TV Interactive Data Corp. v. Sony Corp.
| Decision Date | 03 December 2012 |
| Docket Number | No. C 10-0475 PJH,C 10-0475 PJH |
| Parties | TV INTERACTIVE DATA CORPORATION, Plaintiff, v. SONY CORPORATION, et al., Defendants. |
| Court | U.S. District Court — Northern District of California |
The parties' motions for summary judgment came on for hearing before this court on October 3, 2012. Plaintiff TV Interactive Data Corporation ("TVI") appeared by its counsel Richard M. Martinez, Patrick M. Arenz, Sarah Hudleston, and Victor C. Chan. Defendants Sony Corporation, Sony Corporation of America, Sony Electronics, Inc., Sony Computer Entertainment, Inc. and Sony Computer Entertainment America LLC (collectively, "Sony") appeared by their counsel Gregory S. Gewirtz, M. Elizabeth Holt, and Jonathan A. David. Having read the parties' papers and carefully considered their arguments and the relevant legal authority, the court hereby rules as follows.
Plaintiff TVI was formed by Peter M. Redford in 1990 to develop new technologies in the multimedia and interactive television markets. Between 1997 and 2002, TVI (as assignee from Mr. Redford and his co-inventor Donald S. Stern) obtained a family of patents relating to the integration of interactive media with printed publications such as children's books, magazines, and CD cases.
On July 1, 1994, Mr. Redford and Mr. Stern filed the initial patent application, which subsequently issued as United States Patent No. 5,624,265 ("the '265 patent"). The initial application was followed by additional divisional and continuation applications, whicheventually led to the issuance of the four patents-in-suit - United States Patent No. 5,597,307 ("the '307 patent"), United States Patent No. 5,795,156 ("the '156 patent"), United States Patent No. 6,249,863 ("the '863 patent), and United States Patent No. 6,418,532 ("the '532 patent"). The four patents-in-suit share a common specification,1 and were issued in, respectively, January 1997, August 1998, June 2001, and July 2002.
Among other things, the patents disclose a method for automatically launching an application or other process upon the insertion of a disc into a peripheral of a computer system. During prosecution, the inventors differentiated their invention and disclaimed so-called "boot" or "reboot" prior art. This prior art had the limited capacity of starting an application only in association with a booting or rebooting of the device.
TVI asserts that over the course of prosecution, Microsoft eliminated the market for TVI - particularly for TVI's patented "autoplay" invention - by incorporating autoplay in every version of Microsoft Windows. In 2002, TVI sued Microsoft for patent infringement. See TV Interactive Corp. v. Microsoft Corp., C-02-2385 JSW (N.D. Cal.) ("Microsoft").
Microsoft argued that it was not a direct infringer, and that it was the companies selling Windows-installed computers loaded with Windows that were infringing. TVI then filed a parallel suit against various computer manufacturers. See TV Interactive Corp. v. Fujitsu Ltd., C-04-3367 JSW (N.D. Cal.). That litigation, which was filed in August 2004, was limited to the use of the autoplay invention in Windows computers. In December 2004, the parties agreed to stay the case pending the outcome of the Microsoft litigation.
Meanwhile, Microsoft filed four motions for summary judgment - a motion for summary judgment of invalidity of the '156, '863, and '532 patents pursuant to 35 U.S.C. § 112 ¶ 2 (indefiniteness); a motion for summary judgment of invalidity under 35 U.S.C. § 102(b) (), based on Commodore CDTV; a motion for summary judgment of invalidity under 35 U.S.C. § 102(g) (); and a motion for partial summary judgment of no willful infringement and limitingdamages to post-suit inducement. In orders issued on October 13, 2004, the Hon. Jeffrey S. White denied all the motions.
Judge White denied the motion relating to the CDTV prior art on the ground that CDTV reboots, and TVI had made clear in prosecution and throughout the Microsoft litigation that rebooting was not TVI's invention. "Rebooting and re-initializing the entire system after every insertion of media is not simply an additional series of steps; it is more accurately a series of operations not contemplated by the construction of TVI's claims." Order Denying Microsoft's Motion for Summary Judgment of Invalidity Pursuant to 35 U.S.C. § 102(b) based on Commodore CDTV, at 2.
Because the Commodore CDTV system reboots and re-initializes the system whenever a user ejects media and TVI's claimed invention[ ] is an advance over such reboot systems which can detect each insertion of media after the loading of initialization files without re-initializing the system, and because the proposed interpretation of the claims language would render superfluous its explicit language, the Court finds that Microsoft has failed to meet its high burden of demonstrating by clear and convincing evidence that the Commodore CDTV anticipates every single limitation of TVI's claimed invention.
Shortly before the commencement of trial, the parties reached a settlement, and Microsoft agreed to license the asserted patents.2 Before Microsoft signed the deal, however, it filed petitions for reexamination of the validity of the asserted patents before the U.S. Patent and Trademark Office ("PTO"), in light of CDTV. The patent examiner agreed with Microsoft that the modules used by CDTV were covered under the patents' definition of "initialization file." '532 Reexamination, Office Action, at 33 (Nov. 21, 2005). TVI did not dispute that "initialization file" includes modules of code in ROM. '863 Reexamination, Patent Owner's Statement, at 4 (Aug. 7, 2006).
However, as in the Microsoft case, TVI distinguished its invention from CDTV on the basis of CDTV's rebooting requirement. '307 Reexamination, Examiner, Notice of Intent to Issue Ex Parte Reexam Certificate, at 3 (Oct. 24, 2008). TVI also narrowed several claimsin the patents to clarify that the patented method requires that the application or other process be initiated automatically upon insertion of the disk without rebooting or resetting the system.
The PTO confirmed the patentability of the asserted independent claims of the '156 patent, the '863 patents, and claim 18 of the '307 patent as the claims were originally drafted. The remaining asserted independent claims - claim 1 of the '307 patent and claims 1, 9, and 17 of the '532 patent - were narrowed to confirm that the claims preclude rebooting. Thus narrowed, the claims were determined to be patentable.
Once the reexaminations ended, TVI pursued other infringement claims. TVI filed suit against a number of computer manufacturers on October 6, 2009, then dismissed the complaint and refiled the present lawsuit on February 2, 2010 after a patent assignment issue was clarified. TVI originally accused 11 defendant groups of infringement - all of which manufactured or sold DVD or Blu-ray players, which TVI asserted incorporated its patented autoplay technology. All defendants with the exception of the five Sony entities have taken a license and/or been dismissed from the case.
With regard to Sony, TVI alleges, among other things, that the Sony defendants have directly and/or indirectly infringed one or more claims of the patents-in-suit. The accused products include Blu-rayDisc® and DVD VIDEO™ players - for example, the Sony BDP-S550 and the Sony DVPNS700HB - as well as the Sony Playstation®3.
This case was previously assigned to the Hon. Jeremy Fogel. The court held a claim construction hearing on February 22, 2011, and issued an order on April 15, 2011, construing six disputed terms.3 On August 19, 2011, Sony filed a motion for summaryjudgment of invalidity. The hearing was subsequently vacated, the motion was administratively stayed. It was eventually re-noticed to be heard with the present cross-motions for summary judgment.
On September 16, 2011, TVI filed a first amended complaint against the defendants remaining in the case as of that date. On September 28, 2011, following Judge Fogel's departure from the court, the case was reassigned to the undersigned district judge.
On August 29, 2012, TVI filed a motion for summary judgment as to inequitable conduct, laches, and equitable estoppel, and Sony filed a motion for summary judgment as to inequitable conduct, laches, invalidity under 35 U.S.C. §§ 102 and 103, and non-infringement. Those two motions, plus Sony's earlier-filed motion for summary judgment of invalidity, are now before the court.
A party may move for summary judgment on a "claim or defense" or "part of . . . a claim or defense." Fed. R. Civ. P. 56(a). Summary judgment is appropriate when there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Id.
A party seeking summary judgment bears the initial burden of informing the court of the basis for its motion, and of identifying those portions of the pleadings and discovery responses that demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Material facts are those that might affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is "genuine" if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id.
Where the moving party will have the burden of proof at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party.Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007). On an issue where the nonmoving party will bear the burden of proof at trial, the moving party can prevail merely by pointing out to the district court that there is an absence of evidence to support the nonmoving party's case. Celotex, 477 U.S. at 324-25....
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