Fujitsu Ltd. v. Belkin Int'l, Inc., Case No.: 10-CV-03972-LHK
| Decision Date | 28 September 2012 |
| Docket Number | Case No.: 10-CV-03972-LHK |
| Court | U.S. District Court — Northern District of California |
| Parties | FUJITSU LIMITED, Plaintiff, v. BELKIN INTERNATIONAL, INC.; BELKIN, INC.; D-LINK CORPORATION; D-LINK SYSTEMS, INC.; NETGEAR, INC.; ZYXEL COMMUNICATIONS CORPORATION; and ZYXEL COMMUNICATIONS, INC., Defendants. |
DENYING IN PART MOTIONS FOR
Plaintiff Fujitsu, Ltd. ("Fujitsu") brings this action for patent infringement against Defendants Belkin International, Inc. ("Belkin"); D-Link Corp. and D-Link Systems, Inc. ("D-Link"); and Netgear, Inc. ("Netgear") (collectively, "Defendants").1 Before the Court are three fully-briefed motions: (1) Fujitsu's Motion for Summary Judgment and Summary Adjudication of Infringement of U.S. Patent No. Re. 36,769 ("the '769 Patent"), ECF No. 255 ("Infringement Mot."); (2) Defendants' Motion for Summary Judgment of Invalidity, ECF No. 259 ("Invalidity Mot."); and (3) Defendants' Motion for Summary Adjudication of No Willful Infringement and NoActive Inducement, ECF No. 261 ("Willfulness Mot."). The Court held a hearing on all three motions on September 20, 2012. Having considered the parties' submissions and argument and the relevant law, and for the reasons discussed below, the Court GRANTS IN PART and DENIES IN PART Fujitsu's Motion for Summary Judgment and Summary Adjudication of Infringement; DENIES Defendants' Motion for Summary Judgment of Invalidity; DENIES Defendants' Motion for Summary Adjudication of No Willfulness; and DENIES Defendants' Motion for Summary Adjudication of No Active Inducement.
The invention of the '769 Patent relates to a "card type input/output interface device" and to systems that use such a device to facilitate communication between an electronic device system and an external or peripheral device. At the time of Fujitsu's claimed invention, small scale portable electronics, such as laptop computers, featured connector ports mounted on the sidewall of the main body for connecting to external devices, such as printers and modems. These various connectors were of different dimensions and specifications and occupied valuable real estate on the sidewall of small scale portable electronics, imposing a significant constraint on the ability to downsize such electronic devices. See '769 Patent, col.1:15-62. The claimed invention sought to address this problem by creating a card-type device that serves as an interface between an electronic device (such as a laptop) and an external device (such as a printer), thereby reducing or eliminating the need for multiple externally mounted connector ports on the sidewalls of the electronic device's main body. See id. col.1:54-62; col.2:1-4; col.7:15-24. At the time, card-type devices were commonly used for memory storage. Known as Integrated Circuit ("IC") memory cards, these cards could be inserted into a slot in the main body of a portable electronic device and used as an external storage device. See id. col.1:18-55. The '769 patent is the first disclosure of a card-type device that serves not as a memory storage device but rather as an interface device capable of transferring data between an electronic device and an external device.
As shown in Figure 1 of the '769 Patent, the claimed card type input/output interface device consists of three main components: (1) a first connection part on one end ("first data interfaceunit") for transferring data between a main body of an electronic device and the card type input/out interface device; (2) a second connection part on the opposite end ("second data interface unit") for transferring data between an external device and the card type input/output interface device; and (3) a circuit connecting the first interface and second interface units ("data transfer circuit"). See '769 Patent, col.2:5-15. An electronic device accommodating this card type input/output interface unit may include a single slot formed in the main body rather than incorporate multiple connector ports on its sidewalls, thereby facilitating downsizing of the electronic device. See id. col.2:1-5.
The '769 patent discloses three embodiments of the card type input/output interface device. The first two embodiments disclose a wireless card interface device, while the third embodiment discloses a wired connection. In the first two embodiments, the card type input/output interface device is configured to send and receive data at the second data interface wirelessly via a radio transmitter/receiver unit and an antenna. See id., col.3:18-col.5:41 (first embodiment); col.5:42-col.6:29 (second embodiment). In the third embodiment, the card type input/output interface device is configured to send and receive data at the second data interface through a cable using various types of standard connectors. See id. col.6:31-7:43.
The claims of the '769 patent can be divided into three categories: (1) "device" claims directed to the "card type input/output interface device" itself (e.g., asserted claims 2, 4, 8, 9, 14, 41); (2) "system" claims directed to a system comprised of the card interface device and an "external device" to which the card interface device connects (e.g., asserted claims 47 and 48); and (3) "electronic system" claims directed to an electronic system comprised of the card interface device, an "electronic device," and an "external device" (e.g., asserted claims 20 and 27). See First Am. Compl. ("FAC") ¶ 17, ECF No. 102. Fujitsu originally asserted 32 of the 86 claims in the '769 patent, but then subsequently reduced the number of asserted claims to 21, and now asserts only 10.
The '769 Patent is a reissue of U.S. Patent No. 5,357,091 ("the '091 Patent"), which was filed on April 30, 1992, claiming priority over a Japanese application filed in April 1991. The '091 Patent was issued on October 18, 1994. Two years later, on October 18, 1996, Fujitsu filed areissue application, in which it canceled all independent claims of the '091 Patent, added 18 additional claims, and rewrote the dependent claims to depend on new independent claims 38 and 39. After considering more than thirty references during the reissue proceedings, the U.S. Patent and Trademark Office ("PTO") allowed the '769 Patent to issue on July 11, 2000. See FAC Ex. A.
The '769 Patent was reexamined in response to independent ex parte requests from Fujitsu in 2005 and Belkin in 2006 ("Belkin Reexam I"), which the PTO consolidated into a single reexamination proceeding involving review of more than 180 prior art references. On September 29, 2007, the PTO initially rejected all claims of the ' Mot. for Summ. Adjudication of No Willfulness and No Active Inducement ("Herring Decl.") ¶ 23 & Ex. V at FUJ0002983. One year later, on September 26, 2008, the PTO issued a final rejection of similar claims. Id. Ex. V at *3425. Finally, the PTO issued a reexamination certificate on December 8, 2009, in which it canceled six claims and allowed 41 additional claims.
On March 3, 2011, Belkin filed a second request for ex parte reexamination on March 3, 2011 ("Belkin Reexam II"), which the PTO granted on May 25, 2011. On March 14, 2012, the PTO issued an office action confirming 63 of the 86 claims, including the 10 claims Fujitsu is presently asserting in this action, but canceling the other 23 claims, 8 of which had previously been asserted in this case, including independent claims 38 and 39. See Herring Decl. Ex. W at BLKN37242. On April 12, 2012, Fujitsu submitted a response in which Fujitsu cancelled the 23 rejected claims. On August 21, 2012, the PTO issued an Ex Parte Reexamination Certificate, thereby concluding the reexamination proceeding.
The accused products include 57 card interface devices. Of those card interface devices, 47 are wireless cards that comply with the 802.11 standards, and 10 are wired cards that include an Ethernet connector. Decl. of Thomas E. Garten in Supp. of Fujitsu's Mot. for Summ. J. and Summ. Adjudication of Infringement ("Garten Decl.") ¶¶ 3, 7. The accused products also include 136 wireless access points and routers ("external devices"), id. ¶¶ 5, 15; and 14 network kits, which consist of one wireless card interface device and one wireless router or access point device that are bundled together and offered for sale in a single package, id. ¶¶ 4-5. In addition, Fujitsu accusesDefendants of inducing infringement by encouraging use of the accused wireless access points and routers with 19 different third-party wireless card interface devices that allegedly meet the card-related limitations of claims 20, 27, 47, and 48. Id. ¶¶ 6-7.
Fujitsu is asserting ten claims of the '769 Patent: independent claims 41 and 47, and dependent claims 2, 4, 8, 9, 14, 20, 27, and 48.
Fujitsu seeks summary judgment that Defendants' accused card interface devices directly infringe claims 2, 4, 9, 14, and 41, which are all "device" claims directed to the "card-type input/output interface device" itself. Fujitsu also seeks summary adjudication that certain third-party cards meet each and every limitation of claims 2, 4, 9, 14, and 41.
Dependent claims 2, 4, 9, and 14 depend from claim 38, which recites the following:
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