Ultratec, Inc. v. Sorenson Commc'ns, Inc.
| Decision Date | 28 August 2014 |
| Docket Number | No. 13–cv–346–bbc.,13–cv–346–bbc. |
| Parties | ULTRATEC, INC. and CapTel, Inc., Plaintiffs, v. SORENSON COMMUNICATIONS, INC. and CaptionCall, LLC, Defendants. |
| Court | U.S. District Court — Western District of Wisconsin |
Anthony A. Tomaselli, Kristin Graham Noel, Martha Jahn Snyder, Stephen James Gardner, Josephine Benkers, Matthew J. Duchemin, Stacy Ann Alexejun, Quarles & Brady LLP, Trevor W. Joike, Quarles & Brady LLC, Allen A. Arntsen, Foley & Lardner LLP, Madison, WI, Michael J. Curley, Nikia L. Gray, Quarles & Brady LLP, Tucson, AZ, Michael Piery, Quarles & Brady, Milwaukee, WI, for Plaintiffs.
Bryant Carroll Boren, Jr., Harper Siems Batts, Jeffrey Liang, Baker Botts L.L.P., Palo Alto, CA, Allen A. Arntsen, Foley & Lardner LLP, Madison, WI, Brian Wiley Oaks, Baker Botts L.L.P., Joseph D. Gray, Baker Botts, LLP, Austin, TX, Thomas Chisman Martin, Baker Botts LLP, Christopher J. Wright, Harris Wiltshire and Grannis, Washington, DC, Hallie E. Graves, Jonathan B. Rubenstein, Jordan H. Flournoy, Samara L. Kline, Baker Botts, Dallas, TX, Joshua Paul Davis, Baker Botts L.L.P., Houston, TX, for Defendants.
In this civil action, plaintiffs Ultratec, Inc. and CapTel, Inc., contend that defendants Sorenson Communications, Inc. and CaptionCall, LLC have infringed the following eight patents related to a telephone relay system between deaf and hearing users: United States Patents Nos. 5,909,482, 6,233,314, 6,594,346, 6,603,835, 7,319,740 and 7,555,104, all entitled “Relay for Personal Interpreter;” and United States Patents Nos. 7,003,082 and 8,213,578 entitled “System for Text Assisted Telephony.” In addition to challenging plaintiffs' contentions and raising several affirmative defenses, defendants have filed counterclaims contending that plaintiffs' patents are invalid as anticipated and as obvious, that plaintiffs have infringed defendants' United States Patent No. 8,379,801 related to text caption error correction and that plaintiffs breached a contract between plaintiff Ultratec and the Federal Communications Commission governing the licensing of plaintiffs' technologies.
Several motions are before the court, including various motions to strike and the parties' cross motions for partial summary judgment on issues of direct and indirect infringement, invalidity, willfulness, breach of contract, marking and various other affirmative defenses raised by defendants. This opinion will address the following motions:
Plaintiffs moved initially for summary judgment on their allegations that defendants infringe the '835 and '740 patents by inducing third parties to perform at least one of the steps in the recited method. They have withdrawn those parts of their motion in light of the Supreme Court's recent decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., ––– U.S. ––––, 134 S.Ct. 2111, 189 L.Ed.2d 52 (2014). Dkt. # 237. Defendants contend that the Supreme Court's decision completely forecloses all of plaintiffs' claims of induced infringement of the '835 and '740 patents. Dkt. # 240. However, as plaintiffs point out, even though they are barred by Limelight from arguing that defendants induced infringement regardless who committed what steps of the disclosed method, they may still attempt to prove at trial that 1) defendants directly infringe the '835 and '704 patents by performing all of the steps of the claimed methods themselves; or 2) defendants induced infringement by controlling and directing another entity (such as their licensees) to perform all of the method steps. The parties have not had an opportunity to brief either of these issues because defendants did not move for summary judgment on direct infringement and limited their motion for summary judgment on indirect infringement to whether they had the intent to induce. Allowing further briefing, as defendants request, would be equivalent to granting defendants leave to file a second (and late) motion for summary judgment, which I decline to do.
For the reasons explained below, I am granting plaintiffs' motion for partial summary judgment and entering judgment in favor of plaintiffs with respect to the following issues:
Plaintiffs' motion for partial summary judgment will be denied and the parties will proceed to trial with respect to the following claims because genuine issues of material fact remain in dispute:
Defendants' motion for partial summary judgment will be granted and judgment entered in favor of defendants on plaintiffs' claims for contributory infringement and claims for pre-suit damages for the motion will be denied and the parties will proceed to trial on plaintiffs' claims of willful infringement and claims of induced infringement.
Because I agree that defendants' cross motions for summary judgment with respect to direct infringement and anticipation are untimely, I will grant plaintiffs' motion to strike those motions. Plaintiffs' motion to strike the undisclosed opinions of Occhiogrosso and defendants' motion to strike the declaration of Colwell will be denied as moot because it was not necessary to consider this disputed evidence in ruling on the motions for summary judgment.
From the parties' proposed findings of fact, I find the following facts to be undisputed.
Plaintiffs Ultratec, Inc. and CapTel, Inc. are Wisconsin corporations with their principal places of business in Madison, Wisconsin. Defendant Sorenson Communications, Inc. is a Utah corporation with its principal place of business in Salt Lake City, Utah. Defendant CaptionCall, LLC is a Delaware limited liability company with its principal place of business in Salt Lake City, Utah.
Telecommunications relay service (also referred to as “TRS” or “relay service”) is a group of call center based services that make it possible for those who are deaf, hard-of-hearing or speech impaired to communicate with others via telecommunications. Title IV of the Americans with Disabilities Act of 1990 mandated relay service for all of the United States and its territories.
Traditional relay service began as, and remains, a fairly simple telephone service that allows persons with hearing or speech disabilities to place and receive telephone calls. The call may be originated by an assisted user or an unassisted user, such as one who is hearing. In traditional relay service, the call originator dials a toll-free telephone number and is connected to the relay. The call originator then provides the phone number of the other user to the call assistant, who places the call from the relay to the call recipient. The call assistant and hearing user communicate through voiced communication using a headset that contains one or more speakers and a microphone. The call assistant listens to the voice of the hearing user and types verbatim the words of the hearing user to the assisted user. The assisted user responds to what she or he has read by typing a response and transmitting the typed response to the call assistant, who reads the text displayed on the call assistant workstation display screen and, in turn, voices the information verbatim to the hearing user.
However, many hard-of-hearing users and some deaf users have the ability to speak their end of the conversation, and prefer to do so. This is especially true of those who have lost hearing later in life after they had developed the ability to speak clearly (such as the elderly) and those who have developed clear speech through education and training. Voice carry-over technology permits the assisted user to speak to the hearing user with a call assistant interjected into the call to type words to the hard-of-hearing user. Around 2001, plaintiffs...
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Ultratec, Inc. v. Sorenson Commc'ns, Inc., 13–cv–346–bbc.
...45 F.Supp.3d 881ULTRATEC, INC. and CapTel, Inc., Plaintiffs,v.SORENSON COMMUNICATIONS, INC. and CaptionCall, LLC, Defendants.No. 13–cv–346–bbc.United States District Court, W.D. Wisconsin.Signed Aug. 28, Motions granted in part and denied in part. [45 F.Supp.3d 885] Anthony A. Tomaselli, Kr......