United States District Court, D. Delaware
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Paul E. Crawford, Esquire and Thatcher A. Rahmeier, Esquire of Novak Druce Connolly Bove Quigg LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Jeffrey K. Sherwood, Esquire, Frank C. Cimino, Jr., Esquire, Charles W. Saber, Esquire, Robert G. Gingher, Esquire, and Steven T. Skelley, Esquire of Dickstein Shapiro LLP.
Jeffrey L. Moyer, Esquire, Kelly E. Farnan, Esquire, and Jason J. Rawnsley, Esquire of Richards, Layton, & Finger, P.A., Wilmington, Delaware. Counsel for Defendant. Of Robert T. Haslam, Esquire, Anupam Sharma, Esquire, Thomas E. Garten, Esquire, Charlin C. Lu, Esquire, Hyun Byun, Esquire, Patrick N. Flynn, Esquire, Jessica R. Baldwin, Esquire, and Eric A. Caligiuri, Esquire of Covington & Burling LLP.
ROBINSON, District Judge.
On December 16, 2011, plaintiff Cradle IP, LLC (" Cradle" ) filed suit in this district against defendant Texas Instruments, Inc. (" TI" ) alleging infringement of three of its patents: U.S. Patent Nos. 6,874,049 (" the '049 patent" ), 6,708,259 (the " 259 patent" ), and 6,647,450 (the " 450 patent" ). (D.I. 1) TI answered the complaint and asserted a counterclaim for declaratory judgment of non-infringement and invalidity of the '049, '259, and '450 patents on
February 6, 2012. (D.I. 10) Cradle answered TI's counterclaims on March 1, 2012. (D.I. 15)
Presently before the court are TI's motions for summary judgment of non-infringement and invalidity of the patents-in-suit. (D.I. 217; D.I. 218) TI also filed motions to exclude testimony by Cradle's experts, Dr. James Olivier and Dr. David Albonesi. (D.I. 224; D.I. 227) Additionally, Cradle filed motions to strike the declaration and testimony of Michael Shay, as well as new expert opinions. (D.I. 271; D.I. 309) TI also filed motions to strike inadmissible evidence and untimely expert opinions. (D.I. 295; D.I. 315) The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).
Cradle is a limited liability corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Mountain View, California. (D.I. 1 at ¶ 6) Cradle is a privately-held, majority-owned subsidiary of Cradle Technologies. ( Id. at ¶ 8) Cradle Technologies recently assigned the patents-in-suit to Cradle. ( Id. ) TI is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Dallas, Texas. ( Id. at ¶ 7) It makes, manufactures, and sells the accused products. ( Id. at ¶ ¶ 13, 16, 19)
II. STANDARDS OF REVIEW
A. Summary Judgment
" 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 support the assertion 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" ).
B. Claim Construction
Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed. Cir. 2005) (en banc). Claim construction focuses on intrinsic evidence - the claims, specification and prosecution history - because intrinsic evidence is " the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claims must be interpreted from the perspective of one of ordinary skill in the relevant art at the time of the invention. Phillips, 415 F.3d at 1313.
Claim construction starts with the claims, id. at 1312, and remains centered on the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). In the absence of an express intent to impart different meaning to claim terms, the terms are presumed to have their ordinary meaning. Id. Claims, however, must be read in view of the specification and prosecution history. Indeed, the specification is often " the single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315.
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). A two-step analysis is employed in making an infringement determination. See Markman, 52 F.3d at 976. 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), overruled on other grounds by 692 F.3d 1301 (Fed. Cir. 2012). " 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). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations omitted).
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 noninfringement 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 is no genuine issue as to whether the accused product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
" [A] method claim is not directly infringed by the sale of an apparatus even though it is capable of performing only the patented method. The sale of the apparatus is not a sale of the method. A method claim is directly infringed only by one practicing the patented method." Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993). Therefore, " an accused infringer must perform all the steps of the claimed method, either personally or through another acting under his direction or control." Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012).
With respect to apparatus claims, " to infringe a claim that recites capability and not actual operation, an accused device 'need only be capable of operating in the described mode.'" Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (citing Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 832 (Fed. Cir. 1991). However, if an apparatus claim requires " software [to] be configured in a particular way to infringe," infringement does not occur merely because the apparatus could be used in an infringing fashion. Finjan, 626 F.3d at 1204-05.
For there to be infringement under the doctrine of equivalents, the accused product or process must embody every limitation of a claim, either literally or by an equivalent. Warner-Jenkinson, 520 U.S. at 41. An element is equivalent if the differences between the element and the claim limitation are " insubstantial." Zelinski v. Brunswick Corp., 185 F.3d 1311, 1316 (Fed. Cir. 1999). One test used to determine " insubstantiality" is whether the element performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097, 1950 Dec. Comm'r Pat. 597 (1950). This test is commonly referred to as the " function-way-result" test. The mere showing that an accused device is equivalent overall to the claimed invention is insufficient to establish infringement
under the doctrine of equivalents. The patent owner has the burden of proving infringement under the doctrine of equivalents and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations omitted).
Under 35 U.S.C. § 102(b), " [a] person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States." The Federal Circuit has stated that " [t]here must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention." Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). In determining whether a patented invention is explicitly anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described. Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). The prosecution history and the prior art may be consulted if needed to impart clarity or to avoid ambiguity in ascertaining whether the invention is novel or was previously known in the art. Id. The prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984).
A prior art reference also may anticipate without explicitly disclosing a feature of the claimed invention if that missing characteristic is inherently present in the single anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The Federal Circuit has explained that an inherent limitation is one that is necessarily present and not one that may be established by probabilities or possibilities. Id. That is, " [t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient." Id. The Federal Circuit also has observed that " [i]nherency operates to anticipate entire inventions as well as single limitations within an invention." Schering Corp. v. Geneva Pharms. Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003). Moreover, recognition of an inherent limitation by a person of ordinary skill in the art before the critical date is not required to establish inherent anticipation. Id. at 1377.
An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. Key Pharms. v. Hercon Labs Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed claims against the prior art. Id. A finding of anticipation will invalidate the patent. Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed. Cir. 1998).
" A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103(a). Obviousness is a question of law, which depends on underlying factual inquiries.
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims
at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or non-obviousness of the subject matter is determined.
" [A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a combination of references has the burden to show that a person of ordinary skill in the relevant field had a reason to combine the elements in the manner claimed. Id. at 418-19. The Supreme Court has emphasized the need for courts to value " common sense" over " rigid preventative rules" in determining whether a motivation to combine existed. Id. at 419-20. " [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. In addition to showing that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, a defendant must also demonstrate that " such a person would have had a reasonable expectation of success in doing so." PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
A combination of prior art elements may have been " obvious to try" where there existed " a design need or market pressure to solve a problem and there [were] a finite number of identified, predictable solutions" to it, and the pursuit of the " known options within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated success. Id. at 421. In this circumstance, " the fact that a combination was obvious to try might show that it was obvious under § 103." Id. Federal Circuit precedent has also established that " [s]tructural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds," and that particular types of structural similarity can give rise to a case of prima facie obviousness. Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1312 (Fed. Cir. 2011) (citing In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995)).
A court is required to consider secondary considerations, or objective indicia of non-obviousness, before reaching an obviousness determination, as a " check against hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012). " Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
" Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged infringer seeking to invalidate a patent on obviousness grounds must establish its obviousness by facts supported by clear and convincing evidence." Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction with this burden, the Federal Circuit has explained that,
[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government
agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
As explained above, the purpose of the summary judgment exercise is to determine whether there are genuine issues of material fact that require resolution by a jury. Issues of fact are raised by conflicting evidence, not by attorney argument or conclusory expert opinions. Evidence appropriate for review on summary judgment is that which has been vetted through discovery. In order to make its determinations on summary judgment, the court actually peruses the record to confirm that: (1) the parties have cited to evidence in support of their arguments; and (2) the evidence demonstrates the proposition for which it was cited. With the above in mind, the court addresses the summary judgment record compiled by the parties at bar, in order to address the various motions to strike and to exclude filed by the parties in connection with said record.
With respect to the record in general, the parties could not have been less helpful to the court. In connection with their eight motions and 24 briefs, the parties filed something like 42 declarations and volumes of appendices referencing or containing exhibits. Often the parties (and their experts) cited to documents by their Bates-stamp numbers, with no indicia of their location in the record. Even when the parties were kind enough to locate the document in question by an exhibit number, it was often difficult to discern which of the volumes containing identical exhibit numbers was actually referenced. To add insult to injury, the parties organized the appendices so that the exhibits were not necessarily included in numerical order because, e.g., one exhibit had to be sealed. In sum, it was a rare occurrence that a brief cited evidence by an exhibit number that was clearly identified by the appendix in which it resided.
Which takes us to the various pending motions. Although not the first-filed motions, the court would be remiss if it did not recount the tremendous waste of time spent by the parties (and the court) in connection with the expert reports relating to infringement. As reflected in the docket, Cradle's expert (Dr. Albonesi) filed his initial report on infringement, followed by TI's rebuttal report on non-infringement filed by its expert (Dr. Hassoun). Cradle argues that TI revealed for the first time its non-infringement theories through the rebuttal report, causing Dr. Albonesi to file a supplemental report. Because Dr. Albonesi arguably expanded his response beyond that which was vetted through discovery, Dr. Hassoun also filed a supplemental expert report in response to Dr. Albonesi's supplemental report. Bad enough. Not content to rely on this series of reports, both parties submitted expert declarations (complete with appendices) in support of their respective infringement positions on summary judgment. All of
these efforts to presumably identify and corroborate their arguments ultimately led to the counter-motions to strike certain portions of the supplemental reports and/or declarations as containing " new" opinions.
The court grants TI's motion to strike certain paragraphs of the Albonesi declaration. (D.I. 295, 315) As far as the court can tell, the declaration (D.I. 285) is longer than his two expert reports combined (D.I. 245, exs. 4 and 23), and primarily cites to itself as authority. Because Dr. Albonesi's initial and supplemental reports are part of the record, there should be no prejudice to plaintiff, to wit, only new theories will truly be stricken. The court also grants TI's motion as it relates to the " Declaration of Third-Party Motorola Solutions, Inc." as said " evidence" was not vetted through discovery. (D.I. 295)
The court, however, denies the remaining motions that relate to the supplemental expert reports, including the motion related to Dr. Hassoun's declaration that relies on his supplemental report. (D.I. 309, 315) In this regard, the court has neither the time nor the resources - nor even the record - to recreate the parties' tortuous litigation strategies insofar as determining whether plaintiff had cause to file a supplemental report in the first instance and whether it ventured into new theories which demanded a response by defendant in the second instance. Because the court relies on the remaining reports only to identify the evidence relied upon by the experts, which evidence has been vetted through discovery, the prejudice to the parties, if any, is minimal and can be addressed through focused evidentiary disputes.
The final motions to be addressed are those related to the parties' invalidity experts. Defendant has filed a motion to exclude the testimony of Dr. Olivier on secondary considerations of non-obviousness based on his alleged failure to establish a nexus between the secondary considerations and any of the claimed inventions. (D.I. 224) The court denies this motion, finding that Dr. Olivier's opinion rests upon a reliable foundation and that defendant's challenge goes to the weight of the evidence.
Plaintiff has filed a motion to strike the declaration and testimony of Michael Shay as containing disclosures that were never vetted through discovery. (D.I. 271) The court grants this motion. If, indeed, Mr. Shay's declaration is consistent with the patent, the NS486SXF Data Sheet, and the NS486SXF chip, then his declaration is redundant, as Dr. Hassoun has described and relied on all three prior art references. To the extent Mr. Shay had ...