Philip A. Rovner, Esquire and Jonathan A. Choa, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for British Telecommunications plc. Of Counsel: Daniel A. Boehnen, Esquire and Grantland G. Drutchas, Esquire of McDonnell Boehnen Hulbert & Berghoff LLP.
Beth Moskow-Schnoll, Esquire of Ballard Spahr LLP, Wilmington, Delaware. Counsel for Plaintiffs Comcast Cable Communications and Comcast Corporation. Of Counsel: Brian L. Ferrall, Esquire, Leo L. Lam, Esquire, Benedict Y. Hur, Esquire, Ryan K. Wong, Esquire, Nicholas D. Marais, Esquire and Theresa H. Nguyen, Esquire of Keker & Van Nest LLP.
Jack Blumenfeld, Esquire, Rodger Smith II, Esquire, Mary B. Graham, Esquire and Stephen Kraftschik, Esquire of Morris, Nichols, Arsht & Tunnell, LLP, Wilmington, Delaware. Counsel for Defendants Coxcom, Inc. and Cox Communications, Inc. Of Counsel: John M. DiMatteo, Esquire, Eugene L. Chang, Esquire and Marc E. Montgomery, Esquire of Willkie Farr & Gallagher LLP, and Mitchell G. Stockwell, Esquire and Vanessa M. Blake, Esquire of Kilpatrick Townsend & Stockton LLP.
ROBINSON, District Judge
On August 5, 2010, British Telecommunications pic ("BT") filed a complaint against Coxcom, Inc. ("Coxcom"), Cox Communications, Inc. ("Cox Communications") (collectively, "Cox"), and Cable One, Inc. ("Cable One"),  alleging infringement of U.S. Patent Nos. 5, 142, 532 ("the '532 patent"), 5, 526, 350 ("the '350 patent"), 6, 538, 989 ("the '989 patent"), and 6, 665, 264 ("the '264 patent"). (D.I. 1) On September 6, 2011, BT amended its complaint against Cox and Cable One, expanding the infringement allegations to include U.S. Patent Nos. 5, 790, 643 ("the '643 patent"), 5, 923, 247 ("the '247 patent"), 6, 205, 216 ("the '216 patent"), and 6, 473, 742 ("the 742 patent"). (D.I. 66) Two weeks later, Comcast Cable Communications ("Comcast Cable") and Comcast Corporation (collectively, "Comcast") filed a complaint alleging invalidity and noninfringement of those same eight patents. (Civ. No. 11-843, D.I. 1)
BT is a corporation organized and existing under the laws of the United Kingdom, having a principal place of business in London, England. (D.I. 1 ¶ 1) Coxcom is a Delaware corporation with a principal place of business in Atlanta, Georgia. (Id. at ¶ 2) Cox Communications is a Delaware corporation with a principal place of business in Atlanta, Georgia. (Id. at ¶ 3) Comcast Cable is a limited liability company organized and existing under the laws of the State of Delaware, with a principal place of business in Philadelphia, Pennsylvania. (Civ. No. 11-843, D.I. 1 ¶ 1) Comcast Corporation is a corporation organized and existing under the laws of the Commonwealth of Pennsylvania, with a principal place of business in Philadelphia, Pennsylvania. (Id. at ¶ 2).
Presently before the court are several motions: BT's motion to exclude the declaration of Jeffrey Finkelstein (D.I. 379); Cox's motion to strike portions of the declarations of Dr. Almeroth, Dr. Lyon, and Mr. Griffin (D.I. 402); BT's motion to exclude the testimony of Regis Bates (D.I. 310); Cox's motion to exclude the testimony of BT's infringement experts (D.I. 311); Cox's motion for summary judgment of noninfringement of all asserted claims (D.I. 345); and competing motions regarding the validity of the patents-in-suit (D.I. 320; D.I. 351). The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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., 415 U.S. 574, 586 n.10 (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, 415 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 (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., 411 U.S. 242, 247-48 (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, 411 U.S. 317, 322 (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 (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.
"In construing a means-pius-function claim, the district court must first determine the claimed function and then identify the corresponding structure in the written description of the patent that performs that function." Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)).
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 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, LP., 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 (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).
The definiteness requirement is rooted in § 112, ¶ 2, which provides that "the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." "A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Personalized Media Comm., LLC v. Int'l Trade Com'n, 161 F.3d 696, 705 (Fed. Cir. 1998).
Determining whether a claim is definite requires an analysis of whether one skilled in the art would understand the bounds of the claim when read in light of the specification ... If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.
Id. (citing Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)).
Under 35 U.S.C. § 112 ¶ 6, "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure ... in support thereof, and such claim shall be construed to cover the corresponding structure ... described in the specification and equivalents thereof." This allows "the use of means expressions in patent claims without requiring the patentee to recite in the claims all possible structures that could be used as means in the claimed apparatus." Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (citing O.I. Corp. v. TekmarCo., 115 F.3d 1576, 1583 (Fed. Cir. 1997)). The quid pro quo is the "duty [of the patentee] to clearly link or associate structure to the claimed function." Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001) (citations omitted). "The price that must be paid for use of that convenience is limitation of the claim to the means specified in the written description and equivalents thereof." O.I. Corp., 115 F.3d at 1583.
Whether the written description adequately sets forth the structure corresponding to the claimed function must be considered from the perspective of a person skilled in the art. Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1376 (Fed. Cir. 2010) (citing Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365-66 (Fed. Cir. 2003)). "The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure." Id. (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008). Ultimately, if no corresponding structure is disclosed in the specification, the claim term must be construed as indefinite. See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) ("If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.").
Under 35 U.S.C. § 102(a), "a person shall be entitled to a patent unless the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the application for patent."
A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
A single prior art reference may expressly anticipate a claim where the reference explicitly discloses each and every claim limitation. However, the prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be expressly anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984).
A single prior art reference also may anticipate a claim where one of ordinary skill in the art would have understood each and every claim limitation to have been disclosed inherently in the reference. Continental Can Co. USA Inc. 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, "the 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 "inherency 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. Hereon Lab. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed claims against the prior art to determine whether the prior art discloses the claimed invention. Id.
Even if the prior art discloses each and every limitation of set forth in a claim, such disclosure will not suffice under 25 U.S.C. § 102 if it is not enabling. In re Borst, 345 F.2d 851, 855 (C.C.P.A. 1965). "Long ago our predecessor court recognized that a non-enabled disclosure cannot be anticipatory (because it is not truly prior art) if that disclosure fails to 'enable one of skill in the art to reduce the disclosed invention to practice.'" Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003)(citations omitted). The patentee bears the burden to show that the prior art reference is not enabled and, therefore, disqualified as relevant prior art for an anticipation inquiry. Id. at 1355.
III. EXCLUDING EXPERT DECLARATIONS
Before reaching the parties' substantive issues on summary judgment, the court must discern what the record is. The parties' respective experts submitted multiple reports. BT submitted Dr. Lyon's opening expert report regarding Cox's infringement of the '532 and '989 patents, on March 8, 2013. (D.I. 313, ex. 4) On March 11, 2013, BT submitted Dr. Almeroth's opening expert report regarding Cox's infringement of the '350 and '247 patents, and Mr. Griffin's opening expert report regarding Cox's infringement of the 742 patent. (D.I. 313, ex. 1, 3) On May 2 and 17, 2013, Cox's expert, Mr. Wechselberger, submitted reports regarding non-infringement and invalidity. (D.I. 300, ex. 21, 23) On May 17, 2013, Dr. Lyon, Dr. Almeroth, and Dr. Griffin submitted reply reports. (D.I. 402 at 2) On April 25, 2013, Cox's expert, Dr. Evans, submitted a rebuttal expert report. (D.I. 348, ex. 2)
BT now moves to exclude the declaration of Jeffrey Finkelstein, filed contemporaneously with Cox's motion for non-infringement. (D.I. 379) Cox argues that Mr. Finkelstein's opinions are factual and based on his knowledge of the Cox network through his employment at Cox and supported by evidence. (D.I. 434 at 3) Mr. Finkelstein is a Cox employee, responsible for Network Architecture and Design, who testified as a corporate fact witness in this case. (D.I. 348, ex. 1 at ¶¶ 1-3) Mr. Finkelstein's declaration is devoid of references to evidence or to expert reports. As Cox did not identify Mr. Finkelstein as an expert witness, nor were his opinions vetted through discovery, the court grants BT's motion to exclude.
Cox moves to strike portions of the declarations of Dr. Almeroth (D.I. 391), Dr. Lyon (D.I. 392), Mr. Griffin (D.I. 393) submitted by BT in support of its briefing on non-infringement. (D.I. 390) BT argues that the opinions expressed in the declarations are supported by previously disclosed evidence and the expert reports. (D.I. 441, ex.1) If this were so, BT should have referenced those documents. The court grants Cox's motion to strike.
For each of the five patents-in-suit, the court will discuss the background technology, any necessary claim construction on summary judgment, and any infringement and invalidity issues on summary judgment.
A. The 742 Patent
The 742 patent, "Reception Apparatus for Authenticated Access to Coded Broadcast Signals, " issued October 29, 2002. (D.I. 66, ex. H) The 742 patent describes controlling a user's access to permitted transmissions. The specification describes comparing incoming station identifiers to a "list of permitted and/or prohibited services." (3:2-12). The parties explain that, in the context of cable television, the CableCARD is a device which controls which services or channels a customer may receive. If the CableCARD allows receipt of a channel, it then decrypts the encrypted transmissions associated with the service and routes those transmissions to the host (or set-top box) for display. If a particular service contains high value content, the CableCARD encrypts the data a second time before sending it to the host. The host receives the data and encryption key and decrypts the programs in order to display them. (D.I. 292 at 34-35; D.I. 277 at 9-11). Independent claim 1 recites:
Apparatus for receiving broadcast transmissions, which transmissions contain identifiers identifying the origin of the transmission, the apparatus including:
a store for storing data identifying transmissions which the apparatus is or is not permitted to receive;
means for loading the store with such data; and means for comparing received identifiers with the contents of the store and to enable or disable reception in dependence on the result of the comparison;
wherein the apparatus has a fixed part and a removable part;
wherein the removable part contains a further store containing the said data;
the loading means being operable to transfer the contents of the further store into the first-mentioned store; and
wherein each of the fixed and removable parts has means storing a verification number (X) and the loading means is operable to perform the transfer only after a verification step indicating that the verification numbers tally.
1. Claim Limitations
a. "[M]eans for loading the store with such data"
The court construes the function of this limitation as "loading the store with such data, " where the "such data" is "the data identifying permitted and/or forbidden services." The structure is construed as "using the module's programmed microprocessor, in response to a request from the host, to transfer such data from the module to the host via their respective input-output ports, and using the host's microprocessor to store such data in the host's read-write memory." This construction finds support in the specification, which references a "service ...