United States District Court, D. Delaware
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Brian Farnan, Esquire of Farnan, LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of John M. Desmarais, Esquire, Alan S. Kellman, Esquire, Justin P.D. Wilcox, Esquire, and John C. Spaccarotella, Esquire of Desmarais LLP.
Jack B. Blumenfeld, Esquire and Julia Heaney, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendants. Of Nicholas M. Cannella, Esquire and Michael P. Sandonato, Esquire of Fitzpatrick, Cella, Harper & Scinto.
Sue L. Robinson, District Judge.
On September 9, 2011, plaintiffs Intellectual Ventures I, LLC and Intellectual Ventures II, LLC (collectively " IV" ) filed suit in this district against defendants Canon Inc., Canon U.S.A., Inc. (collectively " Canon" ), Olympus Corporation, Olympus Corporation of the Americas, Olympus America Inc., and Olympus Imaging America Inc. (collectively " Olympus" ) alleging infringement of nine patents: U.S. Patent Nos. 5,754,348 (" the '348 patent" ), 6,121,960 (" the '960 patent" ), 6,221,686 (" the '686 patent" ), 6,023,081 (" the '081 patent" ), 6,979,587 (" the '587 patent" ), 5,844,264 (" the '264 patent" ), 6,181,836 (" the '836 patent" ), 6,412,953 (" the '953 patent), and 7,733,368 (" the '368 patent" ). (D.I. 1) All claims and counterclaims asserted between IV and Olympus were dismissed with prejudice on December 11, 2012. (D.I. 78) IV voluntarily withdrew its
claims as to two of the patents (D.I. 81), and filed a second amended complaint against Canon on January 7, 2013 adding U.S. Patent No. 7,365,298 (" the '298 patent" ). (D.I. 89) Six patents (" the patents-in-suit" ) remain asserted in the present case.
IV I and II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Bellevue, Washington. (D.I. 1 at ¶ ¶ 1-2) IV I owns the '348 patent. ( Id. at ¶ ¶ 15) IV II owns the '081, '960, '686, '587, and '298 patents. ( Id. at ¶ ¶ 19, 21, 25, 29; D.I. 89 at ¶ 21) Canon Inc. is a corporation organized and existing under the laws of Japan, with its principal place of business in Tokyo, Japan. ( Id. at ¶ 3) Canon U.S.A., Inc. is a corporation organized and existing under the laws of New York, with its principal place of business in Lake Success, New York. (Id. at ¶ 4) It makes, manufactures, and/or sells the accused products. ( Id. at ¶ 19)
Presently before the court are IV's motion for summary judgment of infringement (D.I. 163); Canon's motion for summary judgment of non-infringement (D.I. 168); IV's motion for summary judgment of no obviousness (D.I. 163); and Canon's motion for summary judgment of invalidity (D.I. 167). Additionally, Canon has filed a Daubert motion to exclude certain expert testimony of Dr. Martin Afromowitz and Dr. Dan Schonfeld. (D.I. 217) IV has filed motions to exclude testimony of Canon's experts on obviousness (D.I. 219) and of Canon's expert Dr. Fossum concerning Canon's testing of sample parts (D.I. 221). The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).
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" ).
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, 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. The '348 Patent
The '348 patent, titled " Method for Context-Preserving Magnification of Digital Image Regions," was filed on May 14, 1996 and issued on May 19, 1998. The '348 patent is directed to a method for digital image magnification in a graphical user interface that allows simultaneous viewing of the magnified image and its unmagnified context. ('348 patent, abstract) It addresses the problem faced by a user who " experiences difficulty discerning small details and would like to view a portion of the image in a magnified format." ( Id. at col. 1:12-14) Asserted claims 1-4 of the '348 patent are directed to magnifying a selected region of a digital image in a graphical user interface, and superimposing the magnified image window- a " floating plane region" - over the selected region of the original image to preserve the context of the selected region. Claim 1 is reproduced below.
A method of digital image magnification in a graphical user interface, the method comprising: selecting for magnification a selected region of an original image in the graphical user interface; and superimposing on the original image a floating plane region in the graphical user interface containing a magnified image of the selected region, wherein the floating plane region has an area larger than an area of the selected region and smaller than an area of the original image, such that the selected region of the original image is magnified and viewed while
preserving the context of the selected region.
( Id. at col. 5:16-26)
IV alleges that Canon's products, which include certain combinations of zoom features and focus modes, infringe independent claim 1 and dependent claims 2-4 of the '348 patent. The accused cameras include (1) AF-Point Zoom in Center Autofocus (" AF" ) mode, (2) AF-Point Zoom in Face Detect AF mode, or (3) MF-Point Zoom in Manual Focus (" MF" ) mode. (D.I. 184, ex. 107 ¶ ¶ 44-45) AF-Point Zoom is a feature that, in certain circumstances, will magnify a portion of the displayed image appearing in the AF frame when the shutter button is depressed halfway. (D.I. 183, ex. 75 at CAN27949; D.I. 184, ex. 113 at ¶ 51) The MF-Point Zoom feature is similar to the AF-Point Zoom feature, but it operates in the MF mode, and can in certain circumstances, magnify a portion of an image in the AF frame. (D.I. 183, ex. 71 at CAN19303; D.I. 184, ex. 113 at ¶ ¶ 13-14)
Canon offers argument under its proposed construction of the limitation " floating plane." As the court did not adopt Canon's proposed construction, instead construing the limitation as " a window over a digital image that contains a magnified image of a region of the digital image," there exists a genuine issue of material fact as to whether the accused products meet this limitation. The parties then focus their arguments on how the selected region is identified by the zoom features in the limitation, " selecting for magnification a selected region of an original image in the graphical user interface." Under the court's construction of this limitation, " choosing which part of the image on the screen to magnify," there exists a genuine issue of material fact as to whether the zoom features satisfy this limitation. Therefore, Canon's motion for summary judgment of non-infringement is denied.
Canon asserts that claims 1-4 are invalid as anticipated by the Japanese Publication No. 4-142661, titled " Information Processing Apparatus," (" Sano" ) published on May 15, 1992 (D.I. 173, ex. 25), and/or the United States Patent No. 5,818,455, titled " Method and Apparatus for Operating on the Model Data Structure of an Image to Produce Human Perceptible Output Using a Viewing Operation Region Having Explicit Multiple Regions," (" Stone" ) filed on April 26, 1995 and issued on October 6, 1998. (D.I. 173, ex. 26)
The preamble of claim 1 of the '348 patent reads " [a] method of digital image magnification in a graphical user interface . . . ." ('348 patent, col. 5:16-17) (emphasis added) The parties dispute whether the term " digital image magnification" limits claim 1 of the '348 patent. During prosecution of the '348 patent application, applicants distinguished claim 1 from the prior art based on the preamble. Both parties cite to Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002), for the principle that " clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention." Id. at 808-09.
In the present case, the examiner rejected claims 1 and 3 under 35 U.S.C. § 102(b) because " claims 1 and 3 clearly structurally read on either of the [eight] references cited." (D.I. 172, ex. 11 at IVCANON200) Applicant amended claim 1 to add the limitation " in the graphical user interface" to two steps in the body of the claim. ( Id. at IVCANON210-14) The applicant argued that " none of the references cited by the examiner disclose a method of digital image magnification in a graphical user interface." ( Id. at IVCANON212) In distinguishing Brill, a reference which " discloses a magnifying marker for a [physical] game board ... as used in lotto games such as bingo," the applicant emphasized that " claim 1 is directed to a method of digital image magnification, and includes, for example, 'superimposing on the original image a floating plane region in the graphical user interface.'" ( Id. at IVCANON212-13) (emphasis in original) Contrary to Canon's argument, the court concludes that the preamble is limiting because the applicant emphasized both " digital image magnification" and " in the graphical user interface" in distinguishing the invention from the prior art.
The parties' experts dispute the meaning of " digital image." Dr. Feiner opines that " a POSA reading the '348 patent would understand the claimed method to apply to the magnification of any digital image data, regardless of how it is stored or represented in memory." (D.I. 176, ex. 68 at ¶ 115) (emphasis in original) In contrast, Dr. Schonfeld opines that " the plain and ordinary meaning of the claim term 'digital image magnification' is magnification of a discrete, multi-dimensional representation of visual information.'" (D.I. 190, ex. 130 at ¶ 97)
a. The Sano reference
Sano discloses a display system, which enlarges and displays a part of an image displayed on a monitor. (D.I. 173, ex. 25 at 2) More specifically, it discloses an information processing apparatus used to display " a whole page of a document," and a " virtual loupe," which may then be used to " enlarge and display" a part of such document. ( Id. at 4)
Canon's expert, Dr. Feiner, opines that " Sano discloses superimposing on the original image a floating plane region containing a magnified image of the selected region, as shown in [f]igure 2," which figure shows an enlargement of a portion of a document. (D.I. 176, ex. 68 at ¶ 79) Canon offers attorney argument to criticize Dr. Schonfeld's opinion that " [t]he Sano reference does not disclose '[a] method of digital image magnification' because the alleged 'magnification' is performed on documents that include characters." ( See D.I. 190, ex. 130 at ¶ 327) At deposition, Dr. Schonfeld testified that bit map images would " generally" be a digital image. (D.I. 175, ex. 59 at 73:9-13) The identified expert disagreement represents a genuine issue of material fact, therefore, Canon's motion for summary judgment of invalidity is denied in this regard.
b. The Stone reference
Stone discloses a method of operating a processor control machine using a viewing operation region to magnify a selected region of an original image. (D.I. 173, ex. 26, abstract, 4:56-5:29) The parties' experts each look to the Stone specification to support their respective definitions of " digital image magnification." (See D.I. 190, ex. 130 at ¶ 99; D.I. 176, ex. 68 at ...