JAMES WARE, Chief Judge.
Mformation Technologies, Inc. ("Plaintiff") brings this action against Defendants Research in Motion Limited and Research in Motion Corporation (collectively, "Defendants") alleging infringement of U.S. Patent No. 6,970,917 ("the '917 Patent"). The '917 Patent pertains to a method, system and computer program for remote control and management of wireless devices. Plaintiff alleges that Defendants infringe the '917 Patent by importing, marketing, manufacturing, using and selling the BlackBerry Enterprise Server ("BES") software product. Defendants deny infringement and allege that the '917 Patent is invalid. After a series of amendments and motions,
Presently before the Court are Plaintiff's Motions for Summary Judgment on various affirmative defenses asserted by Defendants,
The standard for summary judgment does not change in a patent case. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994). Summary judgment is proper when the moving party shows that there is no genuine dispute as to any material fact. Fed.R.Civ.P. 56(a). The purpose of summary judgment "is to isolate and dispose of factually unsupported claims or defenses." Celotex v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party "always bears the initial responsibility of informing the district court of the basis for its motion, and identifying the evidence which it believes demonstrates the absence of a genuine issue of material fact." Id. at 323, 106 S.Ct. 2548. If the moving party meets its initial burden, the "burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is a genuine issue for trial." Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 987 (9th Cir. 2006) (citing Celotex, 477 U.S. at 324, 106 S.Ct. 2548).
Although the district court has discretion to consider materials in the court file not referenced in the opposing papers, it need not do so. See Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1028-29 (9th Cir.2001). "The district court need not examine the entire file for evidence establishing a genuine issue of fact." Id. at 1031. However, when the parties file cross-motions for summary judgment, the district court must consider all of the evidence submitted in support of both motions to evaluate whether a genuine issue of material fact exists precluding summary judgment for either party. Fair Housing Council of Riverside Cnty., Inc. v. Riverside Two, 249 F.3d 1132, 1135 (9th Cir. 2001).
As an affirmative defense, Defendants assert that the lawsuit against them is barred by the doctrine of laches. Plaintiff moves for summary judgment to eliminate the defense of laches on the ground that based on undisputed evidence with respect to the timing of the filing of this lawsuit, Defendants cannot prove laches as a matter of law. In addition, Plaintiff contends that there is no evidence that the timing of this lawsuit caused Defendants to suffer damages. (Laches Motion at 4-6.) Defendants respond that summary judgment should be denied because: (1) after the '917 Patent was issued, Plaintiff allowed nearly three years to pass before filing this lawsuit; and (2) there is a genuine factual dispute over whether Defendants suffered damages based on the lapse of time between the issuance of the patent and this suit.
Under the doctrine of laches, a patent infringement action may be dismissed if the defendant proves by a preponderance of evidence that: (1) "the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant"; and (2) "the delay operated to the prejudice or injury of the defendant." A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1032 (Fed.Cir.1992). "The length of time which may be deemed unreasonable has no fixed boundaries but rather depends on the circumstances." Id. "The period of delay is measured from the time the plaintiff knew
Although "a determination of what period of time constitutes an `unreasonable' or `inexcusable' delay is a question of fact specific to each case," courts have "typically found a period of delay `unreasonable' only when it substantially exceeded [four years]." IXYS Corp. v. Advanced Power Tech., Inc., 321 F.Supp.2d 1156, 1163 (N.D.Cal.2004). A delay of three or four years has been deemed "unreasonable only when that delay was accompanied by extraneous improper tactics or misleading conduct by the plaintiff." Id. (citing Federal Circuit cases).
Here, the record shows that the '917 Patent was issued on November 29, 2005. Thus, the earliest possible date on which a claim of unreasonable delay could be based is November 29, 2005, the date on which the Patent was issued. A.C. Aukerman Co., 960 F.2d at 1032. Plaintiff filed this lawsuit on October 31, 2008. Accordingly, the time period upon which Defendants must rely to prove unreasonable delay is two years and eleven months. Because this time period is less than six years long, the presumption of laches does not attach. Id. at 1028. Furthermore, courts typically find a period of delay "unreasonable" only when it "substantially exceed[s]" four years. IXYS Corp., 321 F.Supp.2d at 1163. Although there are patent infringement cases finding "unreasonable delay" based on a time period of fewer than three years, in such cases the courts place an additional burden on the defendant to prove that the delay was "accompanied by extraneous improper tactics or misleading conduct" by the plaintiff. Id.
In recognition of this additional burden, Defendants proffer two kinds of evidence: (1) evidence suggesting that Plaintiff's employees "had already developed suspicions" that it had a "potential claim of infringement" against Defendants prior to receiving its Patent; and (2) evidence that Defendants' product was "widely sold and promoted." (Laches Opp'n at 3-6.)
As to the first of Defendants' contentions, the evidence proffered by Defendants consists of internal emails sent from certain employees of Plaintiff to other employees of Plaintiff. (See Laches Opp'n, Exs. 2-8.) These emails, Defendants contend, "conclusively demonstrate" Plaintiff's "familiarity" with Defendants' product and thus show that Plaintiff had knowledge of its patent infringement claims as of November 29, 2005, the date when the '917 Patent was issued. (Id. at 3-4.) However, viewed in the light most favorable to Defendants, these internal emails only show that employees of Plaintiff were familiar with Defendants' product and that those employees suspected that Plaintiff had a potential infringement claim. The emails do not constitute evidence of "extraneous improper tactics or misleading conduct" by Plaintiff, and thus do not support Defendants' contention that Plaintiff's delay of two years and eleven months in filing this lawsuit was unreasonable. IXYS Corp., 321 F.Supp.2d at 1163.
As to the second of Defendants' contentions, the evidence proffered by Defendants shows only that Defendants "widely marketed and sold" their product throughout the United States. (See Laches Opp'n at 5-6; Id., Exs. 9-10, 13.) Again, viewed in the light most favorable to Defendants, this evidence only speaks to whether employees of Plaintiff were familiar with Defendants' product. As discussed above, however, the mere fact that employees of
The cases that Defendants rely upon in support of their contention that courts have "held that three-year delays were unreasonable under circumstances analogous to those [in this case]" are inapposite. (Laches Opp'n at 7.) In Odetics, Inc. v. Storage Technology Corp.,
In Wafer Shave, Inc. v. Gillette Co.,
Finally, in Rosemount, Inc. v. Beckman Instruments, Inc.,
Accordingly, the Court GRANTS Plaintiff's Motion of Summary Judgment with respect to the defense of laches.
As an affirmative defense, Defendants contend that Claim 1 of the '917 Patent is invalid as anticipated. Plaintiff contends that it is entitled to summary judgment with respect to the defense of anticipation, because none of the cited prior art references satisfy the legal requirements for anticipation. In deciding whether prior art anticipates a patent claim, the Court must examine the scope of the cited reference in light of the scope of the patent claim as construed by the Court.
Claim 1 provides:
('917 Patent, Col. 7:22-44.)
On November 20, 2009, the Court held a hearing in accordance with Markman v. Westview Instruments, Inc.
Disputed Claim Language in Claim 1 Court's Construction "remotely managing a wireless device over a "using the server that is physically separate wireless network" from the wireless device to wirelessly control the functionality of the wireless device" "server" "a device or computer in a network that is dedicated to providing resources to the wireless device" "establishing a mailbox for the wireless "creating an address in memory of the server device at the server" that can store information intended for delivery to the wireless device" "placing a command for the wireless device in "storing at the server in the mailbox associated the mailbox at the server" with the wireless device a code or signal that is intended to cause the wireless device to take or cease an action with respect to its functionality and other data for use by the wireless device" "transmitting the contents of the mailbox "wirelessly sending from the server to the from the server to the wireless device" wireless device the contents of the mailbox" "establishing a connection between the "establishing a connection between the wireless wireless device and the server ... wherein device and the server based on a predefined the connection is established based on a state of the server or the wireless device threshold condition" other than solely the elapsing of time"
In addition to the words and phrases that have been construed by the Court, Plaintiff contends that the references do not anticipate Claim 1 because none of the cited references disclose, inter alia, the limitation "without a request from the wireless device, performing the steps of." In its Claim Construction Order, the Court did not construe this limitation. Therefore, before addressing the anticipation
On August 31, 2011, the Court ordered the parties to submit additional briefing setting forth their proposed definitions of the subject limitation. (Docket Item No. 645.) On September 7, 2011, the parties submitted their proposed constructions.
The limitation "without a request from the wireless device, performing the steps of" is a Preamble to enumerated steps. Some of the enumerated steps are disclosed as being performed "without a request" from the wireless device "at the server" or "from the server."
Pertinent to the construction of the phrase "without a request from the wireless device," the written description discusses two types of devices:
('917 Patent, Col. 6:39-50.)
Based on the claim language and the written description, the Court finds that a person of ordinary skill in the art would understand that in using the phrase "without a request from the wireless device," the inventors were referring to functions that are performed as a "push" function.
Accordingly, as used in Claim 1 of the '917 Patent, the Court construes "without a request from the wireless device, performing the steps of" to mean:
Having now construed the language of Claim 1, the Court proceeds to consider Plaintiff's Motion for Summary Judgment that Defendants have insufficient evidence to sustain the defense of anticipation.
An invention claimed in a patent is anticipated under § 102(b) if "the invention was patented or described in a printed publication ... more than one year prior to the date of the application." Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000). A determination that a patent is invalid as being anticipated requires a finding that "each and every limitation is found either expressly or inherently in a single prior art reference." Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir.1998). "Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates." See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.Cir.2002) (citation omitted). When there is no genuine issue of material fact, a court may resolve a question of anticipation on summary judgment. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1301 (Fed.Cir.2008) (affirming grant of summary judgment of anticipation under § 102(b)); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1381 (Fed.Cir.2001). Since an issued patent is presumed to be valid, a party challenging the patent must prove anticipation by clear and convincing evidence. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed.Cir.1999).
Here, Defendants base their anticipation defense on four separate prior art references: (1) Unicenter; (2) the Howard Patent; (3) Mobitex; and (4) RemoteWare. (Anticipation Motion at 2-4.) Plaintiff does not contend that any of the four alleged prior art references are not, in fact, prior art under § 102(b). However, Plaintiff contends that the evidence is undisputed that none of the references disclose all of the limitations of Claim 1.
In reply to Plaintiff's Motion, as to each of the prior art references Defendants primarily rely on the testimony of their expert, Dr. Anthony Acampora, and other documentary evidence as raising a genuine factual dispute over the scope of the prior art. Having examined the proffered evidence, and without intending to comment on the credibility of Dr. Acampora's multiple opinions, rather than recite its analysis of each limitation as applied to each reference,
Accordingly, the Court DENIES Plaintiff's Anticipation Motion.
As affirmative defenses, Defendants allege that in prosecuting the '917 Patent, Plaintiffs or their counsel Michael Schwartz ("Schwartz") engaged in inequitable conduct by intentionally failing to disclose the following information to the U.S. Patent and Trademark Office ("PTO"): (1) Schwartz failed to disclose a material reference ("Parkinson") to the PTO; (2) Plaintiff failed to identify Gurinder Johar ("Johar") as an inventor of the '917 Patent; and (3) Schwartz failed to disclose two other material references ("Dimech" and "Geiger") to the PTO.
To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO. Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed.Cir.2011). "In other words, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it." Id. "[T]o meet the clear and convincing evidence standard, the specific intent to deceive must be `the single most reasonable inference able to be drawn from the evidence.' Indeed, the evidence `must be sufficient to require a finding of deceitful intent in the light of all the circumstances.' Hence, when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found." Id. at 1290-91 (citations omitted) (emphasis in original).
With respect to each of these alleged failures, Plaintiff moves for summary judgment on the ground that there is insufficient evidence that it or Schwartz withheld material information from the PTO or that either of them had a specific intent to deceive the PTO. (Inequitable Conduct Motion at 11-23.) The Court considers the evidence with respect to each of these grounds in turn.
Plaintiff proffers evidence that Schwartz believed that he had disclosed the Parkinson reference to the PTO because he specifically disclosed it in the provisional patent application on which the '917 Patent application was based.
Accordingly, the evidence is insufficient to require a finding of deceitful intent on the part of Schwartz, which means that intent to deceive cannot be found. Therasense, 649 F.3d at 1290-91.
With respect to Plaintiff's alleged failure to identify Johar as one of the inventors of the '917 Patent, Plaintiff proffers the following evidence to establish that there was no deceitful intent: (1) Johar himself never indicated to anyone at Mformation that he believed he should be named as an inventor on the '917 Patent;
Accordingly, the evidence is insufficient to require a finding of deceitful intent on the part of Plaintiff as to its failure to identify Johar as a named inventor, which means that intent to deceive cannot be found. Therasense, 649 F.3d at 1290-91.
In support of its contention that Schwartz acted with deceitful intent, Defendants contend that he "knew of [the Dimech and Geiger references] during prosecution of the '917 application and failed to disclose them" to the PTO. (Inequitable Opp'n at 24.) In particular, Defendants contend that: (1) Schwartz was prosecuting both the '917 Patent and a second application, the '408 application, which was a "continuation-in-part of the '917 application," at the same time; and (2) Schwartz disclosed the Dimech and Geiger references as ones "of particular relevance" to the '408 application, but failed to disclose them during prosecution of the '917 application, even though he "both knew of the similarities between the '408 and '917 applications and was aware of the specific teachings in Dimech and Geiger regarding limitations that appear in both the '408 and '917 applications." (Id. at 25.) Thus, Defendants contend that the "most reasonable inference" to be drawn is that Schwartz: (1) knew that the Dimech and Geiger references were material to the '917 Patent, and (2) acted with intent to deceive the PTO by failing to disclose them. (Id.)
In response, Plaintiff contends that it would be reasonable to infer that Schwartz either "simply never considered Dimech and Geiger to be material to the '917 patent," or else that he "never made an affirmative decision not to disclose" those references during prosecution of the '917 Patent, and that it is therefore not the case that the evidence "requires" a finding of deceitful intent.
Upon review, the Court finds that Defendants do not meet their burden of showing that Schwartz: (1) knew that the Dimech and Geiger references were material; and (2) made a deliberate decision to withhold them. The evidence presented by Plaintiff permits the reasonable inference that Schwartz did not consider the Dimech and Geiger references to be material to the '917 Patent. But if that reasonable
Accordingly, the Court GRANTS Plaintiff's Motion for Summary Judgment against Defendants on the affirmative defense of inequitable conduct on the ground that based on the undisputed evidence, Defendants cannot prove inequitable conduct as a matter of law.
As an affirmative defense, Defendants contend that all of the Claims of the '917 Patent are invalid because (1) the phrases "the contents of the mailbox" and "enabling/disabling" are indefinite; (2) the phrase "enabling/disabling" lacks written description and is not enabled, rendering claims 5, 21 and 22 invalid; (3) the term "mailbox" is indefinite, and the step of "establishing a mailbox" and the term "mailbox" lack written description and are not enabled; and (4) Claim 4 of the '917 Patent contains contradictory elements making it nonsensical, which renders it invalid.
Plaintiff moves for summary judgment that Claims 1, 4, 5, 6, 21-25, and 27 of the '917 Patent are definite, contain sufficient written description and are enabled, on the grounds that: (1) each of the three claim terms Defendants contend are indefinite are "amenable to construction," and the Court has in fact already construed two of them, meaning that the claims are not indefinite as a matter of law; and (2) as a matter of law, Defendants cannot prove that the contested terms are not enabled or lack written description. (Indefiniteness Motion at 3-11.)
"A patent is presumed valid, and the burden of establishing invalidity as to any claim of a patent rests upon the party asserting such invalidity. Clear and convincing evidence is required to invalidate a patent." Aero Prods. Int'l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1015 (Fed.Cir.2006). Whether a claim is sufficiently definite to satisfy the statutory requirements of patent law is a question of law. See id. "If a claim is amenable to construction, `even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree,' the claim is not indefinite." Id. at 1016 (citation omitted).
Title 35 U.S.C. § 111 provides that an application for a patent must include a "specification" which complies with the requirements of § 112. Section 112 requires, inter alia, the specification to conclude with the recitation of one or more claims:
35 U.S.C. § 112.
In addition, § 112 requires that the specification satisfy three separate, but related, requirements: (1) it must contain a "written description" of the invention; (2) it must enable a person of skill in the art to make and use the invention; and (3) if
35 U.S.C. § 112; see also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 921 (Fed.Cir.2004).
Although the three requirements are related, the "written description" requirement is distinct and independent from the "enablement" and "best mode requirement." Univ. of Rochester, 358 F.3d at 922. There have been cases in which the courts have held that a specification met the written description requirement, but nevertheless found that the description was not "enabling." Id. (citing In re Alton, 76 F.3d 1168, 1172 (Fed.Cir.1996)). Similarly, there have been cases holding a specification "enabling" of the invention as disclosed, but holding that it did not contain an adequate "written description" of other parts of the invention. Id.
The written description must "clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (citation omitted). "In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. (citations omitted). Whether the written description requirement is met is a question of fact. See Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1369-70 (Fed.Cir. 2009).
To be enabling, "the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without `undue experimentation.'" Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997) (citations omitted). Whether the enablement requirement is met is a mixed question of law and fact. See id.
Here, the Court finds that both of these phrases are amenable to construction, which means that they do not render the claims indefinite. Aero Prods., 466 F.3d at 1016. First, as to "the contents of the mailbox," the Court construed "transmitting the contents of the mailbox from the server to the wireless device" in its Claim Construction Order. (See Markman at 16-17.) In the course of construing that term, the Court explained that "contents," in this context, means, for example, a "new program," as opposed to a "command to store a new program." (Id. at 16.) Second, as to the phrase "enabling/disabling," the Court finds that it may be construed to mean "enabling or disabling," as discussed below. Thus, because the phrases are amenable to construction, they therefore are not indefinite.
Accordingly, the Court GRANTS Plaintiff's Motion as to the non-indefiniteness of the phrases "the contents of the mailbox" and "enabling/disabling."
Defendants contend that the phrase "enabling/disabling" lacks written description and is not enabled. (Indefiniteness Opp'n at 6-7.) In support of this
Based on the conflicting expert testimony, the Court finds that there is a genuine issue of material fact as to whether one of ordinary skill in the art would find that the phrase "enabling/disabling" has adequate written description. Therefore, summary judgment is inappropriate as to this issue.
Accordingly, the Court DENIES Plaintiff's Motion as to whether the phrase "enabling/disabling" meets the written description and enablement requirements.
Here, the Court finds that this phrase is amenable to construction, which means that it does not render the claims indefinite. Aero Prods., 466 F.3d at 1016. In its Claim Construction Order, the Court construed several phrases pertaining to the "mailbox," including, inter alia, "establishing a mailbox for the wireless device at the server." (See Markman at 12-13.) In the course of construing that phrase, the Court found that, in the field of electronics, the word "mailbox" is "commonly used to refer to a storage location for information intended for a particular addressee." (Id. at 12.) The Court construed the phrase to mean "creating an address in memory of the server that can store information intended for delivery to the wireless device." (Id. at 13.) In arriving at this construction, the Court necessarily found that the term "mailbox" was amenable to construction.
Accordingly, the Court GRANTS Plaintiff's Motion as to the non-indefiniteness of the term "mailbox."
Defendants contend that the step of "establishing a mailbox" and the term "mailbox" lack written description and are
Upon review, the Court finds that there is a genuine issue of material fact as to whether one of ordinary skill would know how to implement these elements in the manner claimed in the '917 Patent. In particular, the Court finds that the testimony from Dr. Acampora, on which both sides rely, states that one of skill in the art "would understand that there are many known algorithms that might be applied to accomplish" the step at issue, and further states that one of skill in the art "would not know whether the claim covers one of these, several of these, or all of these, or whether the patentees had some new algorithm in mind." (Acampora Report ¶ 580.) Based on this evidence, which is the only evidence presented as to this issue, the Court finds that it is unclear, as a matter of fact, whether the written description and enablement requirements are met here. Accordingly, summary judgment is inappropriate as to this issue.
Accordingly, the Court DENIES Plaintiff's Motion as to whether the step of "establishing a mailbox" and the term "mailbox" meet the written description and enablement requirements.
Defendants contend that Claim 4 of the '917 Patent is "impossible and nonsensical," because it requires that the connection between the server and wireless device be "established based on both solely the elapsing of time and other than solely the elapsing of time." (Indefiniteness Opp'n at 11.)
Upon review, the Court finds that Claim 4 is not "impossible and nonsensical." In its claim construction, the Court construed the phrase "establishing a connection between the wireless device and the server... wherein the connection is established based on a threshold condition." The Court found that this phrase means a connection "between the wireless device and the server based on a predefined state of the server or the wireless device other than solely the elapsing of time." (See Markman at 19.) Thus, the Court only found that conditions that are based "solely" on the "elapsing of time" could not be used to establish a connection between the wireless device and the server. From this, it follows that, for example, conditions that are based on both a predefined state of the server and the elapsing of time are included under the Court's construal of Claim 4. Because Claim 4 may comprise such possible conditions, it is not "impossible and nonsensical."
Accordingly, Plaintiff's Motion is GRANTED as to whether Claim 4 of the '917 Patent is invalid due to containing contradictory elements.
As an affirmative defense, Defendants contend that the '917 Patent is invalid
"A person shall be entitled to a patent unless ... the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). "Public use includes `any [public] use of [the claimed] invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.'" Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1384 (Fed.Cir.2007) (quoting In re Smith, 714 F.2d 1127, 1134 (Fed.Cir. 1983)). "When the asserted basis of invalidity is prior public use, the party with the burden of proof must show that `the subject of the barring activity met each of the limitations of the claim, and thus was an embodiment of the claimed invention.'" Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 737 (Fed.Cir.2002) (quoting Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1383 (Fed.Cir.1999)). Because a patent carries a statutory presumption of validity, a party challenging the validity of a patent on the basis of prior use must show by clear and convincing evidence that the invention was in public use more than one year prior to filing the application. Am. Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267 (Fed.Cir.2008). "Generally, oral testimony of prior public use must be corroborated in order to invalidate a patent." Juicy Whip, 292 F.3d at 737-38.
Here, the Court finds that summary judgment is inappropriate because there is a factual dispute as to whether the invention was in public use before August 10, 2000, one year prior to the filing of the '534 Application. Defendants rely exclusively on statements from the deposition of Dr. Rakesh Kushwaha
Defendants' reliance on Radobenko v. Automated Equipment Corp. for the proposition that Dr. Kushwaha's later conflicting testimony cannot raise a disputed issue of fact is misplaced. 520 F.2d 540 (9th Cir.1975). In that case, the plaintiff filed an affidavit that flatly contradicted his previous deposition testimony in an attempt to defeat a motion for summary judgment. Id. at 544. The Ninth Circuit rejected the affidavit on the ground that it was "convinced that the issues of fact created by [Plaintiff] are not issues which this [c]ourt could reasonably characterize as genuine; rather, they are sham issues which should not subject the defendants to the burden of a trial." Id. The court noted that "[i]f a party who has been examined at length on deposition could raise an issue of fact simply by submitting an affidavit contradicting his own prior testimony, this would greatly diminish the utility of summary judgment as a procedure for screening out sham issues of fact." Id. (citation omitted). In Kennedy v. Allied Mut. Ins. Co., the Ninth Circuit clarified its holding in Radobenko by stating that "before applying the Radobenko sanction, the district court must make a factual determination that the contradiction was actually a `sham.'" 952 F.2d 262, 267 (9th Cir.1991). In this case, Dr. Kushwaha provided the deposition testimony challenged by Defendants months prior to the filing of these Motions. Moreover, in making changes to his prior testimony, Dr. Kushwaha explained that the questions asked at the previous session of his deposition "were confusing" and that he felt that he needed to clarify his answers.
In light of the evidence presented, the Court finds that there is a triable issue of fact over whether Plaintiff publicly demonstrated the invention claimed in the '917 Patent before August 10, 2000. Accordingly, the Court DENIES the Public Use Motion and the Claim Priority Motion.
Defendants move for summary judgment limiting Plaintiff's damages to those that accrued after October 27, 2008. (Damages Motion at 2-8.) The parties agree that Plaintiff did not inform Defendants prior to filing suit that Defendants were infringing the '917 Patent.
Title 35 U.S.C. § 287(a) limits liability for patent infringement by requiring a patentee to give notice to the public of the patent by marking the patented product with the word "patent" along with the patent number. See, e.g., Devices for Med., Inc. v. Boehl, 822 F.2d 1062, 1063 (Fed.Cir.1987). If the patented product is not labeled as such, damages are recoverable only for the period after the infringer was "notified of the infringement."
In Hanson v. Alpine Valley Ski Area,
By contrast, in American Medical Systems, Inc. v. Medical Engineering Corp.,
Here, Plaintiff asserted both the apparatus and the method claims of the '917 patent against Defendants.
The Crown Packaging court made clear that in finding § 287(a) inapplicable to the facts at bar, it was not overruling or limiting American Medical. 559 F.3d at 1316. In explaining why marking was required in one circumstance and not the other, the court explained that "[i]n this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims. In American Medical, in contrast, `both apparatus and method claims of [the patent] were asserted.'" Id. at 1317 (citation omitted) (emphases added). Thus, in Crown Packaging the Federal Circuit clearly stated that the applicability of § 287(a) turns on which claims were asserted. Therefore, as Plaintiff asserted both apparatus claims and method claims in this litigation, the Court finds that the marking requirements of § 287(a) are applicable.
Accordingly, the Court finds that Plaintiff was required to mark its products to claim pre-suit damages. There being no dispute that Plaintiff did not do so prior to October 27, 2008, the Court GRANTS Defendants' Damages Motion.
In their Noninfringement Motion, Defendants contend that Plaintiff cannot establish that Defendants directly or indirectly infringe any asserted claim of the '917 Patent. (Noninfringement Motion at 1-2.) The Court considers Defendants' Motion with respect to direct infringement and indirect infringement separately.
Defendants contend that Plaintiff cannot establish direct infringement of the '917 Patent on the following grounds: (1) Plaintiff has no evidence that Defendants used the accused software products in the manner that Plaintiff contends infringes the '917 Patent; and (2) Plaintiff has no evidence that Defendants performed the "establishing a mailbox" and "placing a command for the wireless devices in the mailbox at the server" steps of Claim 1 within the United States because each of the data structures used by Defendants that allegedly constitute such a "mailbox" resides on servers outside of the United States. (Noninfringement Motion at 10-12.) Plaintiff responds that: (1) Defendants admit that their employees activate and manage BlackBerry devices using BES software in the United States; and (2) Defendants operate several BES servers in the United States.
Direct infringement of a method claim requires a single party to perform every step of the claim. BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378-79 (Fed.Cir.2007). "In order to prove direct infringement, a patentee must either point to specific instances of direct infringement
Here, the Court finds that Defendants are entitled to summary judgment on the issue of direct infringement. First, Defendants cannot be liable for direct infringement based solely on the sale of BES software that allegedly practices the method claimed in the '917 Patent. Ricoh, 550 F.3d at 1335. Instead, Plaintiff must show that Defendants actually used the BES software within the United States in a way that directly infringes the patent-in-suit, i.e., in a way that practiced each step of the patented method within the United States. Id. The Court finds that, based on the undisputed facts, Plaintiff cannot establish that Defendants performed either the "establishing a mailbox" or "placing a command for the wireless device in the mailbox at the server" within the United States. In its infringement contentions, Plaintiff contends that the following structures constitute a "mailbox" within the meaning of the '917 Patent: (1) the "ITAdminQueue table of the BlackBerry Configuration Database"; (2) the "User Config Table in the BES"; and (3) individual entries in the ITAdminQueue and BlackBerry Configuration Database.
Plaintiff's reliance on the testimony of Keith Bilinsky, Defendants' Rule 30(b)(6) deponent, is insufficient to raise a disputed issue of material fact. Significantly, Bilinsky testified that all of Defendants' database servers used to support BES-managed devices in the United States are located in Ontario, Canada.
Accordingly, the Court GRANTS Defendants' Noninfringement Motion with regard to Plaintiff's direct infringement theory.
Defendants contend that they are entitled to summary judgment on Plaintiff's claims of indirect infringement on the following grounds: (1) Plaintiff does not have adequate evidence to establish that a third party actually used Defendants' products in a manner that infringes the '917 Patent; (2) Defendants cannot be liable for contributory infringement because Defendants' products lack substantial noninfringing uses; and (3) Plaintiff cannot establish that Defendants had knowledge or intent to induce infringement of the '917 Patent. (Noninfringement Motion at 13, 20-21.) Plaintiff responds that: (1) Plaintiff has submitted evidence of infringement by multiple third parties — including ISEC7, Informed Medical Communications, EveryNetwork, Inc. and Foley & Lardner LLP — in the form of a declaration by Rakesh Kushwaha and declarations from the third parties regarding their standard use of Defendants' BES software; (2) the specific features of Defendants' products that Plaintiff alleges are infringing do not have substantial noninfringing uses; and (3) Defendants had specific intent to infringe the patent because they were aware of the '917 Patent as a result of meetings in July 2001 and February 2004 and provided users of BES with instructions on how to practice the infringing method. (Noninfringement Opp'n at 3-22.)
There are two forms of indirect infringement: induced infringement and contributory infringement. Induced infringement is addressed by § 271(b), which states: "Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b). "[I]nduced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement." Global-Tech Appliances, Inc. v. SEB S.A., ___ U.S. ___, 131 S.Ct. 2060, 2068, 179 L.Ed.2d 1167 (2011). Knowledge can be established through proof of wilful blindness by the defendant, which requires the following: "(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact." Id. at 2070.
Liability for contributory infringement is addressed in § 271(c), which states:
35 U.S.C. § 271(c). "Contributory infringement imposes liability on one who embodies in a non-staple device the heart of a patented process and supplies the device to others to complete the process and appropriate the benefit of the patented invention." Vita-Mix Corp. v. Basic
Here, the Court finds that Defendants are not entitled to summary judgment on the issue of indirect infringement. First, Defendants are not entitled to summary judgment on the ground that Plaintiff cannot establish infringement by a third party. Plaintiff submits a declaration from Dr. Kushwaha stating that he personally observed two third parties, ISEC7 and Informed Medical Communications, Inc., use BES software to perform each step of the '917 Patent.
Second, Defendants are not entitled to summary judgment on the ground that the BES software has substantial noninfringing uses and that Plaintiff therefore cannot prevail on a contributory infringement theory. Defendants contend that BES software can be used to perform tasks other than those that are alleged to constitute infringement of the '917 patent, e.g., sending and receiving email, placing telephone calls and managing dates. (Noninfringement Motion at 18.) Defendants also contend that the specific BES device management functions targeted by Plaintiff can be performed in ways that do not involve wireless control, such as by using a wired connection to activate a handheld device or
Third, Defendants are not entitled to summary judgment on the ground that Plaintiff cannot establish Defendants' knowledge and specific intent to induce infringement of the '917 Patent. Plaintiff has submitted evidence that certain employees of Defendants had knowledge of the '917 Patent as early as July 2001 as part of a series of disclosures made while Plaintiff was pursuing a potential partnership and licence agreement with Defendants. (McDonald Decl., Ex. I ¶¶ 2-4.) Plaintiff has also introduced evidence that an employee of Defendants was present at a working group meeting in 2004 at which Dr. Kushwaha disclosed the '917 Patent application. (Id., Ex. J.) This is sufficient to raise a triable issue of fact with respect to Defendants' knowledge of the '917 Patent. In addition, Plaintiff has introduced evidence that Defendants intended to induce third parties to infringe the '917 Patent, including various technical documents that appear to contain instructions to consumers of BES with regard to the wireless registration and management of wireless devices. (Id., Exs. S, T.) Taking this evidence together, the Court finds that there is a triable issue of material fact with regard to Defendants' knowledge and intent to induce infringement of the '917 Patent.
Accordingly, the Court DENIES Defendants' Noninfringement Motion with regard to Plaintiff's indirect infringement theory.
In their Equivalents Motion, Defendants contend that they are entitled to summary judgment on Plaintiff's theory of infringement under the doctrine of equivalents on the following grounds: (1) Plaintiff's infringement contentions regarding the doctrine of equivalents are conclusory and do not identify differences between the claimed method and the allegedly infringing process or explain why those differences are insubstantial; and (2) Plaintiff does not have sufficient evidence to establish that any differences between the claimed method and Defendants' product are insubstantial. (Anticipation Motion at 7-8.) Plaintiff responds that: (1) its infringement contentions adequately set out a "function/way/result" analysis for each of the limitations of the '917 Patent and the allegedly infringing product; and (2) its infringement contentions present sufficient evidence to establish that Defendants infringe the '917 Patent both literally and under the doctrine of equivalents.
Even where an accused device does not literally infringe, a patentee may prove infringement under the doctrine of equivalents. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.Cir.2000). The doctrine of equivalents
Here, the Court finds that Defendants are not entitled to summary judgment on the issue of noninfringement under the doctrine of equivalents. Plaintiff's infringement contentions set forth, for each limitation of the '917 Patent, a "function/way/result" analysis that compares each step of the '917 Patent to particular features of Defendants' BES software.
Accordingly, the Court DENIES Defendants' Motion for Summary Judgment of noninfringement under the doctrine of equivalents.
The Court GRANTS in part and DENIES in part the parties' various Motions as follows:
The Court sets a Preliminary Pretrial Conference for