Kewazinga Corp. v. Microsoft Corp.

Decision Date01 September 2021
Docket Number1:18-cv-4500-GHW
Citation558 F.Supp.3d 90
Parties KEWAZINGA CORP., Plaintiff, v. MICROSOFT CORPORATION, Defendant.
CourtU.S. District Court — Southern District of New York

Kenneth Lawrence Stein, Ian Gregg DiBernardo, Brown Rudnick LLP, Saunak Kirti Desai, Associate, Timothy Kelso Gilman, Stroock & Stroock & LaVan LLP, Gregory Springsted, New York, NY, for Plaintiff.

Andrew Bruce Lachow, Lachowlaw, Larchmont, NY, James DeRouin, John Christopher Carraway, Kristin Cleveland, Ryan Frei, Todd M. Siegel, John D. Vandenberg, Klarquist Sparkman LLP, Portland, OR, for Defendant.


GREGORY H. WOODS, United States District Judge:

For some, it is difficult to remember a time before interactive street-level maps were available. Gone are the days of relying on unwieldy giant paper maps and pulling over on the side of the road to squint at street signs. In this modern age, one merely needs access to the internet to navigate unfamiliar cities without revealing her status as a tourist. With street-level imagery, would-be travelers can familiarize themselves with locations prior to venturing out into the great unknown, providing some sense of comfort and safety. Or, one can use interactive street-level maps to virtually wander the hills of San Francisco, the skyscraper-lined streets of New York, or the famous French Quarter in New Orleans from the comfort of her own home. These virtual trips have been a refreshing escape for some during the recent pandemic, when travel and contact with the outside world has been scarce.

Microsoft is one company that offers this technology. Streetside provides users a street-level view of various locations. Plaintiff Kewazinga asserts that Streetside infringes on its patents for navigable, telepresence technology. Before the Court are the partiesmotions for summary judgment.1 For the reasons set forth below, Kewazinga's motion is granted in part and denied in part, Microsoft's cross-motion for summary judgment is denied, and Microsoft's motion for summary judgment is granted in part and denied in part.

I. Background2

The three patents at issue in this action are (1) the February 18, 2003 patent numbered 6,522,325 (the "’325 Patent"); (2) the March 18, 2003 patent numbered 6,535,226 (the "’226 Patent"); and (3) the June 9, 2015 patent numbered 9,055,234 (the "’234 Patent," and collectively, the "Asserted Patents"). The ’325 and ’226 Patents are both titled "Navigable Telepresence Method and System Utilizing an Array of Cameras." The ’234 Patent is titled "Navigable Telepresence Method and System." The patents teach telepresence systems, devices, and methods that enable one or more users to navigate imagery through a remote environment.

Defendant Microsoft Corporation ("Microsoft") offers navigable street-level imagery through its "Streetside" functionality, which is currently available through Microsoft's Bing Maps and was previously available through Microsoft's Bing Maps Preview App and Maps App. Microsoft has been providing the accused Streetside functionality to the public since December 2009. On December 5, 2013, Microsoft released a version of the Bing Maps Preview App, which allowed users who were running the Windows 8.1 operating system to view Streetside imagery. This app worked only for users who were running the Windows 8.1 operating system and is one of the instrumentalities accused of infringement in this lawsuit.3 In 2015, Microsoft released the Maps App, which allowed users who were running the Windows 10 operating system to view Streetside imagery.4 The Maps App was shipped on devices that had that operating system. The Maps App is also accused of infringement in this lawsuit.5 Microsoft released the current version of its Bing Maps website (also called "V8") in 2015, the third and final product accused of infringement in this lawsuit.6 Prior to the release of the current version of the Bing Maps website, a user of the previous Bing Maps website who wished to use Streetside features was required to download plugin software known as Silverlight to her computer.7 The current Bing Maps website version does not use Silverlight, and users of the current website are not required to download the Silverlight plugin to access Streetside functionality.8

The parties’ history is long, spanning well over a decade. Kewazinga asserts that over the course of about six months in 2006, Kewazinga communicated with several senior Microsoft employees, providing significant confidential business ideas and notice of its patents, including the ’325 and ’226 patents at issue in this suit.

In December 2009, Microsoft launched the Silverlight website (the first accused Streetside website).9 On June 27, 2013, Kewazinga filed a complaint against Microsoft in the District of Delaware (the "2013 Lawsuit"), asserting that that "Streetside and Bing Maps with Streetside" infringed the ’226 and ’325 patents.10 At that point, Microsoft had been providing the accused Streetside functionality to the public for approximately three years and seven months, since December 2009.11 On August 22, 2013, representatives of Microsoft and Kewazinga met in Redmond, Washington to discuss Kewazinga's allegations.12 During that meeting, Kewazinga asserted that Streetside infringed the ’226 and ’325 patents, which Microsoft denied, arguing that Streetside did not use an "array of cameras" to capture images and identified prior art to the patents.13 Following that meeting, Kewazinga's and Microsoft's respective attorneys had a phone call regarding Kewazinga's allegations, during which Microsoft reiterated its position that it did not infringe the ’226 and ’325 patents because it did not use an "array of cameras" to capture images.14 On October 21, 2013, Kewazinga voluntarily dismissed the 2013 Lawsuit without prejudice, without having ever served the 2013 complaint on Microsoft or alerting Microsoft that it would be dismissing the complaint.15 Kewazinga claims that it opted to dismiss the 2013 Lawsuit because it did not have enough funds to pursue its case against Microsoft.16 Microsoft and Kewazinga did not communicate until this suit was filed; specifically, Kewazinga did not inform Microsoft of its reasons for dismissing the case or its intention to later continue its pursuit against Microsoft for infringement.17

On May 14, 2013, Kewazinga initiated a lawsuit against Google, Inc., asserting that Google infringed the ’226 and ’325 patents by providing street-level imagery through its Street View function.18 Google moved to dismiss the complaint against it.19 Kewazinga filed a response and a non-opposition, noting that the parties were engaged in settlement discussions and that it did not oppose dismissal of the action without prejudice.20 Accordingly, the complaint was dismissed without prejudice on November 14, 2013.21

According to Microsoft, based on those events, it assumed that Kewazinga was no longer interested in asserting that Microsoft infringed the ’226 and ’325 patents.22 Ms. Quan, Microsoft's former in-house counsel, further asserted that she believed that Kewazinga was no longer interested in asserting its ’226 and ’325 patents against companies that used moving cameras to capture street-level imagery, a belief that was reinforced by the dismissal of Kewazinga's separate suit against Google.23 Ms. Quan further asserted that Microsoft thereafter disengaged the defense counsel it had retained to work on the Kewazinga dispute or patents, and released its document preservation holds.24

Microsoft did not seek a declaratory judgment against Kewazinga.25

Kewazinga commenced this action against Microsoft on May 21, 2018. Compl., Dkt No. 1. Kewazinga has accused the Bing Maps Preview App, the Maps App, and the current version of the Bing Maps website of infringement of its patents. Plaintiff asserts that Microsoft has infringed, and continues to infringe, the ’226, ’325, and ’234 patents. On July 30, 2018, Microsoft answered the complaint and brought six counterclaims against Kewazinga, seeking declaratory judgments of invalidity and non-infringement for each of the three patents. Dkt. No. 15. On July 18, 2019, the Court held a Markman hearing, and on July 29, 2019, issued its claim construction order. Dkt. No. 53. On July 17, 2020, the parties each moved for summary judgment. Dkt. Nos. 187, 190. On August 20, 2020, the parties opposed the motions for summary judgment and Microsoft additionally cross-moved for summary judgment. Dkt. Nos. 226, 228, 246. On September 3 and 4, 2020, the parties replied. Dkt. Nos. 265, 290. Plaintiff filed its sur-reply on October 2, 2020, and Defendant filed its sur-sur-reply on October 9, 2020. Dkt. Nos. 309, 315.


Under Federal Rule of Civil Procedure 56, 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."26 The moving party must show that "under the governing law, there can be but one reasonable conclusion as to the verdict."27 The moving party bears the initial burden of establishing that there are no material facts in dispute and must provide "affirmative evidence" from which a factfinder could return a verdict in its favor.28 Then "the burden shifts to the nonmovant to point to record evidence creating a genuine issue of material fact."29 The "trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are any genuine issues of material fact to be tried, not deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue-resolution."30 In determining whether summary judgment is appropriate, the Court must resolve all ambiguities and draw all reasonable inferences in the light most favorable to the non-moving party.31 Summary judgment is improper if "there is any evidence in the record from any source from which a reasonable...

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