IN THE UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

APPLIANCE COMPUTING III, INC. 

d/b/a SUREFIELD,

Plaintiff, 

v. 

REDFIN CORPORATION,

Defendant.

§

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

CIVIL ACTION NO. 6:20-cv-00376-ADA

PLAINTIFF’S REPLY IN SUPPORT OF ITS MOTION FOR NEW TRIAL 

OR TO ALTER OR AMEND THE JUDGMENT

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TABLE OF CONTENTS

I. THE COURT SHOULD GRANT A NEW TRIAL ON INFRINGEMENT BECAUSE 

IT INCORRECTLY DECLINED TO INSTRUCT THE JURY ON INDUCEMENT 

OF REDFIN CUSTOMERS AND NO ORDERED COMBINATION. ............................ 1

A. The Inducement Instruction Was Improperly Omitted........................................... 1

B. The No Order Combination Instruction Was Improperly Omitted......................... 3

II. THE COURT SHOULD GRANT A NEW TRIAL ON VALIDITY BECAUSE IT 

INCORRECTLY DECLINED TO INSTRUCT THE JURY ON PRIOR ART 

SYSTEMS........................................................................................................................... 3

III. SUREFIELD SHOULD HAVE BEEN ALLOWED TO PRESENT EVIDENCE OF 

THE PTAB’S PREVIOUS REJECTION OF FURUKAWA’S TESTIMONY 

REGARDING THE ASSERTED PRIOR ART. ................................................................ 5

A. The PTAB Decisions and Furukawa Declaration Are Relevant............................. 5

B. The Decisions and Declaration Are Not Unfairly Prejudicial or Confusing. ......... 8

C. Redfin’s Counsel and Witnesses Opened the Door. ............................................... 8

D. Exclusion of the Decisions and Declaration Prejudiced Surefield. ........................ 9

CONCLUSION............................................................................................................................. 10

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TABLE OF AUTHORITIES

Cases

Acantha v. DePuy Orthopaedics,

No. 15-C-1257, 2018 WL 2431852 (E.D. Wis. May 30, 2018) ......................................... 7

Andover Healthcare v. 3M,

No. CV 13-843-LPS, 2016 WL 6404111 (D. Del. Oct. 27, 2016) ..................................... 7

Apple v. Samsung Electronics, 

2012 WL 2576136 (N.D. Cal. Jul. 3, 2012)........................................................................ 4

Avanos Medica Sales v. Medtronic Sofamor Danek,

No. 2:19-cv-2754, 2021 WL 8693677 (W.D. Tenn. Oct 8, 2021).................................... 6

Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc., 

631 F.3d 1279 (Fed. Cir. 2011)....................................................................................... 2, 3

ESW Holdings, Inc. v. Roku, Inc.,

No. 6:19-CV-00044-ADA, Dkt. 103 (W.D. Tex. Feb. 25, 2021)....................................... 1

Finjan v. Sophos, 

No. 14-cv-01197-WHO, 2016 WL 4560071 (N.D. Cal. Aug. 22, 2016) ........................... 7

Freshub, Inc., et al. v. Amazon.com, Inc., et al.,

No. 6:21-CV-00511-ADA, 2021 WL 2587713 (W.D. Tex. June 13, 2021) ...................... 7

Freshub, Inc., et al. v. Amazon.com, Inc., et al.,

No. 6:21-CV-00511-ADA, Dkt. 216 (W.D. Tex. June 8, 2021.......................................... 7

Interdigital Commc’ns Inc. v. Nokia,

No. 13-10-RGA, 2014 WL 8104167 (D. Del. Sept. 5, 2014 .............................................. 7

International Bus. Mach. v. Priceline,

271 F. Supp.3d 667 (D. Del. 2017)..................................................................................... 4

KSR Int’l v. Teleflex,

550 U.S. 398 (2007)............................................................................................................ 6

Minnesota Min. and Mfg. v. Chemque,

303 F.3d 1294 (Fed. Cir. 2002)........................................................................................... 4

Moba, B.V. v. Diamond Automation, Inc., 

325 F.3d 1306 (Fed. Cir. 2003)........................................................................................... 3

Qualcomm v. Apple,

24 F.4th 1367 (Fed. Cir. 2022) ........................................................................................... 6

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Rembrandt Wireless Techs. v. Samsung Elecs.,

No. 2:13-CV- 213-JRG-RSP, 2015 WL 627430 (E.D. Tex. Jan. 31, 2015)....................... 7

United States v. Clark, 

578 F.3d 273 (5th Cir. 2009) .............................................................................................. 8

United States v. Mizell, 

38 F.3d 570 (5th Cir. 1994) ................................................................................................ 8

Vaporstream v. Snap,

No. 17-cv-220-MLH, 2020 WL 978731 (C.D. Cal. Feb. 28, 2020)................................... 7

Wasica Finance v. Schrader Int’l, 

432 F. Supp.3d 448 (D. Del. 2020)..................................................................................... 6

Ziilabs v. Samsung Elecs.,

No. 2:14-CV-203-JRG-RSP, 2015 WL 13617214 (E.D. Tex. Oct. 28, 2015)................... 7

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 4 of 17
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TABLE OF ABBREVIATIONS AND CITATIONS

Parties

Surefield Plaintiff Appliance Computer III, Inc. d/b/a 

Surefield

Redfin Defendant Redfin Corp.

Defined Terms

Surefield Patents or Patents-in-Suit U.S. Patent No. 9,836,885(the “’885 Patent”); 

U.S. Patent No. 10,102,673 (the “ʼ673 

Patent”); U.S. Patent No. 10,510,111 (the 

“ʼ111 Patent”); and U.S. Patent No. 

10,592,973 (the “’973 Patent”).

Asserted Claims Claims 1, 3, and 9 of the ’885 Patent; claims 

1, 2, and 10 of the ’673 Patent; claims 18 and 

22 of the ’111 Patent; and claims 4 and 17 of 

the ’973 Patent.

Matterport 2013 Matterport 2013 System

Tr. Trial Transcripts, Dkt. 239–244

Unless otherwise noted, all emphasis is 

added.

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I. THE COURT SHOULD GRANT A NEW TRIAL ON INFRINGEMENT BECAUSE 

IT INCORRECTLY DECLINED TO INSTRUCT THE JURY ON INDUCEMENT 

OF REDFIN CUSTOMERS AND NO ORDERED COMBINATION.

A. The Inducement Instruction Was Improperly Omitted.

Respectfully, the Court erred in refusing to instruct the jury with respect to inducement by 

Redfin of its customers’ direct infringement. See Dkt. 218-3 (requested charge submitted to the 

Court on May 15, 2022) at 23–24 (Instruction 14), 30–31 (Instruction 19); Dkt. 223 (Final Jury 

Charge). The Court predicated its ruling on a misapplication of its own prior jurisprudence. 

Redfin makes absolutely no attempt to reconcile the putative basis of the Court’s ruling—the 

two decisions in Roku—and the facts of this case. It does not even cite either Roku case, much 

less address them factually.

At the charge conference on May 16, 2022, Surefield proposed an indirect infringement 

charge whereby the jury was instructed that Redfin induced the infringement of its customers 

operating 3D models and parcel outlines. Dkt. 218-3 at 24, 30–31. The Court declined to instruct 

the jury on customer inducement after having previously denied Redfin’s pretrial motions 

precluding that theory. See Dkt. 223 at 21, 25–26 (Final Jury Charge not including inducement of 

Redfin customers); Dkt. 195 at 4 (denying Redfin’s MSJ on Non-Infringement (Dkt. 87)).

The Court made no finding regarding any lack of evidence, which was provided in full at 

trial. See Dkt. 249 at 3. Instead, the Court predicated its ruling on its incorrect recall of prior 

rulings, namely the Roku cases. Those cases dictate the opposite result. In ESW Holdings, Inc. v. 

Roku, Inc., where no instruction on inducement was given, the Court had previously granted an 

unopposed motion for summary judgment on no indirect infringement. See No. 6:19-CV-00044-

ADA, Dkt. 103 (W.D. Tex. Feb. 25, 2021). The present case is immediately distinguishable as no 

such summary judgment motion was granted, and the MIL sought by Redfin was denied. See Dkt. 

159 (Redfin’s MIL 3, “Inducement Theory Based on Alleged Direct Infringement by Redfin 

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 6 of 17
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Customers”); Dkt. 195 at 3 (denying MIL 3). 

With no legal or factual support, Redfin nakedly asserts that the instruction would not have 

changed the outcome of the case. Dkt. 262 at 3. Redfin’s own actions belie that late assertion, 

since it asked the Court at the charge conference not to instruct the jury on this issue, inviting the 

error. More fundamentally, Redfin has no legal or factual basis to say that inducement of 

customers was (and is) not a viable theory, particularly since its witness routinely directed the 

accused conduct—using the Accused System and presenting 3D models and parcel outlines—to 

code on its users’ computers. Tr. 1088:25–1090:5 (Gausebeck admitting processing for rendering 

occurs on Redfin users’ computers), 540:24–541:9 (assets files loaded into Redfin users’ 

browsers), 543:22–544:8 (Showcase javascript software on Redfin users’ computers renders 

models). 

Redfin then proceeds to argue that Surefield did not present evidence of direct infringement 

by Redfin’s customers because some elements relate to processing that occurred on “back end 

servers.” Dkt. 262 at 9. This precise argument was considered and rejected by the Federal Circuit 

as a matter of law over a decade ago. Centillion holds that the user—as a matter of law—uses a 

system when putting it into use as a whole, even where there is backend processing that they do 

not control or have any insight into. Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc., 631 

F.3d 1279, 1284–85 (Fed. Cir. 2011). 

The district court erred, however by holding that in order to “use” a system under 

§ 271(a), a party must exercise physical or direct control over each individual 

element of the system.... 

We agree that direct infringement by “use” of a system claim “requires a party ... 

to use each and every ... element of a claimed [system].” In order to “put the system 

into service,” the end user must be using all portions of the claimed invention. For 

example, in NTP, the end user was “using” every element of the system by 

transmitting a message. It did not matter that the user did not have physical control 

over the relays, the user made them work for their patented purpose, and thus 

“used” every element of the system by putting every element collectively into 

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 7 of 17
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service....

Qwest argues that its customers do not “use” the system because they do not control 

the back-end processing. It argues that Qwest performs the back-end processing 

and provides the result—not the processing itself—to the customer....

We hold that the on-demand operation is a “use” of the system as a matter of law. 

The customer puts the system as a whole into service, i.e., controls the system and 

obtains benefit from it.

Id. (emphasis added).

Thus, all of Redfin’s argument—that some steps occur at the back end—can be rejected as 

a matter of law. Indeed, Centillion ruled it to be reversible error for the district court to adopt such 

argumentation. Because Redfin’s customers use the Accused System and put it into use as a whole 

under Centillion, the Court committed error that warrants a new trial.

B. The No Order Combination Instruction Was Improperly Omitted.

At no time during claim construction did Redfin ever argue that an ordered combination of 

any method claim was required. Nonetheless, Redfin refused to instruct the jury that ordered 

combination was not required, and in fact improperly argued that it was required when it is not.

The Court thus improperly and prejudicially omitted Surefield’s requested jury instruction 

regarding no ordered combination, as none of the plain claim language, logic of the claims, nor 

any claim construction requires such an ordered combination. See Moba, B.V. v. Diamond 

Automation, Inc., 325 F.3d 1306, 1313–14 (Fed. Cir. 2003); Dkt. 248 at 19–20; Tr. 1656:13–22. 

II. THE COURT SHOULD GRANT A NEW TRIAL ON VALIDITY BECAUSE IT 

INCORRECTLY DECLINED TO INSTRUCT THE JURY ON PRIOR ART 

SYSTEMS.

Redfin does not dispute that Surefield presented evidence showing the elements of the 

alleged Matterport and Google Systems were not used together in an actual system before the 

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effective filing date. Dkt. 262 at 8–9.1 Instead, Redfin claims Surefield’s requested instruction 

was unnecessary because “the jury’s invalidity determination resolved the dispute.” Id. at 9. This 

argument makes no sense. If the jury had been instructed that an alleged system does not qualify 

as prior art unless all of its elements were combined together in an actual system before the 

effective filing date, it would have concluded the alleged Matterport and Google Systems do not 

qualify as prior art and found the Patents not invalid. Instead, the jury was completely unaware of 

this requirement and was not properly guided in its deliberations.

 Redfin also does not dispute that Federal Circuit law, supported by several district court 

decisions, requires the party alleging public use to show that the elements of the alleged prior art 

system were used together in an actual system before the effective filing date, as stated in 

Surefield’s proposed charge. Dkt. 262 at 10; see, e.g., Minnesota Min. and Mfg. v. Chemque, 303 

F.3d 1294, 1307 (Fed. Cir. 2002); International Bus. Mach. v. Priceline, 271 F. Supp.3d 667, 681 

(D. Del. 2017) (“[N]one of Defendants’ references show actual use of that combination.”); Apple 

v. Samsung Electronics, 2012 WL 2576136, *3 (N.D. Cal. Jul. 3, 2012) (“[T]here is no evidence 

that the [prior art] software programs and code . . . were combined in a single apparatus.”). Instead, 

Redfin claims, without authority, that the cases cited by Surefield do not apply because Redfin 

purportedly presented evidence of how the alleged prior art systems were configured and used. 

Dkt. 262 at 10. Again, Redfin’s argument makes no sense. Respectfully, a court is not relieved of 

its obligation to instruct the jury on the elements of a public use prior art system simply because 

the parties present conflicting evidence on the issue. 

1 Indeed, Redfin fails to identify any evidence to support its claims that the components of the 

Matterport 2013 System (2012 source code, 2013 source code, Matterport ’436, ’060, and ’533 

Applications) were ever used together in a single system. Redfin also failed to present competent 

evidence showing the elements of the alleged Google Street View 2013 System were combined 

together in an actual system before the effective filing date. 

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Finally, Redfin does not dispute that the failure to provide Surefield’s proposed instruction 

allowed Redfin to circumvent the requirements of 35 U.S.C. §§ 102 or 103 on every asserted prior 

art ground, which prejudiced Surefield and affected the outcome of the case. Dkt. 249 at 19–20. 

III. SUREFIELD SHOULD HAVE BEEN ALLOWED TO PRESENT EVIDENCE OF 

THE PTAB’S PREVIOUS REJECTION OF FURUKAWA’S TESTIMONY 

REGARDING THE ASSERTED PRIOR ART.

A. The PTAB Decisions and Furukawa Declaration Are Relevant.

Redfin contends that the PTAB Decisions are not relevant because “Redfin did not rely on 

any of the prior art combinations asserted in the IPRs.” Dkt. 262 at 11. This contention is incorrect. 

Redfin does not dispute (1) in the litigation it asserted the 2013 3D modeling technology of 

Matterport is an embodiment of Bell4362 that renders the Asserted Claims obvious when combined 

with Cowtan;3 (2) Dr. Furukawa testified before the PTAB that the 2013 “3D modeling technology 

of Petitioner Matterport” is described by Bell436 which renders the Asserted Claims obvious when 

combined with Cowtan; (3) and Redfin’s litigation witnesses and Dr. Furukawa’s PTAB testimony 

relied upon the identical printed publications to evidence the 2013 3D modeling technology of 

Matterport. Dkt. 249 at 16–17. Thus, the PTAB Decisions and Furukawa Declaration are relevant 

because the Matterport obviousness combinations asserted in both the litigation and the PTAB are 

substantively the same. 

Likewise, Redfin does not dispute that Dr. Furukawa provided the same testimony at trial 

regarding Google Street View and Google Art Project that he provided to the PTAB, relying upon 

the identical printed publications (including YouTube videos). Dkt. 249 at 13–16. Instead, Redfin 

incorrectly contends the PTAB in its Decisions did not consider Google Street View or Google 

Art Project because they were addressed in the supporting expert declaration of Dr. Furukawa, not 

2 U.S. Pat. App. Pub. 2014/0043436 (“Bell436”).

3 U.S. Pat. App. Pub. 2009/0031246 (“Cowtan”).

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 10 of 17
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as a statutory ground of invalidity. Dkt. 262 at 11. As shown in Qualcomm, which Redfin makes 

no attempt to distinguish, the PTAB Decisions were based not only on the asserted Matterport 

obviousness combination but also on the analysis of Google Street View and Google Art Project 

provided in Dr. Furukawa’s declaration. Dkt. 249 at 7–8 (citing Qualcomm v. Apple, 24 F.4th 

1367, 1375–76 (Fed. Cir. 2022)). To evaluate (and ultimately reject) the Matterport prior art 

combination, it was “necessary for the [PTAB] to look to . . . the background knowledge possessed 

by a person having ordinary skill in the art . . . to determine whether there was an apparent reason 

to combine the known elements . . . .” KSR Int’l v. Teleflex, 550 U.S. 398, 401 (2007). 

Redfin also mistakenly contends that Matterport (which identified Redfin as the real party 

in interest) “could not” assert the Matterport System, Google Street View, or Google Art Project 

in the inter partes reviews because the invalidity grounds asserted in IPRs are restricted to patents 

and “printed publications.” To the contrary, when system art is expressed through printed 

publications, including YouTube videos, it may be considered by the PTAB as statutory grounds 

of invalidity under 35 U.S.C. § 311(b). See, e.g., Avanos Medica Sales v. Medtronic Sofamor 

Danek, No. 2:19-cv-2754, 2021 WL 8693677, at *1 (W.D. Tenn. Oct 8, 2021) (system art 

evidenced by printed publications estopped under 35 U.S.C. §315(e) because “the grounds for 

asserting invalidity could still have been raised in the IPR”); Wasica Finance v. Schrader Int’l, 

432 F. Supp.3d 448, 453 (D. Del. 2020) (Stark, C.J.) (system prior art ground could have been 

raised in IPR because publication disclosed same elements). Redfin’s litigation witnesses and Dr. 

Furukawa’s PTAB testimony relied upon the identical printed publications to evidence the 

alleged Matterport and Google Systems. Dkt. 249 at 13–17. Further, Redfin’s witnesses claimed 

that the alleged Matterport System is an embodiment of a published patent application and the 

elements of the alleged Google Street View System were disclosed by public documents. Tr. 

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1021:10–21, 1022:4–16, 1033:2–6, 1034:8–24, 1326:20–23, 1479:12–17; DX-66; DX-226.

Finally, none of Redfin’s cases address litigation involving substantively the same prior art 

and the same claim constructions reviewed in IPR. The IPR decisions in Freshub and Finjan did 

not address the same prior art grounds asserted by the defendant at trial, and the defendant in 

Vaporstream did not assert a prior art defense under sections 102/103 at all.4 In Rembrandt, the

PTO proceedings were incomplete and non-final.5 In Interdigital,6 the court and the PTAB decision 

applied different claim constructions.7 The IPR decisions in Finjan, Interdigital, and the remainder 

of the cases were governed by the broadest reasonable interpretation claim construction standard, 

not the Phillips standard applicable in district court.

8

4 Freshub v. Amazon, No. 6:21-CV-00511-ADA, 2021 WL 2587713, at *1 (W.D. Tex. June 13, 

2021); Dkt. 165-12 (Freshub, 6:21-CV-00511-ADA, Dkt. 216 at 56:21–57:16 (W.D. Tex. June 8, 

2021) (“So the way those references were used in the IPR petitions . . . was in combination with 

Calderon as a primary basis for the reference. It was how you modify Calderon. Calderon is no 

longer in the case pursuant to the narrowing that we already agreed to.”)); Finjan v. Sophos, No. 

14-cv-01197-WHO, 2016 WL 4560071 at *14 (N.D. Cal. Aug. 22, 2016 (“[N]one of the [inter 

partes] reviews involved the same prior art at issue [in the district court].”); Vaporstream v. Snap, 

No. 17-cv-220-MLH, 2020 WL 978731, at *7 (C.D. Cal. Feb. 28, 2020). Further, in Freshub, this 

Court stated the decision denying institution is “part of the record of what [the patent office] 

considered,” Freshub, Dkt. 216 at 57:3–4. 

5 Rembrandt Wireless Tech. v. Samsung, No. 13-cv-213-JRG, 2015 WL 627430, at *5 (E.D. Tex. 

Jan. 31, 2015); Rembrandt, Dkt. 233 at 3 (Samsung Reply MIL #11) (Jan. 27, 2015) (“[A]s of 

today, every relevant claim in the [Patents-in-Suit] has either been instituted in an IPR or is subject 

to a pending IPR petition.”).

6 Interdigital Commc’ns v. Nokia, No. 13-10-RGA, 2014 WL 8104167 (D. Del. Sept. 19, 2014). 

7 Dkt. 165-13 (Interdigital Commc’ns v. Nokia, No. 13-10-RGA, Dkt. 356 at 2 (D. Del. Sept. 5, 

2014)). 8 Acantha v. DePuy Orthopaedics, No. 15-C-1257, 2018 WL 2431852, at *3 (E.D. Wis. May 30, 

2018) (“The IPR proceeding is subject to different standards . . . .”); Andover Healthcare v. 3M, 

No. CV 13-843-LPS, 2016 WL 6404111, at *2 (D. Del. Oct. 27, 2016) (“The PTAB’s decision . . 

. based on different legal standards . . . .”); Ziilabs v. Samsung Elecs., No. 2:14-CV-203-JRG-RSP, 

2015 WL 13617214, at *3 (E.D. Tex. Oct. 28, 2015); Rembrandt, 2015 WL 627430, at *5.

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B. The Decisions and Declaration Are Not Unfairly Prejudicial or Confusing.

Rule 403 “is an extraordinary measure because it permits a trial court to exclude 

concededly probative evidence, and thus it should be used sparingly.” United States v. Clark, 578 

F.3d 273, 287 (5th Cir. 2009). “[T]he balance of Rule 403 tilts in favor of admitting, rather than 

excluding, relevant evidence.” United States v. Mizell, 38 F.3d 570 (5th Cir. 1994). Thus, the 

evidence must be viewed in the light most favorable to the proponent, “maximizing its probative 

value and minimizing its prejudicial effect.” Id. Redfin asserts that the Court’s explanation for its 

exclusion of the PTAB Decisions and Declaration justifies its decision. Dkt. 262 at 13–14. Neither 

Redfin nor the Court’s explanation, however, address (1) Redfin’s assertion of substantively the 

same Matterport prior art combination asserted in the IPRs; (2) the Federal Circuit’s mandate that 

a PTO decision “must [be] consider[ed]” when determining whether a defendant has proved 

invalidity; (3) the Court’s instruction to the jury that art considered by the PTO may be weighed 

less heavily; (4) the minimal risk of prejudice because of the lower burden of proof required to 

show invalidity before the PTAB than in the district court; or (5) the ability of the Court to remedy 

any perceived prejudice with a simple instruction to the jury. Dkt. 249 at 9–11. Respectfully, 

without considering these issues, the Court could not correctly determine whether the probative 

value of the IPR evidence was “substantially outweighed” by its prejudicial effect. Fed. R. Evid. 

403.

C. Redfin’s Counsel and Witnesses Opened the Door.

Redfin incorrectly asserts that its witnesses and counsel did not open the door to the 

admission of the PTAB Decisions and Declaration because (1) such evidence would not rebut 

suggestions that the PTAB did not consider Dr. Furukawa’s testimony regarding Google Street 

View; (2) Dr. Furukawa’s PTAB testimony did not discuss whether Google Street View disclosed 

the asserted claims; and (3) the testimony of Dr. Furukawa regarding Google Street View in the 

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 13 of 17
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IPR and the trial were different. Dkt. 262 at 14–16. First, these arguments ignore the Matterport 

prior art combination entirely: (1) Redfin asserted the 2013 3D modeling technology of Matterport 

is an embodiment of Bell436 that renders the Asserted Claims obvious when combined with 

Cowtan; (2) Dr. Furukawa testified before the PTAB that the 2013 “3D modeling technology of 

Petitioner Matterport” is described by Bell436 which renders the Asserted Claims obvious when 

combined with Cowtan, using the same printed publications used by Redfin at trial; (3) Dr. 

Furukawa denied submitting his IPR Declaration to the PTAB on behalf of Matterport; and (4) 

Redfin’s expert claimed that the patent office never had the testimony of Dr. Furukawa. Dkt. 249 

at 12, 16–17. Surefield should have been permitted to use the Decisions and Declaration to 

impeach these witnesses and show that the PTAB had considered substantively the same 

Matterport prior art combination asserted by Redfin. Second, all of Redfin’s arguments are 

factually incorrect: (1) the PTAB Decisions refer to Dr. Furukawa’s Declaration, which includes 

testimony regarding Google Street View and Google Art Project, Dkt. 249 at 13–16; Dkt. 229;

PX-415 ¶ 59, PX-342 at 2; PX343 at 7; PX-344 at 2; PX-345 at 7; (2) Dr. Furukawa’s IPR 

testimony expressly stated that Google Street View and Google Art Project includes the same 

“elements recited in the claims of the Challenged Patents,” Dkt. 229; PX415 ¶ 59; and (3) Dr. 

Furukawa’s trial and IPR testimony regarding Google Street View and Google Art Project is the 

same, Dkt. 249 at 13–14.

D. Exclusion of the Decisions and Declaration Prejudiced Surefield. 

Redfin’s claim that the jury would not have reached a different conclusion if the PTAB 

Decisions and Declaration had been admitted ignores the Court’s charge to the jury, the evidence 

relied upon by Redfin, and the statements of Redfin’s counsel and witnesses. First, the Court 

instructed the jury that art previously considered by the PTO may be weighed less heavily, and the 

failure to disclose the Decisions and Declaration therefore prevented the jury from applying the 

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correct burden of proof. Second, Redfin claims the Decisions and Declaration—which relied upon 

the same Matterport and Google printed publications used by Redfin at trial—would have been 

“duplicative,” but makes no showing that the PTO considered such publications during the 

prosecution of the Asserted Patents. Dkt 249 at 15–17. Third, admission of the Decisions and 

Declaration would have impeached the statements of Redfin’s witnesses and counsel (“This Patent 

Office saw none of those videos you saw. None of them, including Google Street View.” (Tr.

1745:23-25)), causing the jury to assign very little weight, if any, to their statements. Finally, 

admission of the Decisions and Declaration would have shown the jury that the PTAB rejected 

substantively the same Matterport prior art combination asserted by Redfin and had previously 

considered the same testimony regarding Google Street View and Google Art Project that Dr. 

Furukawa provided at trial.

CONCLUSION

For the foregoing reasons, this Court should grant Plaintiff’s Motion for New Trial or to 

Alter or Amend the Judgment.

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 15 of 17
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Dated: October 21, 2022 Respectfully submitted,

/s/ Andrew G. DiNovo

Andrew G. DiNovo

Texas State Bar No. 00790594 

adinovo@dinovoprice.com 

Nicole E. Glauser

Texas State Bar No. 24050694 

nglauser@dinovoprice.com 

Christopher V. Goodpastor 

Texas State Bar No. 00791991 

cgoodpastor@dinovoprice.com 

Adam G. Price

Texas State Bar No. 24027750 

aprice@dinovoprice.com 

Gregory S. Donahue 

Texas State Bar No. 24012539 

gdonahue@dinovoprice.com 

Gabriel R. Gervey

Texas State Bar No. 24072112 

ggervey@dinovoprice.com 

Michael D. French (Pro Hac Vice) 

mfrench@dinovoprice.com 

DINOVO PRICE LLP

7000 N. MoPac Expressway, Suite 350 

Austin, Texas 78731 

Telephone: (512) 539-2626 

Facsimile: (512) 539-2627 

Steven W. Fogg (pro hac vice) 

sfogg@corrcronin.com 

Eric A. Lindberg (pro hac vice) 

elindberg@corrcronin.com 

CORR CRONIN, LLP

1001 Fourth Avenue, Suite 3900 

Seattle, Washington 98154 

Telephone: (206) 625-8600 

Mark P. Walters (pro hac vice)

walters@lowegrahamjones.com

LOWE GRAHAM JONES, PLLC

701 Fifth Avenue, Suite 4800 

Seattle, Washington 98104 

Telephone: (206) 381-3300 

ATTORNEYS FOR PLAINTIFF

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 16 of 17
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CERTIFICATE OF SERVICE

I hereby certify that on October 21, 2022, I electronically filed the foregoing with the Clerk 

of the Court using the CM/ECF system and all counsel of record have been served via email.

 /s/ Andrew G. DiNovo

 Andrew G. DiNovo

Case 6:20-cv-00376-ADA Document 269 Filed 10/21/22 Page 17 of 17