Intermec Technologies Corp. v. Palm Inc.

• Decision Date: 14 September 2010
• Docket Number: Civ. No. 07-272-SLR
• Parties: INTERMEC TECHNOLOGIES CORP., Plaintiff, v. PALM INC., Defendant.
• Court: U.S. District Court — District of Delaware

738 F.Supp.2d 522

INTERMEC TECHNOLOGIES CORP., Plaintiff,

v.PALM INC., Defendant.

Civ. No. 07-272-SLR.

United States District Court,

D. Delaware.

Sept. 14, 2010.

Jack B. Blumenfeld, Esquire and Rodger Dallery Smith, II, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Sean T. O'Kelly, Esquire of Cross & Simon, LLC, Wilmington, DE, Of Counsel: Carson P. Veach, Esquire, Leland W. Hutchinson, Jr., Esquire, David S. Becker, Esquire and Jacob D. Koering, Esquire of Freeborn & Peters LLP, Chicago, IL, for Plaintiff and Counterclaim Defendant.

Richard L. Horwitz, Esquire, David Ellis Moore, Esquire and D. Fon Muttamara-Walker, Esquire of Potter Anderson & Corroon, LLP, Wilmington, DE, Of Counsel: Robert T. Haslam, Esquire of Covington & Burling LLP, Redwood Shores, CA; Michael M. Markman, Esquire, and Robert J. Williams, Esquire of Covington & Burling LLP, San Francisco, CA, for Defendant and Counterclaim Plaintiff.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

On May 18, 2007, Intermec Technologies Corporation ("Intermec" or "plaintiff") filed this action against Palm, Inc. ("Palm" or "defendant") for infringement of U.S. Patent Nos. 5,349,678 ("the '678 patent"), 5,568,645 ("the '645 patent"), and 5,987,499 ("the '499 patent," collectively, "the System patents"), and 5,468,947 ("the '947 patent"), and 5,892,971 ("the '971 patent", collectively "the Terminal patents," all collectively, "the Intermec patents"). (D.I. 1)

Palm filed its answer on July 2, 2007, and thereafter amended it twice. (D.I. 7; D.I. 11; D.I. 17) On September 11, 2007, Intermec filed a motion to strike Palm's inequitable conduct defense from its second amended answer. (D.I. 23) The parties stipulated, on May 23, 2008, that Intermec would withdraw its motion to strike, and that Palm would submit its third amended answer, attached thereto as exhibit 1. (D.I. 48) Palm's third amended answer includes various defenses and counterclaims, two of the latter asserting infringement of Palm's U.S. Patent Nos. 6,665,803 ("the '803 patent") and 7,096,049("the '049 patent", collectively "the Palm patents").

Currently pending before the court are: (1) Intermec's motion for partial summary judgment of infringement of the '678 patent (D.I. 152); (2) Intermec's motion for partial summary judgment of validity of the System patents (D.I. 155); (3) Intermec's motion for summary judgment of infringement and validity of the Terminal patents (D.I. 159); (4) Palm's motion for summary judgment of indefiniteness of certain claims of Intermec's '678 and '499 patents (D.I. 151); (5) Palm's motion for non-infringement of the Intermec patents (D.I. 158); and (6) Intermec's motion for summary judgment of non-infringement and invalidity of the Palm patents (D.I. 162). Fact and expert discovery is now closed. The court's opinion here is limited to the pending motions for summary judgment relating to the Intermec patents. Trial has not yet been scheduled. This court has jurisdiction under 28 U.S.C. § 1338(a) and 35 U.S.C. § 101 et seq.

II. BACKGROUND

A. The Parties and Patents in Suit

Intermec is incorporated under the laws of the State of Delaware, and has its principal place of business in Everett, Washington. Intermec is a wholly owned subsidiary of Intermec, Inc. Norand Corporation ("Norand") of Cedar Rapids, Iowa, is the assignee of the Intermec Patents. In 1997, Norand was acquired by Intermec, who owns all right and title to the Intermec patents. Intermec makes and sells data capture equipment such as portable data collection terminals and wireless communication systems to support them. Intermec also develops, makes and sells bar code readers which may be incorporated into a terminal or provided as an attachment. The Intermec patents relate to data capture systems, data capture terminals, and bar code readers. The data capture systems are comprised of computer systems communicating over radio transceivers to matching transceivers in the data capture terminals.

Palm is incorporated under the laws of the State of Delaware, and has its principal place of business in Sunnyvale, California. Palm provides smartphones, cellular telephones that include the ability to run certain programs such as a calendar application. Smartphones are also capable of connecting with the internet, thereby enabling other applications such as email and web browsing. Internet applications require a cellular data service subscription with a cell phone carrier. Palm does not offer cellular data subscription services.

The '678 patent was filed on August 21, 1991. The '645 and '499 patents are successive continuations claiming priority to the original '678 application. The System patents share nearly identical specifications directed to data capture systems. The Terminal patents both have a long, complex lineage. The '947 patent is directed to a pocket size data capture unit and shell, or peripheral, modules. Filed on March 29, 1993, the '947 patent is a continuation-in-part of two different applications. One of these parent applications descends from a series of continuations-in-part, which includes Ser. No. 897,547, filed August 15, 1986 ("the 1986 application"). On March 29, 1993, the '971 patent application was filed as a continuation-in-part of the '947 patent. The '971 patent is directed to portable data collection terminals including an indicia reader and a multi-tasking operating system.

B. Technological Background

Data capture systems are used to receive and collect information in a variety of settings such as warehouses, retail stores, and health care facilities. For example, ina warehouse setting, the system might be used to update, in real time, the inventory level of a particular product. It might also be used to identify locations where the product is stored, track the movements of a particular unit of inventory, or indicate which employee currently has charge of the product. Such systems are typified by multiple data collection terminals being placed close to the source of the data being collected, a server or other computer system used to store and further process the data, and a communications network linking the two. For a single data collection site, such as a warehouse, a single server may be adequate to meet storage and processing requirements. To service multiple data collection sites, a server may be located at each site, and each server may be further networked to a central host computer system. Such a host computer may act as a system-wide data repository.

Portable data collection terminals are typically hand held units that communicate via a radio link back to the server. They allow for collection and entry of data directly from the source location. To improve the speed, efficiency, and reliability of data collection, automatic data entry means, such as bar code readers, are often included with the terminal. Early bar code readers required physical contact with the bar coded label. Typically, a pen-shaped wand was scanned across the bars of the label to read it. Later, non-contact readers allowed bar codes to be read from labels a few inches away. This capability was further enhanced to provide for reading labels from a considerable distance. Thus, a label on a box at the top of a high stack might be read from the ground without having to climb a ladder.

Prior to enhancing portable data collection terminals through distributed processing, application programs were run on the host computer. The host computer controlled the terminals in real time. This significantly increased the hardware and software complexity, forcing the host computer to run multiple processes. Application programs residing on the host computer had to be fast enough to service all remote terminals in real time, had to validate data entry by the user, and had to respond to all user input. This required significant amounts of data to be sent back and forth over a radio link between each of the terminals and its host computer.

Portable data collection terminals contain a fully functional computer hardware system: processor, memory, and input/output devices, plus the terminal application program. The terminal application program is relatively small and simple, and can reside in the limited memory built into the terminal. Other, more sophisticated applications, such as inventory management, are too large to fit in the terminal's limited memory. However, by partitioning the application programs into discrete parts known as modules, and distributing them throughout the system, the terminals are capable of executing much more sophisticated application programs. When a module of an application completes execution, the next module can be requested, loaded into memory, and execution of the application can continue. Thus, input validation as well as considerable processing can be performed directly on the terminal, minimizing the communication and computer resources required.

C. Asserted Claims

1. The '678 patent

Intermec asserts infringement of claims 1, 5, 8-9, and 13-18 of the '678 patent, of which claims 1 and 8 are in independent form. (D.I. 156 at 3) The asserted independent claims of the '678 patent read as follows:

1. A data capture system comprising:

a) a plurality of portable client data collection terminals, each terminal comprising means for collecting data, dynamic addressable storage means and first control means operating on data formatted in a first style;

b) a server station comprising mass memory means which is larger than said dynamic addressable storage means of a terminal for storing data to be used by said data collection terminals, means responsive to a memory altering request for addressing said mass memory means and second control means operating on data formatted in a second style different from said first style, said data stored in said mass memory means being formatted in said second style; and

c) communication means for interconnecting said server station and each of said

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