United States District Court, D. Delaware
ViaTech Tech. Inc., Plaintiff,
Microsoft Corp., Defendant.
Memorandum Opinion James D. Taylor, Jr., Esq., Allison J.
McCowan, Esq., Saul Ewing LLP, Wilmington, Del.; Michael J.
Lennon, Esq., Sheila Mortazavi, Esq. (argued), Georg C.
Reitboeck, Esq. (argued), Michael S. Turner, Esq. (argued),
Andrews Kurth Kenyon LLP, New York, N.Y., attorneys for
Martina Tyreus Hufnal, Esq., Santosh V. Coutinho, Esq.,
Christopher A. Winter, Esq., Nitika Gupta, Esq., Fish &
Richardson P.C., Wilmington, Del.; Frank E. Scherkenbach,
Esq. (argued), Kurt L. Glitzenstein, Esq., Steven R. Katz,
Esq. (argued), Chet D. Campbell, Esq., Whitney A. Reichel,
Esq. (argued), Fish & Richardson P.C., Boston, Mass.,
attorneys for Defendant.
ANDREWS, U.S. DISTRICT JUDGE:
ViaTech has sued Defendant Microsoft for infringement of U.S.
Patent No. 6, 920, 567. The '567 Patent is directed to
enforcing software licenses. The accused products include
several versions of Windows and Office software.
Plaintiff has asserted fifteen claims, including one
independent apparatus claim (claim 1), nine dependent
apparatus claims (claims 2-7 and 13-15), two independent
method claims (claims 28 and 31), and three dependent method
claims (claims 29, 30, and 32). Defendant has responded with
invalidity defenses and counterclaims. (D.I. 61).
filed two motions for summary judgment: one for summary
judgment of infringement (D.I. 226) and the other for summary
judgment of validity (D.I. 232). Defendant filed three
motions for summary judgment: one for summary judgment of
invalidity (D.I. 209), one for summary judgment of no willful
infringement and no pre-suit damages (D.I. 214), and one for
summary judgment of non-infringement (D.I. 218). Also pending
are three Daubert motions (D.I. 212, 221, 224).
Trial is scheduled for June 19, 2017. (D.I. 63).
following reasons, I am granting Defendant's motion (D.I.
218) for summary judgment of non-infringement and denying
Plaintiffs motion (D.I. 226) for summary judgment of
infringement. I am also denying in part and dismissing in
part Defendant's motion (D.I. 209) for summary judgment
of invalidity and denying Plaintiffs motion (D.I. 232) for
summary judgment of validity.
"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). Material facts are those
"that could affect the outcome" of the proceeding.
Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986)). "[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." Id. 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 Corp. v.
Catrett, 477 U.S.317, 323 (1986).
burden then shifts to the non-movant to demonstrate the
existence of a genuine issue for trial. Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
586-87 (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.
determining whether a genuine issue of material fact exists,
the court must view the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Wishkin v. Potter, 476 F.3d
180, 184 (3d Cir. 2007). 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.
granting summary judgment for Defendant because Plaintiff has
failed to produce sufficient evidence to create a genuine
dispute over whether the accused products include a
"dynamic license database" that "resides in
the digital content file." This issue is appropriate for
disposition on summary judgment because the parties'
experts, Dr. Benjamin Goldberg for Plaintiff and Dr. Stephen
Wicker for Defendant, agree on the attributes of the accused
products. (See Goldberg Reply at ¶ 10; D.I. 261 at
The only disagreement is whether those attributes fall within
the scope of the asserted claims.
the asserted claims requires a "digital content
file" that includes a "dynamic license
database." Claim 1 is representative as to this
limitation. It reads:
1. A digital content file including a license
control mechanism for controlling the licensed use of digital
a digital content, and
an embedded file access control mechanism embedded in the
digital content file, including
a license functions mechanism embedded in the digital
content file and including
a license monitor and control mechanism communicating with a
dynamic license database and monitoring use of the
digital content by a user to determine whether a use of the
digital content by a user complies with the license defined
in the dynamic license database, and
a license control utility providing communications between a
user system and an external system to communicate license
definition information between the user system and the
external system, including
a graphical user interface associated with the license
control utility to provide communication between a user and
user accessible functions of the license functions mechanism,
and the dynamic license database wherein
the dynamic license database is associated with the
digital content file for storing information
controlling operations of the file access control mechanism
and license information controlling licensed use of the
Patent, col. 40, 1. 65-col. 41, 1. 25 (emphasis added)). The
other independent claims read in relevant part: "A
method for distributing a digital content file...
comprising... preparing a licensable digital content file,
containing... an embedded file access control mechanism,
including... a license control utility... including, ... the
dynamic license database..." (id. at col. 47,
1. 43-col. 48, 1. 29), and "A method for providing a
license for use of digital content in a digital content file
residing in a user system wherein the digital content file
includes... a dynamic license database...."
(id. at col. 49, 1. 26-col. 50, 1. 30).
Markman opinion, I adopted two relevant
constructions. First, I construed "dynamic license
database" to be "a database that resides in the
digital content file and that is programmed to accept
modifiable licenses." (D.I. 139 at 10). Second, I
construed "file" as having its plain and ordinary
meaning which I set out as "a collection of data that is
treated as a unit by a file system." (Id. at
literal infringement, Plaintiff must prove by a preponderance
of the evidence that "every limitation recited in the
claim is found in the accused device." Kahn v. Gen.
Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998).
"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). I am granting summary
judgment for Defendant on literal infringement because
Plaintiff cannot prove that Defendant's products include
a "dynamic license database" that "resides in
the digital content file."
Summary of the Accused Products
argues that the "digital content file" is the
Windows software itself as it exists pre-installation on an
optical disk or in a disk image file. (D.I. 229 at 8- 9; D.I.
268 at 8). In that form, Plaintiff argues, it
"can be mounted by the file system on a user's
computer in order to install the software." (D.I. 229 at
8-9; D.I. 268 at 8).
further argues that the "dynamic license database"
is a combination of several files including the trusted
store, the token store, and the cache store. (Goldberg Report
at¶ 65). These components are controlled by the
Software Protection Platform ("SPP") (Goldberg
Report at ¶ 67-72; Goldberg Reply at ¶ 14), and
they "store data defining the terms and conditions of a
license...." (Goldberg Report at ¶ 67). The trusted
store, which is a file named data.dat, stores the product
keys. (Id.; Goldberg Tr. at 236). The token store, a
file named tokens.dat, stores the license files. (Goldberg
Report at ¶ 67; Goldberg Tr. at 235-36). The cache store
"is a memory location that stores the results of the
license evaluation." (Wicker Report at p.
trusted store, token store, and cache store "are used by
the Windows operating system software, but are not themselves
executable code." (Id.). Instead, the trusted
store and token store are data files, while ...