United States District Court, D. Delaware
ON FEBRUARY 19, 2019
E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE
Monte M. Bond, Jeffrey R. Bragalone, Patrick J. Conroy, Terry
Saad, and James R. Perkins, BRAGALONE CONROY P.C., Dallas, TX
Attorneys for Wi-Lan Inc.
B. Blumenfeld and Stephen J. Kraftschik, MORRIS, NICHOLS,
ARSHT & TUNNELL LLP, Wilmington, DE Gianni Cutri and Joel
Merkin, KIRKLAND & ELLIS LLP, Chicago, IL Michael W. De
Vries, KIRKLAND & ELLIS LLP, Los Angeles, CA Adam R.
Alper and James Beard, KIRKLAND & ELLIS LLP, San
Francisco, CA Jared Barcenas, KIRKLAND & ELLIS LLP, New
York, NY Attorneys for Sharp Electronics Corporation.
Gabrielle Kraman, YOUNG, CONAWAY, STARGATT & TAYLOR, LLP,
Wilmington, DE, Rex Hwang, Stanley M. Gibson, and Jessica
Newman, JEFFER MANGELS BUTLER & MITCHELL LLP, Los
Angeles, CA, Attorneys for Vizio, Inc.
U.S. DISTRICT JUDGE.
before the Court are Plaintiff Wi-LAN Inc.'s
("Plaintiff) Motions for Summary Judgment of
Infringement (C.A. No. 15-379 D.I. 406; C.A. No. 15-788 D.I.
334), Defendants Sharp Electronics Corporation and Vizio,
Inc.'s (collectively, "Defendants") Motions to
Preclude the Expert Opinions of Craig K. Tanner (C.A. No.
15-379 D.I. 408; C.A. No. 15-788 D.I. 329), Defendants'
Motions to Preclude the Analysis of Rebecca Reed-Arthurs
(C.A. No. 15-379 D.I. 410; C.A. No. 15-788 D.I. 330),
Defendants' Motions to Preclude the Expert Opinions of
Ionut Mirel (C.A. No. 15-379 D.I. 411; C.A. No. 15-788 D.I.
331), Defendants' Motions to Preclude the Expert Opinions
of David A. Kennedy (C.A. No. 15-379 D.I. 412; C.A. No.
15-788 D.I. 332), Plaintiffs Motions for Partial Summary
Judgment of No. Invalidity (C.A. No. 15-379 D.I. 414; C.A.
No. 15-788 D.I. 339), Defendants' Motions for Summary
Judgment of Non-Infringement (C.A. No. 15-379 D.I. 416; C.A.
No. 15-788 D.I. 337), and Plaintiffs Motions to Preclude the
Infringement and Validity Expert Reports of Clifford Reader
(C.A. No. 15-379 D.I. 419; C.A. No. 15-788 D.I. 344). The
Court heard arguments on these motions on December 19, 2018
and took all motions under advisement. (See D.I. 471
("Tr.")) The Court has also considered the
parties' supplemental briefs and letters responding to
the Court's post-hearing questions (C.A. No. 15-379 D.I.
470; C.A. No. 15-788 D.I. 399). (See C.A. No. 15-379
D.I. 472, 473, 474, 475, 481, 482; C.A. No. 15-788 D.I. 401,
402, 403, 404, 410, 411)
this was initially a three-patent case, only one patent
remains asserted in this action: U.S. Patent No. 6, 359, 654
(the '"654 patent"). Plaintiff alleges that
Defendants each infringe claims 1, 4, and 9 of the '654
patent, which are methods of displaying interlaced video data
on non-interlaced monitors. The claimed methods require four
steps: "capturing" two fields into buffers,
"scaling" the fields, "adjusting" one of
the fields, and "displaying" the two fields
sequentially on a non-interlaced monitor. ('654 patent,
els. 1, 4, 9)
LEGAL STANDARDS Under Rule 56(a) of the Federal
Rules of Civil Procedure, "[t]he 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." The moving party bears the
burden of demonstrating the absence of a genuine issue of
material fact. See Matsushita Elec. Indus. Co., Ltd. v.
Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). An
assertion 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 purposes of the motion 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, 475
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
defeat a motion for summary judgment, the nonmoving party
must "do more than simply show that there is some
metaphysical doubt as to the material facts."
Matsushita, 475 U.S. at 586; see also Podobnik
v. U.S. Postal Serv., 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). 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 only 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"). Thus, the "mere
existence of a scintilla of evidence" in support of the
nonmoving party's position is insufficient to defeat a
motion for summary judgment; there must be "evidence on
which the jury could reasonably find" for the nonmoving
party. Anderson, 477 U.S. at 252.
parties filed cross-motions for summary judgment regarding
infringement of the '654 patent. (See D.I. 406, 416)
Plaintiffs case presents two theories of infringement against
two sets of accused products. Plaintiffs first theory of
infringement, asserted against a substantial majority of the
accused products, is that Defendants directly infringe by
selling televisions that automatically perform each step of
the claimed methods. This theory of infringement is based on
the Federal Circuit's decision in SiRF Technology,
Inc. v. International Trade Commission, 601 F.3d 1319
(Fed. Cir. 2010). For the remaining accused products,
Plaintiff asserts that Defendants directly infringe by
testing those televisions in the United States in a manner
that practices the claimed methods.
evidence of infringement includes (and essentially depends
on) two sets of declarations from the companies that
manufacture for Defendants the System-on-Chips
("SoCs") which house the accused functionality (the
"SoC declarations"). Plaintiffs other principal
evidence of infringement is Register Transfer Level
("RTL") source code that provides the blueprint to
manufacture the hardware of the SoCs. As Plaintiff cannot
prove infringement without the source code, the Court will
first consider the admissibility of the source code and the
purposes of this Opinion, the Court will assume that every
limitation of the asserted claims is met by the accused
products. Under that assumption, it is undisputed
that the accused products themselves perform every step of
the asserted claims. (See, e.g., D.I. 407 at 1; D.I.
447 at 17-18)
Admissibility of Source Code and SoC Declarations
the nature of the alleged infringement, and Defendants'
relationship to the asserted patented methods, Plaintiff has
"been on notice since the very beginning of the case
that [it was] going to need source code from third
parties." (D.I. 182 at 25; see also D.I. 91 at
33) That is, in order to meet its burden to prove
infringement, Plaintiff has known that it would need to
obtain source code from MediaTek, MStar, and Sigma (the
"SoC manufacturers") - those third parties
manufacture the SoCs that are accused of containing the
infringing functionality in this case. (See D.I. 91
at 33; D.I. 182 at 25-26) When Plaintiff approached the SoC
manufacturers, they did not easily and voluntarily produce
their proprietary code. For example, in April 2017,
MediaTek's counsel told Plaintiffs counsel that
"MediaTek Inc. is not going to voluntarily produce each
version of code that has existed for 15 chips over almost 8
years." (D.I. 423 Ex. 50 at 2; see also Id. at
3 ("MediaTek Inc. does not have a single person, or even
multiple people, who could state under oath that there are no
'material differences' for 15 chips over almost 8
years.")) The following month, Plaintiff sued the SoC
manufacturers in this Court for patent infringement.
(See D.I. 418 at 13) Shortly thereafter, Plaintiff
entered into termination agreements with the SoC
manufacturers which provided that the SoC manufacturers would
produce source code and the lawsuits against them would be
dismissed without prejudice. (See D.I. 445 at 30;
D.I. 446 Exs. 16-17) Ultimately, the SoC manufacturers
produced a single version of RTL source code with
accompanying declarations stating that the code produced
provides the implementation of the deinterlacing process for
digital video data in a specified list of chips, adding that
there are "no material differences" between the
version of code ...