01 Communique Lab., Inc. v. Citrix Sys., Inc., CASE NO. 1:06-cv-253

• Court: United States District Courts. 6th Circuit. United States District Court of Northern District of Ohio
• Writing for the Court: HONORABLE SARA LIOI, UNITED STATES DISTRICT JUDGE
• Citation: 151 F.Supp.3d 778
• Parties: 01 Communique Laboratory, Inc., Plaintiff, v. Citrix Systems, Inc., et al., Defendants.
• Docket Number: CASE NO. 1:06-cv-253
• Decision Date: 21 December 2015

151 F.Supp.3d 778

01 Communique Laboratory, Inc., Plaintiff,
v.
Citrix Systems, Inc., et al., Defendants.

CASE NO. 1:06-cv-253

United States District Court, N.D. Ohio, Eastern Division.

Signed December 21, 2015

151 F.Supp.3d 781

Charles C. Carson, Kenneth J. Sheehan, Nilesh B. Khatri, Shawnna M. Yashar, Baker & Hostetler, Washington, DC, Daniel J. Goettle, Baker & Hostetler, Philadelphia, PA, Thomas H. Shunk, Christina J. Moser, Baker & Hostetler, Cleveland, OH, for Plaintiff.

Bryan K. Basso, Fish & Richardson, Redwood City, CA, Georgia K.E. Yanchar, John S. Cipolla, Calfee, Halter & Griswold, Cleveland, OH, Indranil Mukerji, Fish & Richardson, Jennifer A. Albert, Goodwin Proctor, R. Andrew Schwentker, Ruffin B. Cordell, Stephen A. Marshall, Fish & Richardson, Washington, DC, Karolina Jesien, Fish & Richardson, Timothy J. Rousseau, Mishcon De Reya, New York, NY, Douglas J. Kline, Michael G. Strapp, Don M. Kennedy, William A. Meunier, Goodwin Procter, Boston, MA, for Defendants.

MEMORANDUM OPINION

HONORABLE SARA LIOI, UNITED STATES DISTRICT JUDGE

Plaintiff 01 Communique Laboratory, Inc. (“plaintiff” or “01” 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”] ). Now pending before the Court are multiple motions filed by both parties. The motions fall into two categories—infringement and eligibility of asserted claims of the '479 patent under 35 U.S.C. § 101 (“101”).

With respect to infringement, Communique moves for summary judgment of: (a) direct infringement, and (b) exclusion of prior art raised during reexamination. (Doc. Nos. 346 and 346-1 [“Pltf. Infr. Motion”].) Citrix opposes Communique's infringement motion and moves for summary judgment on plaintiff's claims for: (a) willful infringement, (b) induced infringement, and (c) injunctive relief. (Doc. Nos. 354 and 355 [“Deft. Infr. Motion”].) Communique filed a reply in support of its motion and in opposition to Citrix's motion (Doc. No. 376 [“Pltf. Infr. Reply”] ), and Citrix filed a reply in support of its motion (Doc. No. 385 [“Deft. Infr. Reply”] ).

With respect to the parties' motions under § 101, Citrix moves for summary judgment that the asserted claims of the '479 patent are patent ineligible under § 101. (Doc. Nos. 347 and 347-1 [“Deft. § 101 Motion”].) Communique opposes Citrix's § 101 motion and also moves for summary judgment that the asserted claims are patent eligible under § 101. (Doc. Nos. 352 and 353 [“Pltf. § 101 Motion”].) Citrix filed a reply in support of its § 101 motion and in opposition to Communique's § 101 motion (Doc. No. 375 [“Deft. § 101 Reply”] ), and Communique filed a reply in support of its § 101 motion. (Doc. No. 386 [“Pltf. § 101 Reply”] ).

For the reasons that follow, Citrix's motion for summary judgment that the asserted claims of the '479 patent are ineligible under § 101 is denied, and Communique's

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motion for summary judgment that the asserted claims are eligible under § 101 is granted.

Further, for the reasons that follow, Communique's motion for summary judgment of direct infringement is denied, and Communique's motion exclusion of prior art references raised during reexamination is denied.

Citrix's motion for summary judgment on Communique's claims for willful infringement and injunctive relief is denied, and Citrix's motion for summary judgment on Communique's claim for induced infringement is granted.

I. BACKGROUND

A. The '479 Patent

The '479 patent is owned by Communique, and the claimed invention is a “system, computer product and method for providing a private communication portal”¹ through which individuals may remotely access a personal computer from a remote computer using a locator server acting as an intermediary between the personal and remote computers. ('479 patent, Col. 13:48-Col. 14:15.) 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 Ann Aldrich. While before Judge Aldrich, Citrix requested reexamination of the '479 patent by the United States Patent and Trademark Office (“USPTO”), arguing that the patent was invalid based on obviousness and anticipation with respect to certain prior art references. (Doc. No. 282-2 (Request for Inter Partes Reexamination [“Reexam. Req.”] ).) The reexamination request did not include the issue of patent eligibility under § 101. The '479 patent was not invalidated as a result of the USPTO's reexamination, and Citrix's petition was dismissed. (Doc. No. 230-2.).

B. Third Amended Complaint and Claim Construction

After the reexamination petition was dismissed and the case was assigned to this Court, Communique filed a second, and then a third, amended complaint (Doc. No. 294 [“3d Am. Compl.”].) In the third amended complaint, Communique claims that Citrix's product, GoToMyPC, infringes one or more claims of the '479 patent, and that defendants have induced others to infringe the patent. In addition to damages, Communique seeks a permanent injunction against defendants prohibiting infringement of the '479 Patent. (3d Am. Compl. at 9258-59.) Citrix filed a counterclaim, seeking a declaration that defendants have not infringed, and do not infringe or actively induce others to infringe the '479 Patent. Citrix also seeks a declaration that the asserted claims of the '479 patent are invalid and/or unenforceable because the claims fail to satisfy one or more of the conditions for patentability specified in 35 U.S.C. §§ 101 et seq. (Doc. No. 308 [“Counterclaim”] at 10466-67.).

The Court concluded that it was required to consider the impact, if any, of the '479 patent reexamination upon the earlier claim construction issued by Judge Aldrich. Accordingly, the Court ordered claim construction briefing, conducted a Markman hearing, and issued its claim construction opinion. (Doc. No. 343 [“CC Op.”].).

II. DISCUSSION

A. Summary Judgment Standard

It is well-established that “[s]ummary judgment is as appropriate in a patent

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case as in any other. Where no genuine issue of material fact remains and the movant is entitled to judgment as a matter of law, the court should utilize the salutary procedure of Fed. R. Civ. P. 56 [.]” Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed.Cir.1984).

Summary judgment is appropriate where “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is material if its resolution affects the outcome of the lawsuit under the governing law. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. If a reasonable jury could return a verdict for the nonmoving party, then summary judgment is not appropriate. Id. “A critical factor in a motion for summary judgment in a patent case, as in any other, is the determination by the court that there is no genuine issue of material fact.” Barmag Barmer , 731 F.2d at 835 (emphasis in original).

The moving party must provide evidence to the Court which demonstrates the absence of a genuine dispute as to any material fact. Once the moving party meets this initial burden, the opposing party must come forward with specific evidence showing that there is a genuine issue for trial. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; Anderson , 477 U.S. at 250, 106 S.Ct. 2505. The nonmoving party may oppose a summary judgment motion “by any of the kinds of evidentiary material listed in Rule 56(c), except the mere pleadings themselves[.]” Celotex , 477 U.S. at 324, 106 S.Ct. 2548. The Court must view all facts and evidence, and inferences that may be reasonably drawn therefrom, in favor of the non-moving party. United States v. Diebold, Inc. , 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962).

General averments or conclusory allegations of an affidavit do not create specific fact disputes for summary judgment purposes. See Lujan v. Nat'l Wildlife Fed'n , 497 U.S. 871, 888–89, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990). “Summary judgment requires that a plaintiff present more than a scintilla of evidence to demonstrate each element of a prima facie case.” Garza v. Norfolk S. Ry. Co. , 536 Fed.Appx. 517, 519 (6th Cir.2013) (citing Van Gorder v. Grand Trunk W. R.R ., 509 F.3d 265, 268 (6th Cir.2007) ). “ ‘The mere existence of a scintilla of evidence in support of the [nonmoving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmoving party].’ ” Street v. J.C. Bradford & Co. , 886 F.2d 1472, 1477 (6th Cir.1989) (quoting Anderson , 477 U.S. at 252, 106 S.Ct. 2505 ).

The district court's review on summary judgment is a threshold...