01 Communique Lab., Inc. v. Citrix Sys., Inc.
| Decision Date | 12 June 2015 |
| Docket Number | CASE NO. 1:06-cv-253 |
| Parties | 01 COMMUNIQUE LABORATORY, INC., PLAINTIFF, v. CITRIX SYSTEMS, INC., et al., DEFENDANTS. |
| Court | U.S. District Court — Northern District of Ohio |
MEMORANDUM OPINION
Plaintiff 01 Communique Laboratory, Inc. ("plaintiff" or "Communique") brought this action on February 1, 2006, alleging that defendants Citrix Systems, Inc. and Citrix Online, LLC (collectively "defendants" or "Citrix"), infringe U.S. Patent No. 6,928,479 (the "'479 patent"). (Doc. No. 294-1 ["'479 patent"]). "[D]etermining infringement is a two-step process." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (citation omitted). Before the merits of plaintiff's infringement allegations can be decided, the meaning and scope of the asserted claims must be determined. Id.
The Court's construction of the '479 patent claims now at issue takes place in the context of a long history, including claim construction by another judge, reexamination of the '479 patent by the United States Patent and Trademark Office ("USPTO"), and litigation of the '479 patent in another venue. Against that background, discussed in greater detail below, the Court conducted a hearing to determine the properconstruction of the disputed claim terms. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). Prior to the Markman hearing, the parties fully briefed their respective positions regarding construction of the disputed claims.1
Having considered the parties' briefs, exhibits, and arguments presented at the Markman hearing, the Court construes the disputed claim terms as set forth herein.
The '479 patent is owned by plaintiff and the claimed invention allows individuals to remotely access a personal computer from any device with an internet connection. For example, when an individual is working away from the office, the claimed invention allows that person to access the computer on her desk from a home computer when working from home, or from a laptop computer or mobile device when traveling. The dispute in this infringement action revolves around the manner in which that remote access occurs.
When first filed in 2006, this case was before United States District Court Judge Aldrich. Judge Aldrich conducted a claim construction hearing and issued an order construing the 20 claim terms of the '479 patent then at issue. (Doc. No. 73 (First Claim Construction Order ["First CC Order"].) Citrix sought reconsideration of that first claimconstruction order (Doc. No. 87 [Motion for Reconsideration]), but Judge Aldrich declined to revise her order, finding that "there is no clear error of law, nor new dispositive evidence[.]" (Doc. No. 127 [Memorandum and Order Denying Citrix's Motion for Reconsideration] at 2990.2)
Thereafter, Citrix requested reexamination of the '479 patent by the USPTO based on new prior art references, and moved to stay the case on the grounds that it was "highly likely" that the '479 patent would not survive reexamination. (Doc. No. 162 at 4121.) Judge Aldrich granted defendants' motion and stayed the case (Doc. No. 215), but the '479 patent did survive reexamination and was not invalidated, and Citrix's reexamination petition was dismissed by the USPTO. (Doc. No. 230-2.)3
After the reexamination petition was dismissed and the case was assigned to this Court, plaintiff moved to lift the stay and reopen the case. When that motion was fully briefed, the Court conducted a hearing and thereafter granted Communique's motion to lift the stay. (See Non-document Order Feb. 25, 2014.)
Communique subsequently filed a second, and then a third, amended complaint (Doc. Nos. 271 and 294, respectively). In its third amended complaint, plaintiff claims that defendants' product—"GoToMyPC"—infringes the '479 patent. Citrix filed acounterclaim, seeking a declaration of non-infringement and that one or more claims of the '479 patent are invalid and/or unenforceable. (Doc. No. 308.)
In their briefs on plaintiff's motion to lift the stay, the parties also advanced their respective positions as to whether Judge Aldrich's claim construction should be revisited in light of the reexamination record of the '479 patent. Citrix argued that during reexamination Communique significantly narrowed the scope of the claims, thereby requiring this Court to revisit the first claim construction order. Communique disputed that claims were narrowed during reexamination, and argued that a second claim construction was unnecessary.
During the hearing on plaintiff's motion to lift the stay, the Court also entertained arguments on the issue of whether the first claim construction order should be revisited in light of the reexamination record. (See Doc. No. 243 ().) At the hearing, Communique conceded that it was the Court's duty to determine the meaning of patent claims "and that duty continues up to the charging conference," and there is no "bar against Citrix raising an argument [to revisit] claim construction, if they can show that [the reexamination] should change the meaning of the claim terms[.]" (Tr. at 6419-20.)
After considering the parties' positions and the law on the issue of revisiting claim construction, the Court concluded that it was required to consider the impact, if any, of the '479 patent reexamination upon the prior claim construction. (Id. at 6425.) The Court further concluded that the first step in that process was for Citrix to identify the specific claim terms that Citrix believes were narrowed during the reexamination process, and to explain why that supplemental information should changethe prior construction of those terms. (Id. at 6427.) Accordingly, the Court ordered claim construction briefing,4 and scheduled the Markman hearing referred to earlier.
During the time this case was stayed, Communique was involved in litigation in the Eastern District of Virginia with defendant LogMeIn, Inc. regarding alleged infringement of the '479 patent—the same patent at issue in this case. 01 Communique Laboratory, Inc. v. LogMeIn, Inc., Civil Action No. 1:10-cv-1007 (E.D. Va.). The LogMeIn case ultimately resulted in two appeals to the Federal Circuit.
The first appeal occurred when the district court granted summary judgment to LogMeIn based on the construction of a single claim term—"location facility." Communique appealed, and the Federal Circuit disagreed with the district court's construction and arrived at its own construction of "location facility." 01 Communique Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1299-1300 (Fed. Cir. 2012).5 The claim term "location facility" is also a disputed term in this action, and the relevance of the Federal Circuit's construction of "location facility" to this Court's construction of that term is analyzed separately, below.
Citrix contends that the LogMeIn litigation is also generally relevant to this Court's construction of the disputed claim terms because of statements made in LogMeIn by plaintiff's expert, Dr. Gregory Ganger ("Ganger"). Citrix argues that Ganger's statements constitute judicial admissions that bind Communique with respect to the construction of disputed claim terms in this case. (Doc. No. 318 (Transcript of Markman hearing ["Markman Tr."]) at 10617-18).
But defendants' argument is not persuasive. Judicial admissions typically concern only matters of fact, which would otherwise require evidentiary proof. Barnes v. Owens-Corning Fiberglas Corp., 201 F.3d 815, 829 (6th Cir. 2000) () (internal quotation marks and citations omitted); Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC, 477 F.3d 383, 394 (6th Cir 2007) (citing MacDonald v GMC, 110 F.3d 337, 340 (6th Cir. 1997)). "[A] statement must be deliberate, clear and unambiguous and expressly concede . . . an alleged fact in order to be treated as a judicial admission." Kay v. Minacs Group (USA), Inc. 580 F. App'x 327, 331 (6th Cir. 2014) (internal quotation marks and citations omitted). Further, judicial admissions are generally binding only in the case in which the admission was made; although not binding, a court may consider the admission as evidence in another case. See In re Kattouah, 452 B.R. 604, 608 (E.D. Mich. 2011) (citations omitted).
Statements of opinion and legal conclusions do not constitute judicial admissions. Roger Miller Music, 477 F.3d at 394 (citing MacDonald, 110 F.3d at 341); Am. Towers LLC v. BPI, Inc., Civil No. 12-139-ART, 2014 WL 7237980, at *6 (E.D. Ky.Dec. 17, 2014) () (citing MacDonald, 110 F.3d at 341); Bianco v. Hultsteg AB, No. 05 C 0538, 2009 WL 347002, at *12 (N.D. Ill. Feb. 5, 2009) ().
Whether to consider a statement a judicial admission lies within the sound discretion of the Court. See Am. Bonding Co. Inc. v. Am. Contractors, Indem. Co., No, 2:10-cv-441, 2015 WL 1623821, at *3 (S.D. Ohio Apr. 10, 2015) (citing United States v. Burns, 109 F. App'x 52, 58 (6th Cir. 2004)). In this instance, Ganger's statements as plaintiff's expert in the Eastern District of Virginia were statements of opinion, not of fact, made in the context of another case, and the Court concludes that Ganger's prior statements in LogMeIn do not constitute judicial admissions. The Federal Circuit has established a hierarchy of evidence to be considered when construing claim terms, and the Court will...
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