United States District Court, D. Delaware
REPORT AND RECOMMENDATION
CHRISTOPHER J. BURKE, Magistrate Judge.
On January 17, 2014, Defendants Microsoft Corporation, Electronic Arts, Inc. ("EA"), and Ubisoft, Inc. ("Ubisoft") (collectively, "Defendants") filed a Motion for Partial Summary Judgment of Noninfringement and No Willful Infringement ("Motion for Summary Judgment of Noninfringement" or "Motion") as to United States Patent Nos. 6, 308, 565 (the '565 patent"), 6, 765, 726 (the "726 patent"), 6, 876, 496 (the "1496 patent"), 7, 359, 121 (the "'121 patent"), 7, 791, 808 (the "808 patent"), and 6, 430, 997 (the '997 patent"). (D.I. 332; D.I. 333 at 1-4) On March 27, 2015, the Court issued a Report and Recommendation regarding that Motion, recommending that the District Court grant summary judgment of non-infringement in Defendants' favor as to 14 of 15 asserted claims in the case. (D.I. 409) Remaining to be resolved is Defendant Ubisoft's argument that summary judgment should be granted to it on the ground that it does not infringe the remaining asserted claim in the case: claim 11 of the '997 patent. (D.I. 333 at 37-38; D.I. 410) The instant Report and Recommendation addresses that issue, as well as Ubisoft's assertion that summary judgment should be granted in its favor on the ground that any infringement of claim 11 of the '997 patent was not willful as a matter of law. (D.I. 333 at 38-40) The Court recommends that the Motion be DENIED as to non-infringement of claim 11 of the '997 patent by Ubisoft, but that it be GRANTED as to no willful infringement regarding claim 11.
The Court incorporates by reference the factual background set forth in its prior Report and Recommendation. (D.I. 409 at 2-4) To the extent further facts of record are relevant to the instant Report and Recommendation, they are otherwise set forth herein.
II. STANDARD OF REVIEW
In reviewing the Motion as it relates to these remaining issues, the Court utilizes the familiar summary judgment standards set forth in Federal Rule of Civil Procedure 56 and in the jurisprudence of the Supreme Court of the United States. Those standards were described in the Court's prior Report and Recommendation, ( id. at 4-6), and the Court applies them again to the issues raised below.
A. Non-infringement of Claim 11 of the '997 Patent
1. Legal Standard Regarding Infringement
The standard for patent infringement is set forth in 35 U.S.C. § 271, which states that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." An infringement analysis is performed on a claim-by-claim basis. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001). In order to prove infringement, "the patentee must show that an accused product embodies all limitations of the claim either literally or by the doctrine of equivalents." Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013).
To literally infringe the claim, an accused device must embody each limitation of the claim; the absence of any limitation defeats literal infringement. Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1297 (Fed. Cir. 2005). To prove infringement under the doctrine of equivalents, "a patentee must provide particularized testimony and linking argument with respect to the function, way, result' test." Cephalon, 707 F.3d at 1340 (noting that the essential inquiry in any such determination is whether "the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention") (internal quotation marks and citation omitted). The function-way-result test "asks whether an element of an accused product performs substantially the same function in substantially the same way to obtain the same result as an element of the patented invention." Id. (internal quotation marks and citation omitted).
Ubisoft's non-infringement argument here focuses on the claim term "training sequence" used in claims 5 and 11 of the '997 patent. (D.I. 333 at 37-38) The term appears in independent claim 5 (to which claim 11 ...