Responsive Innovations, LLC v. Holtzbrinck Publishers, LLC
| Decision Date | 28 November 2012 |
| Docket Number | No. 4:08CV1184.,4:08CV1184. |
| Citation | 911 F.Supp.2d 526 |
| Parties | RESPONSIVE INNOVATIONS, LLC et al., Plaintiffs, v. HOLTZBRINCK PUBLISHERS, LLC et al., Defendants. |
| Court | U.S. District Court — Northern District of Ohio |
OPINION TEXT STARTS HERE
Amanda M. Miller, Bryan A. Schwartz, Steven M. Auvil, Benesch, Friedlander, Coplan & Aronoff, Cleveland, OH, for Plaintiffs.
Arne M. Olson, Joseph M. Kuo, Dennis Hiunam Ma, Olson & Cepuritis, Chicago, IL, Edmond J. Mack, Gary A. Corroto, Tzangas, Plakas & Mannos, Canton, OH, for Defendants.
This matter comes before the Court upon Defendants' Motion for Summary Judgment (Doc. No. 72) and Plaintiffs' Motion for Summary Judgment (Doc. No. 73 corrected 76). For the reasons set forth below, the Court denies Defendants' Motion for Summary Judgment, in part, and grants in part, and denies, in part, Plaintiffs' Motion for Summary Judgment.
This is a patent infringement case brought by Responsive Innovations, LLC (“Responsive”) and Turning Technologies, LLC (“Turning”) (collectively, “Plaintiffs”) against Holtzbrinck Publishers, LLC (“Holtzbrinck”) and MacMillan Publishers, Inc. (“MacMillan”) (collectively, “Defendants”). Both Plaintiffs and Defendants market and sell radio frequency based audience response systems that employ handheld-initiated communications. Plaintiffs brought suit on May 13, 2008, alleging infringement of U.S. Patent No. 7,330,716 (“the '716 Patent”), entitled “Wireless Communication System.” (Doc. No. 1; Doc. No. 23.) Plaintiffs' specifically allege that Defendants, through Defendants' i> Clicker wireless audience response system, infringe claims 1–5, and 8–9 (“the asserted claims”) of the '716 Patent. (Doc. No. 23.)
Defendants deny infringement and further deny that the patent is valid. (Doc. No. 15; Doc. No. 25.) Defendants brought declaratory judgment counterclaims of non-infringement and invalidity under 35 U.S.C. §§ 102, 103, and 112 and counterclaims of unfair competition under the Lanham Act § 43(a), common law unfair competition, deceptive trade practice under Ohio Rev.Code § 4165.02, defamation, and tortious interference. (Doc. No. 25.) On April 3, 2009, the Court issued its Markman Order (Doc. No. 38.), 2009 WL 1477257 On June 29, 2009, Defendants moved to amend its affirmative defenses and counterclaims to add new allegations of inequitable conduct and patent misuse. (Doc. No. 39.)
On June 24, 2010, Defendants filed a Motion for Summary Judgment on their invalidity defenses of anticipation, obviousness, and failure to disclose the best mode. (Doc. No. 72.) Plaintiffs filed a Motion for Summary Judgment on: (1) their claim of patent infringement, (2) Defendants' invalidity defenses of anticipation, obviousness, written description, enablement, and best mode, (3) Defendants' unenforceability defenses of inequitable conduct, and patent misuse, and (4) Defendants' counterclaims. (Doc. No. 73 corrected at 76). The Court heard Oral Argument on the parties' motions for summary judgment on July 7, 2010. ( See Doc. No. 125.) Pursuant to motion by Plaintiffs, the Court withheld ruling until after the United States Supreme Court addressed the issue of burden of proof in a case pending before it in 2011. The Supreme Court decision did not fundamentally alter the burden of proof implicated in the motions of the parties and the Court now issues its ruling.
The '716 Patent issued on February 12, 2008, from U.S. Patent Application No. 11/336,361 (“the '361 Application”), filed on January 20, 2006. The patent claims priority to a provisional application, filed on January 21, 2005. Kevin Adkins, Responsive's President, is the sole inventor of the '716 Patent. Adkins assigned his rights in the '716 Patent to Responsive, the current owner of the '716 Patent. Responsive granted an exclusive license to Turning, the exclusive licensee of the '716 Patent.
The '716 Patent is generally directed to audience response systems, i.e., systems “employed to retrieve (or receive) responses from a group of individuals at a central location.” U.S. Patent No. 7,330,716, Col. 1, Lines 18–20. The audio response system of the '716 Patent has a plurality of transmitters (handheld devices) and at least one receiver (base unit). U.S. Patent No. 7,330,716, Col. 1, Lines 11–13. Each handheld device includes a wireless data transmitter illustrated as a radio frequency (“RF”) transceiver configured to transmit and receive RF signals. U.S. Patent No. 7,330,716, Col. 4, Lines 4–7.
The '716 Patent contains 13 claims, including 1 independent claim (claim 1) and 12 dependant claims (claims 2–13). Independent Claim 1 is representative of the claimed invention and reads as follows:
1. A wireless communication system comprising: a plurality of handheld devices, each handheld device including: a transmitter, an input selection control, and a processor configured to receive a user selection from the input selection control; and upon receipt of the user selection, communicate instructions to the transmitter to transmit an RF signal encoding an address and the user selection according to a defined RF profile, wherein the defined RF profile comprises a distinct period of no RF transmission, and a first period of RF transmission corresponding to transmission of the RF signal, where the first period of RF transmission occurs after the distinct period of no RF transmission and is responsive to receipt of the user selection from the input selection control; and a receiver including a transceiver configured for data communication with a processor.
Dependant claims 2–5 and 8–9, when simplified, add additional limitations to claim 1:
Dependent claim 2 adds a computer readable medium that stores an address.
Dependent claim 3 adds that the base unit receiver decodes the RF signal into the address and the user selection following receipt by the transceiver.
Dependent claim 4 adds that the base unit receiver stores the user selection in the computer readable medium.
Dependent claim 5 adds that there is a second period of RF transmission including an acknowledgment after receipt by the base unit receiver.
Dependent claim 8 adds that there is a distinct period of no RF transmission after the second period of RF transmission.
Dependent claim 9 adds that the defined RF profile includes a transmission interval separating periodic retransmissions of the RF signal.
Summary Judgement is proper when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment thus may be granted when no “reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The moving party bears the burden of proving that no genuine issue of material fact exists. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). In determining whether there is a genuine issue of material fact, the court must view all evidence in the light most favorable to the nonmoving party. Matsushita, 475 U.S. at 587, 106 S.Ct. 1348.
In the present case, Plaintiffs have the burden of proving patent infringement of the '716 Patent by a preponderance of the evidence. See Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1425 (Fed.Cir.1997) (). Defendants conversely have the burden of proving invalidity of the '716 Patent by clear and convincing evidence. See Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 26 (Fed.Cir.2000) ().
Plaintiffs move for summary judgment, asking the Court to find that its 716 patent is valid and enforceable. Defendants move for summary judgment, contending Plaintiffs' patent is invalid as it was anticipated by prior art and obvious from prior art. The Court will address the motions jointly.
“[A] patent is presumed valid, and this presumption exists at every stage of the litigation.” Canon Computer Systems, Inc. v. Nu–Kote Intern., Inc. 134 F.3d 1085, 1088 (Fed.Cir.1998). Under 35 U.S.C. § 102, the statute states in pertinent part:
Thus, invalidity by anticipation under, 35 U.S.C. § 102, requires that a single prior art reference describes every element of the claimed invention such that a person of ordinary skill in the art could practice the invention without undue experimentation. Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000). Anticipation is a question of fact. Id. at 1281. To invalidate a patent by anticipation, the party challenging the patent must prove by clear and convincing evidence that “one skilled in the art would reasonably understand or infer from the prior art reference's teaching that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed.Cir.2003).
Defendants contend that prior art anticipates Plaintiffs' '716 patent. However, in order to establish that certain references qualify as prior art...
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