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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`FRONTLINE TECHNOLOGIES, INC., :
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`Plaintiff,
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`CRS, INC.,
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`Defendant.
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`CIVIL ACTION
`NO. 07-2457
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`M E M O R A N D U M
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`EDUARDO C. ROBRENO, J.
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`I. INTRODUCTION
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` JULY 26, 2012
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`Plaintiff Frontline Technologies, Inc. (“Plaintiff”)
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`filed this patent infringement and breach of contract action
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`against Defendant CRS, Inc. (“Defendant”) over a technology that
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`facilitates replacement of absent workers with substitute
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`workers. Plaintiff avers that Defendant’s SubFinder products
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`infringe U.S. Patent No. 6,675,151 (“the ’151 patent”) for
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`substitute worker technology. Second Am. Compl. ¶ 14, ECF No.
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`96. In its Second Amended Complaint, Plaintiff pleads two
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`counts: (1) infringement of the ’151 patent and (2) breach of a
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`license agreement between Plaintiff and Defendant. Id. ¶¶ 36-
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`43, 52-55.
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`Currently pending before the Court is Defendant’s
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`Motion for Summary Judgment on non-infringement, priority date,
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`CRS EXHBIT 1006
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 2 of 45
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`invalidity, and various contract claims. For the reasons set
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`forth below, the Court will deny Defendant’s Motion.
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`II. BACKGROUND
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`
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`Plaintiff alleges patent infringement of its ’151
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`patent that claims a labor database wherein customers access a
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`website to post worker absences for which substitutes are
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`needed. Id. ¶¶ 9, 12. Plaintiff’s product practicing the
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`claimed invention is called “Aesop.” Id. ¶ 9. Substitutes
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`access Aesop to search for posted worker absences and to commit
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`to filling vacancies. Id. Users access Aesop via the Internet
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`using a web interface or via a telephone interactive voice
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`response (“IVR”) system. Id.
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`On January 6, 2004, the U.S. Patent and Trademark
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`Office (“PTO”) issued the ’151 patent for the substitute worker
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`technology. Id. ¶ 12. The ’151 patent claims priority of
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`filing date to U.S. Patent No. 6,334,133 (“the ’133 patent”).
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`Plaintiff is the assignee and owner of the ’151 patent. Second
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`Am. Compl. ¶ 13. In February 2004, Frontline Data, Plaintiff’s
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`predecessor, filed a patent infringement suit against Defendant.
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`Frontline Data and Defendant reached a settlement agreement in
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`November 2004 whereby Frontline Data agreed to license its
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`technology to Defendant in return for royalties. Id. ¶¶ 15-16.
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`2
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 3 of 45
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`Plaintiff alleges Defendant failed to pay royalties
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`pursuant to the limited licensing agreement (“License
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`Agreement”). Id. ¶¶ 18-23. In particular, and relevant here,
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`the License Agreement required a fee on gross revenues from the
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`sale of “Licensed Products and Services.” License Agreement ¶
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`3.1, Am. Compl. Ex. B, ECF No. 29-2. The agreement defines
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`“Licensed Products and Services” as those products that would
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`“infringe an unexpired, valid, and enforceable claim” of the
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`’133 patent or ’151 patent. Id. ¶ 1.1. After an audit in 2007,
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`Plaintiff determined that Defendant failed to pay the proper
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`royalties under the License Agreement. Specifically, Plaintiff
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`alleged that Defendant failed to account for sales where a
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`substitute teacher used a telephone to fill a wanted position.
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`Defendant contended that the License Agreement did not cover
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`such uses because they did not infringe either the ’133 patent
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`or ’151 patent. Plaintiff disagreed, terminated the License
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`Agreement, and filed the instant lawsuit on June 18, 2007. See
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`Compl., ECF No. 1.
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`
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`On August 8, 2007, the PTO granted an ex parte
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`reexamination of claims 3 through 13 of the ’151 patent. Second
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`Am. Compl. ¶ 28. Accordingly, the Court placed the action in
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`suspense on November 19, 2007. Order, Nov. 19, 2007, ECF No.
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`15. During the PTO reexamination, claims 14 through 55 were
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`3
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 4 of 45
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`added to the ’151 patent and claims 3, 6, 9, and 14 through 55
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`were listed in the reexamination certificate as patentable.1 See
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`Second Am. Compl. ¶¶ 31, 32; Am. Compl. Ex. C.
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`
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`On September 30, 2008, during the ’151 patent
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`reexamination period, the PTO issued U.S. Patent No. 7,430,519
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`(“the ’519 patent”), titled “Substitute Fulfillment System,” a
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`continuation-in-part of the ’151 patent, to Roland R. Thompson,
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`Michael S. Blackstone, and Ralph Julius. Am. Compl. ¶¶ 33-34.
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`Plaintiff is assignee and owner of the ’519 patent. Id. ¶ 35.
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`On January 14, 2010, Plaintiff filed an Amended
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`Complaint, which alleges three counts against Defendant.2
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`Plaintiff claims Defendant infringed, continues to infringe, and
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`induced infringement of the ’151 patent associated with
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`Defendant’s SubFinder products (“Count I”). Id. ¶¶ 37-39.
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`Plaintiff claims Defendant infringed, continues to infringe, and
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`induced infringement of the ’519 patent with Defendant’s
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`SubFinder products (“Count II”). Id. ¶¶ 45-47. And Plaintiff
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`claims Defendant breached the License Agreement (“Count III”).
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`1
`The Court refers to the reexamined ’151 patent and its
`claims as the “’151 patent.”
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`2
`The counts are not numbered in the Amended Complaint.
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`For ease of identification, the Court will number the counts.
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`4
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 5 of 45
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`Plaintiff seeks declaratory and injunctive relief and damages.
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`Id. at 9-10.
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`On February 3, 2010, Defendant filed an Amended Answer
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`and Counterclaims (“Answer”) that raises various affirmative
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`defenses and counterclaims, states that Plaintiff has breached
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`the License Agreement, and denies all claims for infringement of
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`the ’151 and ’519 patents.3 Defendant requests declaratory and
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`injunctive relief and damages. Answer 16-17, ECF No. 36.
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`On February 23, 2010, Plaintiff filed an amended reply
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`denying Defendant’s counterclaims and asserting various
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`affirmative defenses.
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`On February 8, 2011, the Court issued an order and
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`accompanying memorandum construing certain disputed claim terms.
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`3
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`Defendant asserts seven counterclaims. Answer 12-16.
`Defendant seeks a declaratory judgment that Defendant did not
`infringe the ’151 patent (“Counterclaim I”). Defendant seeks a
`declaratory judgment that the ’151 patent is invalid
`(“Counterclaim II”). Defendant seeks a declaratory judgment
`that it has not infringed the ’519 patent (“Counterclaim III”).
`Defendant seeks a declaratory judgment that the ’519 patent is
`invalid (“Counterclaim IV”). Defendant seeks a declaratory
`judgment that it did not breach the License Agreement for the
`’151 patent (“Counterclaim V”). Defendant claims Plaintiff
`wrongfully terminated the License Agreement (“Counterclaim VI”).
`And Defendant claims Plaintiff breached the License Agreement by
`failing to accord Defendant most-favored nation treatment and to
`reduce the royalty obligation of Defendant and its sublicensees
`in accordance with paragraph 3.3 of the License Agreement
`(“Counterclaim VII”).
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`5
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 6 of 45
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`Order, Feb. 8, 2011, ECF No. 56; Mem. Op., Feb. 8, 2011, ECF No.
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`55. The parties continued with discovery.
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`On August 12, 2011, Plaintiff granted Defendant a
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`Covenant Not to Sue on the ’519 patent. Mot. to Dismiss Ex. A,
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`Aug. 15, 2011, ECF No. 66-1. On August 15, 2011, Plaintiff
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`filed a Motion to Dismiss Counterclaims III and IV and a Motion
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`to Amend the Complaint. Id. On September 1, 2011, Defendant
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`opposed the Motion to Dismiss. Opp’n, Sept. 1, 2011, ECF No.
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`67. On December 23, 2011, the Court issued an order and
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`accompany memorandum granting Plaintiff’s Motion to Dismiss and
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`granting Plaintiff leave to amend its Amended Complaint.4 See
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`Order, Dec. 23, 2011, ECF No. 95; Mem. Op., Dec. 23, 2011, ECF
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`No. 94.
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`On November 21, 2011, Defendant filed a Motion for
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`Summary Judgment on the issues of non-infringement, priority
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`date, invalidity, and most favored nations defense. ECF No. 77.
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`Plaintiff responded in opposition. ECF No. 89. Defendant filed
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`a reply. ECF No. 91. The motion is now fully briefed and ripe
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`for disposition.
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`4
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`Plaintiff’s Second Amended Complaint is the same as
`its Amended Complaint, but removes its claim of infringement of
`the ’519 Patent. Thus, Count I remains for infringement of the
`’151 patent, and Count III remains for breach of the License
`Agreement.
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`6
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 7 of 45
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`III. STANDARD OF REVIEW
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`Summary judgment is appropriate if there are no
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`genuine disputes of material fact and the moving party is
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`entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a).
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`“A motion for summary judgment will not be defeated by ‘the mere
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`existence’ of some disputed facts, but will be denied when there
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`is a genuine issue of material fact.” Am. Eagle Outfitters v.
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`Lyle & Scott Ltd., 584 F.3d 575, 581 (3d Cir. 2009) (quoting
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986)).
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`A fact is “material” if proof of its existence or non-existence
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`might affect the outcome of the litigation, and a dispute is
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`“genuine” if “the evidence is such that a reasonable jury could
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`return a verdict for the nonmoving party.” Anderson, 477 U.S.
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`at 248.
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`In undertaking this analysis, the court views the
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`facts in the light most favorable to the non-moving party.
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`“After making all reasonable inferences in the nonmoving party’s
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`favor, there is a genuine issue of material fact if a reasonable
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`jury could find for the nonmoving party.” Pignataro v. Port
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`Auth. of N.Y. & N.J., 593 F.3d 265, 268 (3d Cir. 2010) (citing
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`Reliance Ins. Co. v. Moessner, 121 F.3d 895, 900 (3d Cir.
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`1997)). While the moving party bears the initial burden of
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`7
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 8 of 45
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`showing the absence of a genuine dispute of material fact,
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`meeting this obligation shifts the burden to the non-moving
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`party who must “set forth specific facts showing that there is a
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`genuine issue for trial.” Anderson, 477 U.S. at 250.
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`IV. DISCUSSION
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`
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`Defendant moves for summary judgment on non-
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`infringement, filing date priority, invalidity for failure to
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`meet the written description requirement, and on application of
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`the most favored nations clause in the License Agreement. The
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`Court addresses each in turn and will deny Defendant’s Motion on
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`each issue.
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`A. Non-infringement
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`Defendant first moves for summary judgment on its
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`counterclaim of non-infringement of the asserted claims of the
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`’151 patent: claims 3, 6, 7, 16, 24, and 33.
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`1.
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`Applicable Law
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`Patent infringement occurs when “whoever without
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`authority makes, uses, offers to sell, or sells any patented
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`invention, within the United States or imports into the United
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`States any patented invention during the term of the patent.”
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`8
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 9 of 45
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`35 U.S.C. § 271(a) (2006). One can also be liable for inducing
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`another to infringe. Id. § 271(b). A court’s analysis of
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`patent infringement is a well-established two-step process: (1)
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`the meanings of disputed claims are construed; and (2) the
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`allegedly infringing device is compared to the claims as
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`construed. Markman v. Westview Instruments, Inc., 52 F.3d 967,
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`976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996); Wavetronix
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`L.L.C. v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed.
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`Cir. 2009). In this case, the Court already construed the
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`meaning of the disputed claims. Thus, the Court now moves to
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`step two.
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`“Patent infringement occurs when a device . . . that
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`is literally covered by the claims or is equivalent to the
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`claimed subject matter, is made, used, or sold, without the
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`authorization of the patent holder, during the term of the
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`patent.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d
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`1473, 1476 (Fed. Cir. 1998). “Infringement requires that every
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`limitation of a claim be met in the accused structure either
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`exactly or by an equivalent.”5 Roton Barrier, Inc. v. Stanley
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`Works, 79 F.3d 1112, 1125 (Fed. Cir. 1996).
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`5
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`Plaintiff does not argue that Defendant’s SubFinder
`products infringe the ’151 patent under the doctrine of
`equivalents.
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`9
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 10 of 45
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`2.
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`Analysis
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`Defendant contends that its SubFinder products do not
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`infringe independent claims 3 and 6 of the ’151 patent.6 Claims
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`3 and 6 of the ’151 patent provide as follows:
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`3. A method for performing substitute fulfillment
`for a plurality of different organizations comprising:
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`receiving absentee information representing an
`absent worker that will be or is physically
`absent from an organization worksite via at
`least one communication link;
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`generating and posting by one or more computers a
`list of one or more positions of one or more
`absent workers that need to be filled by one
`or more substitute workers on a website and
`providing, for one or more of the positions,
`information
`indicating
`directly
`or
`indirectly an organization worksite location
`for the respective position;
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`receiving a response comprising an acceptance, by
`the one or more computers, from a substitute
`worker selecting a posted position on the
`website via an Internet communication link;
`and
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`securing, in response to receiving the acceptance
`form [sic] the substitute worker, via the
`Internet communication link and the one or
`more computers, the posted position for the
`substitute worker who selected the posted
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`
`6
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`Defendant also moves for summary judgment of non-
`infringement on claims 7, 16, 24, and 33. Those claims are
`dependent claims. Thus, Defendant argues only for non-
`infringement on independent claims 3 and 6 because if the Court
`concludes that summary judgment is appropriate on those
`independent claims, then summary judgment must follow for the
`dependent claims.
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`10
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 11 of 45
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`position to fill in for the absent worker,
`the securing comprising halting, at the one
`or more computers, further processing to
`fulfill the posted position with any other
`substitute worker.
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`’151 Patent Reexamination Certificate col.1 ll.28-52.
`
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`6. A substitute fulfillment system that secures one
`or more substitute workers for a plurality of
`organizations comprising:
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`a database comprising worker records, said worker
`records having information associated with
`workers for each of the organizations, and
`substitute records, said substitute records
`having information associated with at least
`one substitute worker; and
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`
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`one or more computers comprising a server
`connected to the database, the server
`configured for:
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`receiving absentee information representing an
`absent worker that will be or is physically
`absent from an organization worksite or via
`at least one communication link;
`
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`generating and posting a list of one or more
`positions of one or more absent workers that
`need to be filled by one or more substitute
`workers on a website and providing, for one
`or more of the positions, information
`indicating
`directly
`or
`indirectly
`an
`organization worksite location for the
`respective position;
`
`
`receiving a response comprising an acceptance
`from a substitute worker selecting a posted
`position on the website via an Internet
`communication link; and
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`securing, in response to receiving the acceptance
`from the substitute worker, via the Internet
`communication link and the one or more
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`
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`11
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 12 of 45
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`computers, the posted position for the
`substitute worker who selected the posted
`position to fill in for the absent worker,
`the securing comprising halting, at the one
`or more computers, further processing to
`fulfill the posted position with any other
`substitute worker.
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`Id. col.1 l.53-col.2 l.17.
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`In its Motion, Defendant only argues that its
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`SubFinder products do not meet the limitations contained in the
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`final clause of claims 3 and 6. Specifically, Defendant argues
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`that all of its accused SubFinder products do not automatically
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`secure a position in response to receiving an acceptance, as
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`required under the Court’s claim construction of the asserted
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`claims of the ’151 patent. Defendant also argues that SubFinder
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`versions 5.9-5.11 do not secure a position “in response to”
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`receiving an acceptance.
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`a.
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`
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`Whether all SubFinder products automatically
`secure a substitute position in response to
`receiving an acceptance
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`Briefly, the record reflects that the all SubFinder
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`products alleged to infringe the ’151 patent operate as follows.
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`A substitute must first log in to the SubFinder product to view
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`any positions available. Pl.’s Memo. in Opp’n to Def.’s Mot.
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`for Summ. J. 10, ECF No. 89 [hereinafter Pl.’s Br.]. In all
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`SubFinder products, once absences are known, a substitute may
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`12
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 13 of 45
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`request to view all jobs that are suitable for that substitute —
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`that is, those jobs for which the substitute is qualified. Id.
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`Once SubFinder returns a list of suitable jobs, the substitute
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`then may review this listing and select to view additional job
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`details. Id. Once a substitute views the additional details,
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`in versions 5.7 and 5.8, the substitute has the following three
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`options: “Reject Job,” “Accept Job,” and “Don’t Accept Job.”
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`Id. at 11. In versions 5.9-5.11, the substitute has the
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`following three options: “Yes,” “No,” and “Return to Available
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`Jobs.” Id. The substitute then selects an option and either
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`proceeds to accept that job or continues searching to find a job
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`suitable to the substitute.
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`Defendant argues that all of its SubFinder systems do
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`not automatically secure the substitute the position as required
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`by claims 3 and 6. Defendant explains that in the Court’s claim
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`construction, it construed the term “securing” as used in claims
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`3 and 6 of the ’151 patent as “automatically securing.” See
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`Order 2, Feb. 8, 2011, ECF No. 56.7 In all of the accused
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`
`7
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`Due to a typographical error within the Court’s claim
`construction order, the Court attributed the following claim
`language to claim 10 of the ’519 patent: “securing, in response
`to receiving the acceptance from the worker . . . the securing
`comprising halting, at the one or more computers, further
`processing to fulfill the posted position with any other
`substitute worker.” This claim language appears within claims
`3, 6, 7, 16, 24, and 33 of the ’151 patent. See, e.g., ’151
`13
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 14 of 45
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`SubFinder products, a substitute clicking on the “Accept Job”
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`button (in SubFinder versions 5.7 and 5.8) or clicking on the
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`“Yes” button (in SubFinder versions 5.9-5.11) does not
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`automatically result in the position being secured. Defendant
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`argues that after a substitute clicks either the “Accept Job”
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`button or the “Yes” button, the system engages “in further
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`processing steps to check to see if the job is still available
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`and to verify that the substitutes’ status has not change[d].”
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`Def.’s Memo. in Supp. of Mot. for Summ. J. 39, ECF No. 77
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`[hereinafter Def.’s Br.]. Therefore, SubFinder does not
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`automatically secure the position. Specifically, Defendant
`
`argues that in SubFinder versions 5.7 and 5.8:
`
`[U]pon receipt of the substitute’s response the system
`validates that (1) the position is still available and
`has not been filled; (2) the position has not been
`locked; (3) the position is not at a time conflicting
`with another position that substitute is working; and
`(4) the substitute cannot work on days the substitute
`is scheduled to work as a regulator teacher unless the
`substitute has a “dual status.”
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`Id. Therefore, Defendant argues that its SubFinder versions 5.7
`
`and 5.8 do not automatically secure the substitute the position.
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`Similarly, Defendant argues that its SubFinder versions 5.9-5.11
`
`perform all of the same validations as versions 5.7 and 5.8, but
`
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`Patent Reexamination Certificate col.1 ll.45-52. Accordingly,
`the Court’s construction of that phrase applies to the ’151
`patent and not the ’519 patent.
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`
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`14
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 15 of 45
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`also perform an additional nine validations. Failure of any of
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`these validations prevents the substitute from securing the
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`position and therefore does not automatically secure the
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`substitute position.
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`
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`Plaintiff, on the other hand, argues that all
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`SubFinder versions automatically secure a substitute position
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`notwithstanding their further validations. In all SubFinder
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`versions, Plaintiff agrees that once a substitute clicks either
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`“Accept Job” or “Yes,” SubFinder validates that substitute is
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`eligible to accept that particular position. Pl.’s Br. at 10-
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`11. In addition to this validation, which may take several
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`steps, however, all SubFinder versions then update the SubFinder
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`database of available jobs to indicate that the particular job
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`the substitute accepted is now filled. See Reiss Decl. 33-34,
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`Pl.’s Br. Ex. 1. Then, SubFinder sends a confirmation message
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`to the substitute. Id. Once this update occurs, the database
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`lists the job as “filled,” the job will not be listed as
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`available, and any other substitutes that may have been viewing
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`the job at the same time will be unable to accept that same job.
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`Id.
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`With these facts, Plaintiff argues that all SubFinder
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`versions automatically secure the posted position within the
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`meaning of claims 3 and 6. Specifically, Plaintiff argues that
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`15
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`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 16 of 45
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`the “‘automatically securing’ is satisfied in SubFinder when, in
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`response to receiving the input from the ‘Accept Job’ (versions
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`5.7 and 5.8) or ‘Yes’ button (versions 5.9-5.11), the Job table
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`in the SubFinder database is updated to indicate that the
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`particular job is filled.” Pl.’s Br. 15. According to
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`Plaintiff’s expert, Steven Reiss, the updating of the Job
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`database permanently removes the job from consideration by other
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`substitutes. Reiss Decl. ¶ 48, Pl.’s Br. Ex. 1.B. This removal
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`is done without any consideration of other substitutes for the
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`job. Therefore, Plaintiff argues that while SubFinder does
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`indeed perform several validations before a substitute receives
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`confirmation that he or she was awarded the position, none of
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`these validations concern whether some other substitute should
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`receive the position. Therefore, the validations do not bring
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`SubFinder outside of the claim language.
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`The Court finds that the grant of summary judgment
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`revolves around the claim term “automatically securing” and
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`whether this term encompasses SubFinder’s post-acceptance
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`validations. Defendant concedes that if “automatically
`
`securing” does encompass post-acceptance validations, that there
`
`are conflicting facts as to whether Defendant’s SubFinder
`
`products meet the claim limitations in claims 3 and 6. See
`
`Def.’s Reply Memo. in Supp. of Mot. for Summ. J. 4, ECF No. 92
`
`
`
`16
`
`
`
`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 17 of 45
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`[hereinafter Def.’s Reply Br.]. Accordingly, the disposition of
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`Defendant’s Motion revolves around the proper construction of
`
`the claim term “automatically securing.” In this regard,
`
`although the Court reviewed the parties’ initial claim
`
`construction briefs, opposition briefs, reply briefs, held oral
`
`argument, and ruled upon the parties’ disputed claim
`
`constructions, the Court finds that some additional construction
`
`of the claim term “automatically securing” is needed.8
`
`The parties’ previously submitted the following
`
`competing constructions of the terms “acceptance” and
`
`“securing”:
`
`
`
`
`
`
`8
`
`The Federal Circuit explained, “[A]fter the court has
`defined the claim with whatever specificity and precision is
`warranted by the language of the claim and the evidence bearing
`on the proper construction, the task of determining whether the
`construed claim reads on the accused product is for the finder
`of fact.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351,
`1355 (Fed. Cir. 1998). Nonetheless, after reviewing the
`parties’ briefing on summary judgment, as well as the various
`expert reports submitted, it is apparent to the Court that the
`parties, without additional clarification of the term
`“automatically securing,” would attempt to argue construction of
`that term to the jury. The Court cannot allow this to occur.
`See Am. Patent Dev. Corp. v. Movielink, L.L.C., 637 F. Supp. 2d
`224, 230-31 (D. Del. 2009) (citing O2 Micro Int’l Ltd. v. Beyond
`Innovation Tech. Co., 521 F.3d 1351, 1361-63 (Fed. Cir. 2008)).
`Thus, the Court will now construe the term “automatically
`securing.”
`
`
`
`
`17
`
`
`
`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 18 of 45
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`
`
`
`
`Terms & Patent(s)
`
`Plaintiff Frontline’s
`Proposed Construction
`
`Defendant CRS’s Proposed
`Construction
`
`(1) acceptance
`
`’151 Patent (Claims
`3, 6, 7, 16, 24,
`and 33)
`
`No construction necessary.
`
`
`No construction necessary.
`
`
`(5) securing, in
`response to
`receiving the
`acceptance from the
`worker . . . the
`securing comprising
`halting, at the one
`or more computers,
`further processing
`to fulfill the
`posted position
`with any other
`substitute worker
`
`’151 Patent
`(Claims 3, 6, 7,
`16, 24, and 33)
`
`
`
`“an expression by the
`substitute worker agreeing
`to fill a position and
`resulting in an automatic
`securing of the position
`when the electronic
`acceptance is received
`without further processing
`for fulfillment of the same
`position or further
`selection review”
`“automatically
`electronically halting
`further processing for the
`fulfillment of the same
`position by other substitute
`workers upon electronic
`receipt of an acceptance
`from the substitute worker
`and filling the posted
`position with said
`substitute worker without
`further selection review”
`
`During claim construction, the Court declined to
`
`construe the term “acceptance.” The Court addressed Defendant’s
`
`concerns when construing “securing, in response to receiving the
`
`acceptance from the worker . . . the securing comprising
`
`
`
`18
`
`
`
`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 19 of 45
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`halting, at the one or more computers, further processing to
`
`fulfill the posted position with any other substitute worker” by
`
`adding the word “automatically” before “securing.” Frontline
`
`Placement Techs., Inc. v. CRS, Inc., 824 F. Supp. 2d 602, 612
`
`(E.D. Pa. 2011).
`
`
`
`Defendant’s present construction of the term
`
`“automatically securing” mirrors its proposed construction
`
`during claim construction, a proposed construction that the
`
`Court rejected. Specifically, the Court explained, “CRS’s
`
`language seems to go much farther than simply interjecting that
`
`there is no intermediary process between the substitute
`
`accepting the position and the position opening being removed.
`
`By including ‘automatically’ in the definitions for ‘securing’
`
`below, CRS’s concern is addressed without overly limiting the
`
`claim terms.” Id. at 610. Defendant now argues that the
`
`Court’s claim construction requires there to be no processing
`
`between a substitute’s acceptance and the position being filled.
`
`Indeed, Defendant argues that the Court explained that
`
`Plaintiff, in attempting to overcome a rejection of the ’151
`
`patent in view of U.S. Patent No. 6,466,914 (“Mitsuoka”), argued
`
`to the PTO that “its product was different from the prior art
`
`because in its patent there is no process that takes place
`
`between a substitute accepting an open position and that
`
`
`
`19
`
`
`
`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 20 of 45
`
`position being filled.” Frontline, 824 F. Supp. 2d at 610.
`
`Defendant argues that this language from the Court’s claim
`
`construction opinion is dispositive here. Defendant is
`
`incorrect. Defendant’s argument is taken out of context and is
`
`in fact inconsistent with the Court’s conclusion that
`
`Defendant’s proposed construction overly limited the ’151 patent
`
`claims.
`
`
`
`Defendant’s construction of “automatically securing”
`
`centers on Plaintiff’s statements during the reexamination of
`
`the ’151 patent. During that reexamination, the PTO initially
`
`rejected claims 3 and 6 as unpatentable in light of Mitsuoka.
`
`In pertinent part, Mitsuoka disclosed an Internet-based
`
`contractor placement method. See ’914 Patent col.2 ll.18-25.
`
`Relevant here, the method in Mitsuoka required the contractor to
`
`apply for an offered position, out of a listing of available
`
`positions, by clicking “Apply.” Id. col.9 ll.7-8. Thereafter,
`
`a computer program would select the appropriate contractor out
`
`of the pool of contractors that applied. Id. col.9 ll.30-31.
`
`Once that occurred, the contractor would be awarded the
`
`position. Id. col.9 ll.35-39.
`
`
`
`In attempting to overcome Mitsuoka, Plaintiff
`
`explained that in the ’151 patent the acceptance of a position
`
`was different from clicking “Apply” in Mitsuoka because it is
`
`
`
`20
`
`
`
`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 21 of 45
`
`the “receipt of an acceptance in the claimed system [that]
`
`results in an automatic securing of the position.” Response to
`
`Office Action 34, Feb. 18, 2009, Def.’s Br. on Meaning of
`
`Disputed Claim Terms Ex. 10, ECF No. 41. In contrast, before
`
`any securing of the position in Mitsuoka, a contractor selector
`
`program ran and selected a contractor. Put another way, in
`
`Mitsuoka contractors could apply for positions and then the
`
`computer system selected the contractor best qualified for the
`
`position. But, the ’151 patent does not require any selection
`
`from a pool of candidates. Once a substitute accepts an offered
`
`position, and that position is secured, it is no longer
`
`available to any other substitute.
`
`
`
`The ’151 patent’s prosecution history makes clear, as
`
`the Court recognized in its claim construction, that the ’151
`
`patent requires automatic securing of a position to the extent
`
`that once a substitute accepts a position from a listing of
`
`opportunities, there is no further selection from a pool of
`
`candidates by the system. The Court did not limit the claims to
`
`include Defendant’s proposed construction that would prevent no
`
`additional processing of a particular substitute’s acceptance
`
`before the securing occurred. Indeed, the prosecution history
`
`supports the Court’s conclusion. Plaintiff explained, “[W]hen
`
`acceptance is received from the substitute worker on an Internet
`
`
`
`21
`
`
`
`Case 2:07-cv-02457-ER Document 104 Filed 07/26/12 Page 22 of 45
`
`communication link, the posted position is substantially
`
`immediately secured to the substitute worker.” Id. at 35
`
`(emphasis added); see also id. (“[T]he system of the claim is
`
`configured so that the decision of filling a position is made by
`
`the substitute electronically sending the acceptance, which
`
`directly causes the securing. In contrast, in Mitsuoka the
`
`decision to award the contract translation to the independent
`
`contractor is made subsequently by the contractor selector
`
`portion 320.”). Thus, the prosecution history does not reflect
`
`that no validating can occur between acceptance and securing.
`
`The only post-acceptance system activity that may not occur is
`
`the processing described in Mitsuoka. Accordingly, the Court
`
`now clarifies that “automatically securing” does not necessarily
`
`mean that there is no validating between securing and the
`
`position being filled. “Automatically securing” means only that
`
`the claimed system does not choose the particular substitute for
`
`the position f