670, 675 (Fed. Cir. 1990)..................................................................................... 3

Environ Prods., Inc. v. Furon Co.,

215 F.3d 1261 (Fed. Cir. 2000)........................................................................................... 1

Ericsson, Inc. v. D-Link Sys., Inc.,

773 F.3d 1201(Fed. Cir. 2014)........................................................................................ 2, 3

Finjan, Inc. v. Sophos, Inc.,

No. 14-cv-01197, 2016 WL 4560071 (N.D. Cal. Aug. 22, 2016).................................... 12

Foradori v. Harris,

523 F.3d 477 (5th Cir. 2008). ............................................................................................. 1

Freshub, Inv v. Amazon.com, Inc.,

Case No. 6:21-cv-00511-ADA, 2021 WL 2587713 (W.D. Tex. Jun. 13, 2021).............. 12

Int’l Business Mach. v. Priceline,

271 F. Supp. 3d 667 D. Del. 2017)................................................................................... 10

Int’l Ins. Co. v. RSR Corp., 426 F.3d 281 (5th Cir. 2005)............................................................ 13

Interdigital Commc’ns Inc. v. Nokia Corp.,

No. 13-10-RGA, 2014 WL 8104167 (D. Del. Sept. 19, 2014) ......................................... 13

Kanida v. Gulf Coast Med. Pers. LP, 

363 F.3d 568, 578 (5th Cir. 2004) ...................................................................................... 3

K-TEC v. Vita-Mix, 696 F.3d 1364, 1376 (Fed. Cir. 2012) .......................................................... 12

LC Eldridge Sales v. Azen Mfg., 

No. 6:11-cv-599 (E.D. Tex. Oct. 11, 2013)...................................................................... 12

Minnesota Min. and Mfg. v. Chemque, 

303 F.3d 1294 (Fed. Cir. 2002)......................................................................................... 10

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 3 of 24
iii

Newell Companies, Inc. v. Kenney Mfg. Co.,

864 F.2d 757 (Fed. Cir. 1988)............................................................................................. 1

NTP, Inc. v. Research in Motion, Ltd., 

418 F.3d 1282 (Fed. Cir. 2005)....................................................................................... 3, 6

Oracle Am. v. Google, No. C 10-3561, 

2012 WL 1189898 (N.D. Cal. Jan 4, 2012) ..................................................................... 12

Procter & Gamble v. Team Techs., 

No. 1:12-cv-552 (S.D. Ohio July 3, 2014)........................................................................ 12

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., 

2:13-CV-213-JRG-RSP, 2015 WL 627430 (E.D. Tex. Jan. 31, 2015)............................. 12

Sciele Pharma v. Lupin, 

684 F.3d 1253 (Fed. Cir. 2012)......................................................................................... 12

Sibley v. Lemaire, 

184 F.3d 481 (5th Cir. 1999). ............................................................................................. 1

Sulzer Textil A.G. v. Picanol N.V., 

358 F.3d 1356 (Fed. Cir. 2004)................................................................................... 1, 2, 3

United States v. Dillon, 

532 F.3d 379, 387 (5th Cir. 2008) .................................................................................... 13

United States v. Fields, 

483 F.3d 313 (5th Cir. 2007) ............................................................................................ 13

Universal Elecs. v. Universal Remote Control, 

No. C 12-cv-00329 (C.D. Cal. Apr. 14, 2014).................................................................. 12

Vaporstream, Inc. v. Snap Inc.,

No. 17-cv-220-MLH, 2020 WL 978731 (C.D. Cal. Feb. 28, 2020)................................. 13

Vetter v. McAtee, 

850 F.3d 178, 184 (5th Cir. 2017) ...................................................................................... 1

ZiiLabs, Inc., Ltd. v. Samsung Elec., 

No. 2:14-cv-203, 2015 WL 13617214 (E.D. Tex. Oct. 28, 2015).................................. 12

Statutes

35 U.S.C. § 271(b).......................................................................................................................... 3

35 U.S.C. § 311(b)........................................................................................................................ 11

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Treatises

11 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2886 (2d ed.

1995) ................................................................................................................................... 1

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Surefield seeks a new trial, or to amend the judgment, on three grounds: (1) that the 

verdict is contrary to the weight of the evidence, (2) the Court erred in declining to include 

certain jury instructions, and (3) the Court erred in excluding evidence of Matterport’s IPRs. 

Surefield has not and cannot provide sufficient support for its arguments to justify granting a 

new trial. Thus, this Court should deny Surefield’s motion. 

I. LEGAL STANDARD

“A new trial will not be granted based on trial error unless, after considering the record as

a whole, the court concludes that manifest injustice will result from letting the verdict stand.”

Foradori v. Harris, 523 F.3d 477, 506 (5th Cir. 2008). The burden is on the moving party to 

show a new trial is warranted. Sibley v. Lemaire, 184 F.3d 481, 487 (5th Cir. 1999).

When a new trial is sought on evidentiary grounds it is the movant’s burden to show there 

was “an absolute absence of evidence to support the jury's verdict.” Vetter v. McAtee, 850 F.3d 

178, 184 (5th Cir. 2017). A jury verdict will not be set aside, based on erroneous jury instruction 

unless the movant can show the “instructions were legally erroneous,” and that “the errors had 

prejudicial effect.” Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1363 (Fed. Cir. 2004).

Even when there is an error in a jury instruction, such error does not justify a new trial if the 

error could not have changed the result.” Environ Prods., Inc. v. Furon Co., 215 F.3d 1261, 

1266-67 (Fed. Cir. 2000); 11 Charles Alan Wright & Arthur R. Miller, Federal Practice and 

Procedure § 2886 (2d ed. 1995) (“Errors in instructions routinely are ignored if ... the error could 

not have changed the result.”); see also Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 

757, 765 (Fed.Cir.1988) (“Trials must be fair, not perfect.”).

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II. THE VERDICT OF NON-INFRINGEMENT AND INVALIDITY IS NOT 

AGAINST THE GREAT WEIGHT OF EVIDENCE

For the reasons set forth in Redfin’s opposition to Surefield’s Motion for Judgment as a 

Matter of Law, the jury’s verdict is well supported by evidence and a new trial is not warranted. 

Surefield unquestionably failed to carry its burden of proving infringement. See generally 

Redfin’s Opposition to Surefield’s Renewed JMOL (D.I. 261). It failed to clearly identify the 

accused technology, identify which entity performed each step or used or made the ill-defined 

accused system. Id. at 20-24 (Section III.A). In addition, Redfin’s witnesses explained why 

there could be no infringement. Id. at 24-30 (Section III.B.1-3). Redfin’s witnesses also 

explained why the asserted claims are invalid. In particular, Matterport’s founder, Mr. 

Gausebeck, explained that the accused system and method for making virtual models worked in 

materially the same way for several years before Surefield applied for any of the asserted patents. 

Former Google engineer, Dr. Furukawa, described the Google Street View Indoors prior art 

system (“GSV”) he developed for making virtual models that predated the asserted patents (id. at 

3-4, 7-9, 11, 15) and Redfin’s technical expert, Dr. Navratil, explained how GSV anticipated and 

rendered obvious all the asserted claims. Id. at 3, 5-9, 12-16. Surefield does not and cannot 

explain why the jury’s well-founded verdict should be rejected. Ericsson, Inc. v. D-Link Sys., 

Inc.,773 F.3d 1201, 1225 (Fed. Cir. 2014) (“The Fifth Circuit reviews the denial of a new trial 

motion for abuse of discretion, reversing only if there is an ‘an absolute absence of evidence to 

support the jury’s verdict.’”).

III. THE COURT DID NOT ERR IN ITS JURY INSTRUCTIONS

A. It Was Not Error to Exclude a Jury Instruction Regarding Inducement of 

Redfin Website Users

The Court’s refusal to give a jury instruction on inducement of Redfin’s customers does 

not warrant a new trial for at least one simple reason: inclusion of the instruction would not have 

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changed the outcome of the case. Sulzer Textil A.G., 358 F.3d at 1367 (holding that refusal to 

provide a jury instruction only justifies a new trial if the outcome of the case would have been 

different had the correct instruction been given); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 

1282, 1311-12 (Fed. Cir. 2005) [citations omitted] (“when the error in a jury instruction could 

not have changed the result, the erroneous instruction is harmless.”). In this case, the jury found 

all the asserted claims invalid. Thus, a finding of inducement would not impact the outcome of 

the case. Indeed, Surefield does not even make a substantive argument as to why refusal to 

instruct the jury on inducement of Redfin’s customers is prejudicial and cannot carry its burden 

to show prejudice. Sulzer Textil A.G., 358 F.3d at 1364 ("The burden of establishing prejudice 

falls on [movant]”).

Moreover, it was not an error to refuse the instruction. As a predicate to establishing 

inducement of Redfin customers, Surefield needed to prove that Redfin’s customers directly 

infringed one or more asserted patent claims. 35 U.S.C. § 271(b); C.R. Bard, Inc. v. Advanced 

Cardiovascular Sys., Inc., 911 F.2d 670, 675 (Fed. Cir. 1990). As explained below, Surefield 

failed to map the asserted claims to Redfin’s customers and, thus, failed to present the required 

evidence of underlying direct infringement. This too is fatal to Surefield’s request for a new 

trial. Ericsson, 773 F.3d at 1234 (affirming that it is not an error to refuse to provide a jury 

instruction on an issue for which there is insufficient evidence); see also Kanida v. Gulf Coast 

Med. Pers. LP, 363 F.3d 568, 578 (5th Cir. 2004) (“[D]istrict courts have substantial latitude in 

crafting jury instructions . . . [such that a] refusal to give a requested jury instruction constitutes 

reversible error ‘only if the instruction 1) was a substantially correct statement of law, 2) was not 

substantially covered in the charge as a whole, and 3) concerned an important point in the trial 

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such that the failure to instruct the jury on the issue seriously impaired the [party’s] ability to 

present a given [claim].’”).

Surefield incorrectly contends that it “presented substantial, compelling evidence of 

direct infringement by Redfin’s customers and end user’s.” D.I. 249 at 3. But even a cursory 

review of Surefield’s expert’s, Dr. Melendez’s, trial testimony shows that he did not map all the 

claim elements of the asserted claims to Redfin’s users/customers. Instead, Dr. Melendez 

testified that most, if not all, of the accused processing occurred on “back-end servers.” See e.g.

Tr. 508:14-510:11 (testifying that after image data is captured using Matterport cameras, the data 

is uploaded and processed at servers wherein panoramas are created, camera positions and 

geometry are determined, point clouds are created and spatial boundaries are determined).1 With 

respect to the independent claims, he unquestionably did not map the elements to Redfin’s users.

E.g. Tr. 531:23-559:8 (testifying regarding alleged infringement of claim 10 of the ’673 patent 

and failing to identify how a customer infringes the processor, memory and program elements, 

the receiving image data element, the creation of panorama element, the determining camera 

geometry element, the generating a point cloud element or generating a 3D model element); Tr. 

562:21-569:5 (testifying regarding alleged infringement of claim 1 of the ’673 patent and failing 

to identify how a customer infringes the receiving image data step, creating a plurality of 

panoramas step, defining spatial boundaries step, determining camera geometry step, generating 

a point cloudstep and generating the 3D model step); Tr. 574:2-597:14 (testifying regarding 

alleged infringement of claim 1 of the ’885 patent and failing to identify how a customer 

1 Dr. Melendez does testify that “there’s also the part that’s happening within the 

customer’s computer which is actually determining which –the geometric proxy” and some 

undefined processing happens in both the back-end server and “front end.” Tr. 510:19-511:15. 

But he does not map each element of any claim to a Redfin customer.

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infringes the processor, memory and program elements, generate a plurality of spatial boundaries 

element and the generate a virtual model element); Tr. 599:21-609:1 (testifying regarding alleged 

infringement of claim 18 of the ’111 patent and failing to identify how a customer infringes the 

receiving image data step, creating panoramas step and defining spatial boundaries step); Tr. 

612:3-626:23 (testifying regarding alleged infringement of claim 1 of the ’973 patent and failing 

to identify how a customer infringes the processor, memory and program elements, defining 

spatial boundary element, annotating the ground truth image data element, and combining and 

processing ground truth data element).

Dr. Melendez inaccurately testified that Redfin “installs all of the software on the user’s 

computer to allow . . . [the 3D Walkthrough] to occur” (Tr. 517:8-15) and that Redfin’s 

customers’ navigation of models via the Redfin website constitutes “use” of the accused system. 

Tr. 519:12-25. Dr. Melendez cites no evidence to support this testimony – as he could not given 

that it is an unquestionably incorrect position. Indeed, the founder of Matterport, Mr. Gausebeck 

confirmed that the accused models are hosted on Matterport servers, not Redfin’s website, and 

users obtain the models directly from those Matterport servers, not from the Redfin website. See 

e.g. Tr. 1055:18-1056:24. Setting aside the fact that Dr. Melendez’s assertion here is false, even 

if it were taken as true it would not change the fact he failed to map the actual claim elements to 

Redfin’s users because navigation of a model via one’s browser does not and cannot implicate 

the claims. Indeed, all of the asserted claims are directed to systems and methods for 

making/creating “virtual models”/“3d models” or some specific underlying aspect of a “virtual 

model”/“3d model.” See ’885 patent, claim 1 (requiring a system that “generate[s]2 a virtual 

2 The parties agreed and the Court construed virtual model to mean “creating” the virtual 

model. See D.I. 41. 

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model”); ’673 patent, claim 1 (requiring a method for “generating the 3d model”); ’673 patent,

claim 10 (requiring a system for “generating the 3d model”); ’973 patent, claim 1 (requiring a 

system for “generating and rendering a virtual model”); ’111 patent, claim 1 (requiring a method 

for “creating a plurality of panoramas” from received image data, “defining spatial boundaries” 

of rooms using the image data and “rendering a virtual model” using the spatial boundaries and 

panoramas). Just like operating a car is not the same as operating the factory for making that car, 

navigating an already created virtual model is not the same as using the system or method for 

making the model. Thus, Surefield could not and did not show that Redfin’s customers directly 

infringe any claim –and it was not an error to refuse an instruction on inducement of Redfin 

customers.

B. It Was Not Error to Refuse a No Ordered Combination Jury Instruction

Like with the Court’s refusal to provide an instruction on inducement of Redfin’s 

customers, an inclusion of an ordered combination instruction would not have changed the 

outcome of the case. NTP, 418 F.3d at 311-12 [citations omitted] (“when the error in a jury 

instruction could not have changed the result, the erroneous instruction is harmless.”). In this 

case, the jury found all the asserted claims invalid. For this reason alone, Surefield’s request for 

a new trial here should be denied.

In addition, Surefield’s argument here is premised on a false assertion that an “ordered 

combination was one of Redfin’s main non-infringement arguments.” D.I. 249 at 5. To the 

contrary, none of Redfin’s non-infringement arguments depended on an ordered combination of 

claim elements. See D.I. 573 at 19, 29-30. Moreover, Surefield does not specify which, if any 

non-infringement arguments it contends rely on an ordered combination of method steps. To the 

extent it is contending that Redfin’s non-infringement argument that the accused Matterport 

models are not generated and rendered from a “selected viewpoint” or from the “perspective of a 

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current view” – such argument does not rely on an ordered combination of steps. To the 

contrary, the requirement in the claims that models are generated or rendered of a virtual model 

from a “selected viewpoint” or from the “perspective of a current view” comes from single claim 

elements and does not require that the elements be performed in any order. Indeed, it is the plain 

language of individual claim elements from each of the claims that requires models be generated 

and/or rendered from a “selected viewpoint” or from the “perspective of a current view”. See

’885 claim 1 (“generate a virtual model of a current space from the plurality of spaces in the 

real property from the perspective of a current viewpoint”); ’973 claim 1 (“generating and 

rendering a virtual model of a current space within the plurality of spaces of the real property 

from a perspective of a current view”), 673 claims 1 and 10 (“rendering a virtual model of a 

selected space among the plurality of spaces using the plurality of panoramas ...wherein 

rendering the virtual model of the selected space includes ...generating the 3D model”); ’111 

claim 18 (“in response to receiving a user indication ... rendering a virtual model of a 

selected space of the one or more spaces”). Thus, it was not an error to refuse to include a “no

ordered combination” instruction as none was needed. The plain language of the claims was all 

the jury needed. 

Moreover, the instruction sought by Surefield here is a claim construction argument that 

it should have raised during the claim construction process. 

C. The Court Did Not Err in Declining to Include an Instruction on Prior Art 

Systems

Surefield alleges that the Court erred when it refused to give Surefield’s Proposed Jury 

Instruction No. 24 because “it allowed the jury to consider Redfin’s alleged ‘Google Street View 

System’ and ‘Matterport 2013 System’ as single references that require no evidence of 

motivation to combine when, in fact, the evidence showed elements of each alleged system were 

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separate systems that were not combined before the effective filing date.” D.I. 249 at 18. 

Surefield’s own allegations show why this argument is flawed. 

Surefield made a factual determination on its own of what it contends the evidence shows 

and wanted the court to convert its factual determination to a jury instruction. But, whether the 

evidence showed a single system or not was a question of fact that jury clearly found against 

Surefield. Failing to instruct the jury on this made-up factual issue is no error. To the contrary,

it would have been error to issue this instruction, which would have prejudicially biased the jury 

to reach a factual conclusion that was within the jury’s purview to decide and that is contrary to 

the evidence.

At the crux of this argument is Surefield’s false premise that the systems relied upon by 

Redfin in its invalidity defenses were not one single real system, but instead multiple systems or 

theoretical systems. Surefield, through its expert, Dr. Melendez, attempted and failed at 

convincing the jury that these systems were not each a single system. Indeed, as shown in detail 

below, Dr. Melendez’s conclusory testimony on this issue was directly contradicted by all fact 

witnesses and the documentary evidence.

For example, with respect to the Google Street View System, (“GSV”), Dr. Melendez 

began his invalidity rebuttal testifying that “the first thing to understand about that is it’s actually 

not a single system. It is a collection of things that is used collectively.” Tr. 1595:13-18; see id.

at 1595:19-1605:5. Dr. Melendez testified that because Google referred internally to different 

features of the GSV by different names, it somehow meant GSV was not a single system. Tr. 

1602:13-24. But Dr. Melendez’s testimony was contradicted by all available evidence, including 

the testimony of Dr. Furukawa, who testified about his “personal knowledge of how the Google 

Street View system worked while [he was] working at Google from January 2010 to the end of 

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July 2013.” Tr. 1128:18-21. Dr. Furukawa testified that he worked on the software code for the 

“inside businesses” feature and the “tours inside museums” feature of “Google Street View.” Tr. 

1129:21-1130:5. Dr. Furukawa explained that GSV was used in many different contexts: 

[B]esides outdoor streets, there were street view contents for museums, mostly 

indoors, or small businesses, restaurant, cafe, bookstores. Or the skiing ground of 

the time of the winter Olympics in Vancouver. Or a boat tour. They put the 

camera on the boat in Tokyo, Japan, underwater in Australia, Antarctica with 

penguins, and the Grand Canyon. So everywhere we can bring a camera, take 

images, yes. We had our contents to cover. 

Tr. 1129:12-20. He also testified the same SGV indoor tours were accessible from different 

places: googleartproject.com, Google Earth, and googlemaps.com. Tr. 1138:1-8. Notably, 

Surefield’s cross-examination of Dr. Furukawa did not raise this alleged multiple system issue. 

See Tr. 1166:25-1177:20.

Redfin also relied on its expert, Dr. Navratil, who explained: 

And technically it’s one system, it’s just we’re talking about different features of 

that system. There’s outdoor, there’s indoor in the art project, there’s indoor 

inside of businesses. But it’s all tied together as one system. ... There are other 

websites that you can access it as well, but certainly from within Google Street 

View on Google Maps it’s all in one thing. 

Tr. at 1325:1-1326:5; see also, 1478:3-1479:4. Surefield cross-examined Dr. Navratil on this 

issue and he clearly explained that what Surefield alleges were different systems were in fact “all 

different features of the Google Street View system.” See Tr. 1452:10-1454:14. Redfin also 

relied on many video and documentary exhibits showing how Google, the press, and the general 

public understood the different features provided by GSV. See e.g., DX-253, DX-219, DX-614, 

DX-332, DX-259, DX-257, DX-253, DX-217, DX-215, DX-300, DX-197, DX-198, DX-218, 

DX-092, DX-226, DX-258. To the extent Surefield’s arguments raised any factual dispute as to 

whether the prior art systems Redfin relied upon were a single system or not, the jury’s invalidity 

determination resolved the dispute.

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Surefield cites several cases that do not support its requested relief. In Minnesota Min., 

the court found a complete absence of “substantial evidence of use of the” prior art product, 

Ricoseal. Minnesota Min. and Mfg. v. Chemque, 303 F.3d 1294, 1307 (Fed. Cir. 2002). In 

contrast, Redfin presented to the jury ample evidence of the use of GSV, including the testimony 

of Dr. Furukawa, the testimony of Dr. Navratil (who testified even as to his own use of it), and 

many publications and video exhibits that were presented to the jury showing video recordings of 

actual uses of the prior art system. 

In IBM, the court found that “there is no evidence that the [prior art] system was ever 

actually configured in that way or used that way prior to the critical date.” Int’l Business Mach. 

v. Priceline, 271 F. Supp. 3d 667, 681 (D. Del. 2017). Again, this is not the case here. Redfin 

presented evidence of the prior art configured as recited in the claims and publicly used prior to 

the priority date. In Apple v. Samsung Elec., the Court found that testimony about how the prior 

art “system might have been construed does not constitute prior art for purposes of anticipation.” 

2012 WL 2576136, at *3 (N.D. Cal. July 3, 2012). Again, the evidence presented by Redfin is 

not about how the prior art systems might have been configured but how they were configured 

and used before the priority date. In short, none of the case law relied upon by Surefield is 

applicable to this case.

IV. IT WAS NOT ERROR TO EXCLUDE EVIDENCE REGARDING PTAB 

DECISIONS

A. The Excluded PTAB Decisions Were Not Relevant to the Issues Presented at 

Trial

The Court has already twice heard and rejected Surefield’s arguments on the exclusion of 

the PTAB decisions regarding non-institution of IPRs relating to the asserted patents. D.I. 159 at 

1-3; D.I. 195 at 3; Tr. 1490:2-1503:7. Now, in its third attempt to re-hash this issue, Surefield 

misrepresents the nature of the IPRs and the PTAB’s decisions regarding them to try to fabricate 

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a basis to claim that the PTAB decisions are somehow relevant to the issues presented at trial. 

But the decisions have little to no relevance to the issues presented at trial.

Indeed, Surefield’s claim of relevance is based on a blatant misrepresentation of the facts. 

In its motion, Surefield falsely states that the “PTAB necessarily considered Dr. Furukawa’s 

testimony regarding the obviousness combination of Bell436 . . . and Cowtan, Google Street 

View, and Google Art Project,” arguing that Redfin asserted the same prior art combination at 

trial. D.I. 249 at 8 (emphasis added). None of this is true. 

As a preliminary matter, Redfin did not bring the IPRs; they were filed by non-party 

Matterport and thus, the IPRs do not reflect Redfin’s assertions. More importantly, the IPRs did 

not assert the obviousness combination of Bell 436, Cowtan, Google Street View, and Google 

Art Project. The IPRs asserted (and were limited to) invalidity on the following grounds:

• The combination of Cowtan and Bell436, 

• The combination of Cowtan, Bell436, and Triggs

• The combination of Cowtan, Bell436, and Bell060

• The combination of Cowtan, Bell436, and Sun

See D.I. 229 at 282 (PX-342 at 7), 308-309 (PX-343 at 6-7), 333 (PX-344 at 6), 367-368 (PX345 at 7). They did not assert any combination with Google Street View or Google Art Project. 

They did not because they could not. The invalidity grounds asserted in IPRs are statutorily 

restricted to patents and printed publications. See 35 U.S.C. § 311(b). Thus, IPRs cannot rely on 

system art such as Google Street View (including as seen in the Google Art Project). But system 

art – the Google Street View Indoor system as well as the Matterport prior art system – is what 

Redfin relied on at trial to prove invalidity. Redfin did not rely on any of the prior art 

combinations asserted in the IPRs. Thus, Surefield’s claim that Redfin relied at trial on the same 

prior art at issue in the IPRs is not only inaccurate, it’s an impossibility. 

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Thus, the cases cited by Surefield that involve Patent Office review of the prior art 

reference being asserted at trial are inapplicable here, where the PTAB did not consider the same 

prior art Redfin asserted at trial.

3

 See D.I. 249 at 9-10. In fact, courts regularly exclude evidence 

of PTAB decisions where they involve different prior art references than that being presented at 

trial or where the IPR was filed by a non-party. Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197, 

2016 WL 4560071, at *14 (N.D. Cal. Aug. 22, 2016) (excluding evidence of IPRs where none of 

the reviews involved the same prior art at issue at trial); ZiiLabs, Inc., Ltd. v. Samsung Elec., No. 

2:14-cv-203, 2015 WL 13617214, at *3 (E.D. Tex. Oct. 28, 2015) (excluding evidence of 

PTAB decisions brought by a different party). Indeed, courts regularly exclude evidence of 

PTAB decisions denying institution even when they involve the same party and prior art, finding 

that the evidence is confusing and of limited probative value. Freshub, Inv v. Amazon.com, Inc., 

Case No. 6:21-cv-00511-ADA, 2021 WL 2587713 at *1 (W.D. Tex. Jun. 13, 2021) (granting 

Amazon.com’s motion in limine excluding reference to non-instituted IPRs); Andover

Healthcare, Inc. v. 3M Co., No. CV 13-843-LPS, 2016 WL 6404111, at *2 (D. Del. Oct. 27, 

2016) (“The Rule 403 balance strongly favors exclusion, as the minimal (if any) probative value 

of the PTAB’s decision is far outweighed by the risk of jury confusion and unfair prejudice.”);

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., 2:13-CV-213-JRG-RSP, 2015 WL 

3 See Sciele Pharma v. Lupin, 684 F.3d 1253, 1258 (Fed. Cir. 2012) (addressing relevance 

of PTO consideration prior art references being relied upon in the lawsuit); K-TEC v. Vita-Mix, 

696 F.3d 1364, 1376 (Fed. Cir. 2012) (same); Oracle Am. v. Google, No. C 10-3561, 2012 WL 

1189898, at *3 (N.D. Cal. Jan 4, 2012) (addressing completed re-examinations based on prior art 

before the fact finder); Universal Elecs. v. Universal Remote Control, No. C 12-cv-00329, D.I. 

290 at 5-6 (C.D. Cal. Apr. 14, 2014) (addressing IPR based on “very art that forms the basis for 

[defendants’s] invalidity defense in the upcoming trial”); LC Eldridge Sales v. Azen Mfg., No. 

6:11-cv-599, D.I. 250 at 4 fn.1 (E.D. Tex. Oct. 11, 2013) (noting that the re-exam at issue 

involved prior art being relied on in the litigation); Procter & Gamble v. Team Techs., No. 1:12-

cv-552, D.I. 130 at 21-22 (S.D. Ohio July 3, 2014) (considering PTAB decision that evaluated 

same prior art inherency argument at issue in district court). 

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627430, at *5 (E.D. Tex. Jan. 31, 2015) (excluding denials of IPR petitions); Interdigital

Commc’ns Inc. v. Nokia Corp., No. 13-10-RGA, 2014 WL 8104167, at *1 (D. Del. Sept. 19, 

2014) (“marginal relevance” of IPR denial outweighed by the “significant risk of confusion”);

Vaporstream, Inc. v. Snap Inc., No. 17-cv-220-MLH, 2020 WL 978731, at *8 (C.D. Cal. Feb. 28,

2020) (excluding reference to IPRs based on danger of “jury confusion over the invalidity 

issues in the case”). Courts have regularly come to this conclusion because, “it would be 

difficult for a jury to understand, much less apply, the nuanced differences between the various 

proceedings and to determine how much weight should be given to PTAB’s decision to deny 

institution, if any.” Acantha LLC v. DePuy Orthopaedics Inc., No. 15-C-1257, 2018 WL

2431852, at *3 (E.D. Wis. May 30, 2018).

Furthermore, the PTAB here declined to institute the IPRs based on the petitions’ 

purported failure to provide sufficient evidence of the motivation to combine the Cowtan and 

Bell436 prior art references. Putting aside the different standards applied in PTAB proceedings 

and in making IPR institution decisions, the substance of the prior art arguments relating to 

Cowtan and Bell436 have no bearing on the jury’s consideration of evidence relating to the prior 

art Google Street View and Matterport systems. Thus, Surefield cannot show that any of the 

excluded evidence was relevant to Redfin’s trial invalidity arguments. 

B. The Court Was Within Its Discretion to Exclude the PTAB Decisions 

In addition, regardless of the relevance of the PTAB non-institution decisions, the court 

was well within its discretion to exclude them. As the Fifth Circuit has recognized, “trial court 

discretion is at its zenith in Rule 403 balancing[.]” United States v. Fields, 483 F.3d 313, 354 

(5th Cir. 2007); see also Int’l Ins. Co. v. RSR Corp., 426 F.3d 281, 299-300 (5th Cir. 2005); 

United States v. Dillon, 532 F.3d 379, 387 (5th Cir. 2008) (noting “especially high deference” 

given to Rule 403 determinations). 

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 18 of 24
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The Court here provided a very well-reasoned justification for its exclusion of the 

evidence, noting:

[U]nder Rule 403 – 401 and 403, that if I were to allow in the evidence that 

plaintiff is suggesting, the next thing I would have to do to remain fair would be 

to allow in the defendant to put in the evidence that he just argued to me. And we 

would be off to the races with explaining to a jury what an IPR is and maybe 

explaining to them, if we could, why it matters. And I’m going to find in this case 

with respect to infringement and invalidity and damages, that it does not matter. 

Tr. 1502:22-1503:7. And indeed, the PTAB decisions did not matter to the trial. As noted 

above, the PTAB decisions concerned only the non-institution of the IPRs based on evidence of 

motivation to combine prior art not at issue in the trial. Thus, if Surefield were allowed to 

discuss the PTAB decisions, to avoid any prejudice to Redfin, a lot of trial time would be wasted 

trying to explain to the jury (1) that Redfin did not file the IPRs; (2) that the standards the PTAB 

uses in considering institution of IPRs are different than the standard the jury is to apply at trial, 

(3) that the PTAB non-institution decisions were not a determination of validity on the merits;

and (4) that different prior art references were being asserted in the IPRs that have no bearing on 

the invalidity arguments asserted by Redfin at trial. The presentation of this evidence would not 

have helped the jury decide the issues presented in the case, i.e. (1) whether the Google Street 

View or Matterport prior art systems disclosed the elements of the asserted claims, (2) whether 

the accused Matterport virtual tours infringed asserted patents, or (3) how much damages 

Surefield was entitled to if there was infringement. Thus, the introduction the PTAB decisions 

would have served only to confuse the jury and waste the parties’ and the Court’s time. Thus, 

the Court was well within its discretion to exclude the evidence. 

C. The Court Properly Found that Counsel Did Not Open the Door to 

Introduction of the PTAB Decisions

Ignoring that the PTAB decisions are irrelevant to the issues presented at trial, Surefield 

argues they should have been admitted because Dr. Furukawa, who testified at trial regarding the 

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 19 of 24
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prior art Google Street View system also submitted an expert declaration in the IPRs. 

Specifically, Surefield contends that it should have been allowed to enter the PTAB decisions 

into evidence to rebut suggestions Redfin made a trial that the Patent Office did not consider Dr. 

Furukawa’s testimony.

Surefield misleadingly conflates Dr. Furukawa’s declaration testimony submitted with 

the IPR petitions and his separate trial testimony. The two are different. When Dr. Navratil was 

asked about whether the Patent Office had Dr. Furukawa’s testimony, Dr. Navratil was 

answering with respect to Dr. Furukawa’s trial testimony. Tr. 1485:9-14 (referring to Dr. 

Furukawa sitting in the court talking about Google Street View). In closing, Redfin’s counsel 

made clear that he was referring to the testimony Dr. Furukawa gave “here in this trial” when 

stating the Patent Office did not have the benefit of his testimony. Tr. 1746:2-3. Thus, Redfin 

did not suggest that the Patent Office did not consider any type of testimony from Dr. Furukawa. 

Surefield also ignores that Dr. Furukawa’s IPR declaration did not discuss whether 

Google Street View invalidated Surefield’s patent claims. Surefield provides a comparison 

between Dr. Furukawa’s IPR declaration and his trial testimony, suggesting that he provided the 

same testimony to the PTAB as he did to the jury during trial. See D.I. 249 at 13-15. But what 

Surefield fails to acknowledge is that Dr. Furukawa’s discussion of Google Street View in his 

IPR declaration was given in the context of providing his credentials and experience, and 

describing the background state of the art at the time the Surefield patent applications were filed. 

D.I. 229, PX-415 ¶ 59. His IPR testimony regarding Google Street View was not used as a basis 

to assert invalidity of the Surefield patents. See id. Thus, there is no suggestion that the PTAB 

considered Dr. Furukawa’s testimony regarding Google Street View in his IPR declaration in 

issuing the PTAB decisions.

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Most importantly, Surefield does not explain how admission of the PTAB decisions 

would rebut suggestions that the Patent Office did not consider Dr. Furukawa’s testimony 

regarding Google Street View. The four PTAB decisions are devoid of any discussion of Dr. 

Furukawa’s time at Google or his work on Google Street View, making no reference at all to 

Google Street View. The only time the PTAB decisions make any reference to Dr. Furukawa’s 

IPR declaration testimony is with respect to Dr. Furukawa’s discussion and opinions regarding 

his interpretation of claims, and the Cowtan and Bell references prior art references relied upon 

in the IPR. D.I. 229, PX-342 at 11 (discussing Dr. Furukawa’s interpretation of “parcel 

outline”); PX-343 at 17 (discussing, Dr. Furukawa’s explanation of Cowtan); PX-344 at 8, 11, 28

(discussing Dr. Furukawa’s opinion as to the level of ordinary skill in the art, interpretation of 

“parcel outline”, and motivation to combine Cowtan and Bell); PX-345 at 11 (discussing Dr. 

Furukawa’s interpretation of “parcel outline”). There is nothing in the PTAB decisions that 

would inform the jury that the Patent Office considered testimony regarding Google Street View 

as those decisions have nothing to do with the Google Street View prior art. As such, they were 

properly excluded by the Court. 

D. Surefield Was Not Prejudiced by Exclusion of the PTAB Decisions

As its final argument, Surefield claims that had it been allowed to introduce the PTAB 

Decisions and Dr. Furukawa’s IPR declaration, the jury would have known that the Patent Office 

did consider the Google Street View and Matterport prior art and thus, would have found the 

patents not invalid. There is no basis for such an inferential leap. 

In fact, Surefield did submit evidence to the jury that the Patent Office had considered the 

Google Street View and Matterport prior art systems and nevertheless granted the Surefield 

patents. See e.g. Tr. 452:5-15 (testimony regarding disclosure of Matterport patents to the PTO); 

453:4-454:3 (testimony regarding disclosure of Matterport prior art system to the PTO); 1653:4-

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 21 of 24
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12 (testimony that Patent Office reviewed Google videos showing tours of the White House or 

other museums); 1467:9-20 (testimony that Patent Office considered an article about Google 

Street View); 1468:3-15 (same); 1468:24-1469:7 (testimony regarding Patent Office “considered 

that Google Street View article about Google Street view going inside”). Even with this 

evidence, the jury still found the asserted claims invalid. Thus, there is no reason to believe that 

submission of duplicative evidence in the form of PTAB decision and Dr. Furukawa’s IPR 

declaration would change that outcome.

Moreover, Surefield’s argument is based on a false premise. It argues that the excluded 

PTAB decisions and Furukawa IPR declaration “show that the PTO both considered and rejected 

Dr. Furukawa’s testimony regarding Google Street View, Google Art Project, and the Matterport 

Prior Art combinations[.]” D.I. 249 at 17. But, as noted above, the PTAB decisions are silent as 

to Google Street View (including the Google Art Project) and make no reference to Dr. 

Furukawa’s declaration with respect to his work at Google. There is no indication that the PTAB 

rejected or even considered Dr. Furukawa’s testimony regarding Google. Thus, there is no basis 

to suggest that admission of the PTAB decisions and Dr. Furukawa’s declaration would have 

affected the jury’s verdict. 

V. CONCLUSION

For the foregoing reasons, Redfin respectfully requests the Court to deny Surefield’s 

motion for a new trial, or to alter or amend the judgment. 

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 22 of 24
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Dated: October 3, 2022 Respectfully submitted,

/s/ Ryan J. Marton

Ryan Marton 

Ryan Marton (admitted Pro Hac Vice)

ryan@martonribera.com

Hector Ribera (admitted Pro Hac Vice)

hector@martonribera.com

Carolyn Chang (admitted Pro Hac Vice)

carolyn@martonribera.com

Phillip Haack (admitted Pro Hac Vice)

phaack@martonribera.com

Marton Ribera Schumann & Chang LLP

548 Market St Suite 36117

San Francisco, CA 94104

Telephone: (415) 360-2515

Darryl J. Adams

Texas State Bar No. 00796101

dadams@sgbfirm.com

SLAYDEN GRUBERT BEARD PLLC

401 Congress Ave., Suite 1650

Austin, Texas 78701

Telephone: (512) 402-3562

Facsimile: (512) 402-6865

Benjamin J. Byer (admitted Pro Hac Vice)

benbyer@dwt.com

DAVIS WRIGHT TREMAINE LLP

920 Fifth Avenue, Suite 3300

Seattle, Washington 98104

Telephone: (206) 757-8105

Facsimile: (206) 757-7105 

COUNSEL FOR DEFENDANT

REDFIN CORPORATION

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 23 of 24
CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the foregoing is being served on the 

counsel of record via the CM/ECF system on October 3, 2022.

By: /s/ Ryan J. Marton

Ryan J. Marton

Case 6:20-cv-00376-ADA Document 262 Filed 10/03/22 Page 24 of 24