RAYMOND A. JACKSON, District Judge.
Before the Court are Defendants', Verizon Communications Inc., Verizon Services Corp., Verizon Virginia Inc., and Verizon South Inc. (collectively, "Verizon"), Motion for Judgment as a Matter of Law of Validity of U.S. Patent No. 6,169,542; and Motion for Judgment as a Matter of Law that U.S. Patent No. 7,561,214 is Not Invalid, both pursuant to Federal Rule of Civil Procedure 50(a). Having carefully reviewed the Parties' pleadings, the Court ruled from the bench regarding Defendants' Motions on July 29, 2011. The reasons for the Court's rulings are set forth more fully below. For the reasons stated herein, Defendants' Motion for Judgment as a Matter of Law of Validity of U.S. Patent No. 6,169,542 and Motion for Judgment as a Matter of Law that U.S. Patent No. 7,561,214 is Not Invalid are both
On May 27, 2010, Plaintiff Active Video Networks, Inc. ("Active Video"), filed suit in the United States District Court for the Eastern District of Virginia against Verizon alleging patent infringement and seeking to enjoin Verizon from infringing certain patents that ActiveVideo owns and to recover monetary damages for previous infringement. On December 2, 2010, Verizon filed an Answer to ActiveVideo's First Amended Complaint and First Amended Counterclaims against ActiveVideo, seeking, inter alia, declaratory judgments of noninfringement and invalidity of ActiveVideo's asserted patents and alleging ActiveVideo's infringement of several patents owned by Verizon. In response, ActiveVideo filed an Answer to Defendant's First Amended Counterclaims and ActiveVideo's First Amended Counterclaims on December 16, 2010 alleging invalidity and non-infringement of the patents that Verizon asserted against it.
On July 12, 2011, a jury trial was held in the United States District Court for the Eastern District of Virginia on ActiveVideo and Verizon's claims of infringement and invalidity. During the trial, ActiveVideo asserted infringement of four of its patents: United States Patent Nos. 5,550,578 (the "'578 patent"), 6,100,883 (the "'883 patent"), 6,034,678 (the "'678 patent"), and 6,205,582 (the "'582 patent"). Similarly, Verizon asserted infringement of two of its patents: United States Patent Nos. 6,169,542 (the "'542 patent") and 7,561,214 (the "'214 patent"). Specifically, Verizon asserted ActiveVideo's infringement of Claim 1 of the '542 patent and Claim 9 of the '214 patent. During the course of the trial, ActiveVideo presented evidence, through the expert testimony of Dr. Diana Hawkins Manuelian, that each of the asserted claims of Verizon's patents were anticipated by prior art. On July 29, 2011, at the close of all the evidence pertaining to its counterclaims, Verizon filed the instant Motion for Judgment as a Matter of Law of Validity of U.S. Patent No. 6,169,542 and Motion for Judgment as a Matter of Law that U.S. Patent No. 7,561,214 is Not Invalid. On July 29, 2011, after thoroughly consideration, the Court granted both of Verizon's Motions.
A district court may grant a motion for judgment as a matter of law if the nonmoving party has been fully heard on an issue and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party
An accused infringer challenging the validity of a patent claim must prove anticipation by clear and convincing evidence. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed.Cir. 2001). An invention is anticipated under 35 U.S.C. § 102 where, inter alia, it was "known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," § 102(a), or it was described in "an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent" or "a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent," § 102(e). However, "[t]o be anticipating, a prior art reference must disclose `each and every limitation of the claimed invention[,] ... must be enabling[,] and [must] describe ... [the] claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention.'" Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed.Cir. 2000) (internal citations omitted).
In Verizon's Motion for Judgment as a Matter of Law of Validity of U.S. Patent No. 6,169,542 and Motion for Judgment as a Matter of Law that U.S. Patent No. 7,561,214 is Not Invalid, Verizon argues that ActiveVideo failed to prove by clear and convincing evidence that the asserted claims of Verizon's patents are invalid. Specifically, Verizon argues that ActiveVideo's invalidity expert, Dr. Manuelian, failed to establish the presence of each and every element of the asserted claims in the prior art references as required to prove anticipation, and failed to demonstrate that a certain reference relied upon in her anticipation analysis of the '542 patent actually constitutes prior art. The Court addresses the sufficiency of Dr. Manuelian's invalidity analysis with respect to each of Verizon's asserted claims in turn.
In her anticipation analysis of Claim 1 of the '542 patent, Dr. Manuelian considered two separate prior art references. First she considered a 1991 or 1992 embedded Covergirl advertisement (the "Covergirl ad") originally produced by Dr. Manuelian as a demonstration of ICTV, Inc.'s
Under 35 U.S.C. § 102(a), a person is not entitled to a patent where "the invention was known or used by others in this country ... before the invention thereof by the applicant for patent." The requirement that an invention be "known" by others does not require that the invention actually be reduced to practice in order to constitute prior art, so long as the knowledge satisfies the requirements of disclosure and enablement. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1369 (Fed.Cir. 2000) ("A presentation indicative of the state of knowledge and use in this country therefore qualifies as prior art for anticipation purposes under § 102."); see also Application of Borst, 52 C.C.P.A. 1398, 345 F.2d 851, 855 (1965) ("[T]he criterion should be whether the disclosure is sufficient to enable one skilled in the art to reduce the disclosed invention to practice. In other words, the disclosure must be such as will give possession of the invention to the person of ordinary skill. Even the act of publication or the fiction of constructive reduction to practice will not suffice if the disclosure does not meet this standard."). Accordingly, the Court rejects Verizon's argument that because the Covergirl ad was a demonstration rather than an actual embodiment of the invention, it cannot constitute prior art under § 102(a).
However, the Federal Circuit has instructed that such prior knowledge or use must be public in order to satisfy the requirements of the statute. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed.Cir. 1998) ("[I]n order to invalidate a patent based on prior knowledge or use, that knowledge or use must have been available to the public"). Dr. Manuelian testified that she showed the Covergirl ad at many conferences. See Trial Tr. 2644, July 28, 2011. The Court finds that Dr. Manuelian's testimony that the advertisement was shown at conferences and used as a promotional device, corroborated by the demonstration video itself, which was copyrighted in 1992, is sufficient to at least create a factual issue as to whether the alleged knowledge or use of the invention was public. See, e.g., Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1305 (Fed.Cir. 2006) (holding that where the alleged prior inventor promoted his system through seminars and clinics and distributed his instruction sheet at those clinics, the prior "knowledge or use" was sufficiently public to constitute prior art).
Having concluded that ActiveVideo submitted sufficient evidence that the Covergirl ad constitutes prior art, the Court now turns to the issue of whether Dr. Manuelian demonstrated that the Covergirl ad satisfies the disclosure and enablement requirements for anticipation. See Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376,
ActiveVideo stipulated that one of ordinary skill in the art as it pertains to the '542 Patent is "someone who has at least an undergraduate degree in electrical engineering, computer science, or a similar discipline, and has at least three years experience in the field of interactive video distribution networks or systems, including a familiarity with delivering advertising through an interactive video distribution system." Trial Tr. 2623, July 28, 2011. Dr. Manuelian admittedly did not possess a degree in electrical engineering, computer science, or similar technical discipline, but rather was an expert in the field of user interfaces. Therefore, she did not (and could not) opine as to whether one of ordinary skill in the art would have been able to combine the Covergirl ad with his or her own knowledge of the art and practice the invention. See In re Graves, 69 F.3d 1147, 1152 (Fed.Cir. 1995); see also Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315-16 (Fed.Cir. 2002) ("Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference."). Specifically, Dr. Manuelian did not provide an opinion on whether one of ordinary skill in the art would have known how the advertisements would be transmitted through the video distribution system, i.e. through the head end facility as required by the claim, which is knowledge necessary to enable one to practice the invention. Further, ActiveVideo provided no additional evidence or testimony as to whether the Covergirl ad would enable one of skill in the art to practice the invention. Therefore, the Court finds that ActiveVideo has not presented sufficient evidence from which a reasonable jury could conclude that the Covergirl ad would enable one of skill in the art to practice Claim 1 of the '542 Patent.
In addition to considering the Covergirl ad, Dr. Manuelian also concluded that Claim 1 of the '542 Patent is anticipated by the '455 Patent. Verizon contends that the '455 Patent fails to disclose the elements of "receiving, at said head end facility over a return path, a request to register said advertisement in a menu" and "obtaining, at said head end facility over said return path, a selection request for said entry," but instead describes receiving requests at the node only. During her analysis of Claim 1 of the '542 Patent, Dr. Manuelian offered an opinion that the step of "receiving, at said head end facility
Similarly, Dr. Manuelian failed to point to anything within the '455 Patent to demonstrate disclosure of the step of "obtaining, at said head end facility over said return path, a selection request for said entry," as she failed to show that the request for the entry is received at the head end facility rather than at the node. See Trial Tr. 2658, July 28, 2011. Accordingly, because Dr. Manuelian failed to demonstrate that the various requests described in the '542 Patent are received at the head end facility, rather than at the node, in the '455 Patent, the Court finds that she failed to demonstrate that each and every element of Claim 1 of the '542 Patent is disclosed in the '455 Patent. Thus, ActiveVideo has not presented sufficient evidence from which a reasonable jury could conclude that Claim 1 of the '542 Patent is anticipated by either the Covergirl ad or the '455 Patent.
In addition to analyzing Claim 1 of the '542 Patent, Dr. Manuelian also provided anticipation analysis for Claim 9 of the '214 Patent. During her analysis of Claim 9 of the '214 patent, Dr. Manuelian considered a single prior art reference, European Patent Application No. 0721253 (the "EP 253 Application"), which was published on October 7, 1996, and concluded that the EP 253 Application disclosed each and every element of Claim 9 of the '214 patent. Verizon argues that Dr. Manuelian's analysis is flawed because she is not a person of ordinary skill in the art and she failed to demonstrate that several elements of Claim 9 were present in the EP 253 Application by clear and convincing evidence. The Court finds that Dr. Manuelian failed to show by clear and convincing evidence that each and every element of Claim 9 of the '214 patent is disclosed in the EP 253 Application.
In particular, Dr. Manuelian failed to show by clear and convincing evidence that the EP 253 Application discloses the element of "including with the first indication a second indication, wherein the second indication is included when there is at least one multiplex channel associated with the first anchor channel." Relying on an example from the EP 253 Application, Dr. Manuelian opined that the "ESPN" logo constituted the "first indication" corresponding to the anchor channel, while the "ESPN2" logo was the "second indication" corresponding to the multiplex channel associated with the anchor channel. See Trial Tr. 2679-80, July 28, 2011. However, although the ESPN and ESPN2 channels may happen to originate from a common broadcast provider, see ActiveVideo Networks, 801 F.Supp.2d at 495-96, 2011 WL
Furthermore, Dr. Manuelian fails to identify how the EP 253 Application discloses a "first command" for selecting multiplex channels, versus a "second command" for selecting anchor channels. Although Dr. Manuelian demonstrated the selection of the second anchor channel by highlighting, on Figure 14A of the EP 253 Application, how the user could scroll vertically from ESPN2 to the Disney channel below it in the station index, the user could just as easily scroll to the right of ESPN2 to select the listed DirectTV channel, which is not a multiplex channel of ESPN. Dr. Manuelian's opinion that the EP 253 Application allows for navigation two different ways, is not sufficient to show that navigation to the anchor channels must be different in form from navigation between corresponding multiplex channels. See Trial Tr. 2683-84, July 28, 2011. Thus, the Court finds that Dr. Manuelian failed to demonstrate this element of Claim 9 of the '214 patent by clear and convincing evidence. Because ActiveVideo failed to demonstrate that each and every element of Claim 9 of the '214 patent is disclosed in the EP 253 Application, the Court declines to submit the issue of invalidity of Claim 9 to the jury.
The Court finds that ActiveVideo has not presented sufficient evidence to sustain its claims of invalidity on any of Verizon's asserted claims. Accordingly, the Court declines to tender the issue of invalidity of Verizon's asserted claims to the jury. For the foregoing reasons, Defendants' Motion for Judgment as a Matter of Law of Validity of U.S. Patent No. 6,169,542 and Motion for Judgment as a Matter of Law that U.S. Patent No. 7,561,214 is Not Invalid are both
The Court