Thomas C. Grimm, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE; Matthew B. Lehr, Esq. (argued), DAVIS POLK & WARDWELL LLP, Menlo Park, CA. Attorneys for Plaintiff Riverbed Technology, Inc.
Bindu A. Palapura, Esq., POTTER ANDERSON & CORROON LLP, Wilmington, DE; Michael J. Sacksteder, Esq. (argued), FENWICK & WEST LLP, San Francisco, CA; Bryan A. Kohm, Esq. (argued), FENWICK & WEST LLP, San Francisco, CA. Attorneys for Defendant Silver Peak Systems, Inc.
RICHARD G. ANDREWS, District Judge.
Riverbed Technology, Inc. ("Riverbed") filed suit against Silver Peak Systems, Inc. ("Silver Peak") on June 1, 2011, alleging infringement of four U.S. patents (D.I. 1), and Riverbed subsequently amended its complaint on December 19, 2011 to assert infringement of a fifth patent. (D.I. 38). In November 2012, Riverbed dismissed two of the patents (D.I. 114) and in September 2013 the Court stayed two of Riverbed's other patents pending a potential appeal of an inter partes re-examination that rejected all of the relevant independent claims. (D.I. 170). Riverbed has not requested that the Court continue its case regarding the fifth patent, so all of Riverbed's claims are currently stayed. ( Id. ).
On August 17, 2011, Silver Peak counterclaimed and asserted that Riverbed infringed three patents: U.S. Patent Nos. 7, 945, 736 (the "'736 patent"), 7, 948, 921 (the "'921 patent"), and 7, 630, 295 (collectively, the "Silver Peak patents"). (D.I. 13). The Court construed the disputed terms in the Silver Peak patents on July 23, 2013. (D.I. 158). Silver Peak and Riverbed served their expert reports addressing Riverbed's alleged infringement of the Silver Peak patents on February 23, 2013 and April 1, 2013, respectively.
A series of summary judgment motions followed the exchange of expert reports. The parties filed cross-motions for summary judgment of infringement and non-infringement of the '736 patent. (D.I. 171 & 188). The support and opposition papers were combined, and the briefing is complete. (D.I. 172, 189, 207 & 213). Silver Peak filed a separate motion seeking summary judgment of infringement of the '921 patent on October 11, 2013. (D.I. 184). The briefing is complete. (D.I. 185, 209 & 216). On December 12, 2013, the Court heard oral argument on the summary judgment motions. (D.I. 225). For the reasons that follow, the Court will grant partial summary judgment for Silver Peak on its motion for summary judgment of infringement of the '921 patent, and the Court will deny Silver Peak and Riverbed's cross-motions for summary judgment of infringement and non-infringement of the '736 patent.
II. LEGAL STANDARD
"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). A grant of partial summary judgment is also available if the circumstances warrant such relief. See FED. R. CIV. P. 56(g) ("If the court does not grant all the relief requested by the motion, it may enter an order stating any material fact-including an item of damages or other relief-that is not genuinely in dispute and treating the fact as established in the case."). A "material fact" is one that "could affect the outcome" of the proceeding. See Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011). 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 (1986). 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).
If the moving party is able to demonstrate an absence of disputed material facts, the nonmoving party then "must come forward with specific facts showing that there is a genuine issue for trial."' Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986); see also Matsushita, 475 U.S. at 587. The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment. Anderson, 477 U.S. at 249. Rather, the nonmoving party must present enough evidence to enable a jury to reasonably find for it on that issue. Id. If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
A. The '921 Patent
Silver Peak contends that Riverbed's RiOS software versions 5.0.0 and higher practice every limitation of claim 1 of the '921 patent. In support of its position, Silver Peak relies primarily on an expert report and a declaration from its expert, Dr. Spring. Dr. Spring analyzes each of the ten claim elements and identifies the portions of code in the RiOS software that practice each of the limitations. Silver Peak also claims that parts of the deposition testimony of Riverbed's expert, Dr. Kubiatowicz, confirm that Riverbed's RiOS software infringes claim 1.
Riverbed raises three main arguments in response. First, Riverbed contends that Silver Peak failed to carry its burden because "Dr. Spring fails to identify any specific, released Riverbed product that he alleges actually performs the method claimed in claim 1." (D.I. 209 at 6). Second, Riverbed asserts that Dr. Spring's analysis is incomplete and falls short of establishing infringement. Finally, Riverbed claims that Silver Peak mischaracterizes the testimony of Riverbed's expert regarding the sixth and tenth limitations of claim 1. These arguments will be addressed in order.
1. Silver Peak Does Not Specifically Identify the Infringing Products
Riverbed asserts that Silver Peak failed to carry its burden of proof to show that a Riverbed product meets every limitation of claim 1 of the '921 patent because Dr. Spring did not "tie his analysis to any specific Riverbed product." ( Id. ). Dr. Spring "generically identified Riverbed's Steel head appliances and Virtual Steel heads running RiOS software version 5.0.0 or higher as allegedly infringing the '921 Patent, " but never identified any such device by name, number, or SKU. ( Id. at 6-7). Without identifying the product itself, "Silver Peak has proffered no ...