Shopify Inc. v. Express Mobile, Inc.
| Decision Date | 21 September 2021 |
| Docket Number | Civil Action 19-439-RGA |
| Parties | SHOPIFY INC. AND SHOPIFY USA, INC., Plaintiffs and Counterclaim Defendants, v. EXPRESS MOBILE, INC., Defendant and Counterclaim Plaintiff. |
| Court | U.S. District Court — District of Delaware |
Adam R. Brausa (argued), Timothy C. Saulsbury, Vera Ranieri Raghav R. Krishnapriyan, Eric C. Wiener (argued), Whitney R O'Byrne, DURIE TANGRI LLP, San Francisco, CA; Daniel M Silver, Alexandra M. Joyce, McCARTER & ENGLISH LLP attorneys for Plaintiffs and Counterclaim Defendants Shopify Inc. and Shopify (USA), Inc.
James R. Nuttall, Michael Dockterman, Robert F. Kappers, Tron Fu (argued), Katherine H. Johnson (argued), STEPTOE & JOHNSON LLP, Chicago, IL; Christopher A. Suarez (argued), STEPTOE & JOHNSON LLP, Washington DC; Timothy Devlin, Robert Kiddie, DEVLIN LAW FIRM LLP, attorneys for Defendant and Counterclaim Plaintiff Express Mobile, Inc.
Before me are Shopify's Motion for Summary Judgment and to Exclude Expert Testimony (D.I. 211) and Express Mobile's Motion for Summary Judgment [and] to Exclude [Expert] Testimony (D.I. 217). I held oral argument. (D.I. 296 [hereinafter, "Tr."]). I have considered the parties' briefs and supplemental materials. (D.I. 212-216, 218, 223-235, 258-265, 277-280). For the reasons set forth below, Shopify's motion is GRANTED-in-part and DENIED-in-part, and Express Mobile's motion is GRANTED-in-part and DENIED-in-part.
Shopify Inc. and its U.S. subsidiary (hereinafter referred to in the singular as "Shopify") filed this declaratory judgment lawsuit of non-infringement of patents belonging to Express Mobile on March 1, 2019. (D.I. 1). Express Mobile filed a counterclaim of infringement on March 25, 2019. (D.I. 6). There have been amended pleadings. On June 23, 2020, 1 issued a Markman order construing several disputed limitations. (D.I. 137, 142).
The case is about website design tools. Two families of patents are now at issue: (1) U.S. Patent Nos. 6, 546, 397 ("the '397 patent") and 7, 594, 168 ("the '168 patent," and collectively "the Web Design patents"); and (2) U.S. Patent Nos. 9, 063, 755 ("the '755 patent"), 9, 471, 287 ("the '287 patent"), and 9, 928, 044 ("the '044 patent," and collectively "the Web Component patents"). (D.I. 212 at 3).
The Web Design patents generally describe methods for website design. (See '397 patent at 1:5-8). The' 168 patent is a continuation of the '397 patent, so the two have the same specification. The specification explains that attributes of objects on the web page (e.g., fonts, id. at 31:44) can be stored in a database. Id. at 2:5-10. A run time engine is downloaded to the end user's computer when he or she browses to a website, and the run time engine reads from an external database to obtain information used to generate the website. Id. at 2:10-14, 45:44-65.
The Web Component patents relate to two concepts: (1) an authoring tool that generates two sets of code, a device-independent Application and a device-specific Player (see Id. at 5:8-14); and (2) an authoring tool that allows for integration of web services into that Application and Player (e.g., Google Search, '755 patent at 9:27-34). The specifications for the three Web Component patents are the same.
Plaintiff currently asserts sixteen claims from the five patents. (D.I. 295).
On both the Web Design patents and the Web Component patents, Shopify moves for summary judgment of non-infringement and no willful infringement. (D.I. 211). On the '397 patent, the '755 patent, the '287 patent, and the '044 patent, Shopify moves for invalidity for lack of written description. (Id.). Shopify also moves to excludes certain opinions of Express Mobile's experts, Dr. Kevin Almeroth and Walter Bratic. (Id.).
Express Mobile moves for summary judgment of no invalidity for lack of patent eligibility under § 101, anticipation under § 102, and indefiniteness under § 112. (D.I. 217; D.I. 218 at 1-2). Express Mobile's no invalidity for lack of anticipation argument rests on its Web Design patents not being anticipated by SilverStream, a "Web Application Platform that allows corporations to easily build and deploy pure Java-based business applications." (D.I. 218 at 1-2; D.I. 226 at SHOP0016279). Express Mobile also moves to exclude certain opinions of Shopify's experts, Christopher Bakewell, Christopher Schmandt and Allen Wirfs-Brock. (D.I. 217; D.I. 218 at 26-27).
"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." Fed.R.Civ.P. 56(a). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations . .., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ...." Fed.R.Civ.P. 56(c)(1). The non-moving party's evidence "must amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a preponderance." Williams, 891 F.2d at 461.
When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S. at 322.
Infringement of a patent occurs when a person "without authority makes, uses, offers to sell, or sells any patented invention, within the United States .. . during the term of the patent[.]" 35 U.S.C. § 271(a). "Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device." Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Rsch. Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (internal quotations omitted).
Infringement under the doctrine of equivalents requires that "the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention." Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1338 (Fed. Cir. 2011) (quoting Warner-Jenkins Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)). This inquiry is guided by the function-way-result test, "which asks whether an element of an accused product 'performs substantially the same function in substantially the same way to obtain the same result.'" Id. On summary judgment, if "no reasonable jury could find equivalence," then summary judgment of noninfringement under this doctrine is appropriate. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012).
When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if at least one limitation of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) (). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there is no genuine issue as to whether the accused product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
The written description requirement contained in 35 U.S.C. § 112, ¶ 1 (pre-AIA) requires that the specification "clearly allow...
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