Mformation Techs., Inc. v. Research in Motion Ltd.

• Decision Date: 19 December 2011
• Docket Number: No. C 08–04990 JW.,C 08–04990 JW.
• Citation: 830 F.Supp.2d 815
• Parties: MFORMATION TECHS., INC., Plaintiff, v. RESEARCH IN MOTION LTD., et al., Defendants.
• Court: U.S. District Court — Northern District of California

830 F.Supp.2d 815

MFORMATION TECHS., INC., Plaintiff,

v.RESEARCH IN MOTION LTD., et al., Defendants.

No. C 08–04990 JW.

United States District Court, N.D. California,San Francisco Division.

Dec. 19, 2011.

Shawn Edward McDonald, Amardeep Lal Thakur, Justin Edwin Gray, Foley & Lardner LLP, San Diego, CA, Allen A. Arntsen, Foley & Lardner LLP, Madison, WI, Lisa Marie Noller, Foley & Lardner LLP, Chicago, IL, for Plaintiff.

Aaron D. Charfoos, Eugene Goryunov, Ferlillia Victoria Roberson, Jessica Christine Kaiser, Linda S. Debruin, Maria A. Maras, Meredith Zinanni, Michael Daley Karson, Tiffany Patrice Cunningham, Kirkland & Ellis, LLP, Michael Anthony Parks, Thompson Coburn LLP, Chicago, IL, Marc Howard Cohen, Kirkland & Ellis LLP, Los Angeles, CA, Michael S. Feldberg, Allen and Overy LLP, New York, NY, for Defendants.

ORDER RE. MOTIONS FOR SUMMARY JUDGMENT

JAMES WARE, Chief Judge.

I. INTRODUCTION

Mformation Technologies, Inc. (“Plaintiff”) brings this action against Defendants Research in Motion Limited and Research in Motion Corporation (collectively, “Defendants”) alleging infringement of U.S. Patent No. 6,970,917 (“the '917 Patent”). The '917 Patent pertains to a method, system and computer program for remote control and management of wireless devices. Plaintiff alleges that Defendants infringe the '917 Patent by importing, marketing, manufacturing, using and selling the BlackBerry Enterprise Server (“BES”) software product. Defendants deny infringement and allege that the ' 917 Patent is invalid. After a series of amendments and motions,¹ the patent claims that remain at issue are independent Claim 1 of the ' 917 Patent, as well as dependent Claims 4–6, 21–25 and 27, all of which depend from Claim 1.

Presently before the Court are Plaintiff's Motions for Summary Judgment on various affirmative defenses asserted by Defendants,² and Defendants' Motions for Summary Judgment on some of their affirmative defenses.³ The Court conducted a hearing on September 26, 2011. Based on the papers submitted to date and oral argument, the Court GRANTS Plaintiff's Laches Motion; DENIES Plaintiff's Anticipation Motion; GRANTS Plaintiff's Inequitable Conduct Motion; GRANTS in part and DENIES in part Plaintiff's Indefiniteness Motion; DENIES Plaintiff's Public Use Motion; GRANTS Defendants' Damages Motion; GRANTS in part and DENIES in part Defendants' Noninfringement Motion; DENIES Defendants' Equivalents Motion; DENIES Defendants' Invalidity Motion; and DENIES Defendants' Claim Priority Motion.

II. STANDARDS

The standard for summary judgment does not change in a patent case. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994). Summary judgment is proper when the moving party shows that there is no genuine dispute as to any material fact. Fed.R.Civ.P. 56(a). The purpose of summary judgment “is to isolate and dispose of factually unsupported claims or defenses.” Celotex v. Catrett, 477 U.S. 317, 323–24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party “always bears the initial responsibility of informing the district court of the basis for its motion, and identifying the evidence which it believes demonstrates the absence of a genuine issue of material fact.” Id. at 323, 106 S.Ct. 2548. If the moving party meets its initial burden, the “burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is a genuine issue for trial.” Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 987 (9th Cir.2006) (citing Celotex, 477 U.S. at 324, 106 S.Ct. 2548).

When evaluating a motion for summary judgment, the court views the evidence through the prism of the evidentiary standard of proof that would pertain at trial. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The court draws all reasonable inferences in favor of the nonmoving party, including questions of credibility and of the weight that particular evidence is accorded. See, e.g., Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 520, 111 S.Ct. 2419, 115 L.Ed.2d 447 (1991). The court determines whether the non-moving party's “specific facts,” coupled with disputed background or contextual facts, are such that a reasonable jury might return a verdict for the non-moving party. T.W. Elec. Serv. v. Pac. Elec. Contractors, 809 F.2d 626, 631 (9th Cir.1987). In such a case, summary judgment is inappropriate. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. However, where a rational trier of fact could not find for the non-moving party based on the record as a whole, there is no “genuine issue for trial.” Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

Although the district court has discretion to consider materials in the court file not referenced in the opposing papers, it need not do so. See Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1028–29 (9th Cir.2001). “The district court need not examine the entire file for evidence establishing a genuine issue of fact.” Id. at 1031. However, when the parties file cross-motions for summary judgment, the district court must consider all of the evidence submitted in support of both motions to evaluate whether a genuine issue of material fact exists precluding summary judgment for either party. Fair Housing Council of Riverside Cnty., Inc. v. Riverside Two, 249 F.3d 1132, 1135 (9th Cir.2001).

III. DISCUSSION

A. Laches

As an affirmative defense, Defendants assert that the lawsuit against them is barred by the doctrine of laches. Plaintiff moves for summary judgment to eliminate the defense of laches on the ground that based on undisputed evidence with respect to the timing of the filing of this lawsuit, Defendants cannot prove laches as a matter of law. In addition, Plaintiff contends that there is no evidence that the timing of this lawsuit caused Defendants to suffer damages. (Laches Motion at 4–6.) Defendants respond that summary judgment should be denied because: (1) after the '917 Patent was issued, Plaintiff allowed nearly three years to pass before filing this lawsuit; and (2) there is a genuine factual dispute over whether Defendants suffered damages based on the lapse of time between the issuance of the patent and this suit. ⁴

Under the doctrine of laches, a patent infringement action may be dismissed if the defendant proves by a preponderance of evidence that: (1) “the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant”; and (2) “the delay operated to the prejudice or injury of the defendant.” A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1032 (Fed.Cir.1992). “The length of time which may be deemed unreasonable has no fixed boundaries but rather depends on the circumstances.” Id. “The period of delay is measured from the time the plaintiff knew or reasonably should have known of the defendant's alleged infringing activities to the date of suit. However, the period does not begin prior to the issuance of the patent.” Id. If a patentee “delays bringing suit for more than six years after the date the patentee knew or should have known of the alleged infringer's activity,” then a “presumption of laches arises.” Id. at 1028.

Although “a determination of what period of time constitutes an ‘unreasonable’ or ‘inexcusable’ delay is a question of fact specific to each case,” courts have “typically found a period of delay ‘unreasonable’ only when it substantially exceeded [four years].” IXYS Corp. v. Advanced Power Tech., Inc., 321 F.Supp.2d 1156, 1163 (N.D.Cal.2004). A delay of three or four years has been deemed “unreasonable only when that delay was accompanied by extraneous improper tactics or misleading conduct by the plaintiff.” Id. (citing Federal Circuit cases).

Here, the record shows that the '917 Patent was issued on November 29, 2005. Thus, the earliest possible date on which a claim of unreasonable delay could be based is November 29, 2005, the date on which the Patent was issued. A.C. Aukerman Co., 960 F.2d at 1032. Plaintiff filed this lawsuit on October 31, 2008. Accordingly, the time period upon which Defendants must rely to prove unreasonable delay is two years and eleven months. Because this time period is less than six years long, the presumption of laches does not attach. Id. at 1028. Furthermore, courts typically find a period of delay “unreasonable” only when it “substantially exceed[s]” four years. IXYS Corp., 321 F.Supp.2d at 1163. Although there are patent infringement cases finding “unreasonable delay” based on a time period of fewer than three years, in such cases the courts place an additional burden on the defendant to prove that the delay was “accompanied by extraneous improper tactics or misleading conduct” by the plaintiff. Id.

In recognition of this additional burden, Defendants proffer two kinds of evidence: (1) evidence suggesting that Plaintiff's employees “had already developed suspicions” that it had a “potential claim of infringement” against Defendants prior to receiving its Patent; and (2) evidence that Defendants' product was “widely sold and promoted.” (Laches Opp'n at 3–6.)

As to the first of Defendants' contentions, the evidence proffered by Defendants consists of internal emails sent from certain employees of Plaintiff to other employees of Plaintiff. ( See Laches Opp'n, Exs. 2–8.) These emails, Defendants contend, “conclusively demonstrate” Plaintiff's “familiarity” with Defendants' product and thus show that Plaintiff had knowledge of its patent infringement claims as of November 29, 2005, the date when the '917 Patent was issued. ( Id. at 3–4.) However, viewed in the light most favorable to Defendants, these internal emails only show that employees of Plaintiff were familiar with Defendants' product and that those employees suspected that Plaintiff had a potential infringement claim. The emails...