United States District Court, D. Delaware
before the Court are Defendants' Motion for Summary
Judgment of No Direct Infringement (D.I. 298) and related
briefing (D.I. 298, 350, 365) and Defendants' Motion for
Summary Judgment of No Indirect Infringement (D.I. 301) and
related briefing (D.I. 301, 351, 368). For the reasons that
follow, IT IS HEREBY ORDERED THAT
Defendants' Motions for Summary Judgment (D.I. 298, 301)
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). 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. Scott v.
Harris, 550 U.S. 372, 380 (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 v. Liberty Lobby, 477 U.S. 242,
move for summary judgment of no direct infringement based on
the sale or importation of the accused products. (D.I. 298 at
7). Defendants' argument revolves around their
interpretation of the phrase "configured to, "
which appears in many of the apparatus and method claims of
the asserted patents, as requiring modification, assembly,
and programming by the end user in order to infringe.
(Id.). According to Defendants, it is not enough to
sell a product that is capable of infringing. (Id.
at 19). Rather, Defendants would have me require that the
accused products be plugged in, connected to a data network,
and otherwise set up as described in the claims before
finding infringement. (Id.). This I decline to do.
cite numerous Federal Circuit opinions they claim support
their position. (Id. at 16, 19). Defendants
misunderstand the Federal Circuit's holdings in these
cases. For example, in Nazomi, the Federal Circuit
found that the accused hardware did not infringe because
separate software, which was not installed on the device
prior to sale, was required in order to meet the claim
limitations. Nazomi Commc 'ns, Inc. v. Nokia
Corp., 739 F.3d 1339, 1345-46 (Fed. Cir. 2014). The
court found that installing the separate software was a
modification of the accused product. Id. at 1345.
The Federal Circuit has repeatedly held that,
even absent its use (or performance)... an apparatus claim
directed to a computer that is claimed in functional terms is
nonetheless infringed so long as the product is designed in
such a way as to enable a user of that [product] to utilize
the function . . . without having to modify [the product].
Silicon Graphics, Inc. v. ATI Technologies, Inc.,
607 F.3d 784, 794 (Fed. Cir. 2010). It seems clear to me that
the steps Defendants suggest the end user must take in order
to "configure" the accused products to infringe do
not amount to "modifying" the products. If the
accused products ship with firmware pre-installed that
enables the end user to utilize the functions described in
the asserted claims, then that is all that is necessary for
the sale or importation of the product to constitute
further argue that the accused player devices cannot infringe
as sold or imported because in order for the devices to be
capable of performing the accused functionality, a controller
app must be downloaded and installed on the end user's
cell phone. (D.I. 298 at 17). Defendants contend that this
necessarily means that neither the accused device nor the app
"alone is 'capable' of performing the claimed
functionality without modification." (Id. at
18). Again, I disagree. As I already noted, the devices ship
with firmware pre-installed, such that the device is capable
of meeting all limitations of the asserted claims without
modification. The same is true of the app that Plaintiff
accuses of infringing the asserted claims of the controller
patent. Therefore, it seems clear that, at a
minimum, there are disputed issues of material fact on the
issue of direct infringement. Defendants' motion is
also move for summary judgment of no indirect infringement,
arguing that Plaintiff has not identified any instances of
direct infringement by third parties. (D.I. 301 at 11).
Defendants suggest that the accused devices are capable of
substantial non-infringing uses. (Id.). As an
initial matter, I reject Defendants' argument to the
extent that it relies on its contention that the accused
products cannot directly infringe as sold. Furthermore,
Plaintiff points to substantial evidence in the record that
third parties actually use the claimed functionality. (D.I.
351 at 13).
further argue that, at least as to the seven patents added in
Plaintiffs Third Amended Complaint, Plaintiff has not
presented evidence of affirmative acts taken by Defendants to
encourage infringement of the patents. (D.I. 301 at 12).
Defendants argue that Plaintiffs evidence of induced
infringement pre-dates the filing date of this suit and,
therefore, cannot serve as evidence of induced infringement
of patents issued after the suit was filed. (Id. at
13). Again, having rejected Defendants' "configured
to" argument, I reject Defendants' argument here to
the extent that it depends on the devices actually being set
up, connected to a data network, or otherwise
"configured" by an end user. Furthermore, Plaintiff
has cited to sufficient evidence in the record post-dating
Defendants' knowledge of the patents to at least raise a
genuine issue of material fact as to whether Defendants
encourage third parties to use the accused products in such a
way as to use the functionality claimed in the asserted
patents. (D.I. 351 at 19-20).
Defendants argue that Plaintiff cannot establish contributory
infringement because Plaintiff has failed to prove that the
devices have no substantial non-infringing uses. (D.I. 301 at
16). Plaintiff replies that it need only show that the
accused component, not the entire device, is not capable of
substantial non-infringing uses. (D.I. 351 at 22). Plaintiff
further argues that because the apparatus and computer
readable medium claims "cover functional capability
rather than requiring actual performance of the recited
function to infringe, " the existence of non-infringing
uses is irrelevant. (Id. at 23). I again reject
Defendants' arguments to the extent that they rely on the
"configured" theory, which I have already rejected.
I also think that Plaintiff has at least raised a genuine
issue of material fact as to whether the accused components
of Defendants' products have substantial non-infringing
uses. Defendants' motion is denied.
reasons given above, I deny Defendants' Motion for
Summary Judgment of No Direct Infringement and
Defendants' Motion for Summary Judgment of No Indirect
 As Plaintiff notes in its opposition
brief, it has not made any direct infringement allegations
based on sale or importation as to the controller patents.
(D.I. 350 at 22). Rather, Plaintiffs theory of infringement
for these asserted claims is that a download and installation