KEITH P. ELLISON, District Judge.
A number of motions for summary judgment are pending before the Court. Broadly, those motions can be divided into two categories: (1) motions addressing patent invalidity; and (2) motions addressing patent infringement. In this Memorandum and Order, the Court considers first the invalidity motions, including Defendants' Motion for Summary Judgment of Patent Invalidity of the Bittleston Patents (Doc. No. 273), and Defendants' Motion for Summary Judgment of Patent Invalidity of the Zajac Patent (Doc. No. 270). The Court also considers, in examining invalidity, the portion of Plaintiff's Motion for Summary Judgment of Willful Infringement of the '520 Patent (Doc. No. 276) in which Plaintiff moves for summary judgment on patent validity. After considering these three motions, all responses thereto, and the applicable law, the Court concludes that each motion must be denied.
The second category of motions at issue, those that address patent infringement, includes Defendants' Motion for Summary Judgment of Non-Infringement of the Bittleston Patents' Apparatus Claims (Doc. No. 272); Defendants' Motion for Summary Judgment of Non-Infringement of the '038 Patent's Systems Claims (Doc. No. 269); and (3) Plaintiff's Motion for Summary Judgment of Willful Infringement of the '520 Patent. After considering these motions, all responses thereto, and the applicable law, the Court concludes that Defendants' Motion for Summary Judgment of Non-Infringement of the Bittleston Patents' Apparatus Claims must be denied. Plaintiff's Motion for Summary Judgment of Willful Infringement of the '520 Patent must be granted in part and denied in part. Defendants' Motion for Summary Judgment of Non-Infringement of the '038 Patent's Systems Claims also must be granted in part and denied in part.
Plaintiff WesternGeco, L.L.C. ("WesternGeco") brings claims against Defendants under 35 U.S.C. § 271 based on the alleged infringement of a number of claims in the following WesternGeco patents: (1) U.S. Patent No. 6,932,017 (the "017 patent"); (2) U.S. Patent No. 7,080,607 (the "607 patent"); (3) U.S. Patent No. 7,162,967 (the "967 patent"); (4) U.S. Patent No. 7,293,520 (the "520 patent"); and (5) U.S. Patent No. 6,691,038 (the "038 patent" or the "Zajac patent"). Defendants in this case, ION Geophysical Corporation ("ION"), and Fugro-Geoteam, Inc.; Fugro Geoteam AS; Fugro Norway Marine Services AS; Fugro, Inc.; Fugro (USA), Inc.; and Fugro Geoservices, Inc. (collectively, "Fugro" or "the Fugro Defendants"), jointly have filed four motions for summary judgment. Two of these motions address patent invalidity. (Doc. Nos. 270, 273.) The other two address patent infringement. (Doc. Nos. 269, 272.) Plaintiff's pending motion for summary judgment addresses both invalidity and infringement. (Doc. No. 276.) As the Court has addressed the factual background in this case in considering a number of prior motions, it does not do so again here.
Summary judgment is appropriate where the pleadings and evidence show
Factual controversies should be resolved in favor of the nonmoving party. Liquid Air Corp., 37 F.3d at 1075. However, "summary judgment is appropriate in any case where critical evidence is so weak or tenuous on an essential fact that it could not support a judgment in favor of the nonmovant." Id. at 1076 (internal quotations omitted). Importantly, "[t]he nonmovant cannot satisfy his summary judgment burden with conclusional allegations, unsubstantiated assertions, or only a scintilla of evidence." Diaz v. Superior Energy Servs., LLC, 341 Fed.Appx. 26, 28 (5th Cir.2009) (citation omitted). A court should not, in the absence of proof, assume that the nonmoving party could or would provide the necessary facts. Liquid Air Corp., 37 F.3d at 1075.
The Federal Circuit has made clear that "summary judgment is as appropriate in a patent case as in any other." Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed. Cir.1984). That is, "[w]here no issue of material fact remains and the movant is entitled to judgment as a matter of law," the court should grant summary judgment in order "to avoid unnecessary expense to the parties and wasteful utilization of the jury process and judicial resources." Id.
An issued patent is presumed valid, 35 U.S.C. § 282, and an accused infringer has the burden of proving invalidity by clear and convincing evidence. Aero Products Int'l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1015 (Fed.Cir.2006) (citation omitted); Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed.Cir.2001). Section 112 of Title 35 of the United States Code governs what must be included in a patent specification. The requirements of Section 112 include the written description requirement, the enablement requirement, the distinctiveness or definiteness requirement, and, for cases filed prior to September 2011 — as this one was — the "best mode" requirement.
Section 112 ¶ 2 requires a patent to "point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 ¶ 2. Claims are considered indefinite when they are "not amenable to construction or are insolubly ambiguous." Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed.Cir.2007). The Federal Circuit has explained:
Section 112, ¶ 6 provides that "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6. Such a "means-plus-function" claim format allows a patentee to "describe an element of his invention by the result accomplished or the function served, rather than describing the item or element to be used." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). If a claim element that recites a function uses the word "means," it creates a presumption that the element is drafted in means-plus-function format. Id.; TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed.Cir.2008). The means-plus-function presumption can be rebutted if the claim itself recites a structure to accomplish the functions identified in the claim. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed.Cir.2008).
If a patentee uses means-plus-function language, he "must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed.Cir.2008) (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.1994) (en banc)). Such a failure results in invalidity for indefiniteness. In re Dossel, 115 F.3d 942, 946 (Fed.Cir.1997).
If a court determines that the means-plus-function analysis applies, it must decide what the claimed function is, and then determine whether a structure corresponding to that function is disclosed in the specification. Welker Bearing, 550 F.3d at 1097; Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1377 (Fed.Cir.2008). If the patent does not contain an adequate disclosure of the structure that corresponds to the claim elements, the patentee will have "failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed.Cir.2009). Whether the written description adequately sets forth structure corresponding to the claimed function must be considered from the perspective of a person skilled in the art. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365-66 (Fed.Cir.2003) (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed.Cir.2001)). However, "the question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure." Brown v. Baylor Health Care Sys., 662 F.Supp.2d 669, 677 (S.D.Tex. 2009), aff'd sub nom. Brown v. Baylor Healthcare Sys., 381 Fed.Appx. 981 (Fed. Cir.2010) (citing Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953 (Fed. Cir.2007)).
The specification of a patent "shall contain a written description of the invention, and of the manner and process of making and using it." 35 U.S.C. § 112 ¶ 1. The purpose of the "written description" requirement "is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353-54 (Fed.Cir.2010) (citing University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed.Cir.2004)). "The test for sufficiency of a written description 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.'" Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d 1171, 1188 (Fed.Cir.2012) (quoting Ariad, 598 F.3d at 1351). This test "requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Ariad, 598 F.3d at 1351.
"What is required to meet the written description requirement `varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.'" Id. at 1363 (quoting Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed.Cir.2005)). A means-plus-function claim does not meet the written description requirement unless there is a known or disclosed correlation between the function and the corresponding structure. Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed.Cir. 2011). Compliance with the written description requirement is a question of fact. Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1351-52 (Fed.Cir. 2011).
In addition to requiring a written description of the invention, Section 112 requires that the written description be "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." 35 U.S.C. § 112 ¶ 1. The test for enablement is whether a person "skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation." Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed.Cir.2008) (citation omitted).
In determining whether a disclosure requires undue experimentation, courts may consider the following factors: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed.Cir.2010) (quoting In re Wands, 858 F.2d 731, 737 (Fed.Cir. 1988)).
To satisfy the enablement requirement, the full scope of the claimed invention must be enabled, Sitrick, 516 F.3d at 999, but unclaimed elements need not be enabled, DeGeorge v. Bernier, 768 F.2d 1318, 1324 (Fed.Cir.1985). An inventor therefore need not enable the commercial embodiment of his invention in cases where the commercial embodiment contains unclaimed elements. CFMT, Inc. v. Yieldup Inter. Corp., 349 F.3d 1333, 1338
Id. at 1340 (internal citations omitted).
The requirements of written description and enablement "usually rise and fall together. That is, a recitation of how to make and use the invention across the full breadth of the claim is ordinarily sufficient to demonstrate that the inventor possesses the full scope of the invention, and vice versa." Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F.Supp.2d 885, 912-13 (D.Minn.2010) (quoting LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed.Cir.2005)) (internal quotation marks omitted). Enablement is a question of law involving underlying factual inquiries. Id. (citing Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed.Cir.2006)).
Section 112 also requires that a patent specification "set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. § 112 ¶ 1.
Defendants move for summary judgment on WesternGeco's apparatus claims for four patents that name Oyvind Hillesund and Simon Bittleston as their inventors (the "Bittleston patents"). These include the '017 patent (Doc. No. 273-3), the '607 patent (Doc. No. 273-9), the '967 patent (Doc. No. 287-31), and the '520 patent (Doc. No. 273-1). Defendants contend that these patents are invalid for their failure to meet the requirements of 35 U.S.C. § 112. As to the '520 patent, Plaintiff moves for summary judgment of validity.
Before responding to the specific arguments raised in Defendants' motion, Plaintiff first contends that Defendants' patent invalidity arguments should be precluded on the basis of untimeliness. Plaintiff essentially argues that, because Defendants pled their Section 112 defenses very generally, those defenses should be stricken, and Defendants should not now be allowed to make specific arguments deriving from those general pleadings. While the Court agrees that these defenses were pled very generally, Plaintiff has not raised the issue of Defendants' pleadings until now. Moreover, the cases cited by Plaintiff fail to support the argument that Defendants' broadly pled defenses should be precluded at the summary judgment phase. The Court declines to exclude these defenses on the basis of untimeliness.
Defendants contend that the following claims in the Bittleston patents are invalid for indefiniteness: (1) claim 16 of the '017 patent; (2) claim 15 of the '607 patent; (3) claim 15 of the '967 patent; and (4) claim 18 of the '520 patent.
Claim 16 of the '017 patent lists four elements, all of which are drafted in the "means-plus-function" format: (1) "means for obtaining a predicted position of the streamer positioning devices"; (2) "means for obtaining an estimated velocity of the streamer positioning devices"; (3) "means for calculating desired changes in the orientations of the respective wings of at least some of the streamer positioning devices using said predicted position and said estimated velocity"; and (4) "means for actuating the wing motors to produce said desired changes in wing orientation." ('017 patent at claim 16.) As noted above, courts considering means-plus-function expressions first must decide what the claimed function is, and then must determine whether a structure corresponding to that function is disclosed in the specification. Welker Bearing, 550 F.3d at 1097. Whether the written description adequately sets forth structure corresponding to the claimed function is considered from the perspective of a person skilled in the art. Intel Corp., 319 F.3d at 1365-66 (citing Budde, 250 F.3d at 1376).
Defendants challenge the first, third, and fourth of claim 16's means-plus-function elements. Specifically, Defendants contend that claim 16 fails to provide structure by (1) failing to disclose structure for the "means for predicting"; (2) failing to disclose structure for "calculating desired changes in the orientations of the respective wings of at least some of the streamer positioning devices using said predicted position and said estimated velocity"; and (3) failing to disclose structure for the "means for actuating."
In construing the '017 patent, the Court has previously determined that the specification does disclose structure corresponding to this language. The Court reasoned that the global control system runs position predictor software to estimate the actual location of each of the birds and that, therefore, that position predictor software is an indisputably necessary structure to perform the disclosed function. (735 F.Supp.2d at 640-41.) On that basis, the Court construed this term as "global control system and predictor software; and equivalents thereof." (Id. at 641.)
Defendants argue, somewhat conclusorily, that because this means-plus-function claim is computer-implemented — that is, because it uses a control system and predictor software — it must be linked
The Federal Circuit has recognized two categories of cases in which defendants may challenge special purpose computer-implemented means-plus-function claims. The first includes cases in which the specification discloses no algorithm at all. The second includes cases in which the specification does disclose an algorithm, but the defendant contends that the disclosure is inadequate. Noah Sys., 675 F.3d at 1313. Defendants appear to contend that the claims at issue disclose no algorithm at all.
Before considering Defendants' arguments on the merits, the Court acknowledges Plaintiff's contention that Defendants should be estopped from litigating indefiniteness. When the parties were before this Court on claim construction, ION argued that the only structures disclosed in the '017 patent that can perform the function of obtaining a predicted position are the global control system and the position predictor software. (See 735 F.Supp.2d at 640-41.) The Court agreed, and adopted ION's proposed construction. (Id.) In what seems to be a complete reversal of its earlier position, ION now argues that there are no structures disclosed in the '017 patent corresponding to this function. Such a reversal, Plaintiff urges, should be subject to judicial estoppel.
The Federal Circuit has explained that a patent's specification can express an algorithm "in any understandable terms including as a mathematical formula, in prose,
While testimony from one skilled in the art may aid the court in interpreting the specification, "the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification." Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed.Cir.2005); Med. Instr. & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed.Cir.2003) ("The correct inquiry is to look at the disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass software [with sufficient structure to perform the recited function], not simply whether one of skill in the art would have been able to write such a software program."); see also Elekta AB, 344 F.3d at 1214 ("[H]ere there would be no need for a disclosure of the specific program code if software were linked to the converting function and one skilled in the art would know the kind of program to use."). Thus, if structure is disclosed in the specification, and one skilled in the art would interpret that structure as encompassing software capable of performing the recited function, then the claim is not indefinite.
As the Court is to approach the indefiniteness question from the position of one skilled in the art, it looks to the positions taken by the parties' experts,
Although indefiniteness is a question of law, IGT, 659 F.3d at 1119, it requires a
As with the previous claim language, Defendants contend that there is no disclosure of a structure corresponding to this language. The Court construed this limitation and found the corresponding disclosed structures to be a "global control system; local control system and localized displacement/force conversion program using a look-up table or a conversion routine; and equivalents thereof." (735 F.Supp.2d at 642.) The only evidence cited in support of Defendants' indefiniteness contention is Dr. Bittleston's testimony that "there are multiple ways" to change the orientations of respective wings, depending on the device and the implementation. (Bittleston Dep., Doc. No. 273-7 at 156:14-22.) It is not clear how this testimony, which is consistent with the teachings of the specification as construed by the Court, could possibly prove indefiniteness by clear and convincing evidence.
Further undermining Defendants' argument is the testimony of Plaintiff's expert that "a person of ordinary skill in the art would understand the corresponding structure and would be able to implement this limitation in Claim 16 of the '017 patent without undue experimentation." (Triantafyllou Decl. ¶¶ 19-20.) Defendants again have failed to prove indefiniteness by clear and convincing evidence. The Court concludes that the jury will have to determine, after listening to live witness testimony, whether a person of ordinary skill in the art would have understood this language to disclose a corresponding structure.
Defendants assert that there is no disclosed structure corresponding to this claim limitation. The Court construed this language to mean "motor driver; and equivalents thereof" (735 F.Supp.2d at 642), a construction on which the parties agreed. Defendants now contend that "[n]o structure for accomplishing that function is shown." (Doc. No. 273 at 5.) The Court cannot agree, on the limited and conclusory argument made by Defendants, that no structure for actuating wing motors is disclosed. Moreover, although the Court did not find the doctrine of judicial estoppel appropriate above, where the disclosure of an algorithm was at issue, the doctrine is far more persuasive here, where the only question is whether the specification discloses a structure that corresponds to this limitation. ION agreed, at one point in this litigation, that it does.
Finally and persuasively, the Federal Circuit has explained that, "[i]f a claim is amenable to construction ... the claim is not indefinite." Aero Prods., 466 F.3d at 1016 (citing Exxon Res. & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir.2001)). The Court construed this claim as having corresponding structure at the urging of both parties. Defendants have failed to prove the indefiniteness of this limitation, and their motion as to this limitation therefore must be denied.
Claim 15 of the '607 patent recites a "prediction unit" as one of its elements. It describes the prediction unit's function as follows: "predict positions of at least some of the streamer positioning devices." ('607 patent at claim 15.) Defendants argue, for essentially the reasons asserted above with regard to claim 16's "means for obtaining a predicted position," that claim 15 of the '607 patent fails for indefiniteness.
Plaintiff contends that this claim is not a "means-plus-function" limitation, as it does not contain the word "means." Better Bags, Inc. v. Cont'l Poly Bags, Inc., No. H-10-608, 2011 WL 2014551, at *5 (S.D.Tex. May 23, 2011) ("[S]ince the claim does not contain the word `means,' there is a strong presumption against the `means-plus-function' construction." (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir.2004))). Defendants respond that, under WesternGeco's theory, a clever patent drafter could avoid the disclosure requirements of Section 112 ¶ 6 by claiming a "predictor" instead of a "means for predicting."
Ultimately, even if the Court were to construe this limitation as a means-plus-function limitation, Defendants would need to offer evidence regarding how someone skilled in the art would have interpreted the language. The only such evidence comes from Plaintiff's expert, Dr. Triantafyllou, who testifies that, "[t]o the extent it is necessary for this term to have a corresponding structure in the patent's specification, it is my opinion that there is corresponding structure disclosed as noted above with `means for obtaining a predicted position of the streamer positioning devices.'" (Triantafyllou Decl. ¶ 23.) Dr. Triantafyllou further opines that "a person of ordinary skill in the art would understand the corresponding structure for this limitation in Claim 15 of the '607 Patent." (Id. ¶ 24.) Defendants have presented no evidence on this argument, and therefore fail to meet their burden of proving indefiniteness by clear and convincing evidence.
Defendants assert that claim 15 of the '967 patent is invalid for improper functional claiming because it creates confusion as to when it is directly infringed. Claim 15 of the '967 patent includes an element reciting "a global control system transmitting location information to at least one local control system." ('967 patent at claim 15.) Defendants urge that this claim is invalid because it claims both a system and a method, creating confusion.
Claims directed both to systems and to actions performed by users of the systems are considered indefinite if they create confusion as to when an apparatus claim is directly infringed. See Katz, 639 F.3d at 1318; IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.Cir.2005). The claim at issue in IPXL reads as follows:
IPXL, 430 F.3d at 1384. The Federal Circuit held that, because this claim recites both a system and the method for using that system, it is unclear whether the claim is infringed "when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually
The claim at issue in Katz is similar to the challenged claim in IPXL, and recites a system with an "interface means for providing automated voice messages ... to certain of said individual callers, wherein said certain of said individual callers digitally enter data." 639 F.3d at 1318. The court in Katz explained that, "[l]ike the language used in the claim at issue in IPXL (`wherein ... the user uses'), the language used in the Katz claims (`wherein... callers digitally enter data' and `wherein... callers provide ... data') is directed to user actions, not system capabilities." Id.
Although functional language directed to user actions, like the language at issue in IPXL and Katz, can invalidate a claim, "functional language which merely describes the capability of the claimed invention will not render a claimed invention invalid" under IPXL. Eolas Techs., Inc. v. Adobe Systems, Inc., 810 F.Supp.2d 795, 812 (E.D.Tex.2011) (citing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed.Cir.2008)). Thus, in Yodlee, Inc. v. CashEdge, Inc., No. 05-01550, 2006 WL 3456610, at *4-6 (N.D.Cal. Nov. 29, 2006), the court concluded that the claims at issue were valid because they "describe what the apparatuses do, when used in a certain way. They do not claim use of the apparatuses." Likewise, in Eolas, the court held that, notwithstanding the claim's use of the word "wherein," the claims at issue described the capabilities of the claimed apparatuses, and thus did not render the claims indefinite. 810 F.Supp.2d at 813-14. In Toshiba Corp. v. Juniper Networks, Inc., No. 03-1035-SLR, 2006 WL 1788479, at *4 (D.Del. Jun. 28, 2006), the court similarly denied a motion for summary judgment of invalidity as to a claim with the phrase "wherein the control message processing unit communicates with," holding that the claim recited only the functional capabilities of the apparatus. Ultimately, it is well-established that a functional limitation — that is, an attempt to define something by what it does rather than by what it is — is a permissible means of articulating a claim limitation. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.1997).
Unlike in Katz and IPXL, the claims of the '967 patent do not create confusion as to when infringement occurs. First, they do not attempt to cover an apparatus and a method in a single claim. Rather, claim 1 is a method claim, and claim 15 is the corresponding apparatus claim. Claim 1 recites a method comprising "transmitting from a global control system location information to at least one local control system ...." Claim 15 includes a global control system capable of transmitting location information to a local control system, whereas claim 1 recites the method transmission. Moreover, claim 15 does not refer to actions to be taken by the user, as in IPXL and Katz. Instead, the language "a global control system transmitting location information" recites the capabilities of the apparatus, much like the claims at issue in Eolas and Toshiba. As such, this claim includes valid functional
Claim 18 of the '520 patent requires "(a) an array of streamers each having a plurality of streamer positioning devices there along; [and] (b) a control system configured to use a control mode selected from a feather angle mode, a turn control mode, a streamer separation mode, and two or more of these modes." ('520 patent at claim 18.) As to claim 18, Defendants move for summary judgment of invalidity based on indefiniteness. In light of the Court's construction of the '520 patent as a control system configured to use one or more of the group of four listed modes (discussed below in addressing the infringement motions), Defendants also raise concerns about invalidity based on prior art. Plaintiff cross-moves for summary judgment on the '520 patent's validity.
The apparatus portion of claim 18 of the '520 patent has two elements: (1) an array of streamers; and (2) a control system "configured to use a control mode" that is selected from a list of "modes," including "feather angle mode," "turn control mode," and "streamer separation mode." (Id.) Defendants contend that the "control system" is a computer-implemented element, and therefore that it requires a corresponding algorithm in the specification to satisfy the definiteness requirement. Plaintiff responds that claim 18 is not a means-plus-function claim, so there is no requirement that a corresponding algorithm be supplied in order to make the claim definite. Plaintiff notes that ION's claim-construction brief did not classify claim 18 of the '520 patent as a functional expression governed by Section 112 ¶ 6; indeed, ION sought construction of this claim language, some of which the Court adopted almost verbatim. (Doc. No. 120.) Plaintiff urges that Defendants should be estopped from now arguing that this language, for which ION sought construction, is indefinite.
Putting aside Plaintiff's argument as to estoppel, the Court finds that, even if this claim were construed as a means-plus-function claim, Defendants provide insufficient evidence to meet their "clear and convincing" burden. Indeed, one of Defendants' own experts, Mr. Brune, has testified that claim 18 of the '520 patent is clear and not indefinite. (Brune Dep. at 175:10-17.) When asked whether, in his expert opinion, Mr. Brune had any doubt as to what is covered by claim 18 of the '520 patent, Mr. Brune answered, "[n]o, it's — it's clear to me." (Id. at 175:10-12.) When asked whether, in his opinion, there is anything indefinite about the scope of claim 18, Mr. Brune responded "[n]ot in my interpretation." (Id. at 175:13-17.) Importantly, "[i]f one skilled in the art would understand the bounds of the claim when read in light of the specification, then the claim satisfies section 112 paragraph 2." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed.Cir. 2001). Defendants' unsupported attorney argument fails to prove indefiniteness by clear and convincing evidence.
Defendants argue that claim 18 is invalid because it is anticipated under 35 U.S.C. § 102, and because it is obvious under 35 U.S.C. § 103. (Doc. No. 298 at 28-31.)
"For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element of the claimed invention must be identically shown in a single reference." In re Bond, 910 F.2d 831, 832 (Fed.Cir. 1990). "There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of
Defendants argue that, under the Court's construction of claim 18 of the '520 patent, discussed below, the claim is anticipated by U.S. Patent No. 5,790,472 (the "Workman Reference"). (Doc. No. 298-S.) The Workman Reference was filed on December 20, 1996, and issued on August 4, 1998. (Id.) Because it was filed before October 1, 1998, the priority date of the '520 patent, the Workman Reference is presumptively prior art under 35 U.S.C. § 102(e).
Under the Court's construction of claim 18 of the '520 patent, the Workman Reference would have to disclose only one of the modes listed in claim 18. Defendants urge that the Workman Reference discloses a control mode that performs the function of claim 18's "streamer separation mode." The Court has construed "streamer separation mode" as "a control mode that attempts to set and maintain the spacing between adjacent streamers." (735 F.Supp.2d at 639.)
The Workman Reference discloses a vessel towing a plurality of streamer cables. (Workman Reference at col. 2:66-3:5.) It states that "[s]treamer positioning devices 14, for example birds and tail buoys, may be attached to the exterior of the streamer cables 13 for adjusting the vertical and lateral positions of the streamer cables 13." (Id. at col. 3:14-18.) The Workman Reference also discloses a "streamer cable controller," which is part of a "seismic data acquisition system" located on the vessel. (Id. at fig. 2, col. 3:30-45.) Defendants emphasize the following language in the Workman Reference in support of their argument that it anticipates the "streamer separation mode":
(Id., at col. 3:58-4:8 (emphasis added by Defendants).) Although Defendants do not direct the Court to any expert evidence, the Court notes that Dr. Garris does opine, in his expert report, that the turn control and streamer separation modes of the '520 patent are anticipated by the Workman Reference. (Garris Report, Doc. No. 308-108 at 6.)
To the extent that Defendants intend to move for summary judgment based on the Workman Reference, this minimal evidence, not even cited by Defendants in their briefing, is insufficient to resolve the
A patent claim is invalid "if the differences between the [claimed] subject matter ... and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). "In order to render a claimed apparatus or method obvious [under § 103], the prior art must enable one skilled in the art to make and use the apparatus or method." Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.Cir.1989). To avoid being obvious, claimed subject matter must be "more than the predictable use of prior art elements according to their established functions." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). "Obviousness is a question of law based on underlying questions of fact." Green Edge Enters., LLC v. Rubber Mulch Etc., 620 F.3d 1287, 1298 (Fed.Cir.2010).
Defendants contend that the Workman Reference, in combination with U.S. Patent No. 4,890,568 (the "Dolengowski Reference" or "Dolengowski"), renders claim 18 obvious, and therefore invalid. The Dolengowski Reference, titled "Steerable Tail Buoy," was issued on January 2, 1990. (Doc. No. 298-T.) It is presumptively prior art to the '520 patent under 35 U.S.C. § 102(b). The Dolengowski Reference discloses remotely controllable tail buoys to maintain the lateral separation of the ends of streamers to avoid entanglement. (Id. at col. 2:50-58, col. 7:4-35.)
Plaintiff argues that, beyond the fact that Dolengowski was considered by the USPTO and determined not to render the '520 patent obvious, it also fails to disclose the patented invention because it does not teach control modes required by the claim. The only expert evidence provided by Defendants is that, while Dolengowski does not "explicitly use the terms `feather angle mode,' `turn control mode,' and `streamer separation mode,' it does teach the challenges of towing multiple streamers to address these modes." (Garris Expert Report at 70.) Merely teaching the challenges resolved by the patented control modes of the '520 patent, without actually solving those challenges in the same way, cannot give rise to obviousness. As Plaintiff's expert avers, "Dolengowski's solution to the described problems was merely to use rudders to move tail buoys away from one another." (Triantafyllou Rebuttal Report ¶ 101.) Dr. Triantafyllou further notes that Dolengowski "does not teach or suggest using a ... streamer separation mode as taught in the '520 patent
Defendants contend that claim 16 of the '017 patent, considered above in the context of indefiniteness, also fails to satisfy the written description requirement. Defendants essentially reiterate their indefiniteness contentions, noting that their arguments as to indefiniteness similarly demonstrate the absence of an adequate written description.
The Workman Reference discloses a vessel towing a plurality of streamer cables. (Workman Reference at col. 2:66-3:5.) It states that "[streamer positioning devices 14, for example birds and tail buoys, may be attached to the exterior of the streamer cables 13 for adjusting the vertical and lateral positions of the streamer cables 13." (Id. at col. 3:14-18.) The Workman Reference also discloses a "streamer cable controller," which is part of a "seismic data acquisition system" located on the vessel. (Id. at fig. 2, col. 3:30-45.) Defendants emphasize the following language in the Workman Reference in support of their argument that it anticipates the "streamer separation mode":
Although written description is a factual issue, the test for compliance with the written description requirement requires an "objective inquiry" into the four corners of the specification from the perspective of a person of ordinary skill in the art. Ariad, 598 F.3d at 1351. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Id. Defendants cite no evidence in support of their written description argument. The only relevant evidence that the Court has located is in the expert report of Dr. Garris, who states that "[t]here is no description of what the `position predictor software' consists of." (Garris Expert Report at 56.) Plaintiff's expert contends, in contrast, that the written description requirement is satisfied. (Triantafyllou Expert Report ¶ 327.) Dr. Triantafyllou indicates that he disagrees with Dr. Garris "because the '017 patent's specification discusses position prediction. For example, the specification describes using a `distributed processing control architecture and behavior-predictive model-based control logic' in the control system.... The specification also discusses the use of such software." (Id.) Written description is a question of fact; where, as here, there is competing expert testimony regarding the perspective of a person of ordinary skill in the art, a genuine issue of material fact remains, and this question must be resolved by the jury.
With regard to enablement, Defendants argue (1) that claim 16 of the '017 patent is invalid because the full scope of the claim
Defendants again reassert their indefiniteness arguments in the context of enablement. They urge that there is no disclosure for three of the four elements of claim 16: (1) obtaining a predicted position, (2) calculating the desired changes in the orientation of the wings, using estimated velocity and predicted position, and (3) actuating the wing motors. Here, as in the context of indefiniteness, Defendants provide insufficient evidence regarding whether one of skill in the art, after reading the specification, could practice the claimed invention without undue experimentation. Sitrick, 516 F.3d at 999. Thus, like their indefiniteness argument, Defendants' enablement argument as to claim 16 of the '017 patent must fail.
Defendants also contend that the phrase "streamer positioning device," used in all of the Bittleston patents, is not enabled, rendering claims in each of the Bittleston patents invalid. Defendants urge that, aside from one figure and one block diagram reciting the results to be obtained, no streamer positioning device is disclosed in the patents.
First, Defendants argue that the Bittleston patents' specifications fail to enable stability in the streamer positioning devices, despite the inventors' knowledge that stability was critical. In an attempt to prove that the inventors knew of the importance of stability in the streamer positioning devices, Defendants point to the fact that the inventors hired an expert outside contractor to develop software to make the steering device stable. (Hillesund Dep., Doc. No. 273-14 at 286:11-287:6; 412:15-22.) Defendants also cite to Mr. Hillesund's explanation that one method of ensuring stability was to update the angles of the wings on the bird "several times every second" to prevent the bird from "twisting." (Hillesund Dep., Doc. No. 273-15 at 363:15-364:17.) Notwithstanding Mr. Hillesund's recognition of the importance of rapid updating to stability, Defendants argue, the Bittleston patents do not disclose this need. (Hillesund Dep., Doc. No. 273-16 at 365:2-365:12.) Defendants also emphasize the fact that Mr. Hillesund and Dr. Bittleston knew, before filing their patent applications, that the spinning of the bird could become so violent that the wings might need to be blown off the bird body. (Hillesund Dep., Doc. No. 273-20 at 380:13-381:15; Doc. No. 273-21 at WG00024668.)
Defendants' evidence on the "twisting" issue consists entirely of inventor testimony having nothing to do with the Bittleston patents' text. The credibility of these witnesses, which inherently is at issue, should be judged at trial. As with a number of Defendants' arguments, no expert testimony is cited, and the Court has been unable to find any that is persuasive on this issue. On the other hand, Plaintiff's expert has opined that the Bittleston patents do enable streamer positioning devices. (Triantafyllou Decl. ¶ 27.) Defendants' own expert, Mr. Brune, similarly has affirmed that the Bittleston '895 application discloses and enables an active streamer positioning device or a master controller. (Brune Dep., Doc. No. 287-16 at 66:25-67:6.) Mr. Brune's report mentions non-enablement only as to the '038 and '607 patents, but gives no rationale whatsoever for his opinion. (Brune Expert Report at 20-21.) Dr. Garris does not discuss enablement of a streamer positioning device at all. As to the Bittleston patents' enablement
Defendants also argue that the Bittleston patents fail to disclose a system for locating the positions of the streamer positioning devices. Defendants highlight Mr. Hillesund's testimony that the lack of an accurate system for locating the positions of the streamer positioning devices would have made the use of lateral steering "possibly impossible to implement." (Hillesund Dep., Doc. No. 287-36 at 296:9-297:15.) Again, Defendants offer no expert testimony in support of their argument, and fail to prove that the claimed "streamer positioning device" requires a system for locating the positions of the streamer positioning devices. The burden to prove non-enablement is on Defendants, and they have failed to meet it at this juncture.
Finally, Defendants claim that the inventors of the Bittleston patents knew, but did not disclose, better modes of carrying out the Bittleston patents. Defendants proffer essentially the same arguments used to challenge the enablement of the Bittleston patents. Defendants first contend that streamer positioning devices need modes that the inventors did not disclose. Specifically, Defendants point to the importance, acknowledged by Mr. Hillesund, of preventing streamer positioning devices from twisting. Defendants also contend that WesternGeco's later-completed acoustic positioning system for measuring the locations of streamer positioning devices is not mentioned in the patents, despite the fact that the inventors "knew what positioning system they were going to try to use." (Doc. No. 273 at 22.) Defendants also offer evidence that the inventors worked on addressing these two problems — the need for additional modes and the need for an acoustic positioning system — as late as 2005. What Defendants fail to prove is that Dr. Bittleston or Mr. Hillesund knew of a better mode in 1998 and failed to disclose it.
Perhaps even more problematically, Defendants also fail to prove that the functionality of the alleged best modes — anti-twist methods, fail-safe explosives, and an acoustic positioning system for measuring the locations of streamer positioning devices — is within the scope of Bittleston patents. Cf. AllVoice Computing PLC v. Nuance Communications, Inc., 504 F.3d 1236, 1248 (Fed.Cir.2007) ("Because the functionality of the alleged best mode falls outside the scope of claim 73, this court detects no violation of the best mode requirement with respect to claim 73."). The "best mode" analysis is a question of fact, and Defendants have failed to meet their burden of proving, by clear and convincing evidence, that the inventors of the Bittleston patents "knew of and concealed a better mode of carrying out the claimed invention than that set forth in the specification." Teleflex, 299 F.3d at 1330.
Defendants move for summary judgment of invalidity as to claims 1, 3, 4, 11, and 14 of the Zajac patent on the basis that these claims fail to meet the written description and enablement requirements of 35 U.S.C. § 112, and, as to claims 4 and 14, on the basis that they fail to meet that Section's definiteness requirement.
Plaintiff again urges that Defendants' invalidity defenses are untimely, as they
Defendants contend that claims 1, 3, 4, 11, and 14 fail to satisfy the written description requirement because the written description fails to (1) describe an active streamer positioning device ("ASPD"); (2) describe a master controller for issuing positioning commands to each ASPD to adjust a vertical and horizontal position for maintaining a specified array geometry; and (3) describe a master controller that issues positioning commands to ASPDs to maintain the desired streamer positions and array geometry versus time. As discussed above, a claim that includes functional language must disclose a correlation between the function and a structure. Boston Sci. Corp., 647 F.3d at 1365. A patentee can rely on information that is "well-known in the art" to satisfy the written description requirement. Id. at 1366. However, where the "four corners of the specification directly contradict information that the patentee alleges is `well-known' to a person of skill at the effective filing date, no reasonable jury could conclude that the patentee possessed the invention." Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir.2012).
Claims 1, 3, 4, 11, and 14 of the Zajac patent each claim, as a part of the invention, "an active streamer positioning device." This term has been construed by the Court to mean "a device capable of controlling the vertical and horizontal position of the seismic streamer." (735 F.Supp.2d at 643.) Defendants contend that nothing in the specification of the Zajac patent explains what an ASPD is, or how to make or use one. Defendants maintain that ASPDs are discussed in the specification only in the context of the results they achieve, and not their structure. Defendants highlight, as an example, the following language in the Zajac patent:
(Doc. No. 270-1 at col. 7, ln. 1-12.) Defendants also point out that the specification does not include a drawing of the ASPD; they contend that, from reading the language within the four corners of the Zajac patent, the public knows that an ASPD is meant to control the vertical and horizontal position of the streamer, but does not know what structure an ASPD uses to accomplish that result.
Defendants err in focusing on what the public would understand by looking at these patents, as the proper inquiry is what would be understood by a person of ordinary skill in the art. Ariad, 598 F.3d at 1351. Both Dr. Thomas Edgar, ION's technical expert, and Dr. Triantafyllou, WesternGeco's technical expert, confirm that, at the time the Zajac patent was filed, those skilled in the art of marine
Claims 1, 3, 4, and 11 of the Zajac patent each claim, as a part of the invention "a master controller for issuing positioning commands to each ASPD to adjust a vertical and horizontal position ... for maintaining a specified array geometry." (Zajac patent at claims 1, 3, 4, 11.) Because this language represents an apparatus (a "master controller") claimed using functional language ("for issuing positioning commands"), the specification must disclose a structure correlated with the claimed function in order to meet the written description requirement. See Boston Sci. Corp., 647 F.3d at 1365. The Court has construed master controller to mean "a controller that sends commands to other devices in a system." (735 F.Supp.2d at 643-44, 648-49.)
Defendants contend that nothing in the specification of the Zajac patent explains what a master controller is, or how to make or use a master controller to issue positioning commands to each ASPD for maintaining a specified array geometry. Defendants cite, as an example, the following language from the specification: "The master controller 26 then determines, in light of the current environmental conditions and the maneuverability of the vessel, ASPDs and towed streamers comprising the array, the timing and magnitude of positioning commands to be sent to the ASPDs on the array." (Zajac patent at col. 8, ln. 31-35.) Defendants contend that this explains what the master controller determines — the timing and magnitude of positioning commands — but not how the master controller makes such a determination.
Plaintiff responds first that the Bittleston '895 application, referenced in the Zajac patent, teaches a "global control system," which is a type of master controller. ION's technical expert, Mr. Brune, has confirmed that the '895 application discloses and enables a "master controller" that corresponds to the term as used in the Zajac patent. (Brune Dep. at 65:21-67:6, 72:1-16.)
Claim 14 of the Zajac patent claims the following: "wherein the master controller ... issues positioning commands to the ASPDs to maintain the desired streamer positions and array geometry versus time." ('038 patent at claim 14.) As above, this is an apparatus claimed using functional language, which, in order to meet the written description requirement, must disclose a corresponding structure. Boston Sci. Corp., 647 F.3d at 1365. The Court construed "positioning commands" to mean "signals or instructions to control positioning," and "maintaining a specified array geometry" to mean "maintaining a specified array shape." (735 F.Supp.2d at 649.)
Defendants again urge that nothing in the specification of the Zajac patent explains what a master controller is, or how to make or use one to issue positioning commands to each ASPD to maintain the desired streamer positions and array geometry versus time. Plaintiff reiterates that one skilled in the art would know what a master controller was, and that the patent cross-references two related patent applications that describe master controllers. For the reasons discussed above, Defendants fail to prove this argument by clear and convincing evidence at this juncture, so their motion must be denied.
Defendants contend that the Zajac patent fails to enable the same language challenged above under the written description requirement. The Federal Circuit has explained that, "[i]f an invention pertains to an art where the results are predictable[,]... a broad claim can be enabled by disclosure of a single embodiment, and is not invalid for lack of enablement simply because it reads on another embodiment of the invention which is inadequately disclosed." Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1533 (Fed.Cir. 1987) (citations omitted); see also Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 (Fed.Cir.2005) ("Enablement does not require the inventor to foresee every means of implementing an invention at pains of losing his patent franchise."). It is also clear that enablement entails
Defendants repeat their arguments as to why an ASPD is not adequately recited. However, for the reasons discussed above, the Court concludes that a genuine issue of material fact remains as to whether those skilled in the art would know how to make and use an ASPD. Though Defendants acknowledge that courts considering enablement should look to the factors laid out in Wands, 858 F.2d at 737, they fail to address how any of these factors counsels in favor of their non-enablement argument. Defendants fail to establish, by clear and convincing evidence, that an ASPD was not enabled. Because Defendants have offered insufficient evidence to resolve the fact questions underlying the enablement inquiry, summary judgment must be denied.
Again, without citing any evidence in support of their argument, Defendants contend that the Zajac patent fails to enable a master controller for issuing positioning commands to each ASPD to adjust a vertical and a horizontal position. For the reasons discussed above with regard to the written description of this language, Defendants have failed to meet their burden, and summary judgment must be denied.
Defendants offer no further evidence in support of this argument. For the reasons discussed above, factual issues remain, and summary judgment must be denied.
Defendants also move for summary judgment of indefiniteness as to claims 4 and 14. As discussed above, claims are considered indefinite when they are "not amenable to construction or are insolubly ambiguous." Young, 492 F.3d at 1346. Claim 4 of the Zajac patent contains the limitation: "wherein the master controller compares the positions of the streamers versus time and the array geometry versus time to a desired streamer position and array geometry versus time and issues positioning commands to the ASPDs to maintain the desired streamer position and array geometry versus time." ('038 patent at claim 4.) Claim 14 contains a similar limitation: "wherein the master controller compares the vertical and horizontal positions of the streamers versus time and the array geometry versus time to desired streamer positions and array geometry versus time and issues positioning commands to the ASPDs to maintain the desired streamer positions and array
In support of their argument, Defendants cite to IPXL, 430 F.3d 1377, and Katz, 639 F.3d 1303. The Court discussed these cases in addressing Defendants' allegations of indefiniteness with regard to claim 15 of the '967 patent, above. Defendants' argument fails here for the same reason.
The language at issue in claims 4 and 14 is distinguishable from the language at issue in IPXL and Katz, and looks much more like the language at issue in Microprocessor, 520 F.3d at 1375, Yodlee, 2006 WL 3456610, Eolas, 810 F.Supp.2d at 812, and Toshiba, 2006 WL 1788479. The functional language in these claims recites the capability of the claimed invention, rather than how a user is to perform a method for using that invention. The language at issue here does not refer to steps a user takes to utilize the invention. Rather, the verbs "compares" and "to maintain" describe capabilities of the master controller itself. Plaintiff's expert confirms what seems clear from the face of the patent — that the limitations in claims 4 and 14 "refer[] to a capability of the master controller, not a specific action taken by a user of the system." (Triantafyllou Decl. at ¶¶ 15-16.) A genuine issue of material fact remains as to the indefiniteness of claims 4 and 14 of the Zajac patent.
At issue in these motions is whether the Fugro Defendants and ION infringed on a number of WesternGeco's patents. All of the allegedly infringing products at issue in this litigation (the "Accused Products") are ION products; the Fugro Defendants are alleged only to have used these infringing products. The Defendants move jointly for summary judgment as to whether these ION Accused Products infringed on WesternGeco's patents.
In their Motion for Partial Summary Judgment as to the Invalidity of Claims of the Hillesund Patents for Violation of 35 U.S.C. § 112 (Doc. No. 273), Defendants move for summary judgment on a number of apparatus claims, including claim 16 of the '017 patent; claim 15 of the '607 patent; claim 15 of '967 patent; and claim 18 of the '520 patent. Plaintiff cross-moves for summary judgment on the '520 patent, seeking summary judgment both that the patent was infringed, and that it was infringed willfully. (Doc. No. 276.) Finally, in Defendants' Motion for Summary Judgment of Non-Infringement of WesternGeco's System Claims of its '038 Patent, Defendants move for summary judgment of non-infringement on claims 1, 3, 4, 11, and 14 of the Zajac patent.
Section 271(a) states that a patent claim is directly infringed if, without authority, a person "makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore." 35 U.S.C. § 271(a). The determination of whether an accused product infringes a patent claim involves two steps: (1) a court must construe the claim terms, as a matter of law, to determine their proper scope; and (2) the claim, as properly construed, must be compared to the accused device.
While infringement is a question of fact, the underlying claim construction is a question of law. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998); Markman, 52 F.3d at 976. "An infringement issue is properly decided upon summary judgment when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed.Cir.2001) (citing Bai, 160 F.3d at 1353).
"To establish literal infringement, all of the elements of the claim, as correctly construed, must be present in the accused system." Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1353 (Fed.Cir. 2001). "Literal infringement of a means-plus-function claim limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed.Cir.2006) (citing Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed.Cir.2003)). Summary judgment on literal infringement is proper "when no genuine issue of material fact exists, in particular, when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device." Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164 (Fed.Cir.2004) (quoting Bai, 160 F.3d at 1353) (internal quotation marks omitted).
Even if a device does not literally infringe a claim, it "may nonetheless infringe under the doctrine of equivalents if every element in the claim is literally or equivalently present in the accused device." Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed.Cir.1997) (citing Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934-35 (Fed.Cir. 1987)). "The doctrine [of equivalents] evolved in recognition of the fact that `[t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty.'" Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1357-58 (Fed.Cir.2005) (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002)). The doctrine is meant to prevent "the unscrupulous copyist [from making] unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law." Graver Tank & Mfg. Co. et al. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097 (1950).
In considering whether a device infringes under the doctrine of equivalents, courts determine whether the "two devices do the same work in substantially the same way, and accomplish substantially the same result." Id. at 608, 70 S.Ct. 854 (quoting Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935 (1877)). In order to proceed with a claim under the doctrine, a patent holder must show that the accused device includes the equivalent of each claim limitation. Dawn Equip. Co. v. Ky. Farms, Inc., 140 F.3d 1009, 1015 (Fed.Cir.1998). "Although equivalence is a factual matter normally
A party's acts may constitute indirect infringement under 35 U.S.C. § 271(b) and (c) if a party actively induces or contributes to infringement. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir.1993). There cannot be indirect infringement absent direct infringement. Id. ("Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement." (citations omitted)).
Under 35 U.S.C. § 271(f)(1), liability exists for one who "supplies or causes to be supplied in or from the United States" one or more components of a patented invention "where such components are uncombined in whole or in part, in such a manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States." 35 U.S.C. § 271(f)(1). Section 271(f)(2) provides for liability as against persons who supply or cause to be supplied "in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use ... knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States." 35 U.S.C. § 271(f)(2).
Defendants move for summary judgment of non-infringement regarding four of the WesternGeco patents at issue in this litigation, including the '017 patent, the '607 patent, the '967 patent, and the '520 patent. Plaintiff cross-moves for summary judgment of willful infringement of the '520 patent.
As noted above, the determination of whether an accused product infringes a patent claim involves first conducting claim construction, and then comparing the claim, as properly construed, to the accused device. Markman, 52 F.3d at 976. On July 16, 2010, the Court issued an order construing a number of claims at issue in this case. 735 F.Supp.2d 623 (S.D.Tex.2010). The Court construed the following terms relevant to this motion:
CLAIM TERM COURT'S CONSTRUCTION "streamer positioning device(s)"; "the "a device that controls the position of a positioning device" streamer as it is towed (e.g., a `bird')" (Doc. No. 120 at 16) "global control system" "a control system that sends commands to other devices in a system (e.g., local control systems)" (Id. at 19) "local control system" "a control system located on or near the streamer positioning devices (e.g., birds)" (Id. at 19)
"location information" "information regarding location" (Id. at 22) "means for obtaining a predicted position of "global control system and predictor the streamer positioning devices" software; and equivalents thereof" (Id. at 29) "means for obtaining an estimated velocity of "flowmeters; water velocity sensors; and the streamer positioning devices" equivalents thereof" (Id. at 31) "means for calculating desired changes in the "global control system; local control system orientations of the respective wings of at least and localized displacement/force conversion some of the streamer positioning devices program using a look-up table or a conversion using said predicted position and said routine; and equivalents thereof" (Id. at 32) estimated velocity" "turn control mode" "mode wherein streamer positioning device(s) generate a force in the opposite direction of a turn and then directing each streamer positioning device to the position defined in the feather angle mode" (Id. at 26-27)
At a hearing held on December 15, 2011, the parties agreed that the term "estimated velocity" is properly construed as "estimate of speed and direction." (Doc. No. 272-E.)
At the same hearing, the Court considered the Fugro Defendants' request for construction of the terms "predicted position(s)" and "predict positions," as well other claim language using the word "predict." (Doc. No. 181 at 13, 18.) The Fugro Defendants asked the Court construe terms including the word predict to include the phrase "at a future time"; they urged that the word predict is different than the word estimate, in that it requires determining something about a future time. (Id. at 14.) The Court declined to construe the additional terms raised by the Fugro Defendants.
Defendants contend that Plaintiff's allegations of infringement of the apparatus claims of the '017, '607, '967, and '520 patents fail because ION's towed streamer system does not contain every limitation of these apparatus claims, either literally or under the doctrine of equivalents.
Claim 16 of the '017 patent is comprised of means-plus-function limitations, as defined by 35 U.S.C. § 112 ¶ 6. To infringe claim 16, a system must include the following elements: (1) "means for obtaining a predicted position of the streamer positioning device"; (2) "means for obtaining an estimated velocity of the streamer positioning device"; and (3) means for using the predicted position and estimated velocity to "calculate[] desired changes in the orientations of the respective wings of at least some of the streamer positioning devices." ('017 patent at claim 16.) Defendants argue that none of the ION Accused Products includes the foregoing limitations, either literally or under the doctrine of equivalents.
Claim 16 of the '017 patent states that the apparatus must perform the function of "obtaining a predicted position of the streamer positioning devices." ('017 patent.) The Court has held that the structures that perform this limitation include "global control system and predictor software; and equivalents thereof." (735 F.Supp.2d at 641). To satisfy this limitation, an ION Accused Product must have one of the structures identified by the Court, or must have an equivalent structure able to perform the function of obtaining a predicted position of the streamer positioning devices.
Plaintiff contends that ION's Accused Products do include a means for obtaining a predicted position. Specifically, Plaintiff argues that ION's ORCA product includes software — namely, the "Kalman filter" — that predicts positions. Plaintiff points to deposition testimony of Mr. Macnab, who confirms that the Kalman filter "is predicting the position of the DigiFIN devices." (Macnab Dep., Doc. No. 291-22 at 199:8-13.) Plaintiff also cites a document describing algorithms related to the Kalman filter, which states that the Kalman filer uses raw data "to update its position ... estimates" (Doc. No. 291-27 at 5), and that outputs from the Kalman filter are passed to the "shot predictor," which "believes what the filter tells it about position & velocity." (Id.)
One of Plaintiff's experts, John J. Leonard, testifies that the Kalman filter "repeatedly predicts positions and estimates the positions and velocities of the nodes in streamer arrays. The ORCA-APSL module of ORCA uses the positions of streamer array elements estimated by the [Kalman filter] to compute separations between streamers and transmits this information to the Lateral Controller." (Leonard Updated Opening Report, Doc. No. 291-13 at ¶ 8.) Dr. Leonard also explains that "[t]he ORCA source code contains a module called the NCN (Network Calculation Node) that uses a Kalman filter to predict the positions and estimate the velocities of the notes within the streamer array." (Id. ¶ 17.) Indeed, ORCA's source code includes the following notation: "perform a prediction/adjustment sequence, updating the filter." (Doc. No. 291-26 at IONSC4402.) Dr. Leonard refers to the Kalman filter's ability to "predict" several more times throughout his report. (Id. ¶¶ 18-42, 53 (indicating that the Kalman filter performs "a prediction/adjustment sequence"; that the Kalman produces an estimation in two steps, the first of which is "prediction"; and referring to prediction as a "necessary" function for the Kalman filter).) Finally, Dr. Leonard states that certain files in the ORCA "describe data items that relate to the prediction of the future positions of streamers." (Id.) Dr. Triantafyllou, another WesternGeco expert, opines that ION's ORCA product "houses position prediction software that obtains predicted position of the streamer positioning devices." (Triantafyllou Opening Report, Doc. No. 291-12 at ¶ 131.) He explains that this software is housed within the Kalman filter, and that it "obtains predicted positions of the DigiFINs — the Lateral Controller then obtains this information to control the DigiFINs." (Id.)
In response to Plaintiff's evidence, Defendants offer the testimony of Joe Tipton Cole, an ION expert, who submits in his report that Dr. Leonard's reliance on the common terminology of the Kalman filter — specifically, the term "prediction
The competing expert testimony from Plaintiff and Defendants creates a genuine issue of material fact as to whether the ORCA includes a means for obtaining a predicted position. It is undisputed that the Kalman filter's source code uses the term "prediction" to define what it does. Defendants make much of the fact that the Kalman filter does not actually "predict" in the sense that it does not depend on future values, and instead relies on historical data. However, this Court specifically rejected the Fugro Defendants' request that the Court construe the term "predict" to require something occurring at a "future time." Moreover, Defendants have not persuaded the Court that one meaning should be attributed to the term "predict" when it is used in WesternGeco's patents, but that an entirely different meaning applies to the world as used in the Kalman filter's source code. Ultimately, the expert testimony, including testimony from ION's own expert, suggests that such divergence between the two meanings may not exist. Because a reasonable juror could find that the ORCA obtains a predicted position, summary judgment on this issue must be denied.
Claim 16 of the '017 patent also must perform the function of "obtaining an estimated velocity of the streamer positioning devices." ('017 patent at claim 16.) The Court has held that the structures that perform this limitation include "flowmeters; water velocity sensors; and equivalents thereof." (735 F.Supp.2d at 641-42.) Defendants contend that, though ION has products that estimate the velocity of SPDs, it does not literally infringe because it does not use flowmeters or water velocity sensors to perform that estimation. According to Mr. Brune, ION calculates the estimated velocity of the SPDs over the ground, using ION's ORCA position and control system, rather than through the water. (Brune Decl., Doc. No. 272-H ¶ 5.) Mr. Brune avers that ION's method of calculating estimated velocity using different positions over time is not equivalent to the flowmeter and water velocity sensor structures identified by the Court. (Id. ¶¶ 6-8.)
Plaintiff responds that ION's means for estimating velocity, including its Model 7500 Speed Logs, are equivalent to the flowmeters used by WesternGeco, as they similarly calculate velocities through the water. Plaintiff points to the testimony of ION employee Clement Guillot, who explains that speed logs "measure the actual speed [of the streamer] through the water." (Guillot Dep., Doc. No. 291-24 at 223:21-224:4, 133:11-20; see also Alfsen Dep., Doc. No. 291-30 at 84:12-25.) Mr. Brune confirms that a speed log measures "one vector component of water velocity." (Doc. No. 291-31 ¶ 34.) David Moffatt, ION's Senior Vice President in charge of Marine Imaging Systems, indicates that ORCA receives velocity information in the
In addition to considering speed log information, ION and Fugro employees testify that ORCA takes into account velocity information from compasses. (Guillot Dep. at 223:9-20; Moffatt Dep. at 47:16-22; Evanger Dep., Doc. No. 291-32 at 32:22-33:7.) Plaintiff's expert, Dr. Triantafyllou, confirms that ORCA uses various observations to obtain an estimated velocity of the DigiFINs deployed in an array. (Triantafyllou Opening Report ¶¶ 132-34.) Dr. Triantafyllou states that compasses and speed logs are flowmeters, or equivalents thereof, which obtain an estimated velocity of the streamers and the equipment on the streamers. (Id. ¶ 134.)
This Court lacks the technical expertise to determine whether it is Mr. Brune or Dr. Triantafyllou who more accurately characterizes the ION technology. However, because testimony from a number of Defendants' employees confirms that speed logs measure streamer speed through the water, it is clear that the distinction drawn by Defendants — that Plaintiff's products measure velocity through the water, whereas ION's products calculate estimated velocities of the SPDs over the ground — is not entirely accurate. On the evidence now before the Court, a genuine issue of material fact remains as to whether ION's method of estimating velocity includes either flowmeters, or equivalents thereof.
Claim 16 of the '017 patent also must perform the function of "calculating desired changes in the orientations of the respective wings of at least some of the streamer positioning devices using said predicted position and said estimated velocity." ('017 patent at claim 16.) The Court construed this phrase to mean "global control system; local control system and localized displacement/force conversion program using a look-up table or a conversion routine; and equivalents thereof." (735 F.Supp.2d at 642.)
Defendants reiterate that no ION Accused Product predicts future locations of a DigiFIN, and that the function of calculating desired changes in the orientations of the respective wings therefore cannot be performed using "predicted" positions of the SPDs. The Court rejects Defendants' argument for the reasons discussed above, as it has concluded that a genuine issue of material fact remains as to whether ION's Accused Products include a predictive component.
Defendants further maintain that, although ION's Accused Products are capable of obtaining an estimated velocity of a DigiFIN by using a calculation, no ION Accused Product uses that calculated estimated velocity information to change a DigiFIN's wing orientation. Mr. Macnab testifies that ION's navigation systems are not capable of passing velocity information to the lateral controller or to the DigiFINs and that, as a result, "ION's streamer system does not, and cannot, use estimated velocity of an SPD in order to calculate desired changes in wing orientation of an SPD." (Macnab Decl. ¶ 9.) Mr. Brune testifies that ION's method of calculating wing angle uses neither predicted positions nor estimated velocity. (Brune Decl. ¶ 9.)
Plaintiff disputes Defendants' depiction of ION's navigation systems as incapable of passing velocity information to the lateral controller. WesternGeco's expert, Dr. Leonard, explains that ION's "lateral controller uses the streamer separation information computed by ORCA to specify and
In his deposition, Macnab confirmed that "ORCA provides location information regarding the DigiFINS to the lateral controller," and then "the lateral controller... process[es] the location information and use[s] that to control the DigiFINS." (Macnab Dep. at 140:23-141:6.) Mr. Macnab agreed that "ORCA sends location information to the lateral controller and the lateral controller manipulates that location information and sends it on to the DigiFINs in order to achieve desired steering or desired separation." (Id. at 141:18-23.) This testimony evidences the sending of location information — which the Court has already concluded ION may derive from using predicted locations and estimated velocities — to a lateral controller, which uses the information to communicate desired wing position to the DigiFIN.
As above, the Court finds competing evidence here, giving rise to a factual dispute. If Plaintiff's evidence is to be believed, then ION's ORCA includes a means for using the predicted position and estimated velocity to calculate desired changes in wing orientation based on those predicted positions and estimated velocities. Such a process would infringe on WesternGeco's "means for using the predicted position and estimated velocity to calculate desired changes in wing orientation based on predicted position or estimated velocity." In light of the foregoing, Defendants' motion for summary judgment of non-infringement of claim 16 of the '017 patent must be denied.
Claim 15 of the '607 patent includes the following limitations: "a prediction unit adapted to predict positions of at least some of the streamer positioning devices," and "a control unit adapted to use the predicted positions to calculate desired changes in positions of one or more of the streamer positioning devices." ('607 patent at claim 15.) Defendants contend that none of ION's Accused Products, alone or in combination with any other ION Accused Products, includes a prediction unit adapted to predict positions of at least some of the streamer positioning devices. In support of this contention, Defendants cite to the Declarations of Mr. Cole and Mr. Macnab. (Cole Decl. ¶¶ 4-9 (indicating that the Kalman filter does not perform a predicting function, and therefore cannot change the wing orientation of an SPD by using a predicted location); Macnab Decl. ¶¶ 5-8.) The Court has already rejected Defendants' argument that ION's Accused Products do not "predict"; thus, as to claim 15 of the '607 patent, Defendants' motion must be denied.
Claim 15 of the '967 patent requires that the patented device include "a global control system transmitting location information to at least one local control system on the [sic] at least one streamer positioning device having a wing, the local control system adjusting the wing." ('967 patent at claim 16.) The Court construed "location information" to mean "information regarding location." (735 F.Supp.2d at 637.) ION argues that location information necessarily includes information regarding both depth and horizontal location, and that its lateral controller does not infringe because it does not transmit such information.
Defendants quote the following language from the '967 patent in support of their construction of the claim language:
('967 patent at col. 6, ll. 45-56.) Defendants emphasize the specification's reference to "vertical depth" and "horizontal position," and urge that, because this is the only discussion of "location information" in the '967 patent's specification, location information must include information regarding both depth and horizontal position.
Plaintiff responds that neither this Court's claim construction nor the plain language of the specification requires the transmission of both depth and horizontal location. The Court agrees that, from reading the claim language quoted above, it is not self evident that both depth and horizontal information must be transmitted. More importantly, the evidence submitted by Plaintiff indicates that ION's lateral controller does send location information, or information that is substantially the same as "location information."
ION employee Mr. Macnab has testified that "ORCA provides the positions of the nodes on all the streamers and the separation of those nodes to the nearest streamer adjacent to them." (Macnab Dep. at 140:17-19.) That information regarding the location of the nodes — including the DigiFINs — is then used by the lateral controller to control the DigiFINs. (Id. at 140:23-141:6.) As summarized in the User's Manual for ION's lateral controller, the DigiFIN angle "is adjusted by the shipboard Lateral Controller Software to control the lateral movement of the streamer at the location of the device." (Doc. No. 291-21 at ION15133.) Most persuasively, when asked whether "ORCA sends location information to the lateral controller," and whether "the lateral controller manipulates that location information and sends it on to the DigiFINs in order to achieve desired steering or desired separation," Mr. Macnab answered "Yes." (Macnab Dep. at 141:18-23.)
Mr. Macnab's testimony describes a global control system transmitting location information to at least one local control system on at least one streamer positioning device having a wing, with the local control system adjusting the wing. The Court finds Mr. Macnab's confirmation that "location information" is used in this way to be sufficient to raise a genuine issue of material fact. However, the Court notes that Plaintiff's expert, Dr. Triantafyllou, also confirms that the desired wing angle transmitted from the lateral controller to the DigiFIN devices is "insubstantially different" from the recited "location information." (Triantafyllou Opening Report ¶ 115.) The evidence indicates that ION's accused projects may infringe, if not literally, then under the doctrine of equivalents. Accordingly, summary judgment as to the '967 patent must be denied.
The parties have filed cross-motions regarding infringement of the '520 patent. Defendants move for summary judgment that they have not infringed the '520 patent, and Plaintiff moves for summary judgment of willful infringement. Claim 18 of the '520 patent requires "(a) an array of streamers each having a plurality of
Defendants contend that, pursuant to this limitation, the control system must be configured to use all four of the recited modes; that is, it must be configured to select from (1) a feather angle mode, (2) a turn control mode, (3) a streamer separation mode, and (4) two or more of these modes. Utilizing this construction, Defendants urge that their products do not infringe, as they do not practice a "turn control mode." In contrast, Plaintiff reads the "selected from" language in claim 18 to introduce a list of alternatives. Under Plaintiff's reading, ION's product would need to utilize only one of the four alternatives in order to infringe.
In urging their interpretation of claim 18, Defendants compare claim 18 to claim 1, which requires "a control system configured to operate in one or more control modes selected from a feather angle mode, a turn control mode, and a streamer separation mode." ('520 patent at claim 1 (emphasis added).) Defendants acknowledge that the language in claim 1 "makes clear that the control system need only be configured to operate in one control mode." (Doc. No. 298 at 9.) However, they suggest that because the "in one or more control modes" language is absent from claim 18, claim 18 requires something different from claim 1 — it requires the control system to be configured to operate in all of the listed control modes.
Defendants are correct that, "[w]hen different words or phrases are used in separate claims, a difference in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed.Cir. 2005) (citing Tandon Corp. v. United States Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed.Cir.1987)). However, "[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper." Id. (citing Tandon, 831 F.2d at 1023-24). Here, the slightly different wording of the two claims, when read in the context of the specification and in light of general principles of claim construction, does not indicate that a difference in meaning was intended.
First, it is important to note the context in which the '520 patent's 34 claims are provided. The claims are divided into 17 method claims and 17 apparatus claims. Each method claim has a corresponding apparatus claim. Claim 1 is the method claim that corresponds to the apparatus in claim 18; in examining these parallel claims, it seems clear that the drafters intended them to require the same thing, that is, that the control system could be configured to operate in at least one of the enumerated modes.
More importantly, this interpretation of the claim language is supported by established principles of claim construction. The Federal Circuit has made clear that the use of the indefinite article "a", as used in claim 18 ("a control system configured to use a control mode selected from"), denotes "one or more." See Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1347 (Fed. Cir.2001) (citing cases). Although Crystal and the cases cited therein consider the meaning of "a" when it is followed by
Finally, the use of the phrase "selected from" further supports this construction. "Selected from" denotes one of several styles known in patent practice as "Markush groups," although the precise label is unimportant. A Markush group typically is expressed in the form: "a member selected from the group consisting of A, B, and C." Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed.Cir. 2003). Where such a form is expressed, courts are to read the members of the Markush group as alternatives, and the infringement of one is sufficient to infringe the claim. Id. at 1283. The claim at issue in this case does not use all of the typical Markush language: though it includes the phrase "selected from," it does not include the typical "consisting of" language. The Federal Circuit has, at times, held that a proper Markush group, recited in the conventional manner, should use the phrase "consisting of." Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir.2005). However, the Manual of Patent Examining Procedure explains that:
MPEP § 2173.05(h) (8th ed. July 2010). The Manual further indicates that "[a]lternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims." Id. The label "Markush" is, therefore, unimportant.
A patent claim is directly infringed under Section 271(a) if, without authority, a person "makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore." 35 U.S.C. § 271(a). Defendants do not dispute that ION's control system is configured to use a "streamer separation mode" as construed by the Court. (Garris Rebuttal Report, Doc. No. 276-57 at 20-24; Brune Rebuttal Report, Doc. No. 276-58 ¶ 12 ("The Lateral Control Software ... focuses on streamer separation for the dominant part of its control function.").) As described in ION's Lateral Controller User's Manual, DigiFIN is designed to operate in control modes including "Even Separation" and "Fan Separation." (Doc. No. 291-21-2 at ION01542.) The even separation mode "attempt[s] to keep even separation between all of the streamers." (Id.) Dr. Triantafyllou opines that Defendants' control system is also capable of selecting two or more modes to implement at the same time, such as a feather angle mode and a streamer separation mode. (Triantafyllou Expert Report ¶ 94 ("This aspect of ORCA and the Lateral Controller allows a user to operate modes that achieve both feather angle mode and streamer separation mode.").) Under the Court's construction, only one of these two modes would be necessary to infringe claim 18.
ION's technical expert, Mr. Brune, similarly testified that ION's Accused Products are capable of operating two modes at the same time: when asked whether "[y]ou could set a feather angle for the ghost streamer in Orca and specify that all of the other streamers are at the even separation based off that ghost streamer," Mr. Brune responded that this was possible. (Brune Dep. at 178:1-5.) He then confirmed that such a mode "would be a combination of setting — or attempting to set the feather angle for the ghost streamer with having an even separation with all the other streamers." (Id. at 178:20-24.) Again, although multiple modes are unnecessary under the Court's claim construction, Mr. Brune's report confirms that ION's Accused Products can, at a minimum, operate in the infringing streamer separation mode. In light of this evidence, Defendants' Motion for Summary Judgment as to claim 18 of the '520 patent must be denied. The question of whether ION's accused products infringe this claim under
Section 271(f)(1) of the Title 35 of the United States Code provides as follows:
35 U.S.C. § 271(f)(1). The components of a patented invention are the patented invention's constituent parts, elements, and ingredients. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1362-63 (Fed.Cir.2009) (en banc). Plaintiff moves for summary judgment that Defendants infringe claim 18 of the '520 patent under Section 271(f)(1). Defendants respond that they do not infringe claim 18 of the '520 patent under Section 271(f)(1) because they do not supply or cause to be supplied in or from the United States "all or a substantial portion of" the components of claim 18. As to the Fugro Defendants, Defendants further argue that foreign purchasers are not liable under Section 271(f), that Fugro does not supply or cause to be supplied components of the patented invention from the United States, and that Fugro does not supply any of the components in such a manner as to actively induce the combination to form the patented invention.
It is undisputed that ION manufactures every DigiFIN and associated lateral controller in the United States. (See ION's Resp. to Req. for Admis., Doc. No. 276-21 at No. 32; Doc. No. 308-98 at Nos. 47, 49, 50.) It is also apparent that ION supplies its DigiFINs and lateral controllers to its customers in or from the United States. (Doc. No. 276-21 at Nos. 33, 34; Doc. No. 276-14 at No. 51; Doc. No. 276-62 at ION892450-454; Doc. No. 276-63 at ION8914750475-477; Doc. No. 276-64 at ION892690, 892742-752.) At issue is whether the DigiFINs and lateral controllers manufactured and supplied from the United States are a substantial portion of the patented invention, sufficient to give rise to liability under Section 271(f)(1). Plaintiff contends that they are, and points to the testimony of Mr. Macnab. Mr. Macnab has explained that, in all four of the modes recited in claim 18, the lateral controller is essentially doing "all of the control system functionality." (Macnab Dep. at 88:19-89:6, 151:1-5, 231:10-13.) John Thompson, ION's marketing specialist, testified that, without the DigiFIN, ION's customers would not be able to laterally steer the streamers. (Thompson Dep. at 242:22-243:8.) Mr. Thompson affirmed that, "[o]f the components ION provides to its customers allowing or assisting customers to achieve better repeatability of streamer positions over times," the DigiFIN devices is a "substantial component." (Id.) Neither ION's nor Fugro's experts appear to dispute that all of the requirements of § 271(f)(1) are satisfied. (Garris Rebuttal Report; Brune Rebuttal Report.)
Defendants respond that DigiFINs and lateral controllers are not a substantial
Plaintiff does not appear to dispute that Defendants do not sell ORCA from the United States. Instead, Plaintiff notes that ION employees, engineers, and even its CEO have testified that ORCA is not required to use DigiFIN. (Gentle Dep., Doc. No. 308-87 at 50:8-11; Lambert Dep., Doc. No. 308-102 at 164:6-10; Flynn Dep., Doc. No. 308-89 at 132:13-22.) And, as discussed above, Mr. Macnab has confirmed that the lateral controller and DigiFIN do "all the work" to infringe the control modes recited in the claim. Neither the lateral controllers nor the DigiFINs therefore can be regarded as insignificant or insubstantial components of the claimed combination. In light of this evidence, Defendants' motion of non-infringement, as to ION, must be denied.
Defendants urge that, even if the DigiFIN and lateral controller comprise a substantial portion of the components of claim 18, Fugro cannot be held liable under Section 271(f) for a number of reasons. First, Defendants contend that foreign purchasers cannot be held liable under Section 271(f). In support of this position, Defendants offer portions of the legislative history of Section 271(f) that indicate that the principal aim of the amendment was "[t]o declare it to be patent infringement to supply components of an invention patented in the United States for final assembly abroad if the purpose of the shipment abroad is to circumvent a U.S. patent." (Doc. No. 298-J, Report of the Senate Judiciary Committee on S. 1535, 98-663, at *1.) Defendants opine that the act of buying a component of an invention was not intended to be an act of infringement. Defendants cite only one case in which a court has held that Section 271(f) is limited to actors present in the United States. Synaptic Pharm. Corp. v. MDS Panlabs, Inc., 265 F.Supp.2d 452, 464 (D.N.J.2002).
Neither Fugro's location abroad nor its role as a purchaser automatically absolves it of liability under Section 271(f)(1). As to location, the Federal Circuit has emphasized that "[t]he plain language of § 271(f)(1) focuses on the location of the accused components, not the accused infringer." Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1117-18 (Fed.Cir. 2004). And, as at least one court has recognized, "the legislative history [of § 271(f)(1) ] suggests the phrase, `actively induce' was intended to broaden the basis for liability, extending it to cover both those who actually supply the components as well as those (contributory infringers) who cause others to supply components." T.D. Williamson, Inc. v. Laymon, 723 F.Supp. 587, 592 (N.D.Okla.1989), aff'd, 923 F.2d 871 (Fed.Cir.1990). Moreover, the one case on which Defendants rely, Synaptic, 265 F.Supp.2d at 464, is not directly on point. Synaptic addressed
Fugro contends that, even if it can be held liable under Section 271(f)(1) notwithstanding its role as a foreign purchaser, it is not liable in this case because it does not actually supply or cause to be supplied components of claim 18 of the '520 patent. WesternGeco offers evidence demonstrating that Fugro both supplies and causes to be supplied components of claim 18 from the United States. Fugro's role in "supplying" such components involves its use of an agent in the United States to receive those components in the United States, and then ship them abroad. Specifically, WesternGeco cites the testimony of Svetlana Baraniuk, who states that Fugro uses the freight forwarder "Kuehne and Nagel" to ship devices, including DigiFINS, from the United States. (Baraniuk Dep., Doc. No. 276-23 at 21:20-24, 23:1-9, 25:16-23, 27:10-14.)
WesternGeco offers evidence that demonstrates that, after the initiation of this lawsuit, Fugro changed its policies from supplying these components through its own agent, to instead causing the components to be supplied directly from ION. According to the expert report of Michael J. Wagner, Fugro's damages expert, Fugro developed a practice, after the initiation of this lawsuit, of having ION supply DigiFIN from the United States directly to Fugro vessels around the world. (Wagner Rebuttal Report Doc. No. 276-26, at 23 ("Based on a schedule of DigiFIN purchases prepared by Fugro, all deliveries of DigiFINs since December 2009 have occurred outside of the United States. This schedule shows that delivery and legal title has been taken in South Africa, The Netherlands, Norway, and Australia.").) The testimony of Paul Winspear confirms that Fugro requests units of DigiFIN from ION, and asks for those units to be supplied to different locations around the world. (Winspear Dep., Doc. No. 276-25 at 234:17-25.) WesternGeco contends that, by using Kuehne and Nagel to ship DigiFINs outside of the country, and by requesting that ION ship DigiFINs from the United States to outside of the United States on Fugro's behalf, Fugro has both supplied and caused to be supplied components of claim 18 from the United States.
Defendants respond that Ms. Baraniuk's testimony regarding Fugro's use of Kuehne and Nagel does not show that Fugro actually received DigiFINs in the United States. However, Defendants fail to respond to Ms. Baraniuk's testimony that Kuehne and Nagel acted as Fugro's "agent," storing Fugro's equipment and arranging shipment for Fugro. (Baraniuk Dep. at 20:5-8.) Defendants offer no meaningful legal difference between Fugro shipping DigiFINs itself, and it paying an agent to do so on its behalf. Cf. Crowell v. Baker Oil Tools, 143 F.2d 1003, 1004 (9th Cir.1944) ("It is obvious that one may infringe a patent if he employ an agent for that purpose of have the offending articles manufactured for him by an independent contractor."). However, even if Defendants' argument were accepted — that is, even if Fugro's use of Kuehne and Nagel could not render it a supplier of components
Section 271(f)(1) only applies where multiple components of an invention have been supplied in or from the United States. See Ormco Corp. v. Align Tech., Inc., 609 F.Supp.2d 1057, 1073-74 (C.D.Cal.2009) (citing cases); see also Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., No. 95 CIV 8833, 2001 WL 1263299, at *12 (S.D.N.Y. Oct. 19, 2001), aff'd, 326 F.3d 1226 (Fed.Cir.2003). "One cannot actively induce the combination of `such components' outside the United States where there is only one `such' component supplied in or from the United States." Bristol-Myers Squibb Co., 2001 WL 1263299, at *4. Defendants contend that, because Plaintiff focuses only on Fugro's role in supplying or causing to be supplied the DigiFIN, a single component, Plaintiff has not shown that Fugro has supplied or caused to be supplied multiple components.
Defendants are incorrect in their interpretation of Plaintiff's motion. Plaintiff specifies, in a footnote, that its use of the word "DigiFIN" throughout the motion refers to "both the DigiFIN units on the towed streamers as well as the shipboard Lateral Controller." (Doc. No. 276 at 4 n. 2.) Thus, contrary to Defendants' suggestion, Plaintiff has alleged potential acts of infringement involving the supply of both DigiFINs and lateral controllers. Plaintiff produces evidence that demonstrates Fugro's supply of a lateral controller and a number of DigiFIN units from the United States in July 2010; the place of dispatch is listed as the location Fugro's agent, Kuehne and Nagel, in Houston. (Doc. No. 308-96 at FGRPROD5021815-17.) Plaintiff has also produced a packing slip report showing a shipment from ION, in the United States, to Fugro, outside of the United States; the packing slip lists "software DigiFIN lateral controller" as one of the items ordered. (Doc. No. 308-97 at ION892939.) Though Plaintiff's evidence is minimal, it is uncontroverted, and it shows that Fugro did supply, or cause to be supplied, DigiFINs and lateral controllers from the United States. As the Court concluded above, these two components comprise a substantial portion of the components of claim 18 of the `520 patent.
Fugro argues that, even if it supplies or causes to be supplied components of claim 18 from the United States, it does not do so in such a manner as to actively induce the combination to form the patented invention, i.e., a system with streamers, positioning devices, and a control mode with one of claim 18's listed control modes. The Fugro Defendants' argument is imprecise, as they fail to specify why their supply or cause of the supply of components is not done in such a manner as to actively induce the combination. Adding to the opacity of this issue, WesternGeco fails to address it altogether in its motion (Doc. No. 276). Indeed, the only evidence supporting the notion that Fugro supplies or causes to be supplied components in such a manner as to actively induce the combination is offered in conjunction with WesternGeco's Section 271(f)(2) arguments, and WesternGeco's arguments as to willfulness. WesternGeco does not address
The Court interprets WesternGeco's position to be that, because DigiFIN operates in the patented "streamer separation mode" by default, and because Fugro uses that patented mode in every, or nearly every, survey it conducts, Fugro's supply or cause of the supply of DigiFINs and lateral controllers actively induces the combination of the components recited in claim 18. (Lateral Controller User's Manual, Doc. No. 276-11 at ION015142 ("The operational mode will be set to Even Separation mode by default."); id. at ION015156 (The operational mode "allows you to change the operational mode of the Lateral Controller between Even Separation and FAN Separation. The Even Separation option is used to maintain target separation between streamers throughout the spread."); Project Procedure Navigation, Doc. No. 276-29 at FGRPROD000109764 ("Deployment reflects a DigiFin spread for maintaining even streamer separation and will be the most common spread deployed."); Project Procedure Navigation, Doc. No. 276-30 at FGRPROD001284833 (listing "even separation 3D" as one of the "standard operational modes" for DigiFIN).)
The Court agrees that the manner in which Fugro supplies or causes to be supplied the DigiFIN and the lateral controller makes it highly likely that the two components will be combined to infringe claim 18 of the '520 patent. Fugro has offered no evidence, aside from a single 2D survey, to suggest that it used these materials in any non-infringing way. The evidence submitted by WesternGeco makes clear that Fugro's role in supplying or causing to be supplied these components was done in such a manner as to encourage the use of the two together to infringe claim 18 of the '520 patent. Fugro's own "Project Procedure Navigation" documents, in particular, demonstrate that Fugro used DigiFINs to accomplish the infringing streamer separation mode.
Section 271(f)(2) of Title 25 of the United States Code provides as follows:
WesternGeco reemphasizes the fact that the DigiFIN and lateral controller are manufactured and supplied from the United States, and that these components are specifically designed to be used for steering modes. As indicated by ION's Lateral Controller User's Manual, DigiFIN operates in its Even Separation Mode (the patented "streamer separation mode") by default. (Doc. No. 276-11 at ION015142, ION015156.) As noted above, Fugro's Project Procedure Navigation, a document which "sets out how to start, execute, and end a marine seismic acquisition project," states that "[d]eployment reflects a DigiFin spread for maintaining even streamer separation and will be the most common spread deployed." (Doc. No. 276-29 at FGRPROD000109764.) These documents make clear that DigiFIN and the lateral controllers are designed and used with steering modes, including the infringing even separation mode.
Defendants respond that Plaintiff's motion must be denied because Defendants have shown a substantial non-infringing use of the components at issue. Defendants emphasize that summary judgment of infringement under Section 271(f)(2) must be denied if there is any evidence that: (1) the components at issue could be used in a way so as to not infringe the combination of claim 18; and (2) the components were actually used in that other, non-infringing way. See Ormco Corp. v. Align Tech., Inc., 609 F.Supp.2d 1057, 1075 (C.D.Cal.2009) ("[I]n order to take advantage of the `substantial noninfringing use' exception, an alleged infringer must show both that `the device at issue, in theory, could be used in a way so as not to infringe the asserted method claim' and `that the device was actually used in the non-infringing way.'" (quoting Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354, 1363 (Fed.Cir.2006))). Of course, under the plain language of the statute, the actual non-infringing use of the component(s) must be "substantial." 35 U.S.C. § 271(f)(2). "A `substantial' use of an accused feature is one that is not occasional, farfetched, impractical, experimental, or hypothetical." ClearValue, Inc. v. Pearl River Polymers, Inc., 735 F.Supp.2d 560, 575 (E.D.Tex.2010), aff'd in part, rev'd in part, 668 F.3d 1340 (Fed.Cir. 2012); see also Hoffmann-La Roche, Inc. v. Promega Corp., 33 U.S.P.Q.2d 1641, 1648 (N.D.Cal.1994) ("Whether a use is `substantial' or not depends on how likely and often the use will occur. Thus, occasional aberrant use of a product does not make that use `substantial.' Similarly, inefficient and uneconomical uses are less likely to be deemed `substantial.'").
The only evidence supporting Defendants' argument that there was a substantial, non-infringing use of the components at issue consists of expert testimony as to the components' potential to be used in a non-infringing manner, as well as evidence indicating that Fugro actually may have used the devices in a non-infringing manner in a single survey. Fugro's expert, Dr. Garris, offers a conclusory statement that "the DigiFIN and Lateral Controller could easily be used on a single streamer to conduct a 2D survey." (Garris Rebuttal Report at 55.) Though he hypothesizes that these components could be used in such a way, Dr. Garris does not point to any two-dimensional surveys by Fugro, nor does he offer any evidence that such hypothetical uses might be substantial. The only record evidence that Fugro ever operated such a non-infringing two-dimensional survey is deposition testimony by Fugro employee Roar Lunde that indicates that Fugro conducted one such survey
Similarly, ION's expert, Mr. Brune, opines that "DigiFINs could be used on the tail end of streamers during deployment from a vessel, for the purpose of avoiding entanglement of tail buoys" without the use of an automated control system. (Brune Rebuttal Report at 12 (emphasis added).) Mr. Brune does not explain why this would be a non-infringing use, and Defendants offer no evidence to demonstrate that the components were actually used in this way, much less that such use was substantial. No record evidence exists that DigiFINs have ever been used for this purpose.
Ultimately, none of Defendants' evidence demonstrates a substantial, non-infringing use of the components at issue, and Plaintiff's evidence of infringing use persuades the Court that no such substantial non-infringing use existed. However, because the parties have not addressed the question of mental state under Section 271(f)(2), and because the question appears to be one of first impression, the Court declines to resolve the pending motion without further briefing from the parties on the mental state requirement.
In addressing Defendants' liability under Section 271(f), neither Plaintiff nor Defendants addresses the requisite mental state that a defendant must have to "actively induce" under Section 271(f)(1), or to "know," under Section 271(f)(2), "that the combination for which his component was especially designed was both patented and infringing." 35 U.S.C. § 271(f)(1).
The Federal Circuit has recognized that "[t]he language of section 271(f) itself mimics the language of the indirect infringement provisions of Sections 271(b) and (c)." Zoltek Corp. v. United States, 672 F.3d 1309, 1334 (Fed.Cir.2012). Section 271(f)(1) uses the phrase "actively induce," as used in Section 271(b). Section 271(f)(2) uses the language "knowing that such component is so made or adapted and intending that such component will be combined," which is similar to Section 271(c)'s "knowing the same to be especially made or especially adapted for use in an infringement of such patent." The question is whether these statutes are so analogous — 271(f)(1) to 271(b) and 271(f)(2) to 271(c) — that the same mental state is required under both.
The United States Supreme Court has ruled upon the mental state requirements of both Sections 271(b) and (c). In considering the requisite mental state for liability under Section 271(c), the Supreme Court held, in a badly fractured decision, that knowledge of a patent is needed to infringe under Section 271(c). Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964) ("[A] majority of the Court is of the view that [§ ] 271(c) does require a showing that the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing."). It was not until 2011 that the Supreme Court had occasion to consider whether the same knowledge is needed for induced infringement under Section 271(b). Explaining that Sections 271(b) and (c) "have a common origin in the pre-1952 understanding of contributory infringement," and that "the language of the two
No court has yet spoken definitively on whether the mental state requirements of Sections 271(b) and (c), as interpreted by the Supreme Court, apply to Sections 271(f)(1) and (f)(2). Indeed, Williamson, which was affirmed by the Federal Circuit, explicitly rejected an interpretation of "active inducement" that would have required active inducement of a third party. 723 F.Supp. at 591-92. However, the Williamson court, writing before the Supreme Court's opinion in Global-Tech, did not explicitly consider what, if any, mental state is required for infringement under Section 271(f)(1).
The Court ultimately must decide whether the supply of components "in such a manner as to actively induce the combination of such components ... in a manner that would infringe the patent" if it occurred in the United States, Section 271(f)(1), requires the same mental state as the active inducement of infringement, Section 271(b). The same comparison and analysis is required as between Section 271(f)(2) and Section 271(c). The Court therefore asks the parties to submit supplemental briefing indicating: (1) whether Sections 271(f)(1) and (f)(2) have mental state requirements; and (2) if so, whether those requirements should be drawn from the mental state requirements in the analogous language of Sections 271(b) and (c). The parties are asked to include, in their supplemental briefing, a discussion of why their proposed interpretations are advisable as a policy matter.
WesternGeco also moves for summary judgment on willfulness, arguing that Defendants willfully infringed the '520 patent. "[T]o establish 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, 497 F.3d 1360, 1371 (Fed.Cir.2007). "The state of mind of the accused infringer is not relevant to this objective inquiry." Id. Once 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. The questions before this Court therefore are (1) whether there was an objectively high likelihood that Defendants' activities infringed claim 18; and (2) if so, whether Defendants knew or should have known of this objective risk of infringement.
In light of the evidence presented, the Court concludes that the "objective standard" must be determined at trial. Plaintiff's motion for summary judgment as to the validity of the '520 patent was denied, and Defendants have raised colorable arguments as to the potential invalidity of that patent, as discussed above. It is up to a jury to determine whether Defendants' invalidity arguments — which persuaded the Court to deny Plaintiff's motion as to validity — are credible, and whether they demonstrate that Defendants did not act despite an objectively high likelihood that their actions constituted infringement of a valid patent.
Defendants move for summary judgment of non-infringement on the system claims of WesternGeco's '038 patent. As discussed above, the determination of whether an accused product infringes a patent claim involves two steps: (1) a court must construe the claim terms, as a matter of law, to determine their proper scope; and (2) the claim, as properly construed, must be compared to the accused device. Markman, 52 F.3d at 976. On July 16, 2010, the Court performed the first step of the infringement analysis, issuing its initial claim construction of the patents-in-suit. 735 F.Supp.2d 623 (S.D.Tex.2010). The construed terms relevant to this motion are as follows:
CLAIM TERM COURT'S CONSTRUCTION "active streamer positioning device (ASPD)" "a device capable of controlling the vertical and horizontal position of the seismic streamer" (Doc. No. 120 at 34) "master controller" "a controller that sends commands to other devices in a system" (Id. at 35) "the master controller" "a master controller" (Id. at 35) "positioning commands" "signals or instructions to control positioning" (Id. at 35) "maintaining a specified array geometry" "maintaining a specified array shape" (Id. at 35)
A patent grants to the patentee "the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States." 35 U.S.C. § 154(a)(1). Therefore, a patent is only directly infringed under Section 271(a) if, without authority, the patented invention is made, used, offered for sale, or sold within the United States during the term of the patent. 35 U.S.C. § 271(a); see Joy Techs., 6 F.3d at 773. The Patent Act of 1952 defines United States as "the United States of America, its territories and possessions." 35 U.S.C. § 100(c). In two prior Orders, this Court has held that the high seas, including the Chukchi Sea and the United States' Exclusive Economic Zone ("EEZ"), including the EEZ in the Gulf of Mexico, are not U.S. territories or possessions for purposes of the Patent Act. (Doc. No. 164, at 19-20; Doc. No. 144, at 37, 41). A claim for direct patent infringement under Section 271(a) requires, as an element of the claim, proof that the infringing activity took place in the United States. See Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1366 (Fed.Cir. 2008). Defendants contend that they did not directly infringe WesternGeco's '038 patent because they did not make, use, offer for sale, or sell the claimed systems in the United States.
Defendants each assert that they do not "make" or "use" the claimed invention in the United States because they "ha[ve] not towed an array of streamers with a DigiFIN attached to one of the seismic streamers in the United States." (Doc. No. 269 at 13). In considering where a claimed system is "made," courts look to the place the system is assembled for operable use — in other words, the place where the alleged infringer combines all of the claim elements. See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 (Fed.Cir.2000) (citing Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 524, 92 S.Ct. 1700, 32 L.Ed.2d 273 (1972)); Centillion Data Sys., LLC v. Qwest Commc'n Int'l Inc., 631 F.3d 1279, 1288 (Fed.Cir. 2011). Manufacturing only the parts of a claimed system without combining all of the claim elements is not the "making" of a claimed system. Centillion, 631 F.3d at 1288. Similarly, a claimed system is "used" under Section 271(a) at the place the system as a whole is put into service. Id. at 1284 ("[T]o `use' a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it."); NTP v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed.Cir.2005) ("The use of a claimed system under section 271(a) is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained." (citation omitted)). Merely supplying the elements of a claimed system is not the "use" of the system. Centillion, 631 F.3d at 1286.
Defendants contend that the '038 patent's claimed systems are not "made" —
Defendants urge that, even assuming DigiFIN includes a device capable of controlling the vertical and horizontal position of the seismic streamer,
In an effort to counter this evidence, WesternGeco points to the testimony of Fugro witnesses who have stated that they performed surveys using the accused DigiFIN devices in U.S. waters (Lunde Dep., Doc. No. 286-23 at 124:8-19), and that U.S. ports were used in many surveys involving vessels using the accused products (id. at 113:21-25; Stiver Dep., Doc. No. 286-50 at 167:19-168:18; Vaage Dep., Doc. No. 286-17 at 196:15-17; Baraniuk Dep., Doc. No. 286-51 at 113:4-14; Christensen Dep., Doc. No. 286-52 at 29:14-17). In a prior Memorandum and Order (Doc. No. 300), the Court rejected much of this evidence as immaterial to the question of whether allegedly infringing activity took place in the United States. Again here, the witness who discusses the use of the DigiFIN in "American waters" clearly refers to a survey conducted in the Chukchi Sea. (Lunde Dep. at 124:8-19.)
The evidence about Fugro docking in American ports is similarly unhelpful. For example, WesternGeco submits the testimony of Roar Lunde, a Fugro employee, who testifies that, at the time Fugro was running a survey in the Gulf of Mexico, Fugro was operating out of a port in Tampa, Florida. (Id. at 113:18-25.) Fugro employee Kevin Stiver testifies that it would have been "typical" to use a U.S. port for mobilization/demobilization for a survey conducted in the Gulf of Mexico, and that it would have been typical to use a U.S. port for crew changes for such a
Finally, as to ION, WesternGeco offers evidence that ION assisted in surveys on Fugro vessels and performed its own activities "shore side" in New Orleans. (Doc. No. 286-53 at ION804766-67 ("Extensive shore side testing on the DigiFIN device has been completed.").) However, such "shore-side testing" of the DigiFIN is not evidence that the patented system was made or used in the United States. In fact, the cited document discussing shore-side testing also indicates that, "[t]o complete the analysis of this problem we need to deploy our test equipment on a vessel under conditions similar to those that produced the data we have received." (Id. (emphasis added).) This evidence persuades that the Court shore-side tests to which WesternGeco refers were not conducted on a vessel, and therefore lacked a required element of the '038 patent (a towing vessel). ('038 patent at claim 1.)
WesternGeco also emphasizes the fact that ION conducts testing on Fugro vessels while streamers are deployed and equipped with DigiFIN and DigiBIRD. (Doc. Nos. 286-54 at ION015697-727, 286-55 at ION629654-66.) WesternGeco notes that these tests can be conducted while the vessel is in transit to the survey area (Doc. No. 286-56 at ION817943), urging the Court to draw the inference that, because testing can be conducted before the vessel reaches the survey area, and because the vessel may be in the United States for some period of time before it reaches the survey area, testing might be conducted in the United States. This unsupported inference is insufficient to raise a genuine issue of material fact in light of ION's testimony that all of its testing of DigiFIN devices on an array of towed streamers "was conducted at least 13 nautical miles from the coastline of the United States and its territories." (Olivier Decl. ¶ 5.)
Ultimately, in attempting to counter Defendants' evidence that they did not make or sell infringing products in the United States, all WesternGeco offers is evidence of the Defendants' surveys outside of the United States, evidence of their use of United States ports, and an unsupported inference that the Defendants may have conducted tests in the United States while they were in transit to the survey locations. WesternGeco offers no evidence that the patented system was assembled for operable use or actually used in the United States. See Centillion, 631 F.3d at 1286-88. The limited evidence put forward by WesternGeco does not give rise to a genuine issue of material fact, and the Court concludes that neither the Fugro Defendants nor ION made or used the patented system in the United States.
Each of WesternGeco's claimed systems includes, as a limitation, "a towing vessel for towing a seismic array." ('038 patent at claims 1, 14, 19, 20, 25.) Therefore, in order to infringe these claims of
ION's Vice President of Engineering for the Marine Imaging Systems Division states that "ION does not provide (or offer to sell) its customers the vessel necessary to conduct a marine seismic survey. Specifically, ION does not make, offer to sell, or sell towing vessels." (Lambert Decl., Doc. No. 269-F. ¶ 5.) Instead, ION offers to sell and sells only the equipment and software necessary to perform marine seismic surveys. (Id. at ¶¶ 4-5; see also Doc. No. 269-K (listing products offered by ION).) In fact, ION does not have the manufacturing capability to produce vessels capable of towing a seismic array, nor does ION own a vessel designed or equipped to tow the seismic arrays. (Lambert Decl. ¶ 5.) ION's customers, therefore, cannot purchase, rent, or lease a vessel capable of towing a seismic array from ION. (Id.) This uncontroverted evidence indicates that ION has not offered to sell or sold WesternGeco's entire patented invention as claimed in the '038 patent. Absent proof that ION offered to sell or sold the entire patented invention, ION cannot be liable for direct infringement under the offers to sell or sells prongs of Section 271(a). See BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380 (Fed.Cir.2007) (requiring that a party make, use, sell, or offer to sell the entire patented invention for actionable infringement); Rotec Indus., 215 F.3d at 1252 (specifying that a selling or offering to sell less than the operable assembly of the whole patented invention is not an act of infringement under Section 271(a)).
The Fugro Defendants offer evidence that they have not contracted or offered to perform any surveys using lateral streamer steering in any United States waterway or in the United States' territorial sea. (Vaage Decl. ¶ 4.) In light of this uncontroverted evidence, the Court concludes that the Fugro Defendants have not offered to sell or sold WesternGeco's entire patented invention of claims 1, 14, 19, 20, and 25 of the Zajac patent.
WesternGeco does not appear to dispute that neither ION nor Fugro sold or offered for sale vessels capable of towing a seismic array. Instead, WesternGeco contends that Defendants "sell services involving all of the patented components, including the vessel, mean[ing] that they sell and offer to sell the entire patented invention." (Doc. No. 286 at 28.) WesternGeco cites no law in support of the proposition that Defendants can infringe on system claims by selling services involving the patented components. Indeed, this position directly contradicts the case law requiring that a sale, or offer to sell, be for the "patented invention" itself. Transocean, 617 F.3d at 1310-11. If what was sold or offered was something other than the "patented invention," that sale or offer is not actionable. Id. at 1309 ("The offer must be for a potentially infringing article.") The patented inventions at issue in Defendants' motion claim systems, not services. The sale of services is not the sale of the patented systems. Ultimately, Defendants' sale and offers to sell less than the complete patented system entitles them to summary judgment under the sells and
"Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement." Joy Techs., 6 F.3d at 774. Thus, absent proof of direct infringement, any claim for indirect infringement under Sections 271(b) or (c) also must fail. See Deepsouth, 406 U.S. at 526, 92 S.Ct. 1700; Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1033 (Fed.Cir.2002). Because the Court found that no genuine issue of material fact existed as to either Defendant's infringement in the United States, the Court concludes that there can be no liability under Sections 271(b) or (c).
Defendants contend that ION's towed streamer system does not infringe the '038 patent's system claims either literally or under the doctrine of equivalents. Although the Court has already determined that Defendants did not infringe under Section 271(a), (b), and (c), Section 271(f) is still at issue. The Court's above conclusions do not affect Defendants' liability under Section 271(f) (1), as it explicitly covers the provision of less than an entire invention. Thus, the Court considers Defendants' further arguments that neither ION nor Fugro infringes under Section 271(f), because ION's system does not comprise an ASPD or an "array geometry tracking system."
The Zajac patent's system claims require an ASPD attached to at least one streamer in an array of seismic streamers. ('038 patent at claims 1, 14, 19, 20, 25.) The Court has construed an ASPD to mean "a device capable of controlling the vertical and horizontal position of the seismic streamer." (735 F.Supp.2d at 649.) Defendants urge that ION's towed streamer system does not comprise a device capable of controlling the vertical and horizontal position of a seismic streamer. Specifically, Defendants assert that the DigiFIN can control only lateral (horizontal), and not vertical, position. Plaintiff responds that the DigiFIN's "Backoff Control Algorithm" is capable of controlling vertical position.
The Lateral Controller User's Manual for the DigiFIN indicates that, when the DigiFIN's roll or pitch exceeds the specified threshold value, the DigiFIN's main processor function applies a "Backoff Control Algorithm" to adjust the wing angle, which has as a consequence a reduction in the amount of vertical force being exerted by the device. (Doc. No. 269-L at ION835138.) According to ION's expert and ION employee Daniel Seale, when DigiFIN is in the "Normal + Depth Aware" mode, the Backoff Control Algorithm attempts to minimize any depth error by taking into account the depth error, fin angle, and roll orientation. (Seale Decl., Doc. No. 269-I ¶ 12; Brune Decl. ¶¶ 19-20.) The Lateral Controller User's Manual indicates that the DigiFIN's Backoff Control Algorithm "should be enabled when precise depth control is important." (Doc. No. 286-21 at ION015158.) A Fugro engineer has indicated that the "Normal + Depth Aware" mode for the DigiFIN "will consider the actual depth of the unit versus the target depth when the roll or pitch boundary is violated and then decide to back-off or not." (Doc. No. 287-25 at FGRPROD000036333). In responding to a question about whether ION does anything to try to control DigiFIN's effect on
Defendants emphasize that the back-off algorithm cannot be commanded by a user to drive a streamer to a given depth and, therefore, is not intended to control the streamer's depth, but to correct DigiFIN's errors. (See, e.g., Brune Decl. ¶ 19; Seale Decl. ¶ 12.) The importance of this testimony is unclear, as the ability of a user to drive a streamer to a given depth is not a part of the Court's construction. Defendants also maintain that the incidental effect the back-off algorithm has on the depth of the streamer "cannot plausibly be considered `depth control.'" (Doc. No. 269 at 21.) They rely on the expert declaration of Mr. Brune, who states that the DigiFIN's exertion of vertical forces on the streamer is not considered "depth control" in practice. (Brune Decl., Doc. No. 269-H ¶ 19.) Again, Defendants' focus on the term "depth control" is misguided, as the Court did not construe ASPDs to require "depth control."
Under the Court's construction, an ASPD need only be capable of controlling horizontal and vertical position. To meet this requirement, the DigiFIN must have the ability to control the vertical position of the streamer, even if it is not "specifically designed or sold to [do so]." See Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1370 (Fed.Cir.2009). Defendants admit that the back-off algorithm "has as a consequence a reduction in the amount of vertical force being exerted by the device"; in other words, the algorithm causes a reduction in the amount of vertical force exerted by the DigiFIN, resulting in a change in vertical positioning. (Doc. No. 269 at 21.) The Court is persuaded, in light of the foregoing evidence, that the DigiFIN includes an ASPD capable of controlling the vertical and horizontal position of a seismic streamer.
Claims 3 and 4 require the system to include an "array geometry tracking system for tracking the array geometry versus time during a seismic data acquisition run and storing the array geometry versus time in a legacy database for repeating the array geometry versus time in a subsequent data acquisition run." ('038 patent at claim 3.) Claim 14 requires the system to include the following:
(Id., at claim 14.) The Court has construed "array geometry" to mean "array shape." (735 F.Supp.2d at 643-44.) Accordingly, claims 3 and 4 require the system to store array shape versus time in a legacy database for repeating the array shape, and claim 14 requires that the master controller compare the array shape to the desired array shape and issue positioning commands to the ASPDs to maintain the array shape versus time.
Defendants contend that ION's towed streamer system does not utilize an array shape to plan subsequent data acquisition runs. According to Defendants' expert, Mr. Brune, ION's products instead use
WesternGeco argues that a feather angle value from a prior survey is a shape, and that, under the Court's construction, there are no further qualifiers as to how specific or exact this shape must be. Indeed, Mr. Macnab has previously admitted that the Accused Products load information "that represents the shape of the — the shape of the entire streamer" in repeating 4-D surveys. (Macnab Dep., Doc. No. 286-43 at 62:23-63:14.) Defendants' limited evidence on this point does not convince the Court that no genuine issue of material fact exists. In light of the earlier testimony by Mr. Macnab, the Court thinks that there is a genuine factual dispute as to whether ION's towed streamer system utilizes an array shape to plan subsequent surveys. Thus, as to Section 271(f), Defendants' motion must be denied.
In light of the foregoing, the Court concludes that Defendants' Motion for Summary Judgment of Patent Invalidity of the Bittleston Patents (Doc. No. 273) must be
The Court concludes that Defendants' Motion for Summary Judgment of Non-Infringement of the Bittleston Patents' Apparatus Claims (Doc. No. 272) must be
Defendants' Motion for Summary Judgment of Non-Infringement of the '038 Patent's Systems Claims (Doc. No. 269) must be
