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

• Decision Date: 19 December 2011
• Docket Number: Civ. No. 07–272–SLR.
• Citation: 830 F.Supp.2d 1
• Parties: INTERMEC TECHNOLOGIES CORP., Plaintiff, v. PALM INC., Defendant.
• Court: U.S. District Court — District of Delaware

830 F.Supp.2d 1

INTERMEC TECHNOLOGIES CORP., Plaintiff,

v.PALM INC., Defendant.

Civ. No. 07–272–SLR.

United States District Court, D. Delaware.

Dec. 19, 2011.

Jack B. Blumenfeld, Esquire and Rodger Dallery Smith, II, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE. Counsel for Plaintiff and Counterclaim Defendant. Of Counsel: Carson P. Veach, Esquire, Leland W. Hutchinson, Jr., Esquire, David S. Becker, Esquire and Jacob D. Koering, Esquire of Freeborn & Peters LLP.

Richard L. Horwitz, Esquire and David Ellis Moore, Esquire of Potter Anderson & Corroon, LLP, Wilmington, DE. Counsel for Defendant and Counterclaim Plaintiff. Of Counsel: Robert T. Haslam, Esquire, Michael M. Markman, Esquire, and Robert J. Williams, Esquire of Covington & Burling LLP.

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 five U.S. patents (“the Intermec patents”). (D.I. 1) In its third amended answer, Palm asserted 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”).

On September 14, 2010, 738 F.Supp.2d 522 (D.Del.2010), the court issued a memorandum opinion with respect to the Intermec patents (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)

On September 15, 2011, 811 F.Supp.2d 973 (D.Del.2011), the court issued a Memorandum Opinion (D.I. 305) and Order (D.I. 306) (collectively “decision at bar”) granting in part and denying in part Palm's motion for summary judgment of no invalidity and infringement of Palm's '803 and '049 patents (D.I. 175), and granting in part and denying in part Intermec's motion for summary judgment of noninfringement and invalidity of the '803 and '049 patents (D.I. 162). The court incorporates by reference the detailed introduction and background provided in the decision at bar.

Currently pending before the court is Intermec's motion for reconsideration (D.I. 308) of the decision at bar. Fact and expert discovery are 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. BACKGROUND

On September 11, 2009, Palm filed a motion for summary judgment of no invalidity and infringement of the '803 and '049 patents (D.I. 175). With respect to no invalidity, Palm sought “summary judgment that seven claims of the '049 patent are not invalid [and] that three claims of the '803 patent are not invalid.” ¹ (D.I. 176 at 1) Intermec filed a cross-motion for summary judgment of noninfringement and invalidity of the '803 and ' 049 patents (D.I. 162) putting at issue the validity of the asserted claims. (D.I. 163 at 2) As Intermec noted in its opening brief, “Palm has asserted infringement of [c]laims 1–30 of the ' 803 patent, and [c]laims 1–7 and 9–17 of the ' 049 patent.” ² ( Id. at 5)

In the decision at bar, the court found that all of the independent claims of the '803 patent shared both a “signal line” and a “suspension” limitation. (811 F.Supp.2d at 987–88, 988–89) Intermec's arguments in support of anticipation of the claims of the '803 patent were largely directed to these two limitations of the three independent claims. (D.I. 163 at 23–25) With respect to the '049 patent, the court found that the “low level” limitation was common to all of the asserted independent claims.³ ( 811 F.Supp.2d at 992–93) Intermec's argument in support of anticipation of the asserted claims of the ' 049 patent was, again, largely based on this shared limitation of the asserted independent claims. (D.I. 163 at 25–27) Intermec also argued as to the invalidity of claims 3 and 9 of the ' 049 patent for reasons of indefiniteness, enablement, and written description. (D.I. 150 at 40; D.I. 163 at 28–29) The court found no indefiniteness, lack of enablement or lack of written description with respect to these claims.

III. STANDARD OF REVIEW

Motions for reconsideration are the “functional equivalent” of motions to alter or amend judgment under Federal Rule of Civil Procedure 59(e). See Jones v. Pittsburgh Nat'l Corp., 899 F.2d 1350, 1352 (3d Cir.1990) (citing Fed. Kemper Ins. Co. v. Rauscher, 807 F.2d 345, 348 (3d Cir.1986)). The standard for obtaining relief under Rule 59(e) is difficult for a plaintiff to meet. The purpose of a motion for reconsideration is to “correct manifest errors of law or fact or to present newly discovered evidence.” Max's Seafood Café ex rel. Lou–Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir.1999) ( citing Harsco Corp. v. Zlotnicki, 779 F.2d 906, 909 (3d Cir.1985)). Therefore, a court should exercise its discretion to alter or amend its judgment only if the movant demonstrates one of the following: (1) a change in the controlling law; (2) a need to correct a clear error of law or fact or to prevent manifest injustice; or (3) availability of new evidence not available when the judgment was granted. See id.

A motion for reconsideration is not properly grounded on a request that a court rethink a decision already made. See Glendon Energy Co. v. Borough of Glendon, 836 F.Supp. 1109, 1122 (E.D.Pa.1993). Motions for reargument or reconsideration may not be used “as a means to argue new facts or issues that inexcusably were not presented to the court in the matter previously decided.” Brambles USA, Inc. v. Blocker, 735 F.Supp. 1239, 1240 (D.Del.1990). Reargument, however, may be appropriate where “the Court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the Court by the parties, or has made an error not of reasoning but of apprehension.” Id. at 1241 (citations omitted); see also D. Del. LR 7.1.5.

IV. DISCUSSION

Intermec submits that reconsideration is necessary to “correct errors of law and fact and to prevent manifest injustice.” (D.I.) Specifically, Intermec argues that

[t]he Court's rulings are in error because they (i) improperly grant Palm summary judgment of validity on claims that were not the subject of Palm's motion and for which Intermec was not given notice of the Court's intent to grant or an opportunity to oppose such a grant of summary judgment; (ii) improperly rejected evidence that the 700 Mono, as a 700 Series product, met every single limitation of the '049 patent claims; (iii) did not consider evidence from Intermec showing the 700 Mono operated the same way as the 700 Color and thus met every single limitation of the '049 patent claims; (iv) did not consider evidence that Koenck '523 disclosed the Low Level Limitation, or erroneously imported a requirement to show a specific operational voltage into that claim limitation (contrary to the Court's holding on infringement); and [v] did not apply the proper standard to these and other facts in granting Palm summary judgment.

(D.I. 309 at 1)

A. Judgment on Claims Not the Subject of Palm's Motion

Intermec argues that the language of the decision at bar is unclear as to whether or not the court granted, sua sponte, relief not specifically requested by Palm as to invalidity of claims 1–5, 7–17, 19–21 and 23–30 of the '803 patent, and claims 1–3, 7, 10–11 and 13–15 of the '049 patent (“omitted claims”). (D.I. 309 at 2) Intermec further argues that the court committed error to the extent that the court granted relief for the omitted claims without giving notice of the court's intent to do so or granting an opportunity to oppose. ( Id. at 1).

The decision at bar provided that

Palm's motion for summary judgment of no invalidity and infringement of the '803 and '049 patents is granted-in-part with respect to no invalidity of either patent, and is otherwise denied. Intermec's motion for summary judgment of [noninfringement] and invalidity of the '803 and '049 patents is granted-in part with respect to no infringement of claims 17, 18 and 22 of the '803 patent and no infringement of claim 17 of the '049 patent, and otherwise denied.

(811 F.Supp.2d at 1003) In the decision at bar, the court was ruling on Palm's motion, granting-in-part Palm's motion for summary judgment with respect to no invalidity of either patent. The grant of summary judgment, thus, was limited to the relief sought in Palm's motion, and was not a grant, sua sponte, of summary judgment with respect to all claims.

The court, therefore, clarifies that in the decision at bar, the court's grant of Palm's motion for summary judgment of no invalidity applied only to claims 6, 18 and 22 of the '803 patent and claims 4–6, 9, 12 and 16–17 of the ' 049 patent. As the court did not grant relief sua sponte, the court does not reach the parties' remaining arguments regarding this issue.

B. Anticipation of the '049 Patent by the 700 Mono Product

In the decision at bar, the court considered Intermec's argument that Palm itself showed that the '049 patent claims were invalid by accusing a prior art product (the Intermec 700 Mono) of infringement. (811 F.Supp.2d at 1000–01) The court determined that Palm's preliminary infringement contentions were not directed to the 700 Mono product as claimed by Intermec. ( Id. at 1000–01) Although the court considered Intermec's assertion that the 700 Mono “operated in...