Dataquill Ltd. v. High Tech Computer Corp.

• Citation: 887 F.Supp.2d 999
• Decision Date: 01 December 2011
• Docket Number: Case No. 08cv543–IEG (BGS).
• Court: U.S. District Court — Southern District of California
• Parties: DATAQUILL LIMITED, Plaintiff–Counterdefendant, v. HIGH TECH COMPUTER CORP., Defendant–Counterclaimant.

887 F.Supp.2d 999

DATAQUILL LIMITED, Plaintiff–Counterdefendant,

v.HIGH TECH COMPUTER CORP., Defendant–Counterclaimant.

Case No. 08cv543–IEG (BGS).

United States District Court,

S.D. California.

Dec. 1, 2011.

Greg Smith, Rhett Dennerline, Competition Law Group LLC, Chicago, IL, Gregory S. Markow, The Markow Law Group, San Diego, CA, for Plaintiff-Counterdefendant.

Frederick William Kosmo, Jr., Wilson Turner Kosmo LLP, San Diego, CA, Robert A. Van Nest, William Sellers Hicks, Leo L. Lam, Stacy S. Chen, Eugene Morris Paige, Keker & Van Nest, LLP, San Francisco, CA, Gregory A. Duffey, Peter J. Chassman, Winston & Strawn LLP, Houston, TX, for Defendant-Counterclaimant.

ORDER

(1) GRANTING IN PART AND DENYING IN PART HTC'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON–INFRINGEMENT [Doc. No. 133]

(2) DENYING HTC'S MOTION FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT [Doc. No. 130]

(3) GRANTING IN PART AND DENYING IN PART HTC'S MOTION TO EXCLUDE THE EXPERT OPINIONS OF JOSEPH GEMINI [Doc. No. 129]

IRMA E. GONZALEZ, Chief Judge.

Presently before the Court is Defendant High Tech Computer Corp. (“HTC”)'s motion for partial summary judgment of non-infringement, motion for summary judgment of no willful infringement, and motion to exclude the expert opinions of Joseph Gemini. [Doc. Nos. 129, 130, 133.] For the reasons stated below, the Court GRANTS IN PART and DENIES IN PART HTC's motion for partial summary judgment of non-infringement; DENIES HTC' motion for summary judgment of no willful infringement; and GRANTS IN PART and DENIES IN PART HTC's motion to exclude the expert opinions of Joseph Gemini.

BACKGROUND

This is a patent infringement case concerning two patents. On May 2, 2000, the United States Patent and Trademark Office (“USPTO”) issued U.S. Patent No. 6,504,304 (“the '304 Patent”) to Plaintiff DataQuill Limited (“DataQuill”). U.S. Patent No. 6,504,304 (filed May 2, 2000). On November 21, 2006, the USPTO issued U.S. Patent No. 7,139,591 (“the '591 Patent”) to DataQuill. U.S. Patent No. 7,139,591 (filed Nov. 21, 2006). The '591 Patent is a continuation of the '304 Patent. See id. The technology at issue for both patents generally relates to handheld mobile devices with remote access capability and optional features such as touch sensitive screens or integrated cameras.

On March 24, 2008, DataQuill filed the present action against HTC alleging infringement of the '304 patent and the '591 patent. [Doc. No. 1, Compl.] Specifically, DataQuill alleges that HTC devices with the Android Operating System and HTC devices with the Microsoft Windows Phone 6.5 and 7.0 Operating Systems infringe certain claims of the patents-in-suit. [Doc. No. 149–4, Verified Expert Report of Dr. Daniel Van der Weide (“ Van der Weide Expert Report ”) at 5–6.]

Prior to the filing of the present action, the USPTO granted third-party requests for ex parte reexamination of both the '304 Patent and the '591 Patent. [Doc. No. 130–2, Declaration of William Hicks (“ Hicks Decl.”) Exs. 1–2.] On April 1, 2008, the USPTO issued two non-final office actions rejecting all of the claims of the '304 Patent and the '591 Patent in light of certain prior art. [Id. Exs. 3, 8.] On May 14, 2009, the Court stayed the action pending the reexamination proceedings. [Doc. No. 29.] On October 27, 2009, the USPTO issued a reexamination certificate for the '591 Patent, and on April 13, 2010, the USPTO issued a reexamination certificate for the '304 Patent. '591 Patent (reexamination certificate) (filed Oct. 27, 2009); '304 Patent (reexamination certificate) (filed Apr. 13, 2010). On April 1, 2010, the Court lifted the stay in light of the conclusion of the reexamination proceedings. [Doc. No. 43.]

The parties agree that as a result of the reexamination proceedings, five of the asserted claims of the '304 Patent—claims 83, 86, 101, 113, and 115—were original claims of the patent that survived the reexamination proceedings, and therefore have an effective date of May 2, 2000. [Doc. No. 130–1 at 2; Doc. No. 151 at 3.] The parties also agree that the remaining asserted claims of the '304 Patent were added during the reexamination proceedings and have an effective date of April 13, 2010 and all of the asserted claims of the ' 591 Patent were added during the reexamination proceedings and have an effective date of October 27, 2009. [Doc. No. 130–1 at 2–3; Doc. No. 151 at 3.] DataQuill alleges that HTC began selling infringing products in September 2008 with the introduction of its “G1” Android mobile phone. [Doc. No. 151 at 1; see also Doc. No. 135–2, Expert Report of Joseph Gemini (“ Gemini Expert Report ”) at 6.]

DISCUSSION

I. Motion for Partial Summary Judgment of Non–Infringement

HTC moves for partial summary judgment of non-infringement on several grounds. HTC summarizes these grounds and its arguments in support as follows:

1. HTC requests that the Court enter summary judgment of no direct infringement with respect to claims 12, 13, 44, 45, 83, 98, 113, and 115 of the '304 patent and all claims dependent therefrom. To satisfy the limitations of these claims, DataQuill relies on third-party software, server functionality, and/or other provisions over which HTC exercises no control or direction, and for which DataQuill has proffered no evidence (and indeed has not even argued) that such limitations are met by any of HTC's accused products or any activity conducted by HTC. Thus, summary judgment of non-infringement is warranted as to these claims.

2. HTC requests that the Court enter summary judgment of no direct infringement with respect to all claims of the '304 patent for all of HTC's accused products except the Evo 4G, as DataQuill has failed to even identify the “controller” or otherwise state how HTC's accused products meet the “controller” limitation of the asserted claims of the '304 patent.

3. HTC also requests that the Court enter summary judgment of no indirect infringement with respect to all asserted claims of the patents-in-suit, because DataQuill has failed and is unable to come forward with any evidence that could meet the legal requirements for either contributory infringement or active inducement of infringement by HTC.

[Doc. No. 133–1 at 1 (emphasis in original).]

A. Legal Standard for a Motion for Summary Judgment

Summary judgment is proper where the pleadings and materials demonstrate “there is no genuine issue as to any material fact and ... the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A material issue of fact is a question a trier of fact must answer to determine the rights of the parties under the applicable substantive 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.

The moving party bears “the initial responsibility of informing the district court of the basis for its motion.” Celotex, 477 U.S. at 323, 106 S.Ct. 2548. To satisfy this burden, the movant must demonstrate that no genuine issue of material fact exists for trial. Id. at 322, 106 S.Ct. 2548. Where the moving party does not have the ultimate burden of persuasion at trial, it may carry its initial burden of production in one of two ways: “The moving party may produce evidence negating an essential element of the nonmoving party's case, or, after suitable discovery, the moving party may show that the nonmoving party does not have enough evidence of an essential element of its claim or defense to carry its ultimate burden of persuasion at trial.” Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1106 (9th Cir.2000). To withstand a motion for summary judgment, the non-movant must then show that there are genuine factual issues which can only be resolved by the trier of fact. Reese v. Jefferson Sch. Dist. No. 14J, 208 F.3d 736, 738 (9th Cir.2000). The non-moving party may not rely on the pleadings alone, but must present specific facts creating a genuine issue of material fact through affidavits, depositions, or answers to interrogatories. Fed.R.Civ.P. 56(c); Celotex, 477 U.S. at 324, 106 S.Ct. 2548.

The court must review the record as a whole and draw all reasonable inferences in favor of the non-moving party. Hernandez v. Spacelabs Med. Inc., 343 F.3d 1107, 1112 (9th Cir.2003). However, unsupported conjecture or conclusory statements are insufficient to defeat summary judgment. Id.;Surrell v. Cal. Water Serv. Co., 518 F.3d 1097, 1103 (9th Cir.2008). Moreover, the court is not required “ ‘to scour the record in search of a genuine issue of triable fact,’ ” Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.1996) (citations omitted), but rather “may limit its review to the documents submitted for purposes of summary judgment and those parts of the record specifically referenced therein.” Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1030 (9th Cir.2001).

B. Direct Infringement

HTC argues that it is entitled to summary judgment of no direct infringement of various claims of the '304 Patent. [Doc. No. 133–1 at 8–12.] Under 35 U.S.C. § 271(a), “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... infringes the patent.”

A patent infringement analysis proceeds in two steps. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577. In the first step, the court construes the asserted claims as a matter of law. See id. In the second step, the factfinder compares the claimed invention to the accused device. Id.; see also Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1340 (Fed.Cir.2010) (“A determination of infringement is a question of fact....”). “ ‘Summary judgment on the issue of infringement is proper when no reasonable jury could find that every...