Via Vadis, LLC v. Amazon.com

• Docket Number: 1:14-CV-00813-LY
• Decision Date: 18 January 2022
• Parties: VIA VADIS, LLC and AC TECHNOLOGIES, S.A., Plaintiffs v. AMAZON.COM, INC., Defendant
• Court: U.S. District Court — Western District of Texas

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VIA VADIS, LLC and AC TECHNOLOGIES, S.A., Plaintiffs v. AMAZON.COM, INC., Defendant

No. 1:14-CV-00813-LY

United States District Court, W.D. Texas, Austin Division

January 18, 2022

TO THE HONORABLE LEE YEAKEL UNITED STATES DISTRICT JUDGE

REPORT AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE

SUSAN HIGHTOWER UNITED STATES MAGISTRATE JUDGE

Before the Court are Amazon's Motion for Summary Judgment of Non-infringement and Invalidity (Dkt. 179) and Plaintiffs' Motion for Summary Judgment on Validity (Dkt 181), both filed August 10, 2021, and the associated response and reply briefs. The District Court referred the motions to the undersigned Magistrate Judge for Report and Recommendation, pursuant to 28 U.S.C. § 636(b)(1)(B), Federal Rule of Civil Procedure 72, and Rule 1(d) of Appendix C of the Local Rules of the United States District Court for the Western District of Texas. Dkt. 220.

I. Introduction

Via Vadis and AC Technologies, S.A. (“Plaintiffs”) are the owner and exclusive licensee, respectively, of U.S. Patent No. RE40, 521 (the “'521 Patent”), entitled “Data Access and Management System as Well as a Method for Data Access and Data Management for a Computer System.” Dkt. 181-2 at 2. The '521 Patent covers a method of data access and management in computer networks that allows users to quickly access changing data by communicating directly with any other computer in the network. Id. at 6. Claims of the '521 Patent cover the operations of peer-to-peer networks (the “Asserted Claims”).

On August 22, 2014, Plaintiffs filed suit against Defendant Amazon.com, Inc. (“Amazon”), alleging that Amazon's software-as-a-service and related web services directly and indirectly infringed the '521 Patent “by supporting the BitTorrent protocol, or other infringing peer to peer file distribution protocol, to transfer files and other data between electronic devices, such as computers” (the “Accused BitTorrent System”). Second Amended Complaint, Dkt. 112 ¶ 17. The BitTorrent protocol is a “peer to peer file distribution protocol that allows multiple networked users to simultaneously upload and download segments or pieces of the same file to and from each other.” Id. ¶ 14. Amazon deployed BitTorrent as part of the launch of its Amazon Web Services Simple Storage Service (“S3”) cloud storage platform. Dkt. 189 at 7 (citing Dkt. 190-1 (Zeidman Expert Report ¶ 59 (sealed))). Amazon contends that the '521 Patent is invalid. Dkt. 115 at 8.

The parties cross-move for summary judgment under Federal Rule of Civil Procedure 56 as to validity of the '521 Patent. Amazon also asks the Court to find as a matter of law that the Accused BitTorrent System does not infringe the '521 Patent.

II. The '521 Patent

The United States Patent and Trademark Office (“USPTO”) reissued the '521 Patent on September 23, 2008. Dkt. 181-2 at 2. The '521 Patent claims priority to a foreign patent application filed by Thomas Binzinger on January 11, 1999 (the “German Application”). Id. The abstract describes the invention as “permit[ting] improved data access and data management in a computer system” by dividing the data and storing it “in such a way that the partial data [ ] being accessed and managed are present in the computer system in a redundant manner.” Id.

Claim 30 of the '521 Patent recites, in part, A method for data access and data management for a computer system, comprising:

storing data in at least two data storage means;

accessing stored data by at least one computer unit via data transmission means, with prespecified parameters of the data transmission between the data storage means and the computer unit being determined, the data being stored in a redundant manner in at least two of the at least two data storage means as a function of the determined prespecified parameters of the data transmission, the access to the data being effected as a function of the determined prespecified parameters of the data transmission;

detecting prespecified parameters for data transmissions between the data storage means; and

shifting redundantly stored data independent of an access of the computer unit to the data as a function of the determined prespecified parameters of the data transmission between the data storage means.

Id. at 20 (emphasis added). Claims 31 through 45 depend on Claim 30 and therefore contain the limitations of Claim 30. See In re Lange, 644 F.2d 856, 862 n.9 (C.C.P.A. 1981) (stating that “every dependent claim includes all limitations of the independent claim”).

The District Court construed the claim term “data storage means” as “one or more memory cells, each cell storing: (1) one field of information; and (2) the other locations within the system where copies of the cell are located; where the information in every cell is copied the same number of times throughout the system.” Dkt. 67 at 4. The District Court further construed “parameters for data transmission” as

duration of transmission, fault rate, duration of data processing operations of individual data storage means prior to transmission, transmission quality, transmission rate, computing performance, network performance, or other performance measures.

Dkt. 59 at 35. In addition, the District Court adopted the parties' agreed construction of the claim term “shifting” to mean that “data is copied to a new location and no longer available at one of the previous locations.” Id. at 6.

III. Legal Standard

Summary judgment shall be rendered when the pleadings, the discovery and disclosure materials, and any affidavits on file show that there is no genuine dispute as to any material fact and that the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986); Washburn v. Harvey, 504 F.3d 505, 508 (5th Cir. 2007). A dispute regarding a material fact is “genuine” if the evidence is such that a reasonable jury could return a verdict in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When ruling on a motion for summary judgment, the court is required to view all inferences drawn from the factual record in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587 (1986); Washburn, 504 F.3d at 508. A court “may not make credibility determinations or weigh the evidence” in ruling on a motion for summary judgment. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000); see also Anderson, 477 U.S. at 254-55.

Once the moving party has made an initial showing that there is no evidence to support the nonmoving party's case, the party opposing the motion must come forward with competent summary judgment evidence of the existence of a genuine fact issue. Matsushita, 475 U.S. at 586. Mere conclusory allegations are not competent summary judgment evidence and thus are insufficient to defeat a motion for summary judgment. Turner v. Baylor Richardson Med. Ctr., 476 F.3d 337, 343 (5th Cir. 2007). Unsubstantiated assertions, improbable inferences, and unsupported speculation also are not competent summary judgment evidence. Id. The party opposing summary judgment is required to identify specific evidence in the record and to articulate the precise manner in which that evidence supports its claim. Adams v. Travelers Indem. Co. of Conn., 465 F.3d 156, 164 (5th Cir. 2006). If the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to its case and on which it will bear the burden of proof at trial, summary judgment must be granted. Celotex, 477 U.S. at 322-23.

IV. Analysis

The Court addresses validity first, then turns to Defendant's infringement argument.

A. Validity

Plaintiffs argue that the Court should grant summary judgment that the '521 Patent is valid because (1) there is no genuine issue of material fact that the patent's priority date is January 11, 1999, as the patents and application to which it claims priority have adequate written descriptions of claim elements; (2) there is no evidence that prior art anticipates the Asserted Claims; and (3) the Asserted Claims are definite and enabled. Dkt. 181 at 5. In the alternative, Plaintiffs seek partial summary judgment on the individual grounds raised in their motion. Id. at 5, 24. In its crossmotion, Amazon argues that the Court should find the Asserted Claims invalid as a matter of law for indefiniteness. Dkt. 179 at 23-25.

Patents are presumed to be valid. Ruiz v. A.B. Chance Co., 234 F.3d 654, 662 (Fed. Cir. 2000). The party challenging the validity of a patent bears the burden of proving the factual elements of invalidity by clear and convincing evidence. Pfizer v. Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007). Although the burden of showing validity never shifts to the patentee, a patentee “would be well advised to introduce evidence sufficient to rebut that of the challenger” once a prima facie case for invalidity is made. Id. at 1360 (citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1570 (Fed. Cir. 1986)).

1. Priority Date

When priority is based on subject matter disclosed in a foreign patent application whose filing date is properly claimed under 35 U.S.C. § 119(a), the foreign application has the same effect as if filed in the United States. Frazer v. Schlegel, 498 F.3d 1283, 1287 (Fed. Cir. 2007). “To obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.'” Anascape, Ltd. v. Nintendo of Am., Inc., 601...