United States District Court, D. Delaware
[Copyrighted Material Omitted]
Michael P. Kelly, Esquire, and Daniel M. Silver, Esquire of McCarter & English, LLP, Wilmington, Delaware, Counsel for Plaintiff. Of Mark D. Giarratana, Esquire, and Eric E. Grondahl, Esquire of McCarter & English, LLP.
Richard L. Horwitz, Esquire, and David E. Moore, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware, Counsel for Defendant Apple Inc. Of Timothy S. Teter, Esquire, and Lowell D. Mead, Esquire of Cooley LLP.
SUE L. ROBINSON, District Judge.
Plaintiff Golden Bridge Technology, Inc. (" GBT" ) filed this action against Apple, Inc. (" Apple" ), three AT& T entities,  and Motorola Mobility LLC, alleging infringement of U.S. Patent Nos. 6,574,267 C1 (" the '267 patent" ), as reexamined, and 7,359,427 (" the '427 patent" ) (collectively, " the patents-in-suit" ). (D.I. 1)  GBT has asserted the same patents-in-suit against other defendants in a separate case before this court, captioned Golden Bridge Technology, Inc. v. Amazon.com Inc. (Civ. No. 11-165, D.I. 1), 937 F.Supp.2d 490. The parties stayed both cases to pursue mediation, which resulted in the dismissal of several defendants. Following a status conference held by the court, the parties jointly stipulated to consolidate claim construction proceedings and to stay all claims other than those asserted against Apple. (D.I. 178; Civ. No. 11-165, D.I. 244) The parties also agreed upon, and the court approved, a procedure by which all defendants (other than Apple) could choose whether to participate in the consolidated claim construction. The court has construed the limitations " preamble," " access preamble," and " discrete power level" in a consolidated claim construction memorandum opinion. The court has also resolved, in a separate memorandum order, various motions by GBT and Apple to exclude or strike expert testimony.
Before the court are several summary judgment motions: Apple's motion for summary judgment of invalidity (D.I. 218); GBT's motion for partial summary judgment of infringement (D.I. 223); and Apple's motion for summary judgment of non-infringement (D.I. 233). The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338.
A. The Parties
GBT is a New Jersey corporation with its principal place of business in Long Branch, New Jersey. (D.I. 1 at ¶ 1) It was founded in 1995 to develop wireless telecommunication solutions, including those employing wideband code division multiple access (" W-CDMA" ) technology. (D.I. 229 at JA 1848-49) In early 1998, GBT became involved in efforts to develop a third-generation (" 3G" ) wireless standard by regularly participating on the TR 46.1 committee organized through the Telecommunications Industry Association. (D.I. 225 at A73)
Apple Inc. is a California corporation with its principal place of business in Cupertino, California. (D.I. 1 at ¶ 5) It makes, offers to sell, and sells the accused products -- the Apple iPhone 3G, iPhone
3GS, iPhone 4, iPhone 4S, iPad (original), iPad 2, and (new) iPad (released March 2012) (collectively, the " accused products" ). ( Id. at ¶ ¶ 88, 90, 102, 104; D.I. 107 at ¶ 60)
B. Technology Overview
A code division multiple access (" CDMA" ) wireless cellular network consists of a base station and multiple mobile stations, such as cellular phones. To establish communication between a mobile station and a base station in a CDMA system, the mobile station transmits an access preamble over a random access channel (" RACH" ). Rather than dedicating a single communication channel to each mobile station, the CDMA system allows multiple signals to be sent over the same RACH. A mobile station trying to connect with a base station must transmit an access preamble over the RACH at a power level high enough to be detected by the base station. However, if the power is too high, it can cause interference to other mobile stations sharing the same communication channel.
C. The Patents-in-Suit
The patents-in-suit are assigned to GBT and list the same two inventors -- Dr. Emmanuel Kanterakis and Dr. Kourosh Parsa. The '267 patent, titled " RACH Ramp-Up Acknowledgement," originally issued on June 3, 2003 with twenty-nine claims (" the original '267 patent" ). Following ex parte reexamination, the United States Patent and Trademark Office (" PTO" ) issued a reexamination certificate on December 15, 2009, confirming the patentability of claims 1-12 and 27-29; cancelling claims 13-26; and adding new claims 30-60. The '427 patent, also titled " RACH Ramp-Up Acknowledgement," is a continuation of the '267 patent and issued on April 15, 2008.
The parties agree that the patents-in-suit share the same relevant written description and figures and that the claim limitations have the same meaning throughout.  ( See D.I. 193; D.I. 208 at 4; D.I. 210 at 2 n.1) GBT asserts infringement of claims 42-44, 50-52, and 58-60 of the '267 patent and claims 9, 10, 14-22, 24, and 26-28 of the '427 patent. (D.I. 1)
The invention of the patents-in-suit relates to the RACH process and teaches a " ramp-up" method to " provide random channel access with reliable high data throughput and low delay on CDMA systems." ('267 patent, col. 1:19-21) This ramp-up method aims to reduce the risk of interference by ensuring the lowest detectable power level is used while providing a fast communication link. A mobile station seeking to establish a connection with a base station will transmit preambles at increasing power levels, separated by pilot signals, until the preamble is detected by a base station. The pilot signals can be set to zero power level such that they become intermittent waiting periods between preamble transmissions. Once a base station detects a preamble, it sends the mobile station an acknowledgment, after which the mobile station ceases transmitting preambles and begins transmitting data or voice communications. If no acknowledgement is received, the mobile station continues transmitting intermittent preambles, each at a higher discrete power level, until either a maximum number of preambles have been transmitted or a predetermined time has elapsed.
" The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be -- or, alternatively, is -- genuinely disputed must demonstrate such, either by citing to " particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials," or by " showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then " come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The court will " draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).
To defeat a motion for summary judgment, the non-moving party must " do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment " must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue" ) (internal quotation marks omitted). Although the " mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment," a factual dispute is genuine where " the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). " If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated " against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" ).
GBT moves for partial summary judgment of infringement of claims 42-44, 50-52, and 58-60 of the '267 patent and claims 14-22, 24, 26, and 28 of the '427 patent (collectively, " the claims-at-issue" ).  GBT alleges direct infringement of the device claims -- claims 44, 52, and 60 of the '267 patent and claims 26 and 28 of the '427 patent. It alleges both direct and indirect infringement of the method claims -- claims 42, 43, 50, 51, 58, and 59 of the '267 patent and claims 14-22 and 24 of the '427 patent. Apple moves for summary judgment of non-infringement of all asserted claims.
With respect to the '267 patent, Apple has conceded that the accused devices or their methods of operation read on all limitations of the asserted claims, except those that claim " spreading an access preamble" (or a " spread access preamble" ), an " access preamble" (or a " preamble" ), and a " discrete power level." ( See D.I. 225 at A613-31) With respect to the '427 patent claims at issue for summary judgment infringement, Apple has conceded that the accused devices or their methods of operation read on all limitations, except those that claim an " access-burst signal," " discrete power levels," and " spreading the selected preamble code."  Each " access-burst signal" limitation includes an " access preamble," which is the only aspect of the " access-burst signal" limitation disputed for infringement. Therefore, the court's infringement analysis on summary judgment will focus on the claim limitations reciting spreading a preamble/access preamble (or spread access preamble) and discrete power level.
GBT contends that the accused devices necessarily infringe the claims-at-issue because they establish communication with a base station in compliance with the 3G Partnership Project (" 3GPP" ) system, which allegedly requires the invention of the patents-in-suit. (D.I. 224 at 5) GBT asserts that various testing it has conducted on the accused devices confirm infringement. ( Id. at 5-7)
A patent is infringed when a person " without authority makes, uses or sells any patented invention, within the United States . . . during the term of the patent." 35 U.S.C. § 271(a). To prove direct infringement, the patentee must establish, by a preponderance of the evidence, that one or more claims of the patent read on the accused device literally or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001). A two-step analysis is employed in making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then compare the properly construed claims with the accused infringing product. See Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
" Direct infringement requires a party to perform each and every step or element of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007). " If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, " [o]ne may infringe an independent claim and not infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotations
omitted). A product that does not literally infringe a patent claim may still infringe under the doctrine of equivalents if the differences between an individual limitation of the claimed invention and an element of the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997).
To establish indirect infringement, a patent owner has available two theories: active inducement of infringement and contributory infringement. See 35 U.S.C. § 271(b) & (c). To establish active inducement of infringement, a patent owner must show that an accused infringer " knew or should have known [its] actions would induce actual infringements." DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006). To establish contributory infringement, a patent owner must show that an accused infringer sells " a component of a patented machine . . . knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use." Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir. 2004) (quoting 35 U.S.C. § 271(c)). Liability under either theory, however, depends on the patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if one or more limitations of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) (" Summary judgment of non-infringement is . . . appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial." ). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there ...