LEONARD P. STARK, District Judge.
At Wilmington this 5th day of June, 2012:
Pending before the Court is a Motion for Summary Judgment of No Willful Infringement filed by defendant Adobe Systems, Inc. ("Adobe").
"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." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact
To defeat a motion for summary judgment, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87, 106 S.Ct. 1348; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) ("[The nonmovant] must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue.") (internal quotation marks omitted). However, 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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "If the evidence is merelycolorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50, 106 S.Ct. 2505 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (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 non-moving 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 non-moving party. Anderson, 477 U.S. at 252, 106 S.Ct. 2505.
In In re Seagate Technology, LLC, 497 F.3d 1360 (Fed.Cir.2007), the Federal Circuit set forth a two-prong test for establishing willful infringement. In order to meet the first prong, the plaintiff must show "by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." Id. at 1371. If the first prong is satisfied, the plaintiff must next establish "that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." Id. If, however, the first prong cannot be shown, then the Court should not put the issue of willfulness — including the second "subjective" prong — before a jury. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236 (Fed.Cir.2011) ("Since Seagate, [the Federal Circuit] has required patentees to prove the objective prong of the willful infringement inquiry by clear and convincing evidence
The Court concludes that the first prong of Seagate cannot be satisfied here due to Adobe's assertion of reasonable claim construction positions under which Adobe would not infringe U.S. Patent No. 6,628,823 (the "patent-in-suit")
Adobe proposed reasonable constructions for the claim terms "output device" and "pictorial dynamic range" under which Adobe's accused products would not infringe. (See D.I. 225 at 4-5) Although the Court did not ultimately adopt Adobe's constructions for these terms (see D.I. 367 at 16-19), the fact that Adobe asserted reasonable constructions under which its products would not infringe precludes a finding that the first prong of Seagate is satisfied. See Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed.Cir. 2008) (determining that "because [disputed claim term] was susceptible to a reasonable construction under which [defendant's] products did not infringe, there was not an objectively high likelihood that [defendant's] actions constituted infringement"). The Court held a Markman hearing during which it heard extensive argument from both sides, spent significant time deciding the proper construction of disputed terms, and issued a detailed Memorandum Opinion addressing claim construction, all attesting to the reality that, in this case, "the proper claim construction was a sufficiently close question to foreclose a finding of wilfulness." Id. at 1374 n. 4.
Moreover, Adobe asserts reasonable arguments that, even under the Court's claim construction, Adobe's accused products do not infringe because they do not meet three limitations of claim 1 of the patent-in-suit. Specifically, Adobe contends that its accused products do not: (1) obtain density capabilities of an output device; (2) determine a reproduction pictorial dynamic range from density capabilities of an output device; or (3) compare an original pictorial dynamic range with a reproduction pictorial dynamic range. (See D.I. 225 at 3) Because Adobe asserts credible, reasonable non-infringement theories, the first prong of Seagate cannot be satisfied.
Tarkus's efforts to defeat Adobe's motion are unavailing. Tarkus attempts to distinguish the cases on which the Court relies by observing, correctly, that nearly all of them involved a ruling of no willful infringement only after the willfulness evidence had been heard. That is, the precedents involved motions for judgment as a matter of law made either during or after trial. In the Court's view, this is a distinction without a difference, as one of the defenses on which Adobe relies — non-infringement based on reasonable proposed claim construction — presents an issue the Court can resolve as a question of law. See Powell, 663 F.3d at 1236-37 ("The court decided issues of claim construction and inequitable conduct, neither of which was before the jury. Thus, while the jury was in a position to consider how the infringement case weighed in the objective prong analysis, on other components — such as claim construction — the objective prong question was properly considered by the court."); Solvay, S.A. v. Honeywell Specialty Materials LLC, 827 F.Supp.2d 358, 366 (D.Del.2011) (granting summary judgment of no willful infringement because defendant "presented a credible invalidity defense, precluding a finding of objective recklessness despite the Federal Circuit's ultimate rejection of the defense").
Tarkus also points to purported genuine disputes of material fact. (See D.I. 240 at 6, 9, 13) There are, indeed, genuine disputes of material fact, but each of them relate solely to Seagate's second prong, an inquiry that must not be put before the jury given Tarkus's failure to satisfy the first prong.
Tarkus also contended during the hearing that some sort of "subjective prerequisite" exists before the Court may even turn to the first prong. (See PreTrial Conference Hr'g Tr., June 1, 2012 at 79) ("Tr.") Although not entirely clear, the Court understands Tarkus's position to be that Adobe has a burden of showing that it subjectively believed it had reasonable non-infringement positions prior to the initiation of this litigation, and there is no such evidence in the record. The answer to this is simply that it is not the law (and Tarkus has cited no authority for it). See generally Seagate, 497 F.3d at 1397 ("The state of mind of the accused infringer is
Finally, Tarkus relies on Judge Farnan's opinion in Power Integrations, Inc. v.
For the foregoing reasons,