Lucent Technologies, Inc. v. Microsoft Corp., No. 06-CV-0684-H (CAB).

• Court: United States District Courts. 9th Circuit. United States District Court (Southern District of California)
• Writing for the Court: Marilyn L. Huff
• Citation: 544 F.Supp.2d 1080
• Parties: LUCENT TECHNOLOGIES, INC., and Multimedia Patent Trust, Plaintiffs, v. MICROSOFT CORPORATION, Defendant. and Related Claims.
• Decision Date: 12 February 2008
• Docket Number: No. 06-CV-0684-H (CAB).

544 F.Supp.2d 1080 LUCENT TECHNOLOGIES, INC., and Multimedia Patent Trust, Plaintiffs,
v.
MICROSOFT CORPORATION, Defendant.
and Related Claims. No. 06-CV-0684-H (CAB). United States District Court, S.D. California. February 12, 2008.

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David A. Hahn, Hahn and Adema, San Diego, CA, Howard D. Shatz, James E. Marina, John M. Desmarais, Michael P. Stadnick, Paul A. Bondor, Robert A. Appleby, Elizabeth T. Bernard, Jennifer J. Schmidt, Jonas Reale McDavit, Jordan N. Malz, William C. Mercer, Kirkland and Ellis LLP, New York, NY, Corey J. Manley, Karen Michelle Robinson, Valerie Gutmann, William Fink, Kirkland & Ellis LLP, Washington, DC, Michael P. Bregenzer, Kirkland & Ellis LLP, Chicago, IL, for Plaintiffs.

Christopher Scott Marchese, John E. Gartman, John P. Schnurer, Shekhar Vyas, Desa L. Burton, Matthew C. Bernstein, Fish and Richardson PC, San Diego, CA, Erik M. Andersen, Payne and Fears, Irvine, CA, Alan D. Albright, Conor M. Civins, Fish and Richardson, PC, Ross Spencer Garsson, Austin, TX, Andrew R. Kopsidas, Fish and Richardson, Washington, DC, Brian M. Rostocki, Cathy L. Reese, Linhong Zhang, Raymond N. Scott, Jr., Richard C. Weinblatt, Fish & Richardson P.C., Sean T. O'Kelly, Cross & Simon LLC, Wilmington, DE, Irene E. Hudson, Fish and Richardson, New York, NY, John M. Helms, Fish & Richardson, Dallas, TX, for Defendant.

ORDER ON MOTIONS FOR SUMMARY JUDGMENT

MARILYN L. HUFF, District Judge.

This case involves claims and counterclaims for patent infringement between Lucent Technologies, Inc. ("Lucent"), Multimedia Patent Trust ("MPT"), and Alcatel-Lucent (collectively with Lucent and MPT, "Plaintffs"¹) on one side and Microsoft Corporation ("Microsoft") on the other. On January 4, 2008, according to the schedule set by the Court, the parties filed motions for summary judgment. (Doc. Nos.180, 182, 197, 199-200.)² The parties filed their oppositions on January 18, 2008. (Doc. Nos.225-26, 229, 232, 236.) The parties filed their reply briefs on January 25,

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2008. (Doc. Nos.286-88, 291, 293.) The Court also permitted Microsoft to file a late amended version of one of its motions and granted Plaintiffs additional time to respond to this motion. (See Doc. Nos. 196, 209, 222-23, 290.) The Court also authorized supplemental briefing to address any material discovered after the parties' last opportunity to brief an issue. (See Doc. No. 326.)

On February 1, 2008, the Court held a hearing on this motion. The following attorneys appeared on behalf of Lucent and MPT: Robert A. Appleby, Paul A. Bondor, James E. Marina, Michel P. Stadnick, Todd Friedman, Avi Lele, Jonas McDavit, Michael Bregenger, Carl Blickle, Karen Robinson, and Ephraim Starr. Scott Partridge and Lisa Kelly appeared for Alcatel Lucent. The following attorneys appeared for Microsoft: John E. Gartman, Christopher Scott Marchese, Alan Albright, Ross Garsson, Richard Weinblatt, Irene Hudson, Andrew Kopsidas, and John Helms.

Background

On August 9, 2005, in Case No. 02-CV2060, the Court granted summary judgment of invalidity by indefiniteness of claims 13 and 15 of United States Patent No. 5,227,878 ("Puri '878") because a transcription error by the United States Patent and Trademark Office ("PTO") omitted language from claim 13, on which claim 15 depends. (See Order Granting Part Denying Part Microsoft's Mot. Partial Summ. J. Invalidity Puri '878, Case No. 02-CV-2060, Doc. No. 325.) Lucent obtained a Certificate of Correction from the PTO, issued on October 25, 2005, and then brought this action on March 28, 2006.

While this case was pending, Lucent and Alcatel merged. Lucent is now a subsidiary of Alcatel Lucent. Prior to the merger, Lucent created MPT and assigned certain patents to it, including the Puri '878 patent.

In response to Lucent's action, Microsoft asserted counterclaims for infringement of ten of its patents against Lucent and Alcatel-Lucent: United States Patent Nos. 6,412,004 ("Chen '004"); 6,438,217 ("Huna '217"); 5,438,433 ("Reifman '433"); 5,917,499 ("Jancke '499"); 6,339,794 ("Bolosky '794"); 5,764,913 ("Jancke '913"); 6,565,608 ("Fein '608"); 5,941,947 ("Brown '947"); 5,838,319 ("Guzak '319"); and 5,977,971 ("Guzak '971" and collectively with Guzak '319, "the Guzak patents"). The Court previously ruled on the construction of disputed terms for all eleven patents at issue. (See Doc. No. 156, Claim Construction Order for U.S. Patent Nos: 5,227,878; 6,412,004; 6,438,217; 5,438,433; 5,917,499; 6,339,794; 5,764,913; 6,565,608; 5,941,947; 5,838,319; and 5,977,971 ("Cl. Const.Order").)

Discussion

I. Summary Judgment Standard

Under Rule 56(c) of the Federal Rules of Civil Procedure, a court may grant summary judgment upon a claim "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." A party moving for summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact for trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party's burden "may be discharged by `showing" — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Celotex Corp., 477 U.S. at 325, 106 S.Ct. 2548.

Once the moving party meets the requirements of Rule 56, the party opposing the motion must set forth specific facts showing that there is a genuine issue of material fact. See Anderson v. Liberty

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Lobby, Inc., 477 U.S. 242, 248-56, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The opposing evidence must be sufficiently probative to permit a reasonable trier of fact to find in favor of the opposing party. See id. at 249-250, 106 S.Ct. 2505. Thus, the nonmoving party cannot oppose a properly supported summary judgment motion by "rest[ing] upon mere allegation or denials of his pleadings." Id. at 256, 106 S.Ct. 2505. If the non-moving party fails to make a sufficient showing of an element of its case, the moving party is entitled to judgment as a matter of law. See Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548.

On a motion for summary judgment the court views the evidence in the light most favorable to the non-moving party. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962). However, "[w]hen opposing parties tell two different stories, one of which is blatantly contradicted by the record, so that no reasonable jury could believe it, a court should not adopt that version of the facts" for summary judgment purposes. See Scott v. Harris, ___ U.S. ___ ___, 127 S.Ct. 1769, 1776, 167 L.Ed.2d 686 (2007).

II. Motions Related to the Puri '878 Patent

A. Background for the Puri '878 Patent

The Patent and Trademark Office (PTO) issued the Puri '878 patent, entitled "Adaptive Coding and Decoding of Frames and Fields of Video," on July 13, 1993 to inventors Atul Puri and Rangaraj an Aravind. The application was filed on November 15, 1991. Puri '878 relates generally to the compression and decompression of video signals, which allows transmission using less bandwidth.

Two apparatus claims are at issue here: claim 13 and related dependent claim 15. Claim 13 states, in its corrected form:

An apparatus for decoding a compressed digital video signal, comprising:

a means for receiving a compressed digital video bit stream; and

a means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream.

(Puri '878 90:31-38.) Claim 15 states:

The apparatus of claim 13, in which the decoding means comprises:

a means responsive to a motion compensation type signal and selectively responsive to frame motion vectors and field motion vectors for producing an adaptive motion compensated estimate of a decoded video signal; and

a means responsive to the compressed digital video bit stream for producing a, decoded estimate error signal; and

a means responsive to the adaptive motion compensated estimate and the estimate error signal for producing a decoded video signal.

(Puri '878 90:43-55.) The Court previously construed the terms of these claims, including definitions of the structures related to the means-plus-function elements. (See Cl. Constr. Order, Doc. No. 156, App. A.)

Claim 13 did not issue in its current form. The PTO, due to its own error, initially issued claim 13 without the phrase "and fields of the compressed video bit stream" and without the word "digital" in the second means plus function limitation. Lucent previously asserted the Puri '878 patent in a suit against Microsoft without first seeking a correction. There, the Court declined to correct the patent and determined that claims 13 and 15 were invalid for indefiniteness. (Order Granting

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Part Denying Part Mot. Summ. J. Claims of Puri '878 Invalid Under § 112(2), Case No. 02-CV-2060, Doc. No. 325.) After that ruling, Lucent obtained a certificate of correction from the PTO, pursuant to 35 U.S.C. § 254, which permits the Director to issue a certificate "[w]henever a mistake in a patent incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office...." The PTO issued the certificate of correction on October 25, 2005.

MPT now asserts that certain Microsoft products infringe claims 13 and 15, as corrected, in their implementation of MPEG-2 and VC-1 video compression standards. MPEG-2 and VC-1 are both standards for video compression technology used in common consumer video formats including DVD and HD DVD. More...