Tech. Dev. & Licensing, LLC v. Gen. Instrument Corp., Case No. 07 C 4512
| Decision Date | 06 December 2016 |
| Docket Number | Case No. 07 C 4512 |
| Parties | TECHNOLOGY DEVELOPMENT AND, LICENSING, LLC, Plaintiff, v. GENERAL INSTRUMENT CORPORATION, Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
Joseph Nevi Hosteny, III, Arthur Anthony Gasey, Niro, Haller & Niro, Chicago, IL, Thomas A. Boshinski, Alpharetta, GA, for Plaintiff.
Jonathan E. Retsky, Winston & Strawn LLP, Chicago, IL, Amadou Kilkenny Diaw, Winston & Strawn LLP, Washington, DC, for Defendant.
Technology Development and Licensing, LLC (TD & L) filed suit against Motorola, Inc. claiming infringement of U.S. Patent No. RE 35,952 (the '952 patent). After a reorganization of Motorola, Inc., the seller of the accused devices, General Instrument Corporation (GI), was substituted as defendant. GI has moved for summary judgment on the bases of non-infringement and invalidity of asserted claims 8, 9, 37, and 38. (Dkt. 231). For the reasons stated below, GI's motion for summary judgment (dkt. 231) is granted as to invalidity of the patent and GI's motion to exclude the expert opinions of Joseph Gemini (dkt. 228) is denied as moot.1
The '952 patent relates to "[a] television control system ... for selecting a television channel corresponding to a preassigned channel tuning designation." (Dkt. 233, Defendant's Local Rule 56.1 Statement of Facts (Def.'s L.R. 56.1 ) ¶ 12.) On August 9, 2007, TD & L filed suit alleging that certain Motorola products infringe the '952 patent. (See dkt. 1; dkt. 233–1, Ex. N at 16–17.)
In April, August, and December of 2009, the United States Patent and Trademark Office (PTO) granted three separate requests for ex parte reexamination of the '952 patent and merged the three reexamination proceedings into one. (Def's. L.R. 56.1 ¶ 14.) In July 2009, this court stayed the litigation pending reexamination by the PTO. (Dkt. 112.) On May 2, 2011, the PTO examiner issued a final rejection of all claims but claims 3 and 4. (Def.'s L.R. 56.1 ¶ 15.) TD & L appealed. (Id. ¶ 16.)
The Patent Trial and Appeal Board (PTAB) reversed the examiner's rejection of claims 8, 9, 37, and 38. (Id. ¶ 17.) The PTAB construed "claim 8 as requiring an apparatus for selecting a television channel corresponding to any one of a plurality of preassigned channel tuning designations and retaining the (plurality of) channel tuning designations in a plurality of ordered cues." (Id. ¶ 21 (quoting PTAB Decision on Appeal, 2012–012562 at 9).) The PTAB explained that, (Id. ¶ 22.)3 Accordingly, the PTAB did not sustain the Examiner's rejection of claims 8, 9, 37, and 38. (Seeid. )
TD & L decided to pursue claims 8, 9, 37 and 38 in this litigation. The text of each independent claim (8 and 37) and dependent claim (9 and 38) is almost identical, excepting that claims 8 and 9 use the term "ordered cues" where claims 37 and 38 use "scroll sequence(s)." That difference is irrelevant to the analysis here, so only claims 8 and 9 are recited below:
Claim Claim
No
8 In a television control system apparatus for selecting a television channel
corresponding to a preassigned channel tuning designation, the system apparatus
comprising
tuner means for receiving a processor signal and a multi-channel input signal, and in
response to said processor signal, tuning out all but one channel corresponding to a
selected one of said preassigned channel tuning designations
memory means for storing a marker value for at least one of said channel tuning
designations, and means for retaining said channel tuning designations in a plurality of
ordered cues
operator-actuated control means for generating a control output signal comprising one
of (a) a first data set representative of the presence of said marker value associated with
one of said channel tuning designations and one of said cues, and (b) a second data set
representative of a command to advance to a subsequent channel tuning designation
within a selected one of said cues
processor means for receiving said control output signal from said operator-actuator
control means, and upon receipt of said first data set, causing said memory means to
store any of said marker values associated with one of said channel tuning
designations, and upon receipt of said second data set, reviewing the corresponding one
of said cues to determine a next of said channel tuning designations to have one of said
marker values associated therewith which corresponds to said cue, and generating said
processor signal to correspond to said next channel tuning designation.
9 A television control apparatus as defined in claim 8, wherein said control means further
includes means for generating a cue selection signal corresponding to one of said cues,
and wherein said processor means, upon receipt of said cue selection signal reviews the
one of said cues corresponding thereto.
(Dkt. 233–1, Ex. D at 16:56–17:25; see also id. at 30:53–31:24 for claims 37 and 38). By agreement of the parties, the court construed the term "cue" to mean "the listing in memory of the various programmed entries made by the viewer, wherein each select code is stored along with its corresponding channel code and display code." (Def.'s L.R. 56.1 ¶ 28.)4
Summary judgment obviates the need for a trial where there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A genuine issue of material fact exists if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). To determine whether any genuine fact issue exists, the court must pierce the pleadings and assess the proof as presented in depositions, answers to interrogatories, admissions, and affidavits that are part of the record. Fed. R. Civ. P. 56(c). In doing so, the court must view the facts in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott v. Harris , 550 U.S. 372, 378, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007). The court may not weigh conflicting evidence or make credibility determinations. Omnicare , 629 F.3d at 704.
The party seeking summary judgment bears the initial burden of proving there is no genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In response, the non-moving party cannot rest on bare pleadings alone but must designate specific material facts showing that there is a genuine issue for trial. Id. at 324, 106 S.Ct. 2548 ; Insolia v. Philip Morris Inc. , 216 F.3d 596, 598 (7th Cir. 2000). If a claim or defense is factually unsupported, it should be disposed of on summary judgment. Celotex , 477 U.S. at 323–24, 106 S.Ct. 2548.
GI contends it is entitled to summary judgment of non-infringement and invalidity of claims 8, 9, 37, and 38 of the '952 patent because (1) the accused products, as sold by GI, were non-infringing because they are incapable of performing the functions recited by the claims—the creation of a plurality of scroll sequences or ordered cues; (2) TD & L has no evidence that the accused feature—the creation of multiple favorite channel lists—was ever tested or used by any GI personnel; (3) TD & L's technical expert admitted that the accused products did not infringe where the products do not include a key limitation of asserted claims 8 and 9; and (4) the asserted claims are invalid under 35 U.S.C. § 101. The court can resolve this motion under GI's fourth argument.
TD & L contends that GI's invalidity argument under 35 U.S.C. § 101 is untimely because GI failed to raise it in any of its responses to TD & L's interrogatory requesting Motorola's invalidity contentions. (Dkt. 238 at 13.) GI replies that its argument is timely because it could not have asserted the contention before the close of discovery because Alice Corporation Pty. Ltd. v. CLS Bank International , 573 U.S. ––––, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), on which the argument depends, was decided more than five years after the close of fact discovery and eight months after the close of expert discovery. (Dkt. 250 at 13.)
Whether or not GI could have disclosed a § 101 contention earlier, the court will not impose a forfeiture. Local Patent Rule 2.3 does not explicitly require the disclosure of a § 101 argument; it only requires the disclosure of arguments under §§ 102 and 112. Neither does Local Patent Rule 3.1 require a § 101 disclosure in a party's final invalidity contentions. Nor does either rule bar undisclosed § 101 challenges for failure to disclose. The courts that have addressed the issue have relied on the text of local rules. Compare Mobile Telecomm. Techs., LLC v. United Parcel Serv., Inc. , 173 F.Supp.3d 1324, 1334–36 (N.D. Ga. 2016) (), with Good Technology Corp. v. Mobileiron, Inc. , No. 12–cv–5826, 2015 WL 3866019, at *1 (N.D. Cal. May 4, 2015) (...
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