HSM Portfolio LLC v. Elpida Memory Inc., Civil Action No. 11–770–RGA

• Decision Date: 11 February 2016
• Docket Number: Civil Action No. 11–770–RGA
• Citation: 160 F.Supp.3d 708
• Parties: HSM Portfolio LLC and Technology Properties Limited LLC, Plaintiffs; v. Elpida Memory Inc., et al., Defendants.
• Court: U.S. District Court — District of Delaware

160 F.Supp.3d 708

HSM Portfolio LLC and Technology Properties Limited LLC, Plaintiffs;

v.Elpida Memory Inc., et al., Defendants.

Civil Action No. 11–770–RGA

United States District Court, D. Delaware.

Signed February 11, 2016

Joseph J. Farnan, Jr., Esq., Brian E. Farnan, Esq., Michael J. Farnan, Esq., Farnan LLP, Wilmington, DE; Jeffrey R. Bragalone, Esq. (argued), Patrick J. Conroy, Esq., Justin B. Kimble, Esq., Daniel F. Olejko, Esq. (argued), James R. Perkins, Esq., Bragalone Conroy PC, Dallas, TX, attorneys for Plaintiffs HSM Portfolio LLC and Technology Properties Limited LLC.

Frederick L. Cottrell, III, Esq., Travis Hunter, Esq., Richards, Layton & Finger, P.A., Wilmington, DE; Jared Bobrow, Esq. (argued), J. Jason Lang, Esq., Weil, Gotshal & Manges LLP, Redwood Shores, CA; Melissa L. Hotze, Esq., Weil, Gotshal & Manges LLP, Houston, TX, attorneys for Defendant Micron Technology, Inc.

MEMORANDUM OPINION

ANDREWS

, UNITED STATES DISTRICT JUDGE:

Presently before the Court are Defendant Micron Technology, Inc.'s Motions for Summary Judgment of Noninfringement, Invalidity, and No Indirect Infringement (D.I.1037, 1039, 1040) and Plaintiffs' Motion for Partial Summary Judgment that U.S. Patent No. 5,030,853

is Not Anticipated and is Not Indefinite (D.I.1055). The issues have been fully briefed. (D.I.1043, 1087, 1113, 1056, 1082, 1122). Oral argument was held on December 8, 2015. (D.I.1163). For the reasons set forth herein, Micron's motion for summary judgment of non-infringement (D.I.1037) is GRANTED IN PART and DENIED IN PART; Micron's motion for summary judgment of invalidity (D.I.1039) is DENIED; Micron's motion for summary judgment of no indirect infringement (D.I.1040) is GRANTED IN PART and DENIED IN PART; Plaintiffs' motion for partial summary judgment (D.I.1055) is GRANTED IN PART and DISMISSED AS MOOT IN PART.

I. BACKGROUND

On September 1, 2011, HSM Portfolio and Technology Properties Limited LLC filed this patent infringement suit against Defendant Micron Technology, Inc. and other defendants. (D.I.1). Micron is the only remaining defendant. (D.I. 1043 at 6). Plaintiffs allege that certain Micron DRAM and CMOS Image Sensor products infringe U.S. Patent Nos. 5,001,367 (the “ '367 patent”)

, 5,030,853 (the “ '853 patent”), 5,247,212 (the “ '212 patent”), and 5,391,949 (the “ '949 patent”) (collectively “patents-in-suit”). (D.I. 859 ¶¶ 77, 82, 105, 110, 127–28, 136–37). Plaintiffs further allege that Micron indirectly infringed the '853 and '949 patents by inducing and contributing to others' infringement. (Id. ¶¶ 77–81, 105–09; D.I. 1087 at 8).

On September 2, 2015, Micron filed its motions, requesting summary judgment of non-infringement with respect to all asserted claims of the patents-in-suit, anticipation with respect to certain claims in the '853

, '212, and '949 patents,¹ no indirect infringement,² and no damages with respect to certain products. (D.I.1037, 1038, 1039, 1040). Also on September 2, 2015, Plaintiffs filed their motion, requesting summary judgment that the '853 patent is not anticipated with respect to certain prior art references and is not indefinite.³ (D.I.1055). On December 7, 2015, the Court denied Micron's motion for summary judgment of no damages. (D.I.1038, 1161).

II. LEGAL STANDARDS

“The court shall grant summary judgment if the movant shows that 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)

. The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those “that could affect the outcome” of the proceeding, and “a dispute about a material fact is ‘genuine’ if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party.” Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323, 106 S.Ct. 2548

.

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586–87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)

; Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460–61 (3d Cir.1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by; “(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute....” Fed.R.Civ.P. 56(c)(1).

When determining whether a genuine issue of material fact exists, the court must view the evidence 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, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007)

; Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir.2007). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See

Celotex, 477 U.S. at 322, 106 S.Ct. 2548.

A patent is infringed when a person “without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... during the term of the patent.” 35 U.S.C. § 271(a)

. A two-step analysis is employed in making an infringement determination. See

Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. The trier of fact must then compare the properly construed claims with the accused infringing product. See

id. at 976. This second step is a question of fact. See

Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).

“Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device.” Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed.Cir.1998)

. “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.Cir.2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See

Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989). However, “[o]ne may infringe an independent claim and not infringe a claim dependent on that claim.” Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed.Cir.2007) (internal quotations omitted). A product that does not literally infringe a patent claim may still infringe under the doctrine of equivalents if the differences between an individual limitation of the claimed invention and an element of the accused product are insubstantial. See

Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The doctrine of equivalents must be applied to the “individual elements of the claim, not to the invention as a whole.” Id. at 29, 117 S.Ct. 1040. An accused element is equivalent if the differences between the element and the claim limitation are “insubstantial.” Zelinski v. Brunswick Corp., 185 F.3d 1311, 1316 (Fed.Cir.1999). An accused element may be found to be equivalent if it performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950)

. The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See

SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).

When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if at least one limitation of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed.Cir.2005)

; see also

TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed.Cir.2002) (“Summary judgment of noninfringement is ... appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial.”). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there is no genuine issue as to whether the accused product is covered by the claims (as construed by the court). See

Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999).

“The presumption of a patent's validity under 35 U.S.C. § 282

can be rebutted by clear and convincing evidence.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed.Cir.2014). A patent claim is invalid as anticipated under 35 U.S.C. § 102 if “within the four comers of a single, prior art document ... every element of the claimed invention [is described], either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed.Cir.2009) (alterations in original). As with infringement, the court construes the claims and compares them...