Skyhook Wireless, Inc. v. Google, Inc.

• Decision Date: 18 February 2015
• Docket Number: CIVIL ACTION NO. 10–11571–RWZ
• Citation: 159 F.Supp.3d 144
• Parties: Skyhook Wireless, Inc. v. Google, Inc.
• Court: U.S. District Court — District of Massachusetts

159 F.Supp.3d 144

Skyhook Wireless, Inc.

v.Google, Inc.

CIVIL ACTION NO. 10–11571–RWZ

United States District Court, D. Massachusetts.

Signed February 18, 2015

Aaron M. Nathan, Annaka Nava, Azra M. Hadzimehmedovic, Matthew D. Powers, Paul T. Ehrlich, Samantha A. Jameson, Steven S. Cherensky, William P. Nelson, Tensegrity Law Group, LLP, Redwood Shores, CA, Scott McConchie, Thomas F. Maffei, Sherin and Lodgen LLP, Boston, MA, for Skyhook Wireless, Inc.

Ajay S. Krishnan, Alexander Dryer, Asim M. Bhansali, Matthias A. Kamber, Rachael E. Meny, Reese Nguyen, Reid P. Mullen, Robert A. Van Nest, Keker & Van Nest, LLP, San Francisco, CA, Amanda K. Streff, Steptoe & Johnson, LLP, Chicago, IL, Boyd Cloern, Kfir B. Levy, Paul D. Lall, Tremayne Norris, Trevor Hill, Steptoe & Johnson LLP, Washington, DC, Michael E. Flynn-O'Brien, Sanjeet K. Dutta, William F. Abrams, Steptoe & Johnson LLP, Palo Alto, CA, Benjamin M. Stern, James D. Smeallie, Holland & Knight (B), Boston, MA, for Google, Inc.

MEMORANDUM OF DECISION

ZOBEL, D.J.

Plaintiff Skyhook Wireless, Inc., alleges that defendant Google, Inc., has infringed several of its patents. Defendant has moved for summary judgment of invalidity for indefiniteness and non-infringement on the asserted claims of U.S. Patent Nos. 8,154,454, 8,223,074, and 8,242,960 (Docket ## 464, 466) ; summary judgment of non-infringement on the asserted claims of U.S. Patent No. 8,054,219 (Docket # 462) ; summary judgment of non-infringement on the asserted claims of U.S. Patent Nos. 7,433,694, 8,031,657, and 7,474,897 (Docket # 465) ; and summary judgment of non-infringement on the asserted claims of U.S. Patent No. 7,856,234 (Docket # 463).

I. Background

Plaintiff filed its first suit against defendant on September 15, 2010 (Docket # 1), alleging infringement of four patents.¹ I construed the disputed terms of these patents and held two of them invalid for indefiniteness (Docket # 96). Plaintiff filed a new action on September 20, 2012, in the United States District Court for the District of Delaware, alleging infringement of nine additional patents.² That action was transferred to this court, and I allowed the parties' joint motion to consolidate the cases (Docket # 157). I again construed the disputed terms and held two more patents invalid for indefiniteness (Docket # 339). In considering the present motions, I also recently revised two of my earlier claim constructions (Docket # 526).

II. Legal Standards

Summary judgment will be granted if 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).³ The court must view the record in the light most favorable to the nonmovant and draw all justifiable inferences in that party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party initially bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). If the moving party has carried its burden, to defeat the motion, the nonmovant must then “come forward with ‘specific facts showing that there is a genuine issue for trial.’ ” Id. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e) (emphasis omitted)). The “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment.” Anderson, 477 U.S. at 247–48, 106 S.Ct. 2505. “When 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 purposes of ruling on a motion for summary judgment.” Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007).

Because patents are presumed to be valid, see 35 U.S.C. § 282, a finding of invalidity must be supported by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 131 S.Ct. 2238, 2239, 180 L.Ed.2d 131 (2011). Indefiniteness for failure to comply with 35 U.S.C. § 112, ¶ 2, however, “is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.” Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed.Cir.1998). “[A]s a question of law for the Court, the definiteness determination is well suited for disposition at summary judgment.” VLT Corp. v. Unitrode Corp., 130 F.Supp.2d 178, 196 n. 14 (D.Mass.2001) ; cf. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1376 (Fed.Cir.2001).

Summary judgment of non-infringement may be granted only if one or more limitations of the claim in question do 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) ( “Summary judgment of noninfringement is ... appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial.”). Summary judgment of non-infringement can therefore be granted only if, viewing the facts in the light most favorable to the patentee, there is no genuine issue as to whether the accused product is covered by the claims as I have construed them. See Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999).

III. Google's Motion for Summary Judgment of Invalidity for Indefiniteness of the '454, '074, and '960 Patents (Docket # 466)

Google moves for summary judgment of invalidity of the '454, '074, and '960 patents, contending that the claim term “inferring,” which is a part of each asserted claim, is indefinite because it does not identify any function or structure that would inform a person of ordinary skill in the art of what steps or apparatus fall within its scope. To satisfy the definiteness requirement, a patent's specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.” 35 U.S.C. § 112, ¶ 2 (2006). “[T]he purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude.” Datamize, L.L.C. v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005). In last year's Nautilus, Inc. v. Biosig Instruments, Inc. opinion—on which Google heavily relies—the Supreme Court held that § 112, ¶ 2 “require[s] that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” ––– U.S. ––––, 134 S.Ct. 2120, 2129, 189 L.Ed.2d 37 (2014) ; see also Teva Pharms. USA, Inc. v. Sandoz, Inc., –––U.S. ––––, 135 S.Ct. 831, 835–36, ––– L.Ed.2d –––– (2015). The definiteness requirement therefore “mandates clarity [in patent claims], while recognizing that absolute precision is unattainable.” Nautilus, 134 S.Ct. at 2124.

The '454, '074, and '960 patents are all titled “Systems and Methods for Using a Satellite Positioning System to Detect Moved WLAN Access Points.” They are all in the same family, each being a continuation of the patent application that issued as U.S. Patent No. 8,022,877. Their specifications are virtually identical, and they are all largely directed to detecting that a wireless local area network (“WLAN”) access point (“AP”), like a WiFi access point, is no longer at its previously known or calculated location. Claim 1 of the '074 patent is illustrative:

A method of using a Wireless Local Area Network (WLAN) and satellite enabled device to infer that a reference location associated with a detected WLAN access point (AP) is not the present location of the AP, the method comprising:

identifying WLAN APs detected by the WLAN and satellite enabled device;

accessing a reference database to obtain a reference location associated with at least one of the WLAN APs;

receiving at least one possible Satellite Positioning System (SPS) location solution of the device based on satellite measurements from at least two satellites;

estimating a distance between the reference location associated with the WLAN AP and the at least one possible SPS location solution; and

inferring that the reference location associated with the WLAN AP is not the present location of the WLAN AP if the distance between the reference location associated with the WLAN AP and the at least one SPS location solution is above a predetermined threshold.

Each of the asserted claims includes an “inferring” step, like the one emphasized above.⁴

A. Indefiniteness

I begin by attempting to construe the disputed claim term, “ inferring,” according to the principles of claim construction explained in my previous order. See Docket # 339 at 3. As Google correctly notes, the only occurrence of “infer” or “inferring” in the '454, '074, and '960 patents is in the claims. The term is not defined in the specification. “Infer,” however, is a common term in general discourse. It is defined as “to derive as a conclusion from facts or premises.” Merriam–Webster's Collegiate Dictionary 639 (11th ed. 2003) (Docket # 468–5); see also American Heritage Dictionary of the English Language (5th ed.2014) (defining “infer” as “[t]o conclude from evidence or by reasoning” or “[t]o involve by logical necessity; entail”).⁵ There is no reason to conclude that a person of ordinary skill would not understand “infer” to have its ordinary meaning in the context of the asserted claims.

Google advances two arguments in support of its position that “inferring” has no meaning in the context of the claims. First, it contends that a person of skill in the art would not understand what...