Intellectual Ventures I, LLC v. Canon Inc.

• Decision Date: 09 November 2015
• Docket Number: Civ. No. 13-473-SLR
• Citation: 143 F.Supp.3d 143
• Parties: Intellectual Ventures I, LLC and Intellectual Ventures II, LLC, Plaintiffs, v. Canon Inc., Canon USA, Inc., and Canon Solutions America, Inc., Defendants.
• Court: U.S. District Court — District of Delaware

143 F.Supp.3d 143

Intellectual Ventures I, LLC and Intellectual Ventures II, LLC, Plaintiffs,

v.Canon Inc., Canon USA, Inc., and Canon Solutions America, Inc., Defendants.

Civ. No. 13-473-SLR

United States District Court, D. Delaware.

Signed November 9, 2015

Brian Farnan, Esquire and Michael Farnan, Esquire of Farnan, LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of Counsel: Matthew D. Powers, Esquire, Steven S. Cherensky, Esquire, Stefani C. Smith, Esquire, Andrew C. Michaels, Esquire, Samantha A. Jameson, Esquire, Lital Leichtag-Fuks, Esquire, and Natasha M. Saputo, Esquire of Tensegrity Law Group LLP.

Jack B. Blumenfeld, Esquire, Karen Jacobs, Esquire, and Jennifer Ying, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendants. Of Counsel: Nicholas M. Cannella, Esquire, Michael P. Sandonato, Esquire, Peter D. Shapiro, Esquire, Jonathan Berschadsky, Esquire, C. Austin Ginnings, Esquire, Dennis J. McMahon, Esquire, and Jaime F. Cardenas-Navia, Esquire of Fitzpatrick, Cella, Harper & Scinto.

MEMORANDUM OPINION

ROBINSON, District Judge

I. INTRODUCTION

On March 25, 2013, plaintiffs Intellectual Ventures I, LLC and Intellectual Ventures II, LLC (collectively "IV") filed suit in this district against defendants Canon Inc., Canon U.S.A., Inc., and Canon Solutions America, Inc. (collectively "Canon"), alleging infringement of nine patents: U.S. Patent Nos. 5,444,728 ("the '728 patent"), 6, 130,761 ("the '761 patent"), 6,435,686 ("the '686 patent"), 6,650,432 ("the '432 patent"), RE43, 086 ("the '086 patent"), 7,315,406 ("the '406 patent"), 5,712,870 ("the '870 patent"), 6,754, 195 ("the '195 patent"), and 6,977,944 ("the '944 patent"). (D.I. 1) IV amended its complaint on April 15, 2013 and January 14, 2014, adding U.S. Patent Nos. 7,817,914 ("the '914 patent")and RE44,528 ("the '528 patent"), respectively. (D.I. 7; D.I. 46) The '686 patentwas dismissed from the case on January 10, 2914 (D.I. 43), and the '195 patentwas dismissed from the case on March 10, 2015. (D.I. 269) Ten patents ("the patents-in-suit") remain asserted in the present case.

Following two Markman hearings, claim construction orders issued on January 23, 2015 and March 27, 2015. (D.I. 264; D.I. 272) Presently before the court are five motions for summary judgment,¹ Canon's motion to strike portions of Mark N. Horensteins' Supplemental Expert Report (regarding the '728 patent) (D.I. 334), and Canon's motion to sever and stay the '914 patent(D.I. 415). The court has jurisdiction pursuant to 28 U.S.C. §§ 1331and 1338(a).

II. BACKGROUND

A. The Parties

Plaintiffs IV I and II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Bellevue, Washington. (D.I. 46 at ¶¶ 1-2) IV I owns the '728, '761, '432, '086, '406, '870, '944, and '528 patents. (Id. at ¶ 7) IV II owns the '914 patent. (Id. )

Defendant Canon Inc. is a corporation organized and existing under the laws of Japan, with its principal place of business in Tokyo, Japan. (Id. at ¶ 3) Defendants Canon U.S.A., Inc. and Canon Solutions America, Inc. (collectively with Canon, Inc., "Canon" or "defendants") are wholly-owned and controlled subsidiaries of Canon Inc., and are corporations organized and existing under the laws of the State of New York, with their principal place of business in Lake Success, New York. (Id. at ¶¶ 4-5)

B. The Patents-in-Suit

The '870and '944 patents("the WiFi patents") generally relate to wireless networking technologies such as quarterary phase shift keyed demodulation, methods for transitioning between these modulations, the use of channel impulse response estimates and the length of time necessary to achieve desired spectral characteristics while minimizing complexity. The remaining eight patents-in-suit ("the non-WiFi patents")² cover a range of technologies including laser driver circuits, scanning circuitry and motor timing, scanner software, camera software, and wireless communications, which patents are asserted against Canon printers, scanners, and cameras.

III. STANDARD OF REVIEW

"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 bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be—or, alternatively, is—genuinely disputed must be supported either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials," or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Matsushita , 475 U.S. at 587, 106 S.Ct. 1348(internal quotation marks omitted). The court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc. , 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

To defeat a motion for summary judgment, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita , 475 U.S. at 586–87, 106 S.Ct. 1348; see also Podo b nik v. U.S. Postal Service , 409 F.3d 584, 594 (3d Cir.2005)(stating party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted).

Although the "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment," a factual dispute is genuine where "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, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249–50, 106 S.Ct. 2505(internal citations omitted); see also Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)(stating entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial").

IV. THE WiFi PATENTS

Generally, the WiFi patents relate to wireless networking technologies where wireless networks connect devices (laptops) to each other and "access points." Devices and access points communicate through radio signals, broadcast on particular frequencies. These signals encode "frames" (i.e., packets) with information arranged in specific patterns and fields. For instance, frames generally include a field for a destination address, specifying to whom the frame is being sent. The exact order and nature of the fields in each frame, however, are specified by the relevant wireless standard.

The background standards for the patents-in-suit are those issued by the Institute of Electrical and Electronic Engineers ("IEEE") 802.11 wireless networking working group, often called "wi-fi." IEEE 802.11 is a standard for wireless communications that is comprised of specifications published and continuously updated by the IEEE. (0.1. 292 at 9) The first IEEE standard was published in 1997 and the IEEE continued to release subsequent standards, typically with faster transmission rates using additional technology, including that developed by the inventors of the patents-in-suit.

A. The '870 Patent

The '870 patentgenerally relates to receiving and demodulating radio frequency ("RF") signals on a wireless network. (Abstract) It is directed to a device for detecting and decoding packets (i.e. frames) in a wireless network. In particular, it discloses a transceiver that may acquire and decode the preamble, header, and data, and check fields of a packet transmitted using BPSK and QPSK modulation. (4:44-56) The transceiver includes antennae, RF/IF converters, amplifiers, modulator/demodulators, and a baseband processor (which itself includes analog-to-digital converters, spreader/despreaders, and other components), all of which comprise a device that acquires and decodes incoming packets from radio waves and transmits outgoing packets by radio waves. (4:59-5:30) Claim 1 recites:

A circuit for detecting a message header in a signal which has been transmitted using direct sequence spread spectrum modulation, comprising a single device having:

means for receiving an analog signal having modulated thereon in a spread spectrum format a message having a header portion and a data portion;

means for converting said analog signal into a digital signal;

means for demodulating the header of the digital signal using digital binary phase shift keyed (BPSK) demodulation and for demodulating the data portion of the same message using quarterary phase shift keyed demodulation (QPSK);means contained on said single device for timing a transition from BPSK [modulation] to QPSK modulation; and, means for providing the demodulated data signal to a media access control (MAC) layer.

(10:13-30)

1. Indefiniteness

The definiteness requirement is rooted in § 112, 2, which provides that "the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the...