ORDER GRANTING MOTIONS FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

(Re: Docket No. 311, 312)

(Re: Docket No. 339, 336)

(Re: Docket No. 303, 305)

(Re: Docket No. 288, 289)

(Re: Docket No. 310, 312, 315)

PAUL S. GREWAL, United States Magistrate Judge.

A short while ago, Defendants Apple, Inc., Verizon Wireless, AT & T Mobility LLC and HTC Corporation filed motions for summary judgment of no direct infringement of the asserted method claims.1 Citing the Federal Circuit's decision in Ricoh Co., Ltd. v. Quanta Computer Inc.,2 Defendants argued that they could not have directly infringed because it is undisputed that they merely sold preprogrammed accused handsets and did not perform any of the required steps. Adaptix countered with the decision by the Federal Circuit in SiRF Technology, Inc. v. ITC,3 in which the court found direct infringement based on the sale of accused devices preprogrammed to automatically perform certain steps at issue. As the undersigned struggled to reconcile these holdings following a spirited oral argument, into his lap fell a new Federal Circuit decision issued on December 4, 2014—Ericsson, Inc. v. D-Link Systems, Inc.4—that reconciled these seemingly contradictory holdings for him. Under Ericsson, even if they supply handsets preprogrammed to perform multiple claimed steps, Defendants must still perform at least one step of a claimed method themselves to be held liable for direct infringement. Because there is no genuine dispute that Defendants perform no such step, Defendants' motions must be GRANTED.

I.

Pursuant to Fed. R. Civ. P. 56(a), 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."5 At the summary judgment stage, the court "does not assess credibility or weigh the evidence, but simply determines whether there is a genuine factual issue for trial."6 Material facts are those that may affect the outcome of the case.7 A dispute as to a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the non-moving party.8

A patented method cannot be directly infringed merely by the sale of a product.9 Instead, a plaintiff must present specific evidence that the alleged infringer performed or controlled all the steps of a method claim.10 Alternatively, a plaintiff may establish that while the accused infringer performed or controlled some—but not all—such steps, any step not performed or controlled was automatically performed by an accused product according to its programming.11

Adaptix alleges that Defendants directly infringe method claims 1, 8, 9, 12 and 15 of the '212 patent and method claims 8 and 9 of the '748 patent. The patents describe, among other things, "select[ing] a set of candidate subcarriers" for use in wireless communication. Subcarriers are narrow frequency bands over which wireless devices transmit data, as, for example, between a smartphone handset and the nearest base station for its cellular network. The patents refer to wireless handsets as "subscriber units" or simply "subscribers," reflecting that the users of these handsets have subscribed the devices to membership in the cellular network.

In a cellular network of the asserted patents, the base station allocates subcarriers among the various subscriber units in a way that facilitates data transmission. In particular, they describe a subscriber unit that gives the base station feedback as to which subcarriers that subscriber unit is receiving particularly well, and the base station then uses that feedback—together with other information—to allocate particular subcarriers to that subscriber unit. The patents further describe that the subscriber unit—after receiving that allocation of subcarriers—submits updated feedback to the base station and then receives an updated allocation of subcarriers from the base station.

Claim 1 of the '212 patent and Claim 8 of the '748 patent—the two independent claims at issue—recite:

Each of the steps of these methods plainly require action by the subscriber unit when in use.14

Rather than charging that Defendants themselves directly infringe by performing each step of any claimed method, Adaptix looks to SiRF and focuses on Defendants' sale of handsets programmed to perform what the 3GPP standard refers to as "CQI Reporting Mode 3." To be clear, Mode 3 reporting is a protocol that Defendants do not program themselves.15 Defendants instead rely upon processor chips that are programmed with the protocol by the chip suppliers and cannot be re-programmed.16 No matter who does the programming, Defendants argue, because they do not perform any steps of any asserted method, they cannot be found to directly infringe any such method. Based on Ricoh, Defendants seek summary judgment that they did not directly infringe any asserted method claim.

II.

This court has jurisdiction under 28 U.S.C. §§ 1331 and 1338. The parties further consented to the jurisdiction of the undersigned magistrate judge under 28 U.S.C. § 636(c) and Fed. R. Civ. P. 72(a).

III.

The fundamental question underlying Defendants' motions is whether one can directly infringe a claimed method without performing even one step of the method based on the sale of a device preprogrammed to perform one or more such steps. Because the Federal Circuit has now answered that question in the negative, the motions must be granted.

First, there is no genuine dispute that no individual acting on behalf of Defendants used an accused handset to perform any claimed method. None of the evidence cited by Adaptix shows any individual acting on behalf of Defendants using an accused handset to perform any claimed method. Adaptix does not really even argue as much, and Adaptix's infringement expert Michael Caloyannides makes no statement to the contrary.17 While there is evidence that handsets operated by end users have been used to send Mode 3 reports to base stations, because nothing suggests any Defendant is sending those reports, that evidence alone is insufficient to establish direct infringement by Defendants. Nor is it sufficient that any Defendant may have initiated the sending of those reports.18 Adaptix must present evidence that the accused handsets were used to perform at least one step of a claimed method by an individual acting for Defendants, or by an individual "controlled" by Defendants.19 Adaptix has done neither.

Second, in light of Ericsson, Adaptix's SiRF-based theory of direct infringement does not hold water. In SiRF, the defendant was an "end-to-end" provider of GPS services.20 SiRF designed, manufactured and sold chips that were incorporated into end-user GPS devices and also provided GPS-related data from its servers to those end-user devices.21 Every step in the asserted method claims was performed by SiRF using servers in its physical possession and control, except for the final step of each claim, which was performed remotely using SiRF's GPS chip and software in the end-user device.22 On these facts, the Federal Circuit held that SiRF was liable for direct infringement of the asserted method claims.23 In rejecting SiRF's argument that it did not perform the final step of each method claim, the Federal Circuit focused on the fact that SiRF designed and built the chip in the end-user GPS device to automatically perform the claimed step.24 The court found that even though the accused infringer controlled some—but not all—of the method steps, any uncontrolled steps were automatically performed by the accused products.25

Essentially then, what is relevant is not whether any Defendant supplied a handset that can perform each step of a claimed method. What is relevant is whether any such Defendant supplying a handset programmed to perform at least one step may be said to have performed or controlled any others.27 If so, as in SiRF, there is direct infringement. But if not, there is no direct infringement, as in Ricoh. Because Adaptix presents no evidence that Defendants perform or control any claim step, despite their supply of handsets programmed to perform at least some of the other steps claimed, this is plainly a Ricoh-type—and not a SiRF-type—case. No reasonable jury could find otherwise.

IV.

Defendants' motions for summary judgment of non-infringement are GRANTED.

SO ORDERED.