Fr. Telecom S.A. v. Marvell Semiconductor Inc.

• Decision Date: 02 March 2015
• Docket Number: Case No. 12–cv–04967–WHO
• Citation: 82 F.Supp.3d 987
• Court: U.S. District Court — Northern District of California
• Parties: France Telecom S.A., Plaintiff, v. Marvell Semiconductor Inc., Defendant.

82 F.Supp.3d 987

France Telecom S.A., Plaintiff

v.Marvell Semiconductor Inc., Defendant.

Case No. 12–cv–04967–WHO

United States District Court, N.D. California.

Signed March 2, 2015

Jeffrey M. Fisher, James Alexander Reese, Farella Braun & Martel LLP, San Francisco, CA, Elliot E. Polebaum, Eugene N. Hansen, Joseph J. Lobue, Fried Frank Harris Shriver and Jacobson LLP, Washington, DC, Henry Charles Lebowitz, Fried, Frank, Harris, Shriver and Jacobson, James W. Dabney, Richard M. Koehl, Hughes Hubbard & Reed LLP, New York, NY, for Plaintiff.

Andrew Jonathan Bramhall, Kevin P.B. Johnson, Victoria F. Maroulis, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood Shores, CA, Brian E. Mack, Quinn Emanuel Urquhart and Sullivan LLP, San Francisco, CA, Edward John Defranco, Eric Hui-Chieh Huang, Joseph Milowic, III, Krista M. Rycroft, Raymond N. Nimrod, Quinn Emanuel Urquhart Sullivan, New York, NY, for Defendant.

ORDER DENYING PLAINTIFF'S MOTION FOR NEW TRIAL; GRANTING DEFENDANT'S MOTION FOR JUDGMENT AS A MATTER OF LAW; DENYING DEFENDANT'S MOTION FOR JUDGMENT OF INVALIDITY

Re: Dkt. Nos. 351, 353, 354

WILLIAM H. ORRICK, District Judge

INTRODUCTION

A jury found defendant Marvell Semiconductor liable for direct infringement of plaintiff France Telecom's U.S. patent 5,446,747 (the “ '747 patent”) and awarded France Telecom $1.7 million in damages. The jury also found Marvell Semiconductor not liable for contributory infringement, inducing infringement, or willful infringement, and rejected Marvell Semiconductor's invalidity defenses.

France Telecom moves for a new trial pursuant to Federal Rule of Civil Procedure 59(a) on various grounds, none of which has merit. Dkt. No. 353. Its motion is DENIED. Marvell Semiconductor moves for judgment of no infringement and invalidity as a matter of law pursuant to Rule 50(b) and also moves for judgment of invalidity under Rule 52 for failure to recite patent-eligible subject matter. Dkt. No. 354. Because France Telecom failed to prove that Marvell Semiconductor used the claimed method in the United States, I must GRANT Marvell Semiconductor's motion for judgment of no direct infringement as a matter of law. For completeness, I have also considered the other arguments Marvell Semiconductor raised in its motions, and find them unpersuasive.

BACKGROUND

The '747 patent relates to methods for correcting errors in telecommunication and other data transmissions, commonly referred to as “turbo coding.” France Telecom filed suit on June 26, 2012, alleging that Marvell Semiconductor manufactures communications processors (chips) which use the method claimed in the '747 patent. Dkt. No. 1 (complaint). France Telecom alleged that the accused chips are specially adapted for use in communications devices, such as BlackBerry devices, and that use of the patented method is essential for using those devices to transmit or receive data on 3G networks.

Trial was held from September 16, 2014 to September 30, 2014. Only claim 1 of the '747 patent was at issue. The jury returned a verdict on September 30, 2014, finding Marvell Semiconductor liable for direct infringement, but not liable for contributory infringement, inducing infringement, or willful infringement. Dkt. No. 320. The jury awarded France Telecom $1.7 million in damages. Id. The jury rejected Marvell Semiconductor's invalidity defenses. Id. I heard additional testimony regarding issues not tried to the jury on October 20, 2014.

LEGAL STANDARD

Per Federal Rule of Civil Procedure 59(a)(1), the Court “may, on motion, grant a new trial on all or some of the issues.” A new trial is warranted where “the verdict is contrary to the clear weight of the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial court, a miscarriage of justice.” Wordtech Sys. v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1313 (Fed.Cir.2010) (quoting United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir.1999) ). A judge should not grant a new trial unless he “is left with the definite and firm conviction that a mistake has been committed.” Landes Const. Co. v. Royal Bank of Canada, 833 F.2d 1365, 1371–72 (9th Cir.1987) (internal citations omitted).

Judgment as a matter of law under Rule 50(b) “is proper when the evidence permits only one reasonable conclusion and the conclusion is contrary to that reached by the jury.” Ostad v. Oregon Health Sciences Univ., 327 F.3d 876, 881 (9th Cir.2003). I may set aside the jury verdict and grant judgment as a matter of law “only if, under the governing law, there can be but one reasonable conclusion as to the verdict.” Settlegoode v. Portland Pub. Sch., 371 F.3d 503, 510 (9th Cir.2004). I “must draw all reasonable inferences in favor of the nonmoving party, and [I] may not make credibility determinations or weigh the evidence.” Id.

Rule 52 provides that, following a bench trial, “the court must find the facts specially and state its conclusions of law separately.” Fed. R. Civ. P. 52(a)(1). The court must then enter judgment under Rule 58. Id.

DISCUSSION

I. MARVELL SEMICONDUCTOR'S MOTION FOR JUDGMENT AS A MATTER OF LAW

I address Marvell Semiconductor's Rule 50(b) motion first because one of its arguments—that no reasonable jury could find that it used the accused method within the United States—is dispositive. After explaining why Marvell Semiconductor is correct on that issue, I discuss why its remaining arguments are not persuasive: (i) that no reasonable jury could find that the accused method infringes claim 1 of the '747 patent ; (ii) that no reasonable jury could find that Alain Glavieux was properly omitted as a named inventor; and (iii) that no reasonable jury could find that the '747 patent was not invalid as obvious.

A. The jury could not have reasonably concluded that Marvell Semiconductor used the claimed method in the United States.

The jury found Marvell Semiconductor liable for direct infringement and not liable for contributory infringement or inducing infringement. Dkt. No. 320. But France Telecom did not introduce any evidence that Marvell Semiconductor used the patented method within the United States (or anywhere else). The jury's finding of direct infringement is therefore contrary to the only reasonable conclusion permitted by the evidence and Marvell Semiconductor is entitled to a directed verdict of no direct infringement. See, e.g., Ostad, 327 F.3d at 881 (judgment as a matter of law under Rule 50(b) “is proper when the evidence permits only one reasonable conclusion and the conclusion is contrary to that reached by the jury”).

35 U.S.C. Section 271(a) governs direct infringement. It provides, in relevant part, that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... any patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a). A defendant can only directly infringe a method claim, like claim 1 at issue here, by “using” the method within the United States, which requires that the defendant practice every step of the method within the United States.¹ See, e.g., Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354, 1366 (Fed.Cir.2012) (“direct infringement of a method claim requires a showing that every step of the claimed method has been practiced.”); NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1318 (Fed.Cir.2005) (“a process cannot be used ‘within’ the United States as required by section 271(a) unless each of the steps is performed within this country.”).²

France Telecom presented evidence that non-party Marvell Israel conducted field testing of the accused Marvell chips in several cities in the United States. The jury could reasonably conclude that this testing constituted “use” of the claimed method within the meaning of 35 U.S.C. Section 271(a). If Marvell Israel's conduct could be ascribed to Marvell Semiconductor, the evidence could sustain the jury's verdict of direct infringement against Marvell Semiconductor. Marvell Semiconductor, however, argues that Marvell Israel's conduct cannot sustain the verdict because Marvell Israel is a separate entity that is not a defendant. Marvell Semiconductor also argues that mere sales of communications devices, i.e., BlackBerry devices, with Marvell Semiconductor chips capable of practicing the claimed method are insufficient to demonstrate that the claimed method was used by Marvell Semiconductor.

In response, France Telecom contends that Marvell Semiconductor is liable for Marvell Israel's conduct under the doctrines of ratification and agency.³ Dkt. No. 363 at 13. But this theory was never presented to the jury and cannot sustain the verdict. No instructions were requested, and none were given, regarding Marvell Semiconductor's potential liability for Marvell Israel's conduct under agency or ratification theories, or under any other theories.⁴ On the contrary, the jury was instructed that “France Telecom must prove that Marvell Semiconductor engaged in conduct within the United States that infringed the '747 patent or actively induced or contributed to infringement of the '747 patent.” Dkt. No. 311 (Final Jury Instruction No. 19: Infringement—Extraterritoriality).

Consistent with that instruction, during its closing argument, France Telecom told the jury that it would need to determine whether “it is more likely than not that Marvell Semiconductor, while acting within the United States, used the method described in Claim 1 of the patent?” Tr. Vol. 10 at 1957:25–1958:4 (Dabney). France Telecom did not argue that Marvell Israel's use of the patented method could be attributed to Marvell Semiconductor under theories of agency or ratification.⁵ France Telecom likewise did not discuss agency or ratification during its opening statement and no fact or expert witnesses testified that there was an agency or ratification relationship between Marvell Semiconductor and Marvell Israel.

Because France...