United States District Court, D. Delaware
A. Rovner, Jonathan A. Choa, POTTER ANDERSON & CORROON
LLP, Wilmington, DE; Paul J. Andre (argued), Lisa Kobialka,
KRAMER LEVIN NAFTALIS & FRANKEL LLP, Menlo Park, CA;
Aaron M. Frankel (argued), KRAMER LEVIN NAFTALIS &
FRANKEL LLP, New York, NY Attorneys for Plaintiff.
B. Blumenfeld, Stephen J. Kraftschik, MORRIS NICHOLS ARSHT
& TUNNELL LLP, Wilmington, DE; Michael A. Tomasulo
(argued), Gino Cheng, David K. Lin, Joe S. Netikosol, WINSTON
& STRAWN LLP, Los Angeles, CA; David P. Enzminger
(argued), Louis L. Campbell, WINSTON & STRAWN LLP, Menlo
Park, CA; Dan K. Webb, Kathleen B. Barry, WINSTON &
STRAWN LLP, Chicago, IL; Krista M. Enns, WINSTON & STRAWN
LLP, San Francisco, CA; Michael M. Murray, Anup K. Misra,
WINSTON & STRAWN LLP, New York, NY; Andrew R. Sommer,
Thomas M. Dunham, Michael Woods, Paul N. Harold, Joseph S.
Masullo, WINSTON & STRAWN LLP, Washington, DC. Attorneys
ANDREWS, U.S. DISTRICT JUDGE:
before the Court are Plaintiffs Motion for Summary Judgment
of Infringement and Validity and Motion to Exclude Expert
Testimony of Catharine M. Lawton (No. 16-453, D.I. 439; D.I.
16-454, D.I. 388; D.I. 16-455, D.I. 386) and related
briefing (D.I. 448, 474, 503); Plaintiffs Motion to Correct
Claim 19 of the '634 patent (D.I. 438) and related
briefing (D.I. 438, 472, 473); Defendant Activision Blizzard
Inc.'s ("Activision") Motion for Summary
Judgment (D.I. 440) and related briefing (D.I. 442, 475,
505); and Activision's Motion to Exclude Expert Opinions
of Dr. Nenad Medvidovic, Dr. Michael Mitzenmacher, Dr.
Christine Meyer, Dr. Harry Bims, and Dr. Ricardo Valerdi
(D.I. 441) and related briefing (D.I. 442, 475, 505). I held
oral argument on May 17, 2018. (D.I. 560 ("Tr.")).
At that time, I ordered additional briefing and letter
briefing, which the parties completed on June 6, 2018. (D.I.
561, 562, 563, 564, 565, 570, 572).
reasons that follow, the Court will DENY
Plaintiffs Motion for Summary Judgment of Infringement and
Validity and Motion to Exclude Expert Testimony of Catharine
M. Lawton (D.I. 439); DENY Plaintiffs Motion
to Correct Claim 19 of the '634 patent (D.I. 438);
GRANT Activision's Motion for Summary
Judgment (D.I. 440), as to the invalidity of all asserted
claims of U.S. Patent No. 6, 829, 634 and claims 11, 15, and
16 of U.S. Patent No. 6, 732, 147, and as to non-infringement
of U.S. Patent Nos. 6, 701, 344, 6, 714, 966, and 6, 920,
497, limited to the accused CoD and Destiny games, and
otherwise DENY that Motion; and
GRANT in part and DENY in
part Activision's Motion to Exclude Expert Opinions of
Dr. Nenad Medvidovic, Dr. Michael Mitzenmacher, Dr. Christine
Meyer, Dr. Harry Bims, and Dr. Ricardo Valerdi (D.I. 441).
brought this suit against Activision on June 17, 2016,
alleging that Activision infringes United States Patent Nos.
6, 701, 344 ("the '344 patent"), 6, 714, 966
("the '966 patent"), 6, 829, 634 ("the
'634 patent"), 6, 910, 069 ("the '069
patent"), 6, 732, 147 ("the '147 patent"),
and 6, 920, 497 ("the '497 patent")
(collectively, the "Asserted Patents") by making,
using, selling, offering for sale, and/or importing into the
United States and this District four video games: World of
Warcraft ("WoW"), Call of Duty: Advanced Warfare
and Call of Duty: Black Ops III (collectively,
"CoD"), and Destiny. (D.I. 1). The asserted claims
are claims 12, 13, 14, and 15 of the '344 patent; claims
12 and 13 of the '966 patent; claims 19 and 22 of the
'634 patent; claims 1 and 11 of the '069 patent;
claims 1, 11, 15, and 16 of the '147 patent; and claims 9
and 16 of the '497 patent. (D.I. 442-1, Exh. D-l).
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 has the initial burden
of proving the absence of a genuinely disputed material fact
relative to the claims in question. Celotex Corp. v.
Catrett, 477 317, 330 (1986). Material facts are those
"that could affect the outcome" of the proceeding,
and "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." Lamont v. New Jersey, 637 F.3d 177, 181
(3d Cir. 2011) (quoting Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986)). 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
Rule of Evidence 702 sets out the requirements for expert
witness testimony and states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if: (a) the expert's scientific,
technical, or other specialized knowledge will help the trier
of fact to understand the evidence or to determine a fact in
issue; (b) the testimony is based on sufficient facts or
data; (c) the testimony is the product of reliable principles
and methods; and (d) the expert has reliably applied the
principles and methods to the facts of the case.
Fed. R. Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert
testimony: qualification, reliability and fit. Qualification
refers to the requirement that the witness possess
specialized expertise. We have interpreted this requirement
liberally, holding that "a broad range of knowledge,
skills, and training qualify an expert." Secondly, the
testimony must be reliable; it "must be based on the
'methods and procedures of science' rather than on
'subjective belief or unsupported speculation'; the
expert must have 'good grounds' for his o[r] her
belief. In sum, Daubert holds that an inquiry into
the reliability of scientific evidence under Rule 702
requires a determination as to its scientific validity."
Finally, Rule 702 requires that the expert testimony must fit
the issues in the case. In other words, the expert's
testimony must be relevant for the purposes of the case and
must assist the trier of fact. The Supreme Court explained in
Daubert that "Rule 702's
'helpfulness' standard requires a valid scientific
connection to the pertinent inquiry as a precondition to
admissibility." By means of a so-called
"Daubert hearing," the district court acts
as a gatekeeper, preventing opinion testimony that does not
meet the requirements of qualification, reliability and fit
from reaching the jury. See Daubert ("Faced
with a proffer of expert scientific testimony, then, the
trial judge must determine at the outset, pursuant to Rule
104(a) [of the Federal Rules of Evidence] whether the expert
is proposing to testify to (1) scientific knowledge that (2)
will assist the trier of fact to understand or determine a
fact in issue.").
Schneider ex rel Estate of Schneider v. Fried, 320
F.3d 396, 404-05 (3d Cir. 2003) (footnote and internal
Kegel and Active Net References
argues that the Kegel and Active Net references do not
invalidate the asserted claims of the '497 patent,
because, "Defendants failed to come forward with any
evidence that either reference was available as prior art
before the priority date of the Asserted Claims of the
'497 Patent." (D.I. 448 at 14). A prior art
reference may be shown to be a "printed
publication" if it was: (1) publicly accessible, or (2)
distributed to those of skill in the art. In re NTP,
654 F.3d 1279, 1296 (Fed. Cir. 2011). The critical date of
the '497 patent is July 31, 1999. (D.I. 448 at 15; D.I.
474 at 33).
Kegel reference is an article that "discusses Network
Address Translation technology." (D.I. 448 at 14).
Plaintiff argues that the reference was not publicly
accessible to an interested POSITA "until at least
2001." (Id. at 15). Defendants, however, argue
that the Kegel reference was posted to a website, and was
shared "on a public web forum in a discussion on cable
modem networking" on July 20, 1999. (D.I. 474 at 31).
Defendants also represent that Mr. Kegel, the author of the
reference, will testify that he last updated his website on
July 17, 1999. (Tr. 16:6-8; D.I. 453-1, Exh. 19). I find that
Defendants have shown at least a genuine dispute of material
fact as to the public availability of the Kegel reference.
Therefore, I will deny Plaintiffs Motion for Summary
Judgment, as to that reference.
is a multiplayer game system developed by Activision."
(D.I. 448 at 16). Defendants argue, "Active Net was used
in two games that are relevant to this case: Heavy Gear II
and Heavy Gear II Demo." (D.I. 474 at 32). Defendants
assert that these games were available before the critical
date. (Id.). However, Plaintiff argues that
Defendants cannot show that these games used Active Net.
(D.I. 448 at 16-17). Defendants respond that Dr. Kegel will
testify as to the release dates of Heavy Gear II and Heavy
Gear II Demo, and technical expert Dr. Karger will testify
that the Active Net source code was comparable to the code in
Heavy Gear II Demo before the critical date. (Tr.
21:17-24:6). I find that Defendants have shown at least a
genuine dispute of material fact as to the public
availability of the ActiveNet reference.Therefore, I will
deny Plaintiffs Motion for Summary Judgment, as to that
Validity of the Asserted Claims of the '634
argue that the asserted claims of the '634 patent are
indefinite and therefore invalid. (D.I. 442 at 32). The Court
found claim 19 of the'634 patent indefinite. (D.I. 423 at
14). The only other asserted claim of the '634 patent,
claim 22, depends from claim 19. (D.I. 444-1, Exh. D-l).
only argument that the two claims are not invalid for
indefiniteness is that claim 19 of the '634 patent should
be corrected. (D.I. 475 at 26-27).
argues that claim 19 "contains an obvious error"
that the Court should correct. (D.I. 438 at 1). Claim 19
covers, "A non-routing tabled based computer
readable medium containing instructions for controlling
communications of a participant of a broadcast channel within
a network, by a method comprising" several steps. (D.I.
117-2, Exh. A-4, claim 19) (emphasis added). During claim
construction, I held that "non-routing table based"
modifies "computer readable medium," and found that
"non-routing table based computer readable medium"
is "nonsensical." (D.I. 423 at 16-17).
urges that claim 19 should read: "A computer readable
medium containing instructions for controlling communications
of a participant of a broadcast channel within a network, by
a non-routing tabled based method comprising"
several steps. (D.I. 438 at 1).
"district court may correct an obvious error in a patent
claim . .. 'only if (1) the correction is not subject to
a reasonable debate based on consideration of the claim
language and the specification and (2) the prosecution
history does not suggest a different interpretation of the
claims.'" CBTFlint Partners, LLC v. Return Path,
Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011) (citing
Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348,
1357 (Fed. Cir. 2003)). As a general matter, "[c]ourts
do not rewrite claims; instead, [they] give effect to the
terms chosen by the patentee." K-2 Corp. v. Salomon
S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
I found claim 19 "nonsensical," it is not clear
that the claim contains an "obvious error."
Plaintiff mentioned no "obvious" error in its
Markman briefing or at any Markman hearing. (See
generally D.I. 366; D.I. 391).
it were obvious that claim 19 contains an error,
correction is "subject to a reasonable debate." At
a Markman hearing, Plaintiff argued that "non-routing
table based" modifies the entire preamble. (D.I. 363 at
91:1-92:25). In its Markman briefing, Plaintiff argued that
"non-routing table based" modifies the
"network." (D.I. 366 at 33). Now, Plaintiff argues
that "non-routing table based" modifies the
"method." (D.I. 438 at 2). Each of these
corrections results in a different claim scope. See
Magnetar Techs. Corp. v. Six Flags Theme Parks, Inc., 61
F.Supp.3d 437, 442-43 (D. Del. 2014) (refusing to exercise
discretion to rewrite a claim because different corrections
left the "scope of the claim subject to reasonable
debate"). If the claim is re-written so that the
"network" is non-routing table based, then the
claim would be limited to a network that does not employ
routing tables. However, if the claim is rewritten so that
the "method" is "non-routing table
based," then the claim would encompass a network that
includes routing tables, so long as the method itself does
not employ routing tables. Accordingly, Plaintiffs arguments
demonstrate that the correction is itself subject to a
reasonable debate. CBT Flint Partners, 654 F.3d at
1358. This precludes me from correcting claim 19.
therefore deny Plaintiffs Motion to Correct Claim 19 of the
'634 patent. (D.I. 438).
result, asserted claims 19 and 22 of the '634 patent are
invalid as indefinite. I will grant Defendants' Motion
for Summary Judgment, as to the validity of those claims.
Making and Using the Accused Products
patent is infringed when a person "without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States . . . during the term of the patent.
. . ." 35 U.S.C. § 271(a).
'344 and '966 patents
argues that its sale of software for the CoD and Destiny
games does not infringe the '344 and '966 patents
because it "does not make, use, sell or offer to
sell" the accused CoD and Destiny networks. (D.I. 442 at