United States District Court, D. Delaware
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Thomas C. Grimm, Esq., Morris, Nichols, Arsht & Tunnell, Wilmington, DE; Richard K. Kirk, Esq., Bayard, P.A., Wilmington, DE; Steven J. Rizzi, Esq. (argued), Foley & Lardner LLP, New York, NY; Akiva M. Cohen, Esq., Foley & Lardner LLP, New York, NY; Victor de Gyarfas, Esq. (argued), Foley & Lardner LLP, Los Angeles, CA; Justin Gray, Esq., Foley & Lardner LLP, San Diego, CA, attorneys for Plaintiff.
Thomas L. Halkowski, Esq. (argued), Fish & Richardson, Wilmington, DE; Kurt L. Glitzenstein, Esq. (argued), Fish & Richardson, Boston, MA; Adam Kessel, Esq., Fish & Richardson, Boston, MA; Whitney Reichel, Esq., Fish & Richardson, Boston, MA; Jack P. Smith III, Esq., Fish & Richardson, Atlanta, GA; Frank E. Scherkenbach, Esq., Fish & Richardson, Boston, MA; attorneys for Defendant.
Richard G. Andrews, U.S. District Judge.
Presently before the Court are Defendant Microsoft's Omnibus Motion for Summary Judgment (D.I. 298) and related briefing (D.I. 299, 365,467), and Plaintiff Robocast, Inc.'s Motion for Summary Judgment of No Unenforceability and No Unclean Hands (D.I. 295) and related briefing (D.I. 296, 360, 410). The Court has heard helpful oral argument on both motions. (D.I. 446).
This is a patent infringement action. Plaintiff Robocast, Inc. has accused Defendant Microsoft Corporation of infringing U.S. Patent No. 7,155,451 ('the '451 patent" ). Microsoft contends that it does not infringe the '451 patent, and that the patent is invalid and unenforceable due to inequitable conduct. Robocast opposes these contentions.
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). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those " that could affect the outcome" of the proceeding, and " a dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460--61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: " (A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ...." Fed.R.Civ.P. 56(c)(1).
When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). A dispute is " genuine" only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247--49; see Matsushita Elec. Indus. Co.,
475 U.S. at 586-87 (" Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no 'genuine issue for trial.'" ). If the non-moving 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., 477 U.S. at 322.
There are four arguments set forth by Microsoft. First, that Microsoft does not directly infringe and that Robocast failed to timely disclose a doctrine of equivalents theory. Second, that Microsoft does not indirectly infringe. Third, that Robocast cannot assert priority to earlier filed applications and cannot show prior invention. Fourth, that Robocast cannot show willful infringement by Microsoft. Robocast sets forth two arguments, that the patent is not unenforceable due to inequitable conduct, nor is it unenforceable due to unclean hands. The arguments will be discussed in turn.
A. Direct Infringement of Video Playlist Functionality
Robocast accuses seven different products of infringement, which can be grouped into two categories: video playlists and changing tiles. Products with video playlist functionality include Bing.com, MSN.com, MSNBC.com, and the Xbox 360 ESPN app. Products with changing tile functionality include Windows 8 Xbox Music Software and Xbox 360 " Video" and " Home" channels. While some of the independent claims are asserted against only some products, claim 1 is illustrative:
A method for displaying on a user's computer, content derived from a plurality of resources in an organized arrangement comprising the steps of:
creating a show structure of nodes, each node identifying a resource from a plurality of accessible resources;
without requiring user input, automatically accessing a plurality of said resources each of said resources identified by each of said nodes; and
displaying a content corresponding to each of said resources automatically in accordance with said show structure, wherein said step of creating further comprises the step of providing an interactively variable duration information, representing the duration within which a corresponding content to said resource is being displayed so as to enable a user to vary said duration.
'451 patent claim 1. Claim 37 is drawn to a " multidimensional show structure of nodes." Claims 22 and 39 require that the " show structure is created in response to said search results received in response to said on-line search."
1. A Reasonable Jury Could Find That " Each" Resource Is Displayed
Microsoft's initial argument is that Robocast has not adduced evidence showing that the video playlist functionalities display, access, or retrieve " each" resource or content of a show structure. Essentially, the argument is that because the claims require " displaying a content corresponding to each of said resources," see claims 1 and 37, the claim cannot be infringed until every video is played. Robocast responds that implicit in this argument is the assumption that the entire playlist is a " show structure of nodes." Robocast contends that a portion of the playlist meets the " show structure of nodes" limitation, and therefore as long as that portion of the
playlist is displayed, then the limitation is met. Alternatively, Robocast argues that the " each of said resources" in the " displaying" step refers not to each of said resources present in the show structure, but to " a plurality of resources" accessed in the previous step.
Microsoft's non-infringement theory would result in a preposterous conclusion. Following Microsoft's logic, infringement could only be found after the last video in the show structure finished playing, or at least when the last video started playing. If the show structure were infinite, then there could never be infringement. The claimed methods do not require that every resource be " displayed."  A reasonable jury could find that where there is more than one node, a show structure is present.
Microsoft also argues that infringement only occurs when the user views each video, and that Robocast cannot meet this evidentiary burden. Yet the claims do not require " viewing," they require " displaying." As long as the accused functionality can play more than one node, then infringement could be found. Whether someone views the content is not required by the claims and therefore irrelevant.
2. A Reasonable Jury Could Find That The Durational Requirement Is Met
During claim construction, the Court construed " show structure of nodes" as " a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes." The Court further required that the " show structure of nodes specifies the duration of any display." (D.I. 246 at 2). Additionally, the Court construed " node" as " an identifier of a resource that includes an address to the resource and the duration for which the resource's content is to be presented by default." (D.I. 246 at 16). As an initial matter, Robocast is correct in asserting that the Court did not intend to include a separate durational requirement in the term " show structure of nodes" separate from the construction of " node." The node itself sets the duration, and the show structure is made up of multiple nodes and a pathway through those nodes.
Microsoft argues that because the show structure of nodes " specifies the duration of any display," the show structure of nodes must have a causal relationship on the duration parameter. Specifically, because the video clips themselves contain duration parameters, the show structure cannot specify the duration, because the person who made the video specified the duration. However, at some point the video player must know when to move on to the next video. There must be some sort of durational information which alerts it to queue up the next video and start playing. While this durational information is determined by the creator of the content, it is nevertheless durational information. The Court cannot say as a matter of law that the accused video playlist functionality does not contain the required durational information.
Microsoft has asked that the Court construe its construction of " specify," presumably to require its proposed causal relationship. The Court has no obligation to further construe its constructions, and ...