EWING WERLEIN, JR., District Judge.
Pending are Plaintiffs and Counterclaim Defendants Absolute Software, Inc.'s and Absolute Software Corp.'s Motion for Summary Judgment of Non-Infringement and Invalidity of the Baran Patent (Document No. 221) and Absolute's Cross-Motion for Summary Adjudication of Infringement of U.S. Patent No. 6,507,914 (Document No. 238); and Defendant/Counterclaimant Stealth Signal, Inc.'s Motion
Plaintiffs/Counterclaim Defendants Absolute Software, Inc., and Absolute Software Corp. (collectively, "Absolute"), allege that Defendants Stealth Signal, Inc., and Computer Security Products, Inc. (collectively, "Stealth"), infringe claims of United States Patent No. 6,244,758 (the "'758 Patent"); United States Patent No. 6,300,863 (the "'863 Patent"); and United States Patent No. 6,507,914 (the "'914 Patent"), each of which is assigned to Absolute Software Corp.
Stealth counterclaimed, alleging that Absolute infringes claims in United States Patent No. 5,406,269 (the "'269 Patent"). The '269 Patent was issued to David Baran on April 11, 1995. After Absolute contacted Stealth in August of 2003 asserting that Stealth was infringing Absolute's patents, Stealth searched the prior art, found the '269 Patent, and obtained an exclusive license to it. The '269 Patent generally describes an invention that remotely monitors electronic devices by imbedding in such devices an agent that makes surreptitious calls to a central monitoring site. '269 Patent, col. 2, ll. 50-59.
Absolute now moves for summary judgment that it does not infringe the '269 Patent and that various claims of the patent are invalid. Stealth moves for summary judgment that it does not infringe Absolute's '758, '863, or '914 Patents.
Rule 56(c) provides that summary judgment "should be rendered if the pleadings, discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). The movant must "demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986).
Once the movant carries this burden, the burden shifts to the nonmovant to show that summary judgment should not be granted. Morris v. Covan World Wide Moving, Inc., 144 F.3d 377, 380 (5th Cir. 1998). A party opposing a properly supported motion for summary judgment may not rest upon mere allegations or denials in a pleading, and unsubstantiated assertions that a fact issue exists will not suffice. Id. "[T]he nonmoving party must set forth specific facts showing the existence of a `genuine' issue concerning every essential component of its case." Id.
In considering a motion for summary judgment, the district court must view the evidence "through the prism of the substantive evidentiary burden." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986).
"The patentee bears the burden of proving infringement by a preponderance of the evidence." Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed.Cir. 1991) (citing Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1545 (Fed.Cir.1987)). Determination of infringement is a two-step process: (1) claim construction, which is a question of law, and (2) a comparison of the construed claims to the accused product to determine if each claim element is present, either literally or under the doctrine of equivalents, which is a question of fact. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed.Cir. 2000). The Court previously adopted Special Master Dr. David B. Johnson's Report and Recommendation on Claims Construction as modified by his Amendment to Report and Recommendation on Claims Construction.
Literal infringement occurs when each properly construed claim element "reads on," or in other words is found in, the accused product or method. Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1345 (Fed.Cir.2002). On the other hand, "[a] finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product or method was insubstantial or that the accused product or method performs the substantially same function in substantially the same way with substantially the same result as each claim limitation of the patented product or method." AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed.Cir.2007). Equivalents are assessed on a limitation-by-limitation basis. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S.Ct. 1040, 1046-47, 137 L.Ed.2d 146 (1997). "The question of whether an explicit function has been identified with a claim limitation entails an examination of the claim and the explanation of it found in the written description of the patent." Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 141 F.3d 1084, 1090 (Fed.Cir.1998); see also Warner-Jenkinson, 117 S.Ct. at 1054 ("An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element."). "In other words, if a claim limitation must play a role in the context of the specific claim language, then an accused device which cannot play that role, or which plays a substantially different role, cannot infringe under the doctrine
Absolute moves for summary judgment that its products do not infringe Claims 12 and 25 (or the claims dependent therefrom) of the '269 Patent because its products do not meet the "semi-random rate" requirement. Claims 12 and 25 provide that the '269 agent will transmit messages to the central site at a "semi-random rate." Claim 12 of the '269 Patent includes the following:
`269 Patent, col. 10, ll. 8-12 (emphasis added). Claim 25 is a method claim providing:
Id., col. 11, ll. 40-43 (emphasis added). The Court construed "semi-random rate" to mean "normally taking place exactly once at a randomly chosen time during each occurrence of a repeating predetermined time interval."
Absolute's products are programmed to attempt initiation of a call to Absolute's Monitoring Center exactly 24.5 hours after the end of the last call.
Absolute's products do not literally infringe the semi-random rate element. First, the transmissions from Absolute's agents to the Monitoring Center are not random. The Amendment to Report and Recommendation on Claims Construction explains that the '269 Patent is designed to "make `one, and only one, call during the selected period,'" such as day/week/month, "at a time `uniformly randomly distributed over the selected time interval.'"
Stealth asserts that two variables "make the precise timing of subsequent scheduled calls unpredictable, and therefore random": (1) the length of a particular call session, and (2) the possibility of a failed call attempt to the Monitoring Center.
(1) Next_scheduled_Call =
End_of_Last_Call_Time + 24.5
hours;
And:
(2) End_Of_Last_Call_Time =
Last_Scheduled_Call_Time +
Call_Delay + Session_Duration
Therefore:
(3) Next_Scheduled_Call_Time =
Last_Scheduled_Call_Time +
Call_Delay + Session_Duration +
24.5 hours.9
Stealth explains:
Essentially, Stealth argues that the '269 Patent's randomness requirement is satisfied by unpredictability. However, the invention requires more than mere unpredictability.
First, the '269 Patent is designed to make calls to the central site that are "uniformly randomly distributed over the selected time interval." Uniform random distribution means that the call could occur at any time during the interval.
Second, the '269 Patent is designed to make calls "normally ... exactly once ... during each occurrence of a repeating predetermined time interval."
This limitation does not read on Absolute's products. Because Absolute's time interval is 24.5 hours, Absolute's products are not intended to call once per day, each and every day. Under entirely normal circumstances, that is, with no "exceptional condition" of a delay (i.e., the Call_Delay variable) and assuming that the preceding call lasted a negligible amount of time (i.e., Session_Duration ≈ 0), Absolute's products may not make any call whatsoever during the occurrence of a predetermined one-day time interval. For example, if Absolute's product calls on Day 1 at or after 11:30 pm and before midnight, the next call will not occur until Day 3 (sometime at or after midnight and before 12:30 am). Thus, Absolute's products are not designed to make one call a day under normal circumstances, as Stealth claims. Accordingly, for both of the foregoing reasons Absolute does not literally infringe Claims 12 and 25 of the '269 Patent, which require calls to be made at a "semi-random rate."
Absolute also asserts that its products do not infringe the "semi-random rate" limitation under the Doctrine of Equivalents. The "function" of the semi-random rate limitation is described in the '269 Patent's specification:
`269 Patent, col. 3, ll. 45-49, col. 4, ll. 26-40 (emphasis added). The Court, in adopting the Special Master's Amendment to Report and Recommendation on Claims Construction, found that the above description limits the scope of the invention claimed in the '269 Patent as a whole, rather than describing just one particular embodiment of it.
The Federal Circuit has held that the function-way-result test focuses on "an examination
The first function served by the semi-random rate limitation is to ensure that each device calls during every time interval, and only once during that interval. The invention of the '269 Patent is designed to monitor the performance of electronic devices and detect software piracy on those devices. See '269 Patent, cols. 1-2. The semi-random rate requirement allows the central site to detect software piracy, because "[i]f more than one [electronic device] is using software with the same serial number there will be more than one interrogation occurring during that time period." '269 Patent, col. 4, ll. 37-40. As discussed, the invention deviates from the one-call-per-interval requirement only in "exceptional conditions." Contrary to Stealth's arguments and as observed above, the evidence establishes that Absolute's products might not call every day even under normal (i.e., unexceptional) conditions. A finding of equivalency would eviscerate the semi-random rate limitation's express requirement that it normally make exactly one call during each time interval, and it would ignore the role played by that requirement.
The second function served by the "semi-random rate" limitation is to prevent a user of the host computer from detecting when the agent will make the next call to the central site.
Claims 11 and 29 of the '269 Patent require that the agent report the "terms of said usage agreement" to the central site. The Order on Claims Construction provides that "terms of said usage agreement embedded in said software" are: "parameters detailing what is granted by the license agreement for the software, such as the duration or expiration date, number of authorized installations/seats, number of authorized users, or restrictions relating to backup copies of the software."
Absolute licenses its products to its customers; it has different licenses for different products.
The ESN is merely a unique number that identifies the customer, the electronic device, and the license corresponding to that device.
Claims 1 and 20 require a "detection means for comparing the decoded collected data from each remote site means with the expected corresponding data for electrical apparatus of the type in which said remote site means is installed to identify the location of each of said remote site means." '269 Patent, col. 8, ll. 29-35 and col. 10, ll. 60-64. Claims 2, 3, and 6-8 depend from Claim 1. The Court has previously ruled that "detection means" is a means-plusfunction limitation, and that the claims reciting a detection means are "invalid as indefinite under 35 U.S.C. § 112 ¶ 2, for failure to disclose and clearly link any structure to the recited function."
Stealth moves for summary judgment of non-infringement of the asserted claims in the `758 and '863 Patents, asserting it does not literally meet the claimed element of "providing said host system with one or more global network communication links used to enable transmission between said electronic device and said host system...." This element is present, either directly or by dependence, in all asserted claims of these two patents. The Court construed this phrase to mean:
Absolute has failed to raise a fact issue to carry its burden to show that this limitation reads on Stealth's product—the XTool Computer Tracker (the "XTool agent"). Absolute's expert explains how the XTool agent functions:
Therefore, Absolute asserts, the XTool agent sends packets "contain[ing] both the IP address of the device and IP address of the Stealth Control Center," which "together comprise one or more global network communication links."
Absolute's arguments and evidence, however, fail to demonstrate that the XTool agent, as opposed to any other component of a client device, furnishes, supplies, or makes available any "global network communication link." Instead, its expert merely states that the XTool agent identifies the single IP address of the device on which it is installed; he otherwise asserts only that the "packet, when received by the host system, contains both the IP address of the device and IP address of the Stealth Control Center."
The computer security monitoring apparatus of independent Claim 4 of the '914 Patent must include agent means "for sending signals to the telecommunication interface including signals for contacting a host monitoring system without signaling the visual or audible user interface" of the computer.
The claim requires that the agent communicate without signaling. Absolute previously argued that the Court should construe "contacting" to encompass only "initiating communication" with the host monitoring system.
The essence of the argument Absolute now advances is very similar to its claim construction argument: because the XTool agent "establishes a connection" with its host, and "sends and receives information" to and from the host, "all without signaling the visual and audible user interface," the claim limitation reads on the XTool agent.
Moreover, as discussed above with respect to the '758 and '863 Patents, Absolute fails to carry its burden to raise a fact issue regarding infringement of this element of the '914 Patent under the doctrine of equivalents, as it neither advances any argument nor points to any evidence establishing equivalency. Because Absolute has not shown that Stealth's XTool agent meets the claim limitation "without signaling the visual or audible user interface," which appears either directly or by dependence in both asserted claims of the `914 Patent, Stealth is entitled to summary judgment of non-infringement of the '914 Patent. See, e.g., Nomos Corp., 357 F.3d at 1367 n. 1.
For the foregoing reasons, it is
ORDERED that Plaintiffs and Counterclaim Defendants Absolute Software, Inc. and Absolute Software Corporation's Motion for Summary Judgment of Non-Infringement
ORDERED that Defendant/Counterclaimant Stealth Signal, Inc.'s Motion to Strike Absolute's Cross-Motion for Summary Judgment (Document No. 243) is DENIED as moot; and Defendant/Counterclaimant Stealth Signal, Inc.'s Motion for Summary Judgment of NonInfringement (Document No. 224) is GRANTED, and it is ADJUDGED that Stealth's accused product does not infringe any of U.S. Patents No. 6,244,758, No. 6,300,863, and No. 6,507,914; and it is further
ORDERED and ADJUDGED that Plaintiffs Absolute Software, Inc. and Absolute Software Corporation, except for the rendition of Declaratory Judgment on the invalidity of Claims 1-3, 6-8, and 20 of the Baran Patent, shall take nothing on their claims against Defendants Stealth Signal, Inc. and Computer Security Products, Inc., and Plaintiffs' cause of action is DISMISSED on the merits; and Counterclaimant Stealth Signal, Inc. shall take nothing on its claims against Counterclaim Defendants Absolute Software, Inc. and Absolute Software Corp., and Counterclaimant's cause of action is DISMISSED on the merits.
Any conflict between Vehicular and Toro is immaterial here. As just discussed, the specification's description of its two functions (quoted above) limits the scope of the invention as a whole. Indeed, the Special Master used this description to define "semi-random rate." These functions are "key objectives" of the invention. See, e.g., Document No. 242 at 14-15 (Stealth's Response to Absolute's Motion for Summary Judgment of Non-Infringement and Invalidity of the Baran Patent) (noting the two functions of the semi-random rate requirement).
Document No. 220 (emphasis added). Under Rule 16(b)(4), Absolute must show good cause and must obtain the Court's consent to modify the scheduling order. It has done neither. Regardless, Stealth's motion to strike is moot in light of Absolute's failure to carry its burden to raise a genuine issue of material fact that Stealth infringes the '914 Patent.
