United States District Court, D. Delaware
Stamatios Stamoulis, Esquire and Richard C. Weinblatt, Esquire of Stamoulis & Weinblatt LLC, Wilmington, Delaware. Counsel for Plaintiff. Of Anthony G. Beasley, Esquire, David Swenson, Esquire, and Peter Thomas, Esquire of Farney Daniels PC.
Steven, J. Balick, Esquire, Lauren E. Maguire, Esquire and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, Delaware. Counsel for Defendant Amazon.com, Inc. Of Counsel for Defendant Amazon.com, Inc.: Abby M. Mollen, Esquire, Adam K. Mortara, Esquire, Mark S. Ouweleen, Esquire, and Sharon R. Desh, Esquire of Bartlit Beck Herman Pelnchar & Scott LLP.
Philip A. Rovner, Esquire and Jonathan A. Choa, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Defendant Barnes & Noble, Inc. Of Counsel for Defendant Barns & Noble, Inc.: Ali R. Sharifahmadian, Esquire, James S. Blackburn, Esquire, John E. Nilsson, Esquire, Matthew M. Wolf, Esquire, and Seth I. Heller, Esquire of Arnold & Porter LLP.
Sue L. Robinson, United States District Judge.
On May 24, 2013, plaintiff Cloud Satchel (" plaintiff" ) instituted suit against defendant Amazon.com, Inc. (" Amazon" ) and defendant Barnes & Noble, Inc. (" Barnes & Noble" ) (collectively, " defendants" ), alleging infringement of U.S. Patent Nos. 5,862,321 (" the '321 patent" ) and 6,144,997 (" the '997 patent" ). (D.I. 1) On July 29, 2013, Amazon answered and asserted the
affirmative defenses of non-infringement, invalidity, constitutional limitation of damages, and waiver, laches and/or estoppel. (D.I. 10) On the same date, Barnes & Noble answered and asserted the affirmative defenses of failure to state a claim, invalidity, non-infringement, waiver, acquiescence and/or consent, laches, estoppel, unclean hands, statutory bar to damages, no injunctive relief, mitigation of damages, and lack of intent. (D.I. 8) Barnes & Noble also asserted counterclaims for non-infringement and invalidity. ( Id.)
Although the parties have submitted competing claim construction briefs, the court has not yet issued a decision on claim construction. The defendants sought and obtained leave to file a joint motion for summary judgment of invalidity pursuant to 35 U.S.C. § 101. (D.I. 61) The joint motion for summary judgment of invalidity is presently pending before the court. (D.I. 82) The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).
A. The Parties
Plaintiff is a limited liability company organized under the laws of the State of Delaware with its principal place of business in Wilmington, Delaware. Amazon is a corporation organized and existing under the laws of the State of
Delaware with its principal place of business in Seattle, Washington. Amazon is the world's leading online retailer and pioneered the eReader, Kindle® .
Barnes & Noble is a corporation organized and existing under the laws of the State of Delaware with its principal place of business in New York, New York. Barnes & Noble is the nation's largest retail bookseller and a leading retailer of content, digital media and educational products. In 2009, it launched the NOOK® line of eReaders and tablets that allow users to buy and read eBooks and other digital content.
B. Technology Overview
The '321 patent, titled " System and Method For Accessing And Distributing Electronic Documents," was filed on June 21, 1995 and issued on January 19, 1999. The '997 patent, titled " System and Method For Accessing And Distributing Electronic Documents," was filed on October 28, 1998 and issued on November 7, 2000. The patents share a specification.
The asserted patents acknowledge that the state of the art at the time of filing encompassed storing electronic documents on handheld computers, " e.g. the Apple® Newton," and transferring electronic documents from one portable computer to another. ('321 patent, col. 2:22-24) However, the patents describe various deficiencies with the current technology, including " very slow" transfer of documents between machines and difficulty storing " large numbers of electronic documents" on portable computers. ( Id. at col. 2:22-35)
The patents are directed to systems, devices, and methods for enabling the transmission and storage of document references or " tokens," each of which is associated with an electronic document stored
in a database. This enables mobile users to access all of their electronic documents without being limited by the memory available on a mobile device. ( Id. at col. 3:36-37) The electronic document references, which identify electronic documents stored in a database, can be passed back and forth between the central database and the portable device, or between the portable device and other devices. ( Id. at col. 3:56-59) A device can use the electronic document reference to request delivery of the full electronic document from the database. ( Id. at col. 3:40-43, 4:57-58, 9:10-18)
III. 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, 415 U.S. at 587 (internal quotation marks ...