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Cox Communications Inc. v. Sprint Communications Co. LP

United States District Court, D. Delaware

October 20, 2017

COX COMMUNICATIONS INC., et al., Plaintiffs,
v.
SPRINT COMMUNICATIONS COMPANY L.P., et al., Defendants.

          David A. Bilson, Esquire, and John C. Phillips, Jr., Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: David S. Bloch, Esquire, Michael L. Brody, Esquire, Krishnan Padmanabhan, Esquire, Pejman F. Sharifi, Esquire, Jaime Simon, Esquire, and James Winn, Esquire of Winston & Strawn LLP.

          Richard K. Herrmann, Esquire, and Mary Matterer, Morris James LLP, Wilmington, Delaware. Counsel for Defendants. Of Counsel: Jordan T. Bergsten, Esquire, Ryan D. Dykal, Esquire, Aaron E. Hankel, Esquire, David Morehan, Esquire, Robert H. Reckers, Esquire, Mark D. Schafer, Esquire, Ryan J. Schletzbaum, Esquire, and Basil Trent Webb, Esquire of Shook, Hardy & Bacon LLP.

          MEMORANDUM OPINION

          BATAILLON, SENIOR DISTRICT JUDGE.

         I. INTRODUCTION

         In this patent case filed by Plaintiff Cox Communications, Inc. (“Plaintiff” or “Cox”) against Defendant Sprint Communications Company, L.P. (“Defendant” or “Sprint”), Sprint alleges that Cox infringes certain Sprint telecommunications and data networking patents. Among these patents are U.S. Patent Nos. 7, 286, 561 (“the ‘6, 561 patent”), 6, 633, 561 (“the ‘3, 561 patent”), 6, 463, 052 (“the ‘052 patent”), and 6, 452, 932 (“the ‘932 patent”) (collectively the “Call Control Patents”). District Judge Sue L. Robinson construed various claim terms from the Call Control Patents in March 2016, (D.I. 399; D.I. 400), and May 2017, (D.I. 541). Upon Judge Robinson's retirement from the bench, the case was reassigned to the undersigned on June 16, 2017. (D.I. 557) A pre-trial conference is scheduled for November 17, 2017, with a jury trial set to begin on December 7, 2017. (D.I. 603; D.I. 654)

         As part of its defense, Cox contends that the Call Control Patents are invalid as anticipated by several prior art “systems” as well as a number of prior references. (D.I. 609, ex. 3) Two of these allegedly anticipating references are groups of multiple publications that comprise-what Cox alleges to be-“the Weinstein prior art” and “the Weinstein-Forgie prior art.” (D.I. 583, ex. 3 at ¶¶ 1105, 1296) Sprint has moved for partial summary judgment of no invalidity for the Call Control patents, related to theories of anticipation and obviousness, with respect to these alleged anticipating references. (D.I. 582)

         II. STANDARD 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., 415 U.S. 475, 586 n. 10 (1986). A party asserting that a fact cannot be-or, alternatively, is-genuinely disputed must be supported 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 omitted). The court will “draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

         To defeat a motion for summary judgment, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 415 U.S. at 586-87; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted). Although the “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment, ” a factual dispute is genuine where “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247- 48 (1986). “If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial”).

         B. Invalidity

         1. Anticipation

         Under the Patent Act, “[a] person shall be entitled to a patent unless . . . the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for the patent[.]” 35 U.S.C. § 102(a). The statute also prevents patenting when “the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). The Federal Circuit has stated that “[t]o anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Grp. Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008) (quoting Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). “Anticipation requires that the reference describe not only the elements of the claimed invention, but also that it describe those elements arranged as in the claim.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1343 (Fed. Cir. 2016) (internal quotations omitted).

         “The explicit claim limitations must be considered in [the] determination of anticipation.” In re Schreiber, 128 F.3d 1473, 1481 (Fed. Cir. 1997). In determining whether a patented invention is explicitly anticipated, “the proponent must show ‘that the four corners of a single, prior art document describe every [limitation] of the claimed invention, '” “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). The claims are read in the context of the patent specification in which they arise and in which the invention is described. Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). The prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984). Anticipation, an invalidity defense, must be proven by clear and convincing evidence. Microsoft Corp. v. i4i Ltd., 564 U.S. 91, 95 (2011).

         a. Incorporation by reference

         Anticipating prior art must disclose “every [limitation] of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (citations omitted). In addition, “[m]aterial not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if that material is incorporated by reference into the document.” Id. (citation omitted) “Incorporation by reference provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Id. (citations omitted). For example, a patent application may incorporate by reference “matter elsewhere written down . . . for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found.” In re Seversky, 474 F.2d 671, 674 (C.C.P.A. 1973). “[A] mere reference to another application, or patent, or publication is not an incorporation of anything contained therein[.]” Id.

         Put another way, the host document “must cite the material in a manner that makes clear that it is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Systems, 212 F.3d at 1282. It must, therefore, both (1) “identify with detailed particularity what specific material it incorporates”; and (2) “clearly indicate where that material is found in the various documents.” Id. (citations omitted). While anticipation is a question of fact, the question of “[w]hether and to what extent material has been incorporated by reference into a host document is a question of law. Id. at 1283 (citation omitted). “[T]he standard of one reasonably skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity.” Id.

         2. Obviousness

         “A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a). Obviousness is a question of law, which depends on underlying factual inquiries.

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).

         “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a combination of references has the burden to show that a person of ordinary skill in the relevant field had a reason to combine the elements in the manner claimed. Id. at 418-19. The Supreme Court has emphasized the need for courts to value “common sense” over “rigid preventative rules” in determining whether a motivation to combine existed. Id. at 419-20. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. In addition to showing that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, a defendant must also demonstrate that “such a person would have had a reasonable expectation of success in doing so.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).

         A combination of prior art elements may have been “obvious to try” where there existed “a design need or market pressure to solve a problem and there [were] a finite number of identified, predictable solutions” to it, and the pursuit of the “known options within [a person of ordinary skill in the art's] technical grasp” leads to the anticipated success. Id. at 421. In this circumstance, “the fact that a combination was obvious to try might show that it was obvious under § 103.” Id.

         A fact finder is required to consider secondary considerations, or objective indicia of nonobviousness, before reaching an obviousness determination, as a “check against hindsight bias.” See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012). “Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Graham, 383 U.S. at 17-18.

         “Patents are presumed to be valid, and overcoming that presumption requires clear and convincing evidence.” 35 U.S.C. § 282; Spectrum Pharm., Inc. v. Sandoz Inc., 802 F.3d 1326, 1333 (Fed. Cir. 2015) (citing Microsoft Corp. v. i4i Ltd. P'ship., 564 U.S. 91, 95 (2011) (holding that an invalidity defense must be proved by clear and convincing evidence)). In conjunction with this burden, the Federal Circuit has explained that,

[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (citations omitted).

         III. DISCUSSION

         A. The Anticipating References

         Cox's expert, Scott Bradner (“Bradner”) identified two anticipating references. The first, “Clifford J. Weinstein's 1983 paper The Experimental Integrated Switched Network a System-Level Network·Test Facility . . . [Weinstein-83a] described the work of the ARPA Packet Speech Program.” (D.I. 583, ex. 3 at ¶ 1100) He called this document “[Weinstein-83a]” (“Weinstein” or the “Weinstein paper”). (Id.) The second, is a “December 1983 IEEE paper Experience with Speech Communication in Packet Networks by Clifford J. Weinstein and James W. Forgie[, ]” which Bradner also called “[Weinstein-83b]” (“Weinstein-Forgie” or the “Weinstein-Forgie paper”). (D.I. 583, ex. 3 at ¶ 1293)

         With respect to Weinstein, in his expert report, Bradner identified four publications that are referenced within the paper and three other publications (that are not identified within Weinstein) to comprise the “Weinstein prior art[.]” (D.I. 583, ex. 3 at ¶¶ 1100-1105) Bradner explained that he based his anticipation analysis upon his belief “that a document plus the references - are one - can be seen as one document[]” and forms “one body of material” (D.I. 583, ex. 4 at 133:14-134:9) As to the “Weinstein-Forgie prior art[, ]” Bradner combined Weinstein-Forgie with eight publications referenced in the paper to create a single document for anticipation purposes. (D.I. 583, ex. 3 at ¶¶ 1293-97) At his July 2017 deposition, Bradner reiterated this point and explained that the “Weinstein prior art” is “one body of material[, ]” (D.I. 583, ex. 4 at 134:9), and that the same logic applies to the “Weinstein-Forgie prior art[, ]” (id. at 282:6-283:12).

         1. Bradner's incorporation by reference theory

         At his deposition, Bradner was asked about how he went “about selecting certain of the references” for incorporation by reference into the Weinstein and Weinstein-Forgie papers. Bradner explained that he “looked at the reference -- looked at all of the references [he] could get ahold of, which wasn't all of them, and [he] looked at them to see whether they had . . . material relevant to the particulars of the claims.” (D.I. 583, ex. 4 at 282:17-21)

         B. The Arguments

         Sprint argues that Bradner concedes that neither the “Weinstein paper” nor the “Weinstein-Forgie paper[, ]” within its four corners, anticipates any asserted claim of the patents-in-suit. (D.I. 583 at 2, 7, 8-9) Sprint notes that neither of the papers employ the term “incorporate by reference, ” nor do they meet the legal standard for incorporating by reference. (Id. at 9-10) Cox responds that it is possible to incorporate documents by reference and cites to case law to establish the premise. (D.I. 609 at 6-7) Specifically, Cox avers that the two “Weinstein Articles [] cite to additional documents - written by the same researchers, about the same body of research - to explain in more detail the ‘circuit' components, ‘packet' components, and the ‘interface' between the two.” (Id. at 8 (emphasis omitted)) Cox also points out that Bradner opined that “a person of ordinary skill in the art would have understood the cited references to be part of the disclosure of the Weinstein Articles because they are ‘descriptive studies that the paper is also describing.'” (Id. at 9) The briefs do not provide an opinion from Sprint's expert, Dr. Stephen Wicker (“Dr. Wicker”), which Cox contends “leav[es] little question that summary judgment is inappropriate.”[1] (Id.)

         The dispute, therefore, is “whether the Weinstein and Weinstein-Forgie [p]apers (the “host” documents) incorporate the cited documents by reference; and [] to what extent the ‘specific material' was ostensibly incorporated [into these host documents].” (D.I. 621 at 2 (footnote omitted)) The case law is clear that, while anticipation is a factual question for the jury, “if incorporation by reference comes into play in an anticipation determination, the court's role is to determine what material in addition to the host document constitutes the single reference.” Advanced Display Systems, 212 F.3d at 1283. To this end, neither party has provided the Court with a complete version of Bradner's report and has instead submitted extracts of his opinions and deposition testimony.[2] (D.I. 583, ex. 3; D.I. 609, ex. 3; D.I. 635, ex. 2) Additionally, Cox identifies specific instances where the host documents cite to the allegedly incorporated references. (D.I. 635 at 5-8) The Court concludes that, for the purposes of anticipation, neither the “Weinstein prior art” nor the “Weinstein-Forgie prior art” (as described by Bradner) exists as a single reference.

         C. Weinstein

         There are two deficiencies with the references that comprise the “Weinstein prior art”: (1) references not identified in Weinstein, and (2) of the references contained in Weinstein, the citations lack specificity as described by the case law. See Advanced Display Systems, 212 F.3d at 1282-83.

         1. Unidentified references

         The “Weinstein prior art” apparently includes as many as three references that are not identified in the host document (i.e., Weinstein). (D.I. 583, ex. 3 at ¶ 1103) Sprint points to two of these references, (D.I. 583 at 3-4, D.I. 621 at 3), and argues that the lack of reference in the host document precludes the presentation of these invalidity theories to the jury, (D.I. 621 at 7). Cox does not identify any case law supporting the proposition that a host document can incorporate by reference one or more documents that are not identified, cited, or otherwise referred to in the host document. Instead, Cox responds by explaining that these:

two additional documents are not necessary[3] to [] Bradner's opinion on the Weinstein reference. The first, LL-DSNTEP-AR-83 is merely cited to provide a pictorial representation of disclosure contained in the Weinstein article, and the second, and LL-NSSTP-AR-80, is not cited for any limitation of any claim.[4]

         (D.I. 635 at 8) In other words, Bradner's expert report, which referred extensively to the anticipatory “Weinstein prior art” was predicated on a malleable definition as to what that prior art is in the first place. While this may likely render useless much of Bradner's opinion with respect to general anticipation by the “Weinstein prior art, ” it is, as Sprint acknowledges, (D.I. 621 at 9), not dispositive of the entirety of those opinions as they relate to Weinstein and specific target publications and documents that it may incorporate by reference. Moreover, Bradner's report (and the supporting claim charts) provided additional detail with respect to specific publications (allegedly incorporated by reference) and their significance to Bradner's anticipation opinions as to specific claim limitations. (See D.I. 635, ex. 2) Neither party has identified parts of the record in which LL-NSSTP-AR-80 is employed as part of Bradner's anticipation analysis, therefore, the court focuses on the LL-DSNTEP-AR-83 publication below.

         a. LL-DSNTEP-AR-83

         Bradner identified a September 30, 1983 Lincoln Laboratory report identified as “LL-DSNTEP-AR-83” (“AR-83”) as one of “three other references” that make up the “Weinstein prior art[.]” (D.I. 583, ex.3 at ¶ 1103) Weinstein does not refer to this document. (D.I. 609, ex. 1) Bradner provided no explanation for how a person of ordinary skill in the art would read Weinstein as incorporating AR-83 by reference. After the close of expert discovery, Cox waited until its sur-reply brief to argue that AR-83 is “not necessary” to Bradner's opinion and “can simply [] be dropped from the list of materials used for the Weinstein opinion.” (D.I. 635 at 8 & n.4). Anticipation (i.e., whether AR-83 is or is not “necessary”) is a question of fact for the jury-a question of fact that Cox raised in presenting Bradner's report in the first place. Relevant portions of Bradner's report are now part of the record, and the Court's role in this instance is to address the question of whether (in the context of Cox's invalidity contention as described in detail in Bradner's report) Weinstein incorporates AR-83 by reference. Advanced Display Systems, 212 F.3d at 1283.

         i. Fourth limitation, claim 1 of the ‘052 patent

         In a portion of Bradner's report supplied by Cox, Bradner addressed how Weinstein anticipates the fourth limitation of claim 1 of the ‘052 patent. (D.I. 635, ex. 2 at ¶¶ 1155-57) This claim limitation recites “transferring an instruction indicating the network code from the processing system to the device[.]” (‘052 patent, 22:20-21) Bradner explained that “[t]he Weinstein prior art describes the RCP sending an ...


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