Resqnet.Com, Inc. v. Lansa, Inc.
| Decision Date | 13 January 2005 |
| Docket Number | No. 01 Civ.3578(RWS).,01 Civ.3578(RWS). |
| Citation | 382 F.Supp.2d 424 |
| Parties | RESQNET.COM, INC., Plaintiff, v. LANSA, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
Kaplan & Gilman, Woodbridge, NJ (Jeffrey I. Kaplan, of counsel), for plaintiff.
Arent Fox, New York, NY (Steven Kimelman, David N. Wynn, of counsel), Arent Fox, Washington, DC (James H. Hulme, of counsel), for defendant.
In this patent infringement action, defendant Lansa, Inc. ("Lansa") has moved for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure on the ground that U.S. Patent No. 6,295,075 (the " '075 Patent") is invalid, and plaintiff ResQNet.com, Inc. ("ResQNet") has cross-moved to strike Lansa's invalidity defense. ResQNet subsequently brought its own motion for partial summary judgment pursuant to Rule 56 on the ground that the newlook software distributed by Lansa infringes the '075 Patent, and Lansa cross-moved for partial summary judgment of non-infringement of the '075 Patent and moved separately for partial summary judgment on the ground of non-infringement of U.S. Patent No. 5,831,608 (the " '608 Patent"). Lansa has also moved for leave to amend its answer and counterclaims pursuant to Rules 9 and 15(a) of the Federal Rules of Civil Procedure, with respect to which motion ResQNet has moved for leave to file a surreply. Finally, Lansa has moved for sanctions against ResQNet pursuant to Rule 11 of the Federal Rules of Civil Procedure, and ResQNet has cross-moved for similar sanctions against Lansa as well as for the revocation of the pro hac vice admission of Lansa's counsel, James H. Hulme, Esq. ("Hulme").
For the reasons set forth below, Lansa's motion for partial summary judgment of invalidity of the '075 Patent is denied, ResQNet's motion to strike the invalidity defense as to the '075 Patent is denied, ResQNet's motion for partial summary judgment of infringement of the '075 Patent is denied, Lansa's motion for partial summary judgment of non-infringement of the '075 Patent is denied, Lansa's motion for partial summary judgment of non-infringement of the '608 Patent is denied, ResQNet's motion for leave to file a surreply is granted, Lansa's motion for leave to amend its answer and counterclaims is granted, Lansa's motion for sanctions is granted in part and otherwise denied, and ResQNet's motion for sanctions and to revoke the pro hac vice status of Lansa's counsel is denied.
This action was commenced on April 27, 2001. According to the complaint filed on that date, Lansa was producing, offering for sale and selling various products alleged to infringe four patents held by ResQNet, namely, U.S. Patent No. 5,530,961 (the " '961 Patent"), U.S. Patent No. 5,792,659 (the " '659 Patent"), U.S. Patent No. 5,812,127 (the " '127 Patent"), and the '608 Patent. An amended complaint was filed on December 4, 2001, alleging infringement of the same four patents previously named as well as the '075 Patent.
Discovery with respect to claim construction issues proceeded, ResQNet withdrew its allegations of infringement concerning the '659 Patent and the '127 Patent, and a Markman hearing was held on June 12, 2002 with regard to the remaining patents-in-suit. The opinion of the Court construing certain claims of the '961 Patent, the '608 Patent and the '075 Patent was rendered in September 2002. See ResQNet.com v. Lansa, Inc., No. 01 Civ. 3578(RWS), 2002 WL 31002811 (S.D.N.Y. Sept.5, 2002) ("ResQNet I"). On November 4, 2002 the parties entered into a consent judgment acknowledging the withdrawal by ResQNet of all allegations that newlook infringed the patents named in the amended complaint with the exception of one claim each from the '961 Patent, the '608 Patent, and the '075 Patent, and stipulating that Lansa's systems would not infringe these remaining claims in light of the holding of ResQNet I. On October 16, 2003, the U.S. Court of Appeals for the Federal Circuit affirmed this Court's construction of the '961 Patent's claim and reversed in part the construction of claim 1 of the '608 Patent and claim 1 of the '075 Patent. See ResQNet.com v. Lansa, Inc., 346 F.3d 1374 (Fed.Cir.2003) ("ResQNet II"). Familiarity with ResQNet I and ResQNet II is assumed.
Discovery resumed, and on April 27, 2004, Lansa filed its first motion for partial summary judgment on the '075 Patent, asserting the invalidity of the '075 Patent. ResQNet cross-moved to strike Lansa's invalidity defense as insufficient. Oral arguments on both motions were heard on May 19, 2004, after which ResQNet submitted a letter brief to which Lansa responded on May 24, 2004.
While these motions were pending, Lansa's subpoena issued to the third-party witness and counsel to ResQNet, Jeffrey I. Kaplan, was quashed in July 2004. See ResQNet.com v. Lansa, Inc., No. 01 Civ. 3578(RWS), 2004 WL 1627170 (S.D.N.Y. July 21, 2004) ("ResQNet III"). In light of certain of the conclusions reached in ResQNet III, Lansa moved to amend its answer and counterclaims on August 4, 2004. Following briefing, including a letter motion by ResQNet for leave to file a surreply, Lansa's motion and ResQNet's letter motion were deemed fully submitted without oral argument on August 25, 2004.
In the interim, ResQNet filed a motion for partial summary judgment on the '075 Patent on August 20, 2004, claiming infringement of the '075 Patent. Lansa cross-moved for partial summary judgment of non-infringement as to the '075 Patent on August 23, 2004 and interposed a separate motion for summary judgment of non-infringement with respect to the '608 Patent. Following further briefing, as well as the submission by Lansa of certain supplemental materials with respect to its earlier motion for partial summary judgment on the '075 Patent and the submission by ResQNet of a response to Lansa's supplemental submission,1 oral arguments were heard on September 29, 2004, at which time these motions too were deemed fully submitted.
Prior to oral arguments on the partial summary judgment motions on September 29, 2004, Lansa filed a motion pursuant to Rule 11, Fed.R.Civ.P., seeking sanctions on the ground, inter alia, that ResQNet had failed to conduct an adequate pre-filing investigation before commencing this litigation. ResQNet filed a cross-motion for Rule 11 sanctions and for the revocation of the pro hac vice admission of Lansa's counsel, Hulme, on October 18, 2004. Following further briefing, the submission of a surreply memorandum by Lansa and the submission by ResQNet of a declaration in response to the surreply, oral arguments were heard on these latest motions on October 27, 2004, at which time they were deemed fully submitted.
As a result of the withdrawal by ResQNet of its allegations of infringement concerning the '659 Patent and the '127 Patent and the subsequent affirmance of this Court's construction of the relevant claim of the '961 Patent by the Federal Circuit, see ResQNet II, 346 F.3d at 1378-82, only one claim each from the two remaining patents are at issue here: claim 1 of the '608 Patent and claim 1 of the '075 Patent.
Both of the remaining patents-in-suit "claim, in relevant part, `screen recognition' and terminal emulation — processes that download a screen of information from a remote mainframe computer onto a local personal computer (PC)." Id. at 1375. As the Federal Circuit explained in ResQNet II, by way of general background,
Mainframe computers permit multiple users to simultaneously access one central computer. Before the widespread use of PCs, each user would connect to the mainframe using a so-called "dumb terminal." ... A dumb terminal, as its name implies, did not process or reformat the data received from the mainframe. Rather, the dumb terminal simply displayed the information from the mainframe. Symmetrically, the dumb terminal sent all data entry back to the mainframe for processing. Because a dumb terminal's monitor generally was a monochromatic green, the display was called a "green screen."
Gradually, PCs replaced dumb terminals. Unlike a dumb terminal, a PC does not merely send and receive information. Rather, a PC uses software to facilitate communication to and from the mainframe. With that software, a PC does not simply mimic a dumb terminal, but processes the information into a graphical user interface (GUI) format, which is much more user-friendly. Although the GUI format displays and receives information to and from the user, the PC still sends and receives information only in the manner understood by the mainframe, i.e., as if a dumb terminal were connected to the mainframe. In relevant part, the asserted patents specifically facilitate recognition of the information that the mainframe sends to the PC.
Id. at 1375-76; see also ResQNet I, 2002 WL 31002811, at *1 (). A graphical user interface ("GUI") format includes "icons, windows, help menus, and other features that represent the standard well-known interfaces in today's modern PCs." Id.
The '608 Patent contains a single claim with limitations written in a means-plus-function form,2 as follows:
Apparatus for implementing a computer terminal to be connected to a remote computer, said apparatus comprising:
means for identifying a particular user logged on to said remote computer through said computer terminal;
means for identifying, based upon a position, length and type of each of a plurality of fields, a particular screen to be displayed to said user; and
a plurality of special function keys, each key performing a specified function, the specified function performed for each key being determined by the particular user logged on...
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