ANDREWS, U.S. District Judge:
Presently before the Court are Defendant Apple, Inc.'s Motion for Summary Judgment of Non-Infringement and Invalidity (D.I. 302) and related briefing (D.I. 303, 367, 408), Defendant Apple, Inc.'s Motion for Summary Judgment Regarding Damages, Injunctive Relief, and Indirect Infringement (D.I. 297) and related briefing (D.I. 298, 372, 406), and Plaintiff Robocast, Inc.'s Motion for Summary Judgment of No Unenforceability (D.I. 292) and related briefing (D.I. 293, 370, 405). The Court has heard helpful oral argument. (D.I. 434, 435).
This is a patent infringement action. Plaintiff Robocast, Inc. has accused Defendant Apple, Inc. of infringing U.S. Patent No. 7,155,451 ("the '451 patent"). Apple contends that it does not infringe the '451 patent and that the patent is invalid and unenforceable due to anticipation, obviousness, and inequitable conduct. Robocast opposes these contentions.
"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 has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is `genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323, 106 S.Ct. 2548.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir.1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute...." FED.R.CIV.P. 56(c)(1).
When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49, 106 S.Ct. 2505; see Matsushita Elec. Indus. Co., 475 U.S. at 586-87, 106 S.Ct. 1348 ("Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no `genuine issue for trial.'"). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S. at 322, 106 S.Ct. 2548.
A patent is infringed when a person "without authority makes, uses or sells any patented invention, within the United States ... during the term of the patent." 35 U.S.C. § 271(a). A two-step analysis is
"Direct infringement requires a party to perform each and every step or element of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed.Cir.2007), overruled on other grounds by Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed.Cir.2012). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.Cir.2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed.Cir.2007) (internal quotations omitted). A product that does not literally infringe a patent claim may still infringe under the doctrine of equivalents if the differences between an individual limitation of the claimed invention and an element of the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).
When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if at least one limitation of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed.Cir.2005); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed.Cir.2002) ("Summary judgment of noninfringement is ... appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial."). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there is no genuine issue as to whether the accused product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed.Cir. 1999).
A patent claim is invalid as anticipated under 35 U.S.C. § 102 if "within the four corners of a single, prior art document ... every element of the claimed invention [is described], either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation." Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed.Cir.2009) (alterations in original). As with infringement, the court construes the claims and compares them against the prior art. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.Cir.2010). Anticipation "may be decided on summary judgment if the record reveals no genuine dispute of material fact." Encyclopaedia Britannica, Inc. v.
A patent claim is invalid as obvious under 35 U.S.C. § 103 "if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains." 35 U.S.C. § 103; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). "Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined." KSR, 550 U.S. at 406, 127 S.Ct. 1727 (internal citation and quotation marks omitted).
A court is required to consider secondary considerations, or objective indicia of nonobviousness, before reaching an obviousness determination, as a "check against hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1078-79 (Fed.Cir.2012). "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Where "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." KSR, 550 U.S. at 427, 127 S.Ct. 1727.
There are a multitude of arguments presented in the briefs. They will be discussed in turn according to the motion in which they were raised.
Robocast asserts that Apple infringes independent claims 10, 22, and 37, and dependent claim 38. Claim 37, asserted against all accused Apple products, is illustrative:
('451 patent claim 37). Claim 38, dependent on claim 37, adds the limitation, "providing a duration information, representing the duration within which a corresponding content to each of said resources is being displayed." ('451 patent claim 38). Claim 10 involves dragging and dropping icons from one section of the user's terminal to another. Claim 22 involves delivering content to a user by performing an internet search.
Showcase and Flowcase are animated banners present in the iTunes store. Showcase appeared in versions 9 and 10 of iTunes, and was replaced by Flowcase in version 11. These banners display artwork related to content available for purchase in the iTunes store. The iTunes software receives a set of images from Apple and then displays them in a fixed-speed animation.
Apple TV is a set-top box that displays content on a TV. Its screensaver displays images from various sources, usually nature photographs included with the Apple TV, but may also display images retrieved from the Flickr photo sharing service. The other accused functionality of Apple TV is an animation of cover art, referred to as the Parade, which appears on the left side of the screen when navigating Apple TV's menus.
The final accused functionality, Top Sites, is a feature of the Safari browser which displays thumbnails of a user's often visited web sites. Top Sites allows the user to navigate to one of the web sites by clicking on the thumbnail.
Apple sets forth three non-infringement arguments and four invalidity arguments. As to infringement, Apple first contends that the accused functions do not include a "node" with duration. Second, Apple argues that Robocast has not put forth evidence that the accused functions span two nodes concurrently. Third, Apple argues that claims 10 and 22 include plain meaning limitations that are not present in Apple's products. As to invalidity, Apple argues that U.S. Patent No. 5,659,793 ("the Escobar reference") anticipates claim 10 as well as claims 37 and 38. Next, Apple argues that the article "Scripted Documents: A Hypermedia Path Mechanism," by Polle T. Zellweger ("the Zellweger reference," D.I. 309 Ex. 12), anticipates claims 37 and 38. Lastly, Apple argues that claim 22 is obvious in light of U.S. Patent No. 6,119,135 ("the Helfman reference") and the Braverman reference (Alan Braverman, CCI Slide Show 1.0 (Sept. 22, 1994), at http://archive.ncsa.illinois.edu/Cyberia/stats/sshow-src/README-sshow, D.I. 309 Ex. 15).
During claim construction, the Court construed "show structure of nodes" as "a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes." The Court further required that the "show structure of nodes specifies the duration of any display." (D.I. 239 at 2). Additionally, the Court construed "node" as "an identifier of a resource that includes an address to the resource and the duration for which the resource's content is to be presented by default." (D.I. 239 at 16).
Apple argues that its accused functions do not contain nodes because they do not have an identifier which contains both an address and duration. (D.I. 303 at 8). Apple contends that the accused functions use a list of addresses, without duration information, to retrieve image files, after which separate code renders the images into an animation. (D.I. 303 at 8). The separate animation code contains a hard coded timing parameter,
This argument is similar to the global duration argument in the related case against Microsoft, C.A. No. 10-1055. There, I stated:
(C.A. No. 10-1055 D.I. 499 at 10-11). Just as in that case, here the duration is not set on a per resource base. "Nodes" are not boxes. They do not have clearly defined walls. It is difficult to determine whether something is inside or outside of a node. What is clear is that there must be a durational element that is associated with address information. A durational element is present in the accused functions, with the exception of Top Sites. As for the other four accused functions, the durational element, while not modifiable,
Apple also attacks Robocast's doctrine of equivalents argument, arguing that no reasonable juror could find that a node which does not include a duration, i.e., a global duration, is the equivalent of a node with a per resource duration. (D.I. 303 at 9). Apple makes three arguments: that Robocast fails to identify an equivalent for each claim limitation, that the accused functions do not perform the same function in substantially the same way, achieving the same results, and that the alleged equivalent would ensnare the prior art. (D.I. 303 at 10). The first two arguments are an attack on the application of the doctrine of equivalents to the accused functions. Because I have already denied Apple's request for a finding of no literal infringement, I do not reach those arguments. In any case, proving infringement under the doctrine of equivalents is a question of fact, and is therefore best left to the jury. Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed.Cir.2009). As for the question of ensnaring the prior art, Robocast contends that the Escobar reference does not teach an "address." There is scant discussion regarding the location of the duration information. At this juncture, I cannot say whether the doctrine of equivalents would ensnare the prior art.
Apple's next non-infringement argument is that Robocast has not put forth evidence that the accused functions span two nodes concurrently. The limitation "wherein at least two of said nodes are spanned concurrently" was construed as, "nodes are accessed such that the content corresponding to at least two nodes is accessed at the same time." (D.I. 239 at 24). During claim construction, Robocast argued for a construction requiring that the two nodes be "displayed during an overlapping time period," rather than be "accessed at the same time." (D.I. 239 at 23). Robocast's expert now argues that, at least for Showcase, it accesses two nodes at the same time because it "display[s] the image content associated with multiple nodes simultaneously." (D.I. 307-2 at 80). Apple contends that this assertion contravenes the Court's claim construction and is in fact Robocast's attempt to relitigate the construction. (D.I. 408 at 5).
Robocast replies that the claim construction does not require that content be retrieved at the same time, but only accessed. Robocast argues that this limitation is met because when a person visits a webpage they are simultaneously accessing the web page while the content is displayed. (D.I. 367 at 11). Essentially, because the content is displayed, it must also be accessed. This argument appears dubious. However, each party's expert disagrees with the other's interpretation, which creates a factual dispute. Therefore, summary judgment is inappropriate.
Claim 10 is asserted only against Top Sites and claim 22 is asserted only against the Flickr screensaver. Apple contends that these products do not infringe the respective asserted claims because certain limitations are not present in the accused functions. Claim 10 is drawn to:
('451 patent claim 10). Claim 22 is drawn to:
('451 patent claim 22). Apple asserts that Top Sites does not retrieve and display "said content" because it displays only a thumbnail snapshot of a web page rather than the web page itself. Apple also asserts that the Flickr screensaver does not receive "URL resources" because it does not receive a URL itself, but a list of parameters which is compiled to provide a URL. Neither argument is persuasive.
As for Top Sites, Apple argues that the exact same content which was retrieved must be subsequently displayed. Because Top Sites retrieves HTML content, yet displays a thumbnail snapshot, it argues that Top Sites cannot meet these limitations. This argument relies on too narrow of an understanding of the term "content." If I watch a movie in the theater and watch the same movie at home, whether via a DVD, Blu-ray, or streaming video service, I have watched the same movie. The content of the movie is the same. The screen size is surely different. The picture quality might not be as good. But the actors are the same, as is the dialogue. Similarly, when one views the thumbnail images in Top Sites, the content is the same as the web page to which it is linked. For this reason, Apple's argument that Top Sites does not infringe on this basis fails.
As for the Flickr screensaver, this argument depends on what is meant by a "URL resource" as opposed to a "URL." It is undisputed that the Flickr screensaver does not receive URLs in response to a search, but receives parameters which it uses to construct the URL. The patent does not define the difference between "URL" and "URL resources," and only uses the term "URL resources" in claim 22. The claim language at issue is "performing an on-line search, in response to which a plurality of search results and their corresponding URL resources are received." ('451 patent claim 22). URL is short for Uniform Resource Locator. ('451 patent at 1:37). Substituting the full term for the abbreviation, the claim language reads, "and their corresponding uniform resource locator resources are received." The meaning of this is not entirely clear.
Apple asserts that the only possible reading is that "URL resources" are URLs. Robocast replies that such an interpretation would read out "resources" from the limitation. At the very least, Robocast's argument is strong enough to survive summary judgment. The patent describes resources as being "referred to by the URL" or "indicated by the URL." ('451 patent at 8:35-39). Generally, when a user performs an online search, it results in a list of URLs corresponding to web pages which are responsive to the search terms. With this in mind, the claim can be understood as requiring a search resulting
Apple argues that the Escobar reference anticipates claim 10. The parties agree that Escobar discloses all the limitations of claim 10 except for nodes. Apple contends that what Escobar calls a "pointer" is an "address," which would meet the Court's construction of node as "an identifier of a resource that includes an address to the resource and the duration for which the resource's content is to be presented by default." (D.I. 239 at 16). Robocast contends that a "pointer" is not an "address."
At this time, there is dispute of fact over whether a "pointer" is an "address." Apple's expert states that it is an address. Robocast's expert states that it is not. Patents are presumed valid and invalidity must be proven by clear and convincing evidence. Microsoft Corp v. i4i Ltd. P'ship, ___ U.S. ___, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011). Disputed material issues of fact concerning how one of ordinary skill in the art would understand disclosure of a particular technology mandates denial of summary judgment of anticipation. Osram Sylvania v. Am. Induction Techs., 701 F.3d 698, 706 (Fed.Cir. 2012). This is such a case. Apple's motion for summary judgment of invalidity of claim 10 is denied.
Apple next argues that Escobar anticipates claims 37 and 38. The parties agree that Escobar teaches all limitations except for displaying content of at least two nodes during an overlapping time period and accessing two nodes at the same time. Because I find that there is a disputed issue of fact regarding nodes, see supra, I need not reach these arguments. However, I do make one note. Robocast states that Apple misconstrued Escobar's discussion of "composite video." (D.I. 367 at 21). Robocast contends that "composite video," as used in the Escobar reference, refers to the analog transmission of video, and not to a graphics overlay. While Robocast may be correct that composite video may ordinarily refer to the analog transmission of video, as used in Escobar, the term clearly refers to a graphics overlay. For example, Escobar describes taking text and graphics information and "combin[ing] that information with the frames of decompressed video to produce composite video frames." (D.I. 308-2 Ex. 9 at 13:43-45). This is a case of a patentee being his own lexicographer.
Apple next argues that the Zellweger reference anticipates claims 37 and 38. Robocast's expert argues that Zellweger neither discloses "presenting nodes concurrently" nor accessing nodes "wherein at least two of said nodes are spanned concurrently." In support of this, Apple cites to the reference itself, which discloses "parallel paths, which are paths that can execute simultaneously and may be able to fork, join, or synchronize with activities on another branch." (D.I. 309-1 Ex. 12 at 2).
In response, Robocast argues that the Zellweger reference is not enabling (D.I. 367 at 22; D.I. 368-1 at ¶ 233-34, 237-38), and, in any event, does not disclose the contested claim limitations. As far as who bears the burden on enablement of an anticipatory printed publication, the law is unclear. Robocast cites to Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed.Cir.2002), for the proposition that the challenger bears the burden to establish that allegedly anticipatory prior art is enabling. Because Robocast contends that the Zellweger reference is not enabling, it argues that summary judgment is inappropriate. Apple, on the other hand, cites to Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed.Cir.2003), where the Federal Circuit held that "a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled." However, this holding was explicitly limited to prior art patents, not printed publications. Id. at 1355 n. 22 ("We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today.").
Apple contends that the presumption of enablement was extended to printed publications in In re Antor Media Corp., 689 F.3d 1282 (Fed.Cir.2012). However, in that case the presumption was only applied to publications during patent prosecution, not during district court proceedings. Id. at 1289 ("[W]e therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling.").
While there may be reasons to presume a prior art printed publication enabled during prosecution but not during a district court proceeding, none are readily apparent. The Federal Circuit has held that patents are presumptively enabled, and implied that prior art printed publications might be as well. See Amgen, 314 F.3d at 1355. Furthermore, that presumption was extended to prior art printed publications, at least in the context of patent prosecution. See In re Antor, 689 F.3d at 1289. While the Federal Circuit has not had the chance to extend that presumption to prior art printed publications in district court proceedings, I do. I cannot see any logical reason to distinguish between unclaimed disclosures in a prior art patent and the disclosures in a prior art printed publication. Both are written disclosures on which a patent has not been granted. Therefore, based on the reasoning set forth in Amgen, I hold that a district court should presume that a prior art printed publication is enabled.
The inquiry does not, however, end with the presumption. Since "a court cannot ignore an asserted prior art patent in evaluating a defense of invalidity for anticipation, just because the accused infringer has not proven it enabled," Amgen, 314 F.3d at 1355, Apple need not set forth reasons to find that Zellweger is enabled. It is presumed to be enabled. I cannot ignore the Zellweger reference merely because Robocast argues that it is not enabled. Robocast does more, however, than set forth argument. Dr. Almeroth and Dr. Zellweger have both opined that the Zellweger reference is not enabling. This makes the enablement of this reference a disputed factual issue. Thus, I cannot hold that Apple has proven by clear and convincing evidence that the Zellweger reference anticipates claims 37 and 38.
It will be necessary at some point to determine how the presumption of enablement affects the evidentiary burden on
Apple's expert sets forth a prima facie case of obviousness of claim 22 based on Helfinan and Braverman. If I were to decide this issue solely on the merits of the combination of Helfinan and Braverman, I would likely rule in Apple's favor. Robocast's rebuttal arguments, especially regarding objective indicia of nonobviousness, are thin. However, there is an underlying factual issue that precludes me from reaching the merits of the obviousness argument. The dispute is whether Helfinan is prior art. Robocast asserts that it is entitled to an earlier invention date. Apple contends that Robocast's evidence is insufficient as a matter of law to establish an earlier invention date. (D.I. 408 at 13). I confronted this very same issue in the corresponding case against Microsoft. There, I stated:
(C.A. No. 10-1055 D.I. 499 at 17) (internal citation omitted). I see no reason why this case merits a different outcome. There is an underlying factual dispute of whether the Helfman reference is prior art. Therefore, summary judgment on this issue is inappropriate.
Apple sets forth three arguments in this motion. First, that Robocast cannot establish a reasonable royalty for Safari's Top Sites, the Flickr screensaver, or iTunes,
Apple argues that because Robocast no longer has any expert testimony regarding damages, summary judgment of no damages is appropriate. (D.I. 298 at 10-11). Robocast responds that expert testimony is not required to prove damages, or that it may rely on Apple's expert report by reading Mr. Sims' deposition testimony into the record at trial. (D.I. 372 at 9). Apple replies that it could dedesignate Mr. Sims and prevent Robocast from reading his deposition testimony absent exceptional circumstances. (D.I. 406 at 4).
Apple is correct inasmuch as Robocast has no remaining expert testimony on damages.
In order to show willful infringement, "a patentee 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." In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.Cir.2007) (en bane). Seagate sets forth a two part test with both an objective and subjective component. "If this threshold objective standard is satisfied, the patentee must also demonstrate 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. Seagate left open the application of this standard. Id. However, in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007 (Fed.Cir. 2012), the court held "that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review."
The main issue here is whether Robocast can make a showing of presuit knowledge. There are two relevant interactions between Robocast and Apple. The first is that Fred Reynolds, then a Senior Marketing Manager on Apple's Design and Publishing Markets Team, in 1999, attended a trade show where Robocast had a booth. Robocast asserts that because Mr. Reynolds was at the trade show, he would have been to the Robocast booth, and would have seen Robocast's "standard trade show pitch," which involved handing out materials marked "patent pending." Even making all inferences in Robocast's favor, this interaction cannot form the basis for a finding of willful infringement. In 1999, Robocast's patent
The second interaction between Robocast and Apple occurred in 2007 at a Social Venture Conference. At lunch, Mr. Torres happened to sit at a table with an Apple music executive named Gary Stewart. During a conversation, Mr. Stewart and Mr. Torres lamented that "there weren't more liner note type things out there in the world." (D.I. 300-2 at 32). Apparently, this prompted Mr. Torres to suggest that his patent might be amenable to such an application. Specifically, Mr. Torres testified, "I just got granted this great patent, and I remember I had memorized the patent number as soon as it was, you know, awar[ded] to me ... So I recall saying just got this great patent, 7,155,451 and rattling that off. That could be great, and I remember this part, in providing a liner note show for music." (D.I. 300-2 at 31).
Robocast contends that it is entitled to a justifiable inference that Mr. Stewart had knowledge of the '451 patent. (D.I. 372 at 14). However, even assuming Mr. Stewart had been told of the patent, no reasonable jury could find that Apple willfully infringed the patent. There is no evidence that Mr. Stewart took down the patent number, or had any idea about the claimed subject matter, or that any of Apple's products could possibly infringe the patent. Even if this evidence were sufficient to meet the subjective prong of Seagate, and I do not think it is, there is simply no evidence that the objective risk was "known or so obvious that it should have been known to the accused infringer." I therefore grant Apple's motion for summary judgment of no pre-suit willful infringement.
As for post-suit willfulness, I note that:
Seagate, 497 F.3d at 1374(citations omitted). Robocast did not move for a preliminary injunction. Apple's defenses are reasonable. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed.Cir.2010) (holding that the objective prong of willfulness was not met where a defendant's defenses were reasonable). Allowing a finding of willfulness based on post-suit conduct would put enhanced damages at issue whenever a defendant opted to deny infringement and take the case to trial. See LML Holdings, Inc. v. Pacific Coast Distributing Inc., 2012 WL 1965878, at *5 (N.D.Cal. May 30, 2012). Allegations of willfulness based solely on conduct post-dating the filing of the original complaint are insufficient.
As for indirect infringement, Apple argues that Robocast's inability to establish pre-suit knowledge is fatal to its indirect infringement claims. (D.I. 298 at 16). Robocast does not appear to contest that presuit willfulness and indirect infringement rise and fall together. Having failed to show that a triable issue remains as to presuit knowledge, I grant summary judgment of no pre-suit indirect infringement for Apple. However, Robocast may still go forward with any claims of post-suit indirect infringement.
Apple asks that Robocast's request for a permanent injunction be denied because Robocast cannot establish irreparable harm. (D.I. 298 at 17). In order to obtain a permanent injunction, a plaintiff must establish: (i) irreparable harm, (ii) the inadequacy of money damages, (iii) the absence of inequitable hardships, and (iv) that an injunction would not disserve the public interest. eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1827, 164 L.Ed.2d 641 (2006). Apple makes four points against an injunction: Robocast sells no products, the parties do not compete, Robocast's "policy" is to monetize the patent, and Robocast did not seek preliminary relief.
In response, Robocast's only real argument is that should Apple's motion for summary judgment of no damages be granted, Robocast would be left without an adequate remedy at law, which would be sufficient irreparable harm for an injunction. Robocast concedes that it was unlikely to be able to make a showing of irreparable harm at the time the complaint was filed. (D.I. 372 at 15 n. 5). I do not think the fact that Robocast's damages analysis is insufficient is a basis for a finding of irreparable harm. Nevertheless, the question of whether a permanent injunction is an appropriate remedy is better decided after a trial, and I cannot say as a matter of law that Robocast cannot obtain a permanent injunction. I therefore deny Apple's motion for summary judgment of no injunction, without prejudice to a renewal of the request if Apple loses at trial.
This motion is almost identical to Robocast's motion filed in C.A. No. 10-1055 at D.I. 295.
For the purposes of deciding this issue I take as true the following allegations.
In November 1999, in response to a rejection of the '063 application over Richardson in view of Davis, the inventor, Mr. Torres, submitted a false declaration to the PTO attempting to swear behind the Richardson reference. The Examiner did not find the declaration persuasive, and continued to reject the claims of the '063 application, but in reliance on other references. The '063 application was subsequently abandoned in January 2002. The Richardson reference was disclosed, see PTO-1449 dated December 23, 1999, and overcome during prosecution of the '451 patent without any reliance on the false declaration. The '906 application eventually issued as the '451 patent on December 26, 2006.
Apple contends that the inequitable conduct in the parent application in November 1999 renders the child unenforceable, even though the inequitable conduct occurred after the child application was filed in 1998. I assume that the conduct indeed was material and would have caused the '063 application to be unenforceable. Apple relies on the "doctrine of infectious unenforceability"
The law of inequitable conduct grew out of the unclean hands doctrine, and "is no more than the unclean hands doctrine applied to particular conduct before the PTO." Consol. Aluminum Corp. v. Foseco Int'l Ltd., 910 F.2d 804, 812 (Fed.Cir.1990). The unclean hands doctrine applies where:
Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 245-46, 54 S.Ct. 146, 78 L.Ed. 293 (1933). In the context of inequitable conduct before the Patent Office, that conduct "renders unenforceable all patent claims having an immediate and necessary relation to that conduct, regardless of whether the claims are contained in a single patent or a series of related patents." Truth Hardware Corp. v. Ashland Products, Inc., 2003 WL 22005839, at *1 (D.Del. Aug. 19, 2003).
Indeed, the Federal Circuit recognizes that "inequitable conduct early in the prosecution may render unenforceable all claims which eventually issue from the same or a related application." Agfa, 451 F.3d at 1379. Of course, later applications are "not always tainted by the inequitable
Id. at 1332. There are two ways to look at the distinction drawn in Baxter. The first is that the omitted art itself was not material to the claims in the divisional, and therefore the inequitable conduct did not infect the divisional. This is merely another way of saying that the conduct itself did not constitute inequitable conduct in the divisional. Requiring that the inequitable conduct itself have a causal effect on the issuance of the claims at issue would render the doctrine of infectious unenforceability inapplicable in the present case, since they were on a separate track before the inequitable conduct occurred.
The second way to approach the Baxter case, and the way I approach it, is that inequitable conduct infects the invention itself, and all claims which form a part of that invention. A divisional application is drawn to a different invention, and different inventions do not share an "immediate and necessary" relation to each other. Continuation applications, however, relate to the same invention. If a patentee who has engaged in inequitable conduct included the invention in one application, all the claims would be unenforceable. If the same patentee split the claims into two applications, why should the result be any different? To hold otherwise would fly in the face of the rule that inequitable conduct renders all claims unenforceable, "not just the particular claims to which the inequitable conduct is directly connected." J.P. Stevens & Co., Inc. v. Lex Tex Ltd., Inc., 747 F.2d 1553, 1561 (Fed.Cir.1984); see also In re Clark, 522 F.2d 623, 626 (CCPA 1975) ("[Inequitable conduct] goes to the patent right as a whole, independently of particular claims".).
In its brief, Apple argues that because the claims in the '451 patent are similar to those in the '063 application, the entire '451 patent can be held unenforceable by inequitable conduct during the prosecution of the '063 application. I need not decide that issue at this point. It appears that at a minimum some claims in the '451 patent indeed could have been included in the '063 application. If that is the case, then at the very least those claims could be unenforceable. The extent to which the inequitable conduct in the '063 application actually infects the '451 patent is best left for trial, where the facts can be more clearly developed.
While the exact contours of any infectious unenforceability lack clarity, the issue of unclean hands is much clearer. Apple alleges that Mr. Torres fabricated evidence. If Robocast relies on that evidence to obtain an earlier date of conception, knowing that it is fabricated, that can form the basis for litigation misconduct. See Aptix Corp. v. Quickturn Design Sys., Inc., 269 F.3d 1369, 1372 (Fed.Cir.2001) ("affirming dismissal based on unclean hands where patentee submitted fabricated evidence in discovery to support earlier invention date); Intamin, Ltd. v. Magnetar Technologies Corp., 623 F.Supp.2d 1055, 1076 (C.D.Ca.2009) (dismissing suit under unclean hands doctrine based on forged assignment documents). The fact that the documents might have been forged before the start of litigation is irrelevant.
For the reasons above, Defendant Apple, Inc.'s Motion for Summary Judgment of Non-Infringement and Invalidity (D.I. 302) is granted in part and denied in part. Defendant Apple, Inc.'s Motion for Summary Judgment Regarding Damages, Injunctive Relief, and Indirect Infringement (D.I. 297) is granted in part and denied in part. Plaintiff Robocast, Inc.'s Motion for Summary Judgment of No Unenforceability (D.I. 292) is denied. An appropriate order will be entered.
Presently before the Court are Defendant Apple, Inc.'s Motion for Summary Judgment of Non-Infringement and Invalidity (D.I. 302) and related briefing (D.I. 303, 367, 408), Defendant Apple, Inc.'s Motion for Summary Judgment Regarding Damages, Injunctive Relief, and Indirect Infringement (D.I. 297) and related briefing (D.I. 298, 372, 406), and Plaintiff Robocast, Inc.'s Motion for Summary Judgment of No Unenforceability (D.I. 292) and related briefing (D.I. 293, 370, 405). For the reasons discussed in the accompanying Memorandum Opinion, it is hereby ORDERED:
Defendant's Motion (D.I. 302) is
Defendant's Motion (D.I. 297) is
Plaintiff's Motion (D.I. 292) is