Va. Innovation Scis., Inc. v. Samsung Elecs. Co.

• Decision Date: 02 May 2014
• Docket Number: Case No. 2:12cv548.
• Citation: 983 F.Supp.2d 713
• Court: U.S. District Court — Eastern District of Virginia
• Parties: VIRGINIA INNOVATION SCIENCES, INC., Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.

983 F.Supp.2d 713

VIRGINIA INNOVATION SCIENCES, INC., Plaintiff,

v.SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.

Case No. 2:12cv548.

United States District Court,

E.D. Virginia,

Norfolk Division.

Signed Jan. 8, 2014.

Opinion Denying Reconsideration May 2, 2014.

Aaron W. Purser, Timothy E. Grochocinski, W. Ryan Snow, Anthony M. Vecchione, Claire A. Henry, David C. Hartnett, Edward E. Casto, Jr., Edward R. Nelson, III, Jonathan H. Rastegar, Joseph P. Oldaker, Thomas C. Cecil, Thomas J. Ward, Jr., for Plaintiff.

Jonathan P. Crawford, Jordan Raphael, Scot C. Rives, Brett J. Williamson, Brian Berliner, Cameron W. Westin, Eric S. Namrow, Marc M. Breverman, Robert W. McFarland, Sanjeev B. Mehta, Sarah K. McConaughy, Susan van Keulen, for Defendants.

OPINION AND ORDER

MARK S. DAVIS, District Judge.

This matter is currently before the Court on a motion for summary judgment filed by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung” or “Defendants”). ECF No. 134. The motion has been fully briefed and is therefore ripe for decision.

After examination of the briefs and the record, the Court determines that a hearing is unnecessary, as the facts and legal arguments are adequately presented, and the decisional process would not be aided significantly by oral argument. SeeFed.R.Civ.P. 78(b); E.D. Va. Loc. Civ. R. 7(J). For the reasons that follow, Defendants' motion seeking summary judgment is GRANTED, in part, and DENIED, in part.

I. FACTUAL BACKGROUND

At issue in this case are five ¹ patents: U.S. Patent No. 7,899,492 (“the '492 patent”), U.S. Patent No. 8,050,711 (“the '711 patent”), U.S. Patent No. 8,145,268 (“the '268 patent”), U.S. Patent No. 8,224,381 (“the '381 patent”), and U.S. Patent No. 8,135,398 (“the '398 patent”). All of the patents-in-suit claim priority to the ' 492 patent, which itself claimed priority to provisional application number 60/588,359, filed on July 16, 2004. The '711, '268, and ' 381 patents are continuations of the ' 492 patent and all four share a substantively identical specification (“the '492 specification”). U.S. Patent No. 7,957,733 (“the '733 patent”), which is not at issue in this case, was filed on May 22, 2007 as a continuation-in-part of the ' 492 patent. The ' 398 patent is a continuation from the ' 733 patent. The shared specification of the '733 and ' 398 patents (“the '398 specification”) includes all of the ' 492 specification along with additional material. It is the addition of this new material which prevents the ' 398 patent from claiming priority back to the filing of the ' 492 patent and entitles it to the later priority date of May 22, 2007, the filing date of the ' 733 patent. Each of the patents-in-suit describes inventions intended to resolve the inconvenience and impracticability of viewing multimedia content on the small screens of mobile terminals.

A. The '492 Patent Family

The '492, '711, '268, and '381 patents (collectively, “the '492 patent family”) are each titled “Methods, Systems and Apparatus for Displaying Multimedia Information from Wireless Communication Networks.” Their shared specification and respective claims are directed toward methods, systems, apparatuses, and computer-readable mediums that can be utilized to convert multimedia signals, appropriate for displaying content on a mobile terminal, into signals appropriate for display on an alternative display terminal.

B. The '398 Patent

The '398 patent is entitled “Methods and Apparatus for Multimedia Communications with Different User Terminals.” Its specification and claims are directed toward methods, systems, apparatuses, computer programs, and computer-readable mediums for providing “multimedia content to and from various different devices” through the conversion and sending or routing of such content. E.g., '398 patent 1 :47–49. As noted above, the '398 patent issued from a continuation of the '733 patent, which was itself a continuation-in-part of the '492 patent. Id. at 1:21–31. Thus, the ' 398 patent claims priority to the filing date of the '733 patent, May 22, 2007. However, it may claim priority back to the filing date of the '492 patent for claims the subject matter of which flow directly from the '492 patent. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed.Cir.2008) (“In essence, [35 U.S.C. § 120] means that in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.”); see also, Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1334 (Fed.Cir.2011).

II. PROCEDURAL HISTORY

In the instant patent infringement action, plaintiff Virginia Innovation Sciences, Inc. (hereinafter “Plaintiff” or “VIS”) alleges that Defendants have directly, indirectly, and willfully infringed the patents-in-suit by making, using, offering for sale, selling, and/or importing a wide range of accused products, including smartphones, tablets, Blue-ray players, and hubs. Samsung denies VIS's claims of infringement and asserts several affirmative defenses, including invalidity of all patents-in-suit, prosecution history estoppel and other equitable doctrines. Additionally, Samsung asserts counterclaims seeking declarations of non-infringement and invalidity for each of the patents-in-suit.

The Court held its Markman hearing in this matter on June 11, 2013 and issued its Markman opinion on September 25, 2013. ECF No. 198, 976 F.Supp.2d 794 (E.D.Va.2013). Since the Markman hearing, there have been numerous filings in this matter and several motions remain pending before the Court, in various stages of briefing. By Order of October 25, 2013, the Court joined for trial this matter and Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al., Case No. 2:13cv322. ECF No. 353. The trial of the two matters is now set for April 21, 2014. On November 15, 2013 the Court ruled on Defendants' Motion to Dismiss VIS's Claim for Willful Infringement; granting, in part, and denying, in part such motion. ECF No. 395, 983 F.Supp.2d 700, 2013 WL 6053846 (E.D.Va.2013). The Court found that the claim for willful infringement failed to state a plausible claim for relief with regard to willful infringement of the '711, '268, and '381 patents.

After first reciting the applicable standard of review, the Court will address the Defendants' Motion for Summary Judgment of Patent Invalidity and No Willful Infringement filed August 13, 2013 and the associated responses and briefs. ECF No. 134, 135, 144, 159, 163, and 168.

III. STANDARD OF REVIEW

A. Summary Judgment

The Federal Rules of Civil Procedure provide that a district court shall grant summary judgment in favor of a movant if such party “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 mere existence of some alleged factual dispute between the parties “will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby Inc., 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Furthermore, the standard at summary judgment requires that the evidence be viewed in favor of the nonmovant and that all justifiable inferences be drawn in his favor. Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

If a movant has properly advanced evidence supporting entry of summary judgment, the non-moving party may not rest upon the mere allegations of the pleadings, but instead must set forth specific facts in the form of exhibits and sworn statements illustrating a genuine issue for trial.²Celotex Corp. v. Catrett, 477 U.S. 317, 322–24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). At that point, “the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249, 106 S.Ct. 2505. In doing so, the judge must construe the facts and all “justifiable inferences” in the light most favorable to the non-moving party, and the judge may not make credibility determinations. Id. at 255, 106 S.Ct. 2505;T–Mobile Northeast LLC v. City Council of City of Newport News, Va., 674 F.3d 380, 385 (4th Cir.2012). “Summary judgment will not lie if the dispute about a material fact is ‘genuine,’ that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Moreover, because a ruling on summary judgment “necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits[,] ... [t]he mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient” to overcome a defendants' well-founded summary judgment motion. Anderson, 477 U.S. at 252, 106 S.Ct. 2505.

“In rendering a decision on a motion for summary judgment, a court must ‘view the evidence presented through the prism of the substantive evidentiary burden’ that would inhere at trial.” Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 20 (Fed.Cir.2000) (quoting Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 880 (Fed.Cir.1998) (quoting Anderson, 477 U.S. at 254, 106 S.Ct. 2505)). Therefore, the Court must now examine each applicable evidentiary burden.

B. Patent Invalidity

“Among other defenses under § 282 of the Patent Act of 1952 (1952 Act), an alleged infringer may assert the invalidity of the patent-that is, he may attempt to prove that the patent never should have issued in the first place.” Microsoft Corp. v. i4i Ltd. P'ship, ––– U.S. ––––, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011) (citing 35...