Filed: Jun. 06, 2014
Latest Update: Jun. 06, 2014
Summary: PLAINTIFFS' UNOPPOSED MOTION TO ENTER FINAL JUDGMENT OF INVALIDITY AND NON-INFRINGEMENT FOR THE MORRIS PATENTS RICHARD A. POSNER, Circuit Judge. Plaintiffs BRK Brands, Inc. ("BRK") and Gary J. Morris ("Morris") (collectively "Plaintiffs") respectfully submit this unopposed motion to resolve all remaining issues related to U.S. Patent Nos. 6,144,310 ("the `310 patent"), 6,600,424 ("the `424 patent"), 6,323,780 ("the `780 patent"), 6,784,798 ("the `798 patent"), and 7,158,040 ("the `040 patent"
Summary: PLAINTIFFS' UNOPPOSED MOTION TO ENTER FINAL JUDGMENT OF INVALIDITY AND NON-INFRINGEMENT FOR THE MORRIS PATENTS RICHARD A. POSNER, Circuit Judge. Plaintiffs BRK Brands, Inc. ("BRK") and Gary J. Morris ("Morris") (collectively "Plaintiffs") respectfully submit this unopposed motion to resolve all remaining issues related to U.S. Patent Nos. 6,144,310 ("the `310 patent"), 6,600,424 ("the `424 patent"), 6,323,780 ("the `780 patent"), 6,784,798 ("the `798 patent"), and 7,158,040 ("the `040 patent")..
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PLAINTIFFS' UNOPPOSED MOTION TO ENTER FINAL JUDGMENT OF INVALIDITY AND NON-INFRINGEMENT FOR THE MORRIS PATENTS
RICHARD A. POSNER, Circuit Judge.
Plaintiffs BRK Brands, Inc. ("BRK") and Gary J. Morris ("Morris") (collectively "Plaintiffs") respectfully submit this unopposed motion to resolve all remaining issues related to U.S. Patent Nos. 6,144,310 ("the `310 patent"), 6,600,424 ("the `424 patent"), 6,323,780 ("the `780 patent"), 6,784,798 ("the `798 patent"), and 7,158,040 ("the `040 patent") (the "Morris Patents") and 6,377,182 ("the `182 patent") (collectively "Patents-in-Suit").
Plaintiffs assert that BRK is the exclusive licensee of the Morris Patents with all substantial rights in and to those patents. BRK also asserts that it is the owner by assignment of the `182 patent. As part of Plaintiffs' final election of asserted claims, Plaintiffs selected claim 20 of the '310 patent; claim 38 of the '424 patent; claim 4 of the '780 patent; claims 10 and 22 of the '798 patent; and claim 7 of the '040 patent ("Final Morris Asserted Claims") and claims 8, 11, 20 and 30 of the '182 patent.
On May 27, 2014, the Court entered its Claim Construction Order (Dkt. No. 152) ("May 27 Order") construing certain disputed terms in the Final Morris Asserted Claims of the Patents-in-Suit. Based on the Court's May 27 Order and subject to their right to appeal the Court's claim construction order and entry of a final judgment, Plaintiffs stipulate to (A) entry of final judgment of invalidity of claims 6 and 16 of the '780 patent; and (B) entry of final judgment of non-infringement of all of the Final Morris Asserted Claims (claim 20 of the '310 patent; claim 38 of the '424 patent; claim 4 of the '780 patent; claims 10 and 22 of the '798 patent; and claim 7 of the '040 patent). Plaintiffs' non-infringement stipulation for the Final Morris Asserted Claims is based on the Court's construction of the language in Claim term group 2 (messages emitted or output in silent intervals or periods of silence) (Dkt. No. 152 at 3-4) and Claim term group 5 ("control electronics") (Dkt. No. 152 at 4-6). See Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094, 1106 (Fed. Cir. 2003) (affirming the judgment of non-infringement based on its affirmance of one of three disputed terms); see also Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1351 (Fed. Cir. 2006) (noting the importance of identifying in a stipulated judgment of non-infringement which of "many claim construction rulings are dispositive") (hereafter "MIT").
Plaintiff BRK is also filing concurrently herewith a stipulation of dismissal without prejudice of its claims for infringement of the '182 patent against any and all versions of the Nest Protect.
In support of this motion, Plaintiffs state:
1. The Court's May 27 Order found the terms in Claim term group 7 ("a processor programmed for retrieving a selected tonal alarm pattern and presenting same to the audible alarm") were indefinite and thus claims 6 and 16 of the `780 patent were invalid as indefinite. Dkt. No. 152 at 7-8.
2. The claim term group 2 terms were construed by the Court as summarized below1:
Final Morris Term Court's Construction
Asserted Claim(s)
'310 Patent Claim 202 "outputs. . .an "The parties agree that these claims refer
'040 Patent Claim 7 interleaved. . .[message] in to the verbal messages of alarm type
(fire, carbon monoxide) and/or location
a respective silent interval"
(such as basement or kitchen) that are
'798 Patent Claim 10 "[message] . . . emitted in broadcast during the `silent' periods
(and claim 1 from respective silent intervals" between groups of tones. The point of
which claim 10 ('798 claim 1) dispute between the parties regarding the
depends) second claim group is whether the verbal
"emits. . .[message(s)] in messages must be the same for any given
respective silent intervals" alarm. BRK argues that the claim terms
('798 claim 10) cover an alarm sensing a fire in the
basement that announced the following
'798 Patent Claim 22 "injects. . .[fire indicating alert: `beep beep beep—fire—beep beep
word] into only the second beep—basement—beep beep beep—
time intervals [between fire—beep beep beep—basement' (and
groups of tones]" so on—the beeps are the alarm tones as
distinct from the verbal messages
'780 Patent Claim 4 "[voice message] is emitted sandwiched between them). Nest argues
during periods of silence" that the claim is that the alarm may say
any one of `fire,' `basement,' or `fire in
basement,' but not an interleaving of
messages in the way BRK asserts.
Nest is correct. The inventions claimed
in the Morris patents are not able to
interleave the messages. . . . But it is
apparent from the claim that the message
is interleaved not with other messages but
with the tone groups." (Dkt. No. 152 at
3-4; see also id. at 12 (listing disputed
terms and proposed constructions).
3. Based on the Court's construction of the group 2 claim terms (as reflected in Dkt. No. 152 at 3-4 and the appendix thereto), Plaintiffs stipulate that all variations and versions of the Nest Protect that have been released into the market or any that are not substantially different with respect to the claims terms at issue here do not infringe these asserted claims literally or under the doctrine of equivalents because all variations and versions of the Nest Protect do not play the same verbal message in each of the silent periods between the groups of tones.3
4. The claim term group 5 terms were construed by the Court:
Final Morris Term Court's Construction
Asserted Claim(s)
'310 Patent Claim 20 "control The Court identified the parties' dispute as whether
these terms could be properly construed to
electronics" encompass software for performing the recited
'798 Patent Claim 10 functions of: "causes the selected location message
'040 Patent Claim 7 to be repetitively emitted in the respective silent
intervals" (e.g., '798 claim 1); "repetitively injects
the stored fire indicating word into only the second
'798 Patent Claim 22 "control element" time intervals between groups of fire alarm
indicating tones" ('798 claim 19); and "repeatedly
'424 Patent Claim 38 "electronic circuit" verbalizes the selected pre-recorded user
unalterable location message during at least some of
the silent periods" ('798 claim 37). Dkt. No. 152 at
4 ("The dispute concerning these claims is over
whether the patents disclose an invention
programmable by software. BRK says yes, Nest
no."); see also Transcript of Proceedings of May
20, 2014 at 45-46.
"Again Nest is correct. . . . Just as in MIT v. Abacus
Software, 462 F.3d 1344, 1356-57 (Fed. Cir. 2006),
no one reading the patents would think they
embraced software, and so, as held in the case just
cited, they don't." Dkt. No. 152 at 4.
"I conclude that the claim terms at issue refer only
to circuits that are programmable by hardware." Id.
at 6.
5. Based on the Court's construction of the group 5 claim terms (as reflected in Dkt. No. 152 at 4-6 and the appendix thereto), Plaintiffs stipulate that all variations and versions of the Nest Protect that have been released into the market or any that are not substantially different with respect to the claims terms at issue here do not infringe these asserted claims literally or under the doctrine of equivalents because all variations and versions of the Nest Protect, to the extent they perform the recited functions, do so using software, not just hardware.4
6. To obtain expedited review, Plaintiffs are willing to stipulate to entry of final judgment of invalidity of claims 6 and 16 of the '780 patent and non-infringement of the Final Morris Asserted Claims. This is a well-accepted practice. MIT, 462 F.3d at 1350 ("[T]he parties `stipulate[d] to entry of final judgment of non-infringement of [the `919 patent] based on the Court's claim construction.' . . . We have jurisdiction under 28 U.S.C. § 1295(a)(1).").
7. In light of the above, Plaintiffs conferred with Defendant Nest Labs, Inc. ("Nest") with respect to the present motion. Nest has agreed to BRK's request to dismiss BRK's claims for infringement of the '182 patent without prejudice and the parties are concurrently filing a stipulation to that effect.
8. Nest does not oppose this motion and Plaintiffs agree that this action is without prejudice to Nest's right to assert any and all defenses it may have if this matter is not resolved on appeal.
Given the Court's dispositive claim construction ruling as noted above and Plaintiffs' stipulation to entry of a final judgment, it is to the benefit of the Court and the parties to enter this final judgment rather than encumber the Court's and the parties' resources when the outcome (prior to any appeal) is certain. This motion is made subject to and without prejudice to Plaintiffs' ability to appeal the Court's May 27 Order and any final judgment based thereon. Moreover, if the judgment is not affirmed on appeal and this matter is remanded, this motion is without prejudice to the parties' ability to challenge or appeal any further order of the Court or the application of the Court's constructions for purposes of infringement and validity.
[PROPOSED] ORDER
For each of the reasons stated herein, the Court GRANTS Plaintiffs' motion and ORDERS the Clerk of Court to enter a final judgment of: (A) invalidity of claims 6 and 16 of the '780 patent; and (B) non-infringement of all of the Final Morris Asserted Claims (claim 20 of the '310 patent; claim 38 of the '424 patent; claim 4 of the '780 patent; claims 10 and 22 of the '798 patent; and claim 7 of the '040 patent).
