Intermec Techs. Corp. v. Palm Inc., Civ. No. 07–272–SLR.

• Decision Date: 15 September 2011
• Docket Number: Civ. No. 07–272–SLR.
• Citation: 2011 Markman 4103021,811 F.Supp.2d 973
• Parties: INTERMEC TECHNOLOGIES CORP., Plaintiff, v. PALM INC., Defendant.
• Court: U.S. District Court — District of Delaware

2011 Markman 4103021

811 F.Supp.2d 973

INTERMEC TECHNOLOGIES CORP., Plaintiff,

v.PALM INC., Defendant.

Civ. No. 07–272–SLR.

United States District Court, D. Delaware.

Sept. 15, 2011.

Jack B. Blumenfeld, Esquire and Rodger Dallery Smith, II, Esquire of Morris, Nichols, Arsht & Tunnell LLP, 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, for Plaintiff and Counterclaim Defendant.

Richard L. Horwitz, Esquire and David Ellis Moore, Esquire of Potter Anderson & Corroon, LLP, Wilmington, DE, Of Counsel: Robert T. Haslam, Esquire, Michael M. Markman, Esquire, and Robert J. Williams, Esquire of Covington & Burling LLP, 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 an 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”), 5,987,499 (“the '499 patent”), 5,468,947 (“the '947 patent”), and 5,892,971 (“the '971 patent”, 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”).

The court issued a memorandum order on June 7, 2010 denying both Palm's motion to strike certain evidence and argument pertaining to invalidity of the Palm patents (D.I. 210) and Intermec's cross-motion to strike supplemental opinions of Dr. Kevin Almeroth (“Dr. Almeroth”) regarding infringement of the '803 patent (D.I. 249). (D.I. 270) On June 16, 2010, the parties stipulated as to supplemental briefing relating to Intermec's motion for summary judgment of noninfringement and invalidity of the Palm patents (D.I. 162). (D.I. 271)

On September 14, 2010, the court issued a memorandum opinion with respect to the Intermec patents, granting-in-part and denying-in-part Palm's motion for summary judgment of indefiniteness (D.I. 151); denying Intermec's motion for partial summary judgment of infringement (D.I. 152); granting-in-part and denying-in-part Intermec's motion for partial summary judgment of certain invalidity claims (D.I. 155); granting Palm's motion for summary judgment of noninfringement (D.I. 158); and granting-in-part and denying-in-part Intermec's motion for summary judgment of infringement and validity (D.I. 159). (D.I. 284) Both parties agreed to mediation of the case which was scheduled for December 14, 2010. (D.I. 288; D.I. 289) The parties stipulated, on February 16, 2011, to stay all claims regarding the Palm patents until the conclusion of mediation. (D.I. 291)

On March 22, 2011, Intermec filed a notice of appeal to the Federal Circuit concerning the parties' stipulated judgment of noninfringement of the Intermec patents, which the Federal Circuit docketed on April 6. (D.I. 303) On May 5, 2011, the parties reported to the court that “efforts to mediate the case have not been successful.” ( Id.) After consideration of the parties' respective positions on how to proceed with issues relating to the Palm patents, the court lifted the stay. (D.I. 304)

Currently pending before the court is Intermec's motion for summary judgment of noninfringement and invalidity of the Palm patents (D.I. 162) and Palm's motion for summary judgment of no invalidity and infringement of the Palm patents (D.I. 175). Fact and expert discovery is now closed. 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. BACKGROUNDA. 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, bar code readers which may be incorporated into a terminal or provided as an attachment, and handheld computers that can connect to the internet and be used as cell phones. 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. Intermec does not offer cellular subscription services.

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 subscription services.

The '803 patent was filed on November 4, 2002 as a continuation of application No. 09/298, 113, filed April 23, 1999. The '803 patent issued December 16, 2003 and is directed to a portable computer that determines whether an accessory device is connected to it. The '049 patent was filed on May 25, 2001 and issued August 22, 2006. The '049 patent is directed to a handheld computer comprising a rechargeable battery and a radio frequency (“RF”) transceiver, wherein the RF transceiver is capable of being powered by the battery and/or a battery recharger under particular circumstances.

B. Technological Background

Portable computers, including laptop and handheld computers, are often limited in their capabilities when compared to larger, stationary desktop computers. Various peripheral devices may be modified or eliminated when designing a portable computer in order to reduce weight, size and battery drain. Due to their nature, portable computers generally require a battery to power the unit during mobile operation and when away from standard alternating current (“A/C”) power. The battery is recharged, or the unit may be directly powered, by an A/C “recharger” connected to the unit's “power terminal”.

Additional capabilities are often added to such computers through the use of external accessory devices. Accessory devices have been used, for example, to provide serial, parallel and universal serial bus (“USB”) communication ports, modems and additional memory, when connected to a “communication port” of the portable computer. Some accessory devices (“powered accessories”) also provide the portable computer with an A/C power supply when connected to the portable computer.

Portable computers are generally equipped with a “time-out” feature that turns the computer off after a predetermined period of user inactivity. This time-out feature preserves battery life when the computer is being operated in a self-contained configuration. This feature is often unnecessary when connected to a powered accessory. In such instance, a time-out feature may not only be unnecessary, but it may actually limit the useful capabilities of the combined portable computer and connected accessory device. For example, an application program might display a “stock ticker” showing current market prices obtained via a communications link. Since the application does not require regular user interaction for such a display, the time-out feature might turn the computer off after the predetermined time, even if powered by the accessory.

While earlier portable computers may have contained a time-out feature, this feature was not disabled when connected to a powered accessory through a communications port. Instead, the time-out feature was only disabled when the computer was attached to an A/C recharger connected directly to the computer's power terminal. Further, earlier portable computers were unable to identify the type of connected accessory, thus placing the burden for doing so on the user. The user, in manually configuring the computer to use the connected accessory, may improperly identify the accessory to the computer. The computer might then accidentally execute an application program that could cause damage to the accessory. To address these issues, portable computers were designed to recognize accessories, including powered accessories, that are connected to a communications port and to respond accordingly. Identifying the type of accessory may also indicate whether or not the accessory provides external power, without resort to detecting the power source itself.

All of the issues and limitations discussed above are of critical importance with particular respect to handheld computing devices such as “palmtops,” personal digital assistants (PDAs) and handheld computers (collectively “handheld devices” or “handhelds”). Handheld devices are small. They are generally designed to fit in a pocket and weigh less than a pound, severely constraining the size and energy capacity of the battery. These devices typically support some combination of personal information management, database functions, word processing and spreadsheets, as well as wireless functions (such as email...