United States District Court, D. Delaware
[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
Thomas C. Grimm, Esq., Morris, Nichols, Arsht & Tunnell, Wilmington, DE; Richard D. 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.
Richard L. Horwitz, Esq., Potter Anderson & Corroon, LLP, Wilmington, DE; Harrison J. Frahn, IV, Esq. (argued), Simpson Thacher & Bartlett LLP, Palo Alto, CA; Jason M. Bussey, Esq. (argued), Simpson Thacher & Bartlett LLP, Palo Alto, CA, attorneys for Defendant.
Richard G Andrews, U.S. District Judge.
Presently before the Court are Defendant Apple, Inc.'s Motion for Summary Judgment of Non-Infringement and Invalidity (D.I. 302) and related briefing (D.I. 303, 367, 408), Defendant Apple, Inc.'s Motion for Summary Judgment Regarding Damages, Injunctive Relief, and Indirect Infringement (D.I. 297) and related briefing (D.I. 298, 372, 406), and Plaintiff Robocast, Inc.'s Motion for Summary Judgment of No Unenforceability (D.I. 292) and related briefing (D.I. 293, 370, 405). The Court has heard helpful oral argument. (D.I. 434, 435).
This is a patent infringement action. Plaintiff Robocast, Inc. has accused Defendant Apple, Inc. of infringing U.S. Patent No. 7,155,451 ('the '451 patent" ). Apple contends that it does not infringe the '451 patent and that the patent is invalid and unenforceable due to anticipation, obviousness, and 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.
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), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. The trier of fact must then compare the properly construed claims with the accused infringing product. See id. 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 Akamai Techs., Inc. v. Limelight Networks, Inc., 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) (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 at least one limitation 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 patent claim is invalid as anticipated under 35 U.S.C. § 102 if " within the four corners of a single, prior art document. . .every element of the claimed invention [is described], either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation." Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009) (alterations in original). As with infringement, the court construes the claims and compares them against the prior art. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). Anticipation " may be decided on summary judgment if the record reveals no genuine dispute of material fact."
Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1349 (Fed. Cir. 2010).
A patent claim is invalid as obvious under 35 U.S.C. § 103 " if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains." 35 U.S.C. § 103; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). " 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 nonobviousness of the subject matter is determined." KSR, 550 U.S. at 406 (internal citation and quotation marks omitted).
A court is required to consider secondary considerations, or objective indicia of nonobviousness, 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, 1078-79 (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). Where " the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." KSR, 550 U.S. at 427.
There are a multitude of arguments presented in the briefs. They will be discussed in turn according to the motion in which they were raised.
A. Non-Infringement and Invalidity
Robocast asserts that Apple infringes independent claims 10, 22, and 37, and dependent claim 38. Claim 37, asserted against all accused Apple products, 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 multidimensional show structure of nodes, each node identifying a resource from a plurality of accessible resources;
without requiring user input, accessing each of said resources identified by each of said nodes wherein at least two of said nodes are spanned concurrently;
automatically displaying a content corresponding to each of said resources in accordance with said show structure, wherein contents of said at least two nodes are displayed during an overlapping time period.
('451 patent claim 37). Claim 38, dependent on claim 37, adds the limitation, " providing a duration information, representing the duration within which a corresponding content to each of said resources is being displayed." ('451 patent claim 38). Claim 10 involves dragging and dropping icons from one section of the user's terminal to another. Claim 22 involves delivering content to a user by performing an internet search.
There are five accused functionalities present in three Apple products. Robocast accuses the Showcase and Flowcase functionality present in iTunes, the Parade and Flickr screensaver present in Apple TV, and the Top Sites functionality present in Safari. Claims 37 and 38 are asserted against all accused functionalities. Claim 22 is only asserted against the Flickr screensaver. Claim 10 is only asserted against Top Sites.
Showcase and Flowcase are animated banners present in the iTunes store. Showcase appeared in versions 9 and 10 of iTunes, and was replaced by Flowcase in version 11. These banners display artwork related to content available for purchase in the iTunes store. The iTunes software receives a set of images from Apple and then displays them in a fixed-speed animation.
Apple TV is a set-top box that displays content on a TV. Its screensaver displays images from various sources, usually nature photographs included with the Apple TV, but may also display images retrieved from the Flickr photo sharing service. The other accused functionality of Apple TV is an animation of cover art, referred to as the Parade, which appears on the left side of the screen when navigating Apple TV's menus.
The final accused functionality, Top Sites, is a feature of the Safari browser which displays thumbnails of a user's often visited web sites. Top Sites allows the user to navigate to one of the web sites by clicking on the thumbnail.
Apple sets forth three non-infringement arguments and four invalidity arguments. As to infringement, Apple first contends that the accused functions do not include a " node" with duration. Second, Apple argues that Robocast has not put forth evidence that the accused functions span two nodes concurrently. Third, Apple argues that claims 10 and 22 include plain meaning limitations that are not present in Apple's products. As to invalidity, Apple argues that U.S. Patent No. 5,659,793 (" the Escobar reference" ) anticipates claim 10 as well as claims 37 and 38. Next, Apple argues that the article " Scripted Documents: A Hypermedia Path Mechanism," by Polle T. Zellweger (" the Zellweger reference," D.I. 309 Ex. 12), anticipates claims 37 and 38. Lastly, Apple argues that claim 22 is obvious in light of U.S. Patent No. 6,119,135 (" the Helfman reference" ) and the Braverman reference (Alan Braverman, CCI Slide Show 1.0 (Sept. 22, 1994), at http://archive.ncsa.illinois.edu/Cyberia/stats/sshow-src/README-sshow, D.I. 309 Ex. 15).
1. A Reasonable Jury Could Find That The Accused Functions Include " Nodes"
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. 239 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 ...