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ViaTech Technologies Inc. v. Microsoft Corp.

United States District Court, D. Delaware

June 12, 2017

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 Plaintiff.

          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.



         Plaintiff 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[1] and Office[2] 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).

         Plaintiff 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).

         For the 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.

         1. 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). 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).

         The 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. 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 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.

         II. Infringement

         I am 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 5).[3] The only disagreement is whether those attributes fall within the scope of the asserted claims.

         Each of 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 content, comprising:
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 digital content.

         ('567 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).

         In my 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 12).

         A. Literal Infringement

         For 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."

         i. Summary of the Accused Products

         Plaintiff argues that the "digital content file" is the Windows software[4] 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).[5] 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).

         Plaintiff 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).[6] 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. 48).[7]

         The 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 ...

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