United States District Court, D. Delaware
E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE;
Peter J. McAndrews, Thomas J. Wimbiscus, James P. Murphy,
Paul W. McAndrews, Anna M. Targowska, and Rajendra
Chiplunkar, MCANDREWS, HELD & MALLOY, LTD, Chicago, IL,
attorneys for Plaintiff.
C. Barillare, MORGAN LEWIS & BOCKIUS LLP, Wilmington, DE;
Brett Schuman, Rachel M. Walsh, and Monte M.F. Cooper,
GOODWIN PROCTER LLP, San Francisco, CA, attorneys for
ANDREWS, U.S. DISTRICT JUDGE
pending before the Court are the parties' various motions
for summary judgment (D.I. 715, 735, 739, 746, 856) and
Daubert motions (D.I. 718, 720, 730). The parties
have fully briefed the issues. (D.I. 716, 719, 721, 731, 736,
740, 747, 841, 843, 850, 853, 854, 855, 858, 915, 918, 919,
925, 928, 929, 930). After full consideration of the
briefing, the motions are resolved as follows.
TQ Delta filed this lawsuit against Defendant 2Wire on
November 4, 2013 asserting infringement of twenty-four
patents. (D.I. 1). I have divided the case into separate
trials based on families of patents. (D.I. 280). For the
Family 2 trial, Plaintiff currently asserts two claims of
U.S. Patent No. 7, 453, 881 ("the '881
patent"). The Accused Products are 2Wire's 5168N,
5168NV, 5268AC, and i3812V CPE devices. The '881 patent
relates to DSL technologies. Specifically, the '881
patent claims systems and methods of "reducing latency,
or end-to-end delay of data transmission, in asynchronous
transfer mode ('ATM') communications systems ...
thereby generating a high data rate connection in ATM
communication systems." (D.I. 486 at 4).
asserted claims read as follows:
17. A plurality of bonded transceivers, each bonded
transceiver utilizing at least one transmission parameter
value to reduce a difference in latency between the bonded
transceivers, wherein a data rate for the first of the bonded
transceivers is different for a second of the bonded
18. The transceivers of claim 17, wherein the at least one
transmission parameter value is a Reed Solomon Coding
parameter value, an interleaving parameter value, a coding
parameter value, a codeword size value or a framing parameter
patent, cl. 17-18). I have construed three of the terms in
the '881 patent and have set out the constructions below:
"communications device capable of transmitting
and receiving data wherein the transmitter portion
and receiver portion share at least some common
"plurality of bonded transceivers"
"two or more transceivers located on the same
side of two or
more physical links where each transceiver is
transmit or receive a different portion of the same
via a different one of the physical links, wherein
to' precludes rebuilding, recoding, or
redesigning any of the
components in a 'plurality of bonded
"utilizing at least one transmission parameter
value to reduce a difference in latency between the
"utilizing at least one transmission parameter
value to reduce a difference in configuration latency
between the bonded transceivers"
(D.I. 492 at 2).
are international standards relevant to the functionality of
DSL systems. Both the International Telecommunications Union
("ITU") and the IEEE have developed such standards.
The relevant standards for the dispute between the parties
are ITU-T G.998.2 ("G.998.2"), entitled
"Ethernet-based multi-pair bonding," and IEEE
802.3ah-2004. Plaintiff contends that compliance with these
standards establishes infringement. Defendant disagrees.
Plaintiff and Defendant have submitted various motions for
summary judgment on issues of infringement and invalidity, as
well as Daubert motions.
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 U.S. 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)). 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,
477 U.S. at 323.
burden then shifts to the non-movant to demonstrate the
existence of a genuine issue for trial. Matsushita Elec.
Indus. Co. 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.
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, 477 U.S.
at 247-49. 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.
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.
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 or 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) (cleaned up).
Patent Ineligible Subject Matter
101 of the Patent Act defines patent-eligible subject matter.
It provides: "Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements
of this title." 35 U.S.C. § 101. The Supreme Court
has recognized an implicit exception for three categories of
subject matter not eligible for patentability-laws of nature,
natural phenomena, and abstract ideas. Alice Corp. Pty.
v. CLS Bank Int'l, 134 S.Ct. 2347, 2354 (2014). The
purpose of these carve outs is to protect the "basic
tools of scientific and technological work." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132
S.Ct. 1289, 1293 (2012). "[A] process is not
unpatentable simply because it contains a law of nature or a
mathematical algorithm," as "an application of a
law of nature or mathematical formula to a known structure or
process may well be deserving of patent protection."
Id. at 1293-94 (internal quotation marks and
emphasis omitted). In order "to transform an
unpatentable law of nature into a patent-eligible application
of such a law, one must do more than simply state the law of
nature while adding the words 'apply it.'"
Id. at 1294 (emphasis omitted).
Supreme Court recently reaffirmed the framework laid out in
Mayo "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those
concepts." Alice, 134 S.Ct. at 2355. First, the
court must determine whether the claims are drawn to a
patent-ineligible concept. Id. If the answer is yes,
the court must look to "the elements of the claim both
individually and as an 'ordered combination'" to
see if there is an '"inventive
concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the
[ineligible concept] itself.'" Id.
(alteration in original). "A claim that recites an
abstract idea must include 'additional features' to
ensure that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea]."
Id. at 2357. Further, "the prohibition against
patenting abstract ideas cannot be circumvented by attempting
to limit the use of [the idea] to a particular technological
environment." Id. at 2358 (quoting Bilski
v. Kappos, 561 U.S. 593, 610-11 (2010)). Thus, "the
mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible
invention." Id. For this second step, the
machine-or-transformation test can be a "useful
clue," although it is not determinative.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014).
a claim is drawn to patent-eligible subject matter under
§ 101 is an issue of law," and "is a matter of
both claim construction and statutory construction."
In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008),
aff'd sub nom. Bilski v. Kappos, 561 U.S. 593
(2010). "Claim construction is a question of law .
..." In re Nuijten, 500 F.3d 1346, 1352 (Fed.
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). A two-step analysis
is employed in making an infringement determination. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370
(1996). First, the court must construe the asserted claims to
ascertain their meaning and scope. See Id. The trier
of fact must then compare the properly construed claims with
the accused infringing product. See Id. at 976. This
second step is a question of fact. See Bai v. L & L
Wings, Inc., 160F.3d 1350, 1353 (Fed. Cir. 1998).
infringement of a claim exists when 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). If an
accused product does not infringe an independent claim, it
also does not infringe any claim depending thereon. See
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546,
1553 (Fed. Cir. 1989). However, "[o]ne may infringe an
independent claim and not infringe a claim dependent on that
claim." Monsanto Co. v. Syngenta Seeds, Inc.,
503 F.3d 1352, 1359 (Fed. Cir. 2007) (internal quotations
omitted). The patent owner has the burden of proving
infringement and must meet its burden by a preponderance of
the evidence. See SmithKline Diagnostics, Inc. v. Helena
Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988)
accused infringer moves for summary judgment of
non-infringement, such relief may be granted only if at least
one limitation of the claim in question does not read on an
element of the accused product, either literally or under the
doctrine of equivalents. See Chimie v. PPG Indus.,
Inc.,402 F.3d 1371, 1376 (Fed. Cir. 2005); see also
TechSearch, L.L.C v. Intel Corp.,286 F.3d 1360, 1369
(Fed. Cir. 2002) ("Summary judgment of noninfringement
is . . . appropriate where the patent owner's proof is
deficient in meeting an essential part of the legal standard
for infringement, because such failure will render all other
facts immaterial."). Thus, summary judgment of
non-infringement can only be granted if, after viewing the
facts in the light most favorable to the non-movant, ...