Tech. Patents LLC v. Deutsche Telekom AG

• Decision Date: 04 August 2011
• Docket Number: Civil Action No. AW–07–3012.
• Citation: 800 F.Supp.2d 690,2011 Markman 3417101
• Parties: TECHNOLOGY PATENTS LLC, Plaintiff, v. DEUTSCHE TELEKOM AG, et al., Defendants.
• Court: U.S. District Court — District of Massachusetts

2011 Markman 3417101

800 F.Supp.2d 690

TECHNOLOGY PATENTS LLC, Plaintiff,

v.DEUTSCHE TELEKOM AG, et al., Defendants.

Civil Action No. AW–07–3012.

United States District Court, D. Maryland, Southern Division.

Aug. 4, 2011.

Joseph A. Rhoa, Nixon and Vanderhye PC, Arlington, VA, for Plaintiff.

Edward T. Colbert, Kenyon and Kenyon LLP, Barry J. Reingold, John K. Roche, Perkins Coie LLP, James H. Wallace, Jr., Karin Hessler, Kevin Paul Anderson, Robert James Scheffel, Thomas W. Kirby, Wiley Rein LLP, George F. Pappas, Peter A. Swanson, Richard Rainey, Covington and Burling LLP, Brian Matthew Koide, Richard McMillan, Jr., Crowell and Moring LLP, Andrew R. Sommer, Winston & Strawn LLP, Robert L. Green, Jr., Howrey LLP, Autumn Ji Sun Hwang, Brian T. Racilla, Linda Liu Kordziel, Michael J. McKeon, Fish and Richardson PC, Franklin M. Rubinstein, Wilson Sonsini Goodrich and Rosati, Washington, DC, Elizabeth S. Tse, Stuart J. Sinder, Kenyon and Kenyon LLP, Michael O. Cummings, Covington and Burling LLP, New York, NY, Kaustuv M. Das, Ramsey M. Al–Salam, William D. Fisher, Perkins Coie LLP, Seattle, WA, Bruce L. Marcus, Joseph Anthony Compofelice, Jr., Marcus Bonsib LLC, Greenbelt, MD, Bryant C. Boren, Jr., Patricio Delgado, Steven Schortgen, Timothy J. Dyll, Baker Botts LLP, Dallas, TX, Christopher W. Kennerly, Joshua J. Parker, Kevin E. Cadwell, Baker Botts LLP, Michael Anthony Ladra, Robin L. Brewer, Stefani Elise Shanberg, Wilson Sonsini Goodrich and Rosati PC, Palo Alto, CA, Adam R. Alper, Kirkland and Ellis LLP, Michael M. Markman, Robert J. Williams, Covington and Burling LLP, San Francisco, CA, Amanda J. Hollis, Gianni Cutri, Kirkland and Ellis LLP, Jonathan Eli Retsky, Winston and Strawn LLP, Chicago, IL, Christine Pei–Wen Hsu, Gregory D. Grant, Shulman Rogers Gandal Pordy and Ecker PA, Potomac, MD, for Defendants.

Memorandum Opinion

ALEXANDER WILLIAMS, JR., District Judge.

Plaintiff Technology Patents, LLC (hereinafter “TPLLC”) initially filed this action for patent infringement against 131 national and foreign telecommunication companies. The Court has previously addressed numerous motions to dismiss, see Doc. No. 1082, motions regarding the proper construction of the patent claims in dispute, see Doc. No. 1415, and motions for summary judgment, see Doc. No. 1428. Given the Court's prior rulings, the remaining Defendants are: AT & T Mobility Corporation (hereinafter “AT & T”), T–Mobile USA, Inc. (hereinafter “T–Mobile”), Cellco Partnership d/b/a Verizon Wireless (hereinafter “Verizon”), Sprint Nextel Corporation (hereinafter “Sprint”), Motorola, Inc. (hereinafter “Motorola”), Palm, Inc. (hereinafter “Palm”), LG Electronics Mobilecomm USA, Inc. (hereinafter “LG”), and Helio LLC (hereinafter “Helio”).

Both sides now seek several minor revisions to the Court's claim-construction decisions, and Defendants have filed a battery of motions for summary judgment. The following motions are currently pending before the Court:

1) TPLLC's motion for clarification of claim construction, Doc. No. 1421,

2) Defendants' motion for clarification of claim construction, Doc. No. 1427, ¹

3) Palm's motion for summary judgment, Doc. No. 1432,

4) TPLLC's motion to amend its claim charts, Doc. No. 1435,

5) Palm's motion to strike the Declaration of Regis Bates, Doc. No. 1458,

6) Defendants' motions for summary judgment of non-infringement, Doc. Nos. 1474–76, 1479,

7) Defendants' motion for summary judgment of patent invalidity, Doc. No. 1480,

8) Motorola, Inc.'s motion to recognize a change of its name, Doc. No. 1520, and

9) Motorola Mobility, Inc.'s motion to join the lawsuit as a defendant, Doc. Nos. 1522–23.

The Court has reviewed the memoranda submitted by the Parties and finds that no hearing is necessary. See Loc. R. 105(6) (D.Md.2010). For the reasons that follow, the Court will grant TPLLC's unopposed motion for clarification of claim construction, Doc. No. 1421, grant Defendants' motion for clarification of claim construction, Doc. No. 1427, grant one of Defendants' motions for summary judgment, Doc. No. 1474,² and deny TPLLC's motion for leave to amend its claim charts. Because these decisions suffice to close the case, the Court need not reach the Parties' other motions, which will all be denied as moot. See Doc. Nos. 1432, 1458, 1476, 1479–80, 1520, 1522–23.

The Court will first describe the RE39,870 Patent (hereinafter “the '870 Patent” or “the Patent”), summarize its prior holdings regarding claim construction, and resolve the Parties' current motions pertaining to claim construction. The Court will then summarize TPLLC's theories as to how Defendants' systems infringe the Patent. Finally, the Court will compare the system described in the Patent with the Defendants' accused systems. This comparison reveals that the systems are fundamentally different, resulting in the conclusion that Defendants are entitled to summary judgment on all of TPLLC's infringement theories.

I. The '870 Patent and the Court's Construction of the PatentA. The Purpose and Scope of the '870 Patent

On October 9, 2007, the United States Patent and Trademark Office reissued Patent No. 6,960,983 to TPLLC as the '870 Patent. See Doc. No. 1292–3. The '870 Patent consists of thirty-nine distinct claims, all of which constitute various permutations of the same core invention. The central concept behind the Patent is a “global paging system using packet-switched digital data network and remote country designation.” Id. at 1, 8 (capitalizations omitted).

The '870 Patent begins by documenting the drawbacks of several arguably similar prior inventions. At the time the '870 Patent system was designed, at least three other types of global paging systems existed: (1) a geographic-area satellite-based paging system, (2) a system for providing communications based on geographic location via radio-frequency technology, and (3) a wide-area paging system in which paging messages sent in one area can be sent to a receiver in another area “without necessarily broadcasting the message in all areas.” Id. at 8.

The Patent maintains that it is an improvement on prior art in two significant ways: (1) it allows users to “remotely input country designations in which they are to be paged, and/or may remotely input a list of countries in which they desire paging services,” and (2) it fulfills the need for a “more cost efficient ... paging system which does not utilize costly and complex satellite technology and/or transmission-suspect data networks.” Id. For instance, one of the prior inventions is faulted because it “do[es] not permit the subscriber to remotely select or designate countries in which he or she will most likely be.” Id. Similarly, another is taken to task because, “other than the roaming feature, the receiving user cannot input into the system designated country locations where he or she expects to be in the future.” Id.

The Patent distinguishes between an “originating user” (hereinafter “OU”) and a “receiving user” (hereinafter “RU”). The OU is “the person or party who originates a page or cellular phone call, i.e. the one who desires to page or call the receiving user.” Id. at 9. The RU is “the recipient of a page or cellular phone call.” Id. The overriding purpose of the '870 Patent is to enable OUs to send messages to RUs located in a different country, even when the OUs do not know which country the RUs are located in.

The system effectuates this purpose by providing RUs with two different ways of designating the country (or countries) in which they may be contacted. First, the RU may “input into the paging system his or her expected whereabouts.” Id. at 10. The Patent provides a useful example: “when the [RU] leaves the U.S. and travels to Australia on business, the RU may access a server in the system ... and then input or designate Australia as a ‘designated country.’ When the RU makes such a designation, the paging system will first attempt to page the RU in Australia each time he/she is paged by an OU.” Id. at 10–11.

In the event that the RU does not designate a particular country in which (s)he may be reached, the '870 paging system includes a fallback method for attempting to reach the RU. The system allows the RU to “input[ ] his or her ‘list’ of countries to be serviced.... The RU will typically list all countries or coverage areas ... that he or she wishes to be reachable in by way of the paging system.” Id. at 10. Not only does the RU provide a list of countries, but (s)he also places the listed countries “in the order he or she wishes that they be accessed.” Id. Here, too, the Patent provides a helpful illustration:

For example, if the RU spends most of his time in the U.S. and Japan, the next most amount of time in France, some time in the U.K., Spain, Brazil, and Australia, and very little time in Mexico, the RU would likely ... list his/her countries in the following order:

1. United States

2. Japan

3. France

4. Spain

5. United Kingdom

6. Brazil

7. Australia

8. Mexico

Id. If the RU has not designated a particular country in which (s)he may be contacted, but has input such a list, “the RU may only be paged in the [ ] [listed] countries.” Id. The system will “attempt to page the RU first in the [first-listed] country a predetermined number of times, then in [the second-listed country] said predetermined number of times,” and so on until the system attempts to reach the RU in the last country on the list. Id.

Originally, TPLLC alleged infringement of Claims 4–39 of the '870 Patent. In light of the Court's claim-construction opinion, TPLLC has now abandoned Claims 9–39, and it continues to assert infringement only as to Claims 4–8. See Doc. No. 1435. Claims 5–8 incorporate all of the limitations of Claim 4, plus additional restrictions. See, e.g., id. at 12 (“5. The system of claim 4, wherein the digital data network comprises the Internet.”). As such, they are dependent claims, which can only be infringed if Claim 4 is also...