United States District Court, D. Delaware
MEMORANDUM AND ORDER
F. BATAILLON SENIOR UNITED STATES DISTRICT JUDGE.
matter is before the Court on the plaintiff's motion for
a summary judgment of no ninfringement (D.I. 85) and
defendant's opposition thereto and purported cross-motion
for summary judgment on its affirmative
defenses. D.I. 88. This is an action for patent
infringement, pursuant to 35 U.S.C. § 271 et
complaint, plaintiff Improved Search LLC
(“Improved”) alleges Microsoft Corporation
(“Microsoft”) infringes two related patents, U.S.
Patent Nos. 6, 604, 101 (the “101 Patent”) and 7,
516, 154 (“the '154 patent”) (collectively,
“the Asserted Patents”) (D.I. 1, Complaint at 4).
The patents improve the usability of searching over the
internet and are directed to cross-language translation of
query and search information as well as retrieval of
multilingual information over a computer network. The
'101 patent generally relates to methods and systems of
for translating queries from a source language to a target
language, and the '154 patent generally relates to
methods of and systems for providing cross language
advertising services over the Internet. Id. at 4. In
the answer to Improved's complaint, Microsoft asserted
several affirmative defenses, including noninfringement and
invalidity. D.I. 7, Answer at 11-12. Microsoft did not assert
any counterclaims for declaratory relief. Id.
April 2, 2018, United States Magistrate Judge Sherry R.
Fallon filed a Report and Recommendation
(“R&R”) which, among other things, adopted
defendant Microsoft's proposed definition of
“dialectal standardization.” D.I. 68, R&R
at 7. The term or a variant of it appears in all of the
independent claims of the '101 patent. Id.; D.I.
1-1, '101 patent at cols. 7 - 10. This Court adopted the
Report and Recommendation on August 21, 2018. D.I. 76,
Memorandum and Order at 8. In a related motion, Improved
moved to dismiss its claims alleging infringement of the
'154 patent under Federal Rule of Civil Procedure 41,
based on the Court's claim construction and on a
purported agreement between the parties. D.I. 95. The Court
granted the motion and Improved's claims of infringement
of the '154 patent were dismissed, with prejudice, under
Federal Rule of Civil Procedure 41(b). (D.I. 102). Any
asserted claims or defenses by defendant Microsoft were
dismissed without prejudice. Id.
now moves for summary judgment, seeking a determination that
Microsoft does not infringe the '101
patent. D.I. 85. Improved concedes that
“based on the currently available documents, it cannot,
in good faith, pursue their infringement claim under the
Court's construction of ‘dialectal
standardization.'” D.I. 86, Brief at 1. It candidly
admits that it seeks summary judgment in order to move
forward with a direct appeal to the Federal Circuit.
Id. at 3.
agrees that a summary judgment of noninfringement of the
'101 Patent should be granted. D.I. 88, Brief at 1.
Microsoft, however, also seeks a ruling in its favor on the
merits of its affirmative defenses of noninfringement, both
literally and under the doctrine of equivalents, and
invalidity. D.I. 88, Brief. It contends that there is
no genuine dispute that none of the accused systems or
methods infringe any of the currently asserted claims of the
'101 Patent. It argues that it seeks summary judgment
“based on five separate claim requirements not
specifically mentioned in Plaintiff's motion but for
which Plaintiff cannot advance evidence sufficient to support
a jury finding in its favor.” Id. Microsoft
submits evidence in support of its position. D.I. 89-2, Exs.
response to Microsoft's arguments, Improved states that
there are genuine issues of material fact on whether
Microsoft would be entitled to a summary judgment on any
grounds other than under the claim construction at issue. It
asks the court to enter a summary judgment of
noninfringement, but to deny Microsoft's motion to the
extent it seeks a judgment of noninfringement on any grounds
other than those relating to the Court's construction of
dialectical standardization and related terms. D.I. 93, Reply
Brief at 9.
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 initial burden
of demonstrating the absence of a genuine issue of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). The moving party “is entitled to a judgment as
a matter of law [when] the nonmoving party has failed to make
a sufficient showing on an essential element of her case with
respect to which she has the burden of proof.”
Id. (internal quotation marks omitted). The moving
party need only show “that there is an absence of
evidence to support the nonmoving party's case.”
Id. at 325.
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 Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)
(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). Infringement, whether literal or under the doctrine
of equivalents, is a question of fact. Ferguson
Beauregard/Logic v. Mega Sys., Inc., 350 F.3d 1327, 1338
determination of infringement is a two-step process.
Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d
1440, 1443 (Fed. Cir. 1997). The first step is claim
construction, which is a question of law to be determined by
the court. Id. The second step is an analysis of
infringement, in which it must be determined whether a
particular device infringes a properly construed claim.
Id. This analysis is a question of fact.
ruling on claim construction after a Markman hearing
is not a final, appealable order, in the absence of a
resolution of all of the factual issues of infringement or
validity dependent thereon. Nystrom v. TREX Co.,
Inc., 339 F.3d 1347, 1350 (Fed. Cir. 2003) (sua
sponte dismissing appeal of a finding of noninfringement
and invalidity of certain claims of a patent for lack of
jurisdiction where a declaratory-judgment counterclaim for
invalidity and unenforceability remained pending as to other
claims of the patent and had been stayed). “Piecemeal
litigation is as strictly precluded by the rule of finality
for patent cases as it is for any other case.”
Id. Under the finality rule, parties may only appeal
a “final decision of a district court.”
Id.A final judgment “is a decision by the
district court that ‘ends the litigation on the merits
and leaves nothing for the court to do but execute the
judgment.'” Pause Tech. LLC v. TiVo Inc.,
401 F.3d 1290, 1292 (Fed. Cir. 2005) (quoting Catlin v.
United States, 324 U.S. 229, 233 (1945)).
“[W]hether an order constitutes a final judgment
‘depends upon whether the judge has or has not clearly
declared his intention in this respect in his
opinion.'” Pandrol USA, LP v. Airboss Ry.
Prod., Inc., 320 F.3d 1354, 1362 (Fed. Cir. 2003)
(quoting United States v. F. & M. Schaefer Brewing
Co., 356 U.S. 227, 232 (1958) (citation omitted)).
“A ‘judgment that does not dispose of pending
counterclaims is not a final judgment.'” Pause
Tech LLC, 401 F.3d at 1293.
appealable a claim construction order must preclude a finding
of infringement-a required element of the plaintiff's
cause of action. Princeton Digital Image Corp. v. Office
Depot Inc., 913 F.3d 1342, 1348 (Fed. Cir. 2019). Such
preclusion of infringement may be established by the patent
owner's binding admission that the accused activities are
not infringing under the adopted claim construction.
Id. (noting that where a claim construction order
does not resolve the issue of infringement, it is not a final
decision, and, accordingly, is not appealable); see
alsoWilson Sporting Goods Co. v. Hillerich &
Bradsby Co., 442 F.3d 1322, 1326 (Fed. Cir. 2006)
(“[F]inal judgment in a patent case will usually