Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 1 of 72 PageID# 12382
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
`
`VIRGINIA INNOVATION
`
`SCIENCES, INC.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO.,
`LTD., ET AL.,
`
`Defendants.
`
`Case No.: 2:12cv548
`
`OPINION AND ORDER
`
`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.
`
`See Fed. 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.
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
`
`VIRGINIA INNOVATION
`
`SCIENCES, INC.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO.,
`LTD., ET AL.,
`
`Defendants.
`
`Case No.: 2:12cv548
`
`OPINION AND ORDER
`
`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.
`
`See Fed. 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.
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 2 of 72 PageID# 12383
`
`I. FACTUAL BACKGROUND
`
`At issue in this case are five1 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 x398 patent").
`
`All of the patents-in-suit
`
`claim priority to the x492 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
`
`M92
`
`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
`
`1 Previously, there were six patents at issue in this case. However,
`U.S. Patent No. 7,957,733 ("the "733 patent") is no longer asserted as
`infringed.
`Agreed Dismissal Order, ECF. No. 408.
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 3 of 72 PageID# 12384
`
`impracticability
`
`of
`
`viewing
`
`multimedia
`
`content
`
`on
`
`the
`
`small
`
`screens of mobile terminals.
`
`A. The M92 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
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 4 of 72 PageID# 12385
`
`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, I 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.
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 5 of 72 PageID# 12386
`
`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.
`
`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.
`
`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
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 6 of 72 PageID# 12387
`
`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
`
`(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.
`
`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.2
`
`Celotex Corp.
`
`v.
`
`Catrett,
`
`477
`
`U.S.
`
`317,
`
`322-24
`
`(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.
`
`In
`
`doing so, the judge must construe the facts and all "justifiable
`
`2 "When a motion for summary judgment is properly made and supported,
`an opposing party may not rely merely on allegations or denials in its
`own pleading; rather, its response must-by affidavits or as otherwise
`provided in this rule—set out specific facts showing a genuine issue
`for trial." Fed. R. Civ. P. 56(e)(2).
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 7 of 72 PageID# 12388
`
`inferences" in the light most favorable to the non-moving party,
`
`and the judge may not make credibility determinations.
`
`Id. at
`
`255; 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.
`
`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.
`
`"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)).
`
`Therefore,
`
`the Court must now
`
`examine each applicable evidentiary burden.
`
`B. Patent Invalidity
`
`"Among other defenses under § 282 of the Patent Act of 1952
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 8 of 72 PageID# 12389
`
`(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,
`
`131 S. Ct.
`
`2238,
`
`2242
`
`(2011)
`
`(citing 35
`
`U.S.C. §§ 282(2),
`
`(3)).
`
`Defendants assert the invalidity of the
`
`patents-in-suit.
`
`A patent is presumed valid upon issuance from the United
`
`States
`
`Patent
`
`and
`
`Trademark
`
`Office.
`
`35
`
`U.S.C.
`
`§
`
`282.
`
`Overcoming
`
`this
`
`presumption
`
`requires
`
`the
`
`party
`
`seeking
`
`to
`
`invalidate a patent to prove invalidity by clear and convincing
`
`evidence.
`
`i4i Ltd.
`
`P'ship,
`
`131
`
`S.
`
`Ct.
`
`at 2246.
`
`This same
`
`standard applies
`
`at
`
`the
`
`summary judgment stage.
`
`Invitrogen
`
`Corp. v. Biocrest Mfg.,
`
`L.P.,
`
`424 F.3d 1374,
`
`1378
`
`(Fed. Cir.
`
`2005) . Thus, in order to prevail at the summary judgment stage,
`
`the
`
`party
`
`seeking
`
`summary
`
`judgment
`
`on
`
`the
`
`issue
`
`of
`
`patent
`
`invalidity "must submit such clear and convincing evidence of
`
`invalidity so that no reasonable jury could find otherwise."
`
`Eli Lilly & Co. v. Barr Labs.,
`
`Inc.,
`
`251 F.3d 955, 962
`
`(Fed.
`
`Cir. 2001); Apple Computer, Inc., 234 F.3d at 20.
`
`Before addressing the factual questions of anticipation and
`
`obviousness,
`
`the necessary
`
`first
`
`step
`
`in
`
`considering patent
`
`validity or invalidity is to determine the proper meaning of the
`
`relevant disputed claim terms.
`
`Akamai Techs., Inc., v. Cable &
`
`Wireless Internet Servs.,
`
`Inc.,
`
`344 F.3d 1186,
`
`1195 n.4
`
`(Fed.
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 9 of 72 PageID# 12390
`
`Cir. 2003) .
`
`As claim construction is a matter of law, Markman
`
`v. Westview, Instruments Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
`
`(en banc),
`
`summary judgment is particularly appropriate where
`
`the
`
`only
`
`real
`
`dispute
`
`between
`
`parties
`
`concerns
`
`the
`
`proper
`
`meaning of patent claims.
`
`See Voice Techs. Group,
`
`Inc. v. VMC
`
`Sys. , Inc.,
`
`164 F.3d 605,
`
`612
`
`(Fed.
`
`Cir.
`
`1999)
`
`(considering
`
`infringement at summary judgment stage).
`
`Although Voice Techs.
`
`Group,
`
`Inc. concerns the issue of infringement at the summary
`
`judgment
`
`stage,
`
`the
`
`Federal
`
`Circuit's
`
`reasoning
`
`is
`
`equally
`
`applicable
`
`to
`
`the
`
`issue
`
`of
`
`patent
`
`validity at
`
`the
`
`summary
`
`judgment stage.
`
`i. invalidity Based on Anticipation
`
`Patent invalidity due to anticipation under 35 U.S.C. § 102
`
`is a question of
`
`fact rather than a question of
`
`law.
`
`Enzo
`
`Biochem, Inc. v. Applera Corp.,
`
`599 F.3d 1325, 1331 (Fed. Cir.
`
`2010).
`
`However, "[w]hile anticipation is a question of fact, it
`
`may be decided on summary judgment if
`
`the record reveals no
`
`genuine dispute of material fact."
`
`Enzo Biochem, Inc., 599 F.3d
`
`at 1331 (quoting Leggett & Piatt, Inc. v. VUTEk, Inc., 537 F.3d
`
`1349, 1352 (Fed. Cir. 2008)).
`
`"A determination that a claim is anticipated involves a
`
`two-step
`
`analysis:
`
`'the
`
`first
`
`step
`
`requires
`
`construing
`
`the
`
`claim,'
`
`and
`
`'[t]he second step
`
`in
`
`the
`
`analysis
`
`requires
`
`a
`
`comparison
`
`of
`
`the
`
`properly
`
`construed
`
`claim
`
`to
`
`the
`
`prior
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 10 of 72 PageID# 12391
`
`art....'" Enzo Biochem,
`
`Inc.,
`
`599 F.3d at 1332
`
`(quoting Power
`
`Mosfet Techs., LLC v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir.
`
`2004)).
`
`"A patent is invalid for anticipation if a single prior
`
`art reference discloses each and every limitation of the claimed
`
`invention." Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377
`
`(Fed. Cir.
`
`2003)
`
`(citing Lewmar Marine,
`
`Inc. v. Barient,
`
`Inc.,
`
`827 F.2d 744, 747 (Fed. Cir. 1987)).
`
`However;
`
`[i]f the prior art reference does not expressly set
`forth
`a
`particular
`element
`of
`the
`claim,
`that
`reference
`still
`may anticipate
`if
`that
`element
`is
`"inherent" in its disclosure. To establish inherency,
`the
`extrinsic
`evidence
`"must
`make
`clear
`that
`the
`missing descriptive matter is necessarily present in
`the
`thing described
`in
`the
`reference,
`and that
`it
`would be so recognized by persons of ordinary skill."
`Continental Can Co.
`v. Monsanto Co.,
`948 F.2d 1264,
`1268,
`20
`U.S.P.Q.2d
`1746,
`1749
`(Fed.Cir.1991).
`"Inherency,
`however,
`may
`not
`be
`established
`by
`probabilities or possibilities. The mere fact that a
`certain
`thing
`may
`result
`from
`a
`given
`set
`of
`Id.
`circumstances
`not sufficient."
`at
`1269,
`948
`is
`In re
`F.2d
`1264,
`U.S.P.Q.2d
`at
`1749
`(quoting
`20
`Oelrich,
`666
`F.2d 578,
`581,
`212
`U.S.P.Q.
`323,
`326
`(C.C.P.A.1981)).
`
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
`
`Furthermore, "inherent anticipation does not require that a
`
`person of ordinary skill
`
`in the art at
`
`the time would have
`
`recognized the inherent disclosure."
`
`Schering Corp.,
`
`339 F.3d
`
`at 1377 (emphasis added)
`
`(citing "e.g., In re Cruciferous Sprout
`
`Litig.,
`
`301 F.3d 1343,
`
`1351
`
`(Fed.
`
`Cir.
`
`2002);
`
`MEHL/Biophile
`
`Int'l Corp. v.
`
`Milgraum,
`
`192 F.3d 1362,
`
`1366
`
`(Fed.
`
`Cir.
`
`1999)
`
`('Where ... the result is a necessary consequence of what was
`
`10
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 11 of 72 PageID# 12392
`
`deliberately intended,
`
`it is
`
`of no import that the article's
`
`authors did not appreciate the results.')").
`
`Moreover,
`
`it
`
`is
`
`not necessary that the inherent disclosure was recognized by a
`
`person having ordinary skill in the art before the critical date
`
`of the patent as long as the scope of the prior art includes
`
`disclosure of the inherent feature.3
`
`Schering Corp., 339 F.3d at
`
`1377-78
`
`(citing Continental Can Co.
`
`v. Monsanto Co.,
`
`948 F.2d
`
`1264,
`
`1268-69
`
`(Fed.
`
`Cir.
`
`1991)).
`
`Because
`
`"inherency,
`
`like
`
`anticipation itself, requires a determination of the meaning of
`
`the prior art," the Court "may resolve factual questions about
`
`the subject matter in the prior art by examining the reference
`
`through the eyes of a person of ordinary skill in the art, among
`
`other sources of evidence about the meaning of the prior art."
`
`Schering Corp., 339 F.3d at 1377.
`
`ii. Invalidity Based on Obviousness
`
`A
`
`patent
`
`is
`
`invalid
`
`based
`
`on
`
`obviousness
`
`"if
`
`the
`
`differences between the subject matter sought to be patented and
`
`the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter
`
`3 See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1349 (Fed. Cir.
`1999) ("Once it is recognized that interstitial and porous air were
`inherent elements of the prior art compositions, the assertion that
`air may act as a sole sensitizer amounts to no more than a claim to
`the discovery of an inherent property of the prior art, not the
`addition of a novel element. Insufficient prior understanding of the
`inherent properties of a known composition does not defeat a finding
`of anticipation.").
`
`11
`
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`
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`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 12 of 72 PageID# 12393
`
`pertains."
`
`35 U.S.C.
`
`§ 103(a).
`
`While the obviousness inquiry
`
`is
`
`ultimately
`
`a
`
`legal
`
`determination,
`
`it
`
`is
`
`predicated
`
`on
`
`underlying factual findings that are unique to each patent case.
`
`KSR Int'l Co.
`
`v.
`
`Teleflex Inc.,
`
`550 U.S.
`
`398,
`
`406-07
`
`(2007).
`
`However,
`
`"a district court can properly grant,
`
`as a matter of
`
`law, a motion for summary judgment on patent invalidity when the
`
`factual inquiries into obviousness present no genuine issue of
`
`material facts." Tokai Corp.
`
`v. Easton Enterprises,
`
`Inc.,
`
`632
`
`F.3d 1358,
`
`1366 (Fed. Cir.
`
`2011)
`
`(quoting Ryko Mfg. Co. v. Nu-
`
`Star,
`
`Inc., 950 F.2d 714,
`
`716
`
`(Fed.
`
`Cir.
`
`1991)); accord Union
`
`Carbide Corp.
`
`v.
`
`Am. Can Co.,
`
`724 F.2d 1567,
`
`1571 (Fed.
`
`Cir.
`
`1984);
`
`Chore-Time Equip.,
`
`Inc.
`
`v.
`
`Cumberland Corp.,
`
`713 F.2d
`
`774, 778-79 (Fed. Cir. 1983).
`
`statutory
`
`presumption
`
`of
`
`Because
`
`a
`
`patent
`
`enjoys
`
`a
`
`validity,
`
`35
`
`U.S.C.
`
`§
`
`282,
`
`an alleged
`
`infringer
`
`seeking
`
`to
`
`establish that a patent is invalid as obvious must overcome the
`
`presumption
`
`of
`
`validity
`
`"by clear
`
`and convincing
`
`evidence,"
`
`Innovention Toys, LLC v. MGA Entm't,
`
`Inc.,
`
`637 F.3d 1314, 1320
`
`(Fed.
`
`Cir.
`
`2011).
`
`Thus,
`
`to establish a prima facie case of
`
`obviousness,
`
`the
`
`burden
`
`is
`
`on
`
`the
`
`alleged
`
`infringer
`
`to
`
`establish,
`
`by clear and convincing evidence,
`
`that
`
`a
`
`skilled
`
`artisan would have both been motivated to combine the prior art
`
`and have
`
`a
`
`reasonable
`
`expectation
`
`of
`
`success
`
`in doing
`
`so.
`
`Kinetic Concepts,
`
`Inc. v. Smith & Nephew,
`
`Inc.,
`
`688 F.3d 1342,
`
`12
`
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`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 13 of 72 PageID# 12394
`
`1360 (Fed. Cir. 2012).4
`
`The
`
`following
`
`four-factor
`
`test
`
`guides
`
`the
`
`obviousness
`
`inquiry:
`
`"(1) the scope and content of the prior art,
`
`(2)
`
`the
`
`differences between the prior art and the claims at issue,
`
`(3)
`
`the level of ordinary skill in the art, and (4) any relevant
`
`secondary considerations, such as commercial success,
`
`long felt
`
`but unsolved needs, and the failure of others."
`
`Wyers v. Master
`
`Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (citing Graham v.
`
`John Deere Co.,
`
`383
`
`U.S.
`
`1,
`
`17-18
`
`(1966))
`
`(hereinafter
`
`"the
`
`Graham factors").
`
`Indeed,
`
`the Federal Circuit has explained
`
`that courts are required to consider all
`
`four of the Graham
`
`factors
`
`prior
`
`to
`
`reaching
`
`a
`
`conclusion
`
`with
`
`respect
`
`to
`
`obviousness.
`
`In
`
`re
`
`Cyclobenzaprine
`
`Hydrochloride
`
`Extended-
`
`Release Capsule Patent Litig., 676 F.3d 1063, 1076-77 (Fed. Cir.
`
`2012).
`
`C. Willful Infringement
`
`The Federal Circuit established the current standard for
`
`willful
`
`infringement
`
`in
`
`In
`
`re
`
`Seagate,
`
`in which
`
`the
`
`Court
`
`"overrule[d] the standard set out in Underwater Devices" and, in
`
`so doing,
`
`"abandon[ed] the affirmative duty of due care." In re
`
`Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).
`
`The
`
`4 While it remains appropriate to analyze any "teaching, suggestion, or
`motivation to combine elements from different prior art references,"
`the Supreme Court's opinion in KSR made clear that such considerations
`are not rigid requirements, and the "overall inquiry must be expansive
`and flexible."
`Kinetic Concepts, 688 F.3d at 1360.
`
`13
`
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`
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`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 14 of 72 PageID# 12395
`
`Federal
`
`Circuit
`
`held
`
`"that
`
`proof
`
`of
`
`willful
`
`infringement
`
`permitting
`
`enhanced damages
`
`requires
`
`at
`
`least
`
`a
`
`showing
`
`of
`
`objective
`
`recklessness,"
`
`which
`
`requires
`
`meeting
`
`a
`
`threshold
`
`objective standard and a subsequent subjective standard.
`
`Id.
`
`The
`
`threshold objective standard requires
`
`that,
`
`in order
`
`to
`
`establish willful infringement,
`
`"a patentee must show by clear
`
`and convincing evidence
`
`that
`
`the
`
`infringer acted despite an
`
`objectively
`
`high
`
`likelihood
`
`that
`
`its
`
`actions
`
`constituted
`
`infringement
`
`of
`
`a
`
`valid
`
`patent."
`
`Id.
`
`"If
`
`this
`
`threshold
`
`objective
`
`standard
`
`is
`
`satisfied,
`
`the
`
`patentee
`
`must
`
`also
`
`demonstrate that
`
`this
`
`objectively-defined risk
`
`(determined by
`
`the record developed in the infringement proceeding) was either
`
`known or so obvious
`
`that
`
`it should have been known to
`
`the
`
`accused infringer."
`
`Id.
`
`Following
`
`Seagate,
`
`the
`
`Federal
`
`Circuit
`
`"established the
`
`rule that generally the 'objective prong of Seagate tends not to
`
`be met where an accused infringer relies on a reasonable defense
`
`to a charge of infringement.'"
`
`Bard Peripheral Vascular, Inc.
`
`v. W.L. Gore & Associates,
`
`Inc.,
`
`682 F.3d 1003,
`
`1005-06 (Fed.
`
`Cir.
`
`2012)
`
`cert,
`
`denied,
`
`133 S. Ct. 932
`
`(2013)
`
`(quoting Spine
`
`Solutions, Inc. v. Medtronic Sofamor Danek USA,
`
`Inc.,
`
`620 F.3d
`
`1305, 1319 (Fed. Cir. 2010)).
`
`14
`
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`
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`
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`
`IV. DISCUSSION
`
`A. Invalidity of M92 Patent Family
`
`The priority date of a patent functions as a cut-off date
`
`for what may qualify as a prior art reference.
`
`See 35 U.S.C. §
`
`102.
`
`Where patents share a priority date,
`
`they are therefore
`
`subject to the same prior art references.
`
`Because the
`
`'492,
`
`'268,
`
`'711, and '381 patents share a common priority date,
`
`as
`
`members of the '492 patent family, they are subject to the same
`
`prior art references. It is for this reason that the Court will
`
`consider the '492,
`
`'268,
`
`'711, and '381 patents, and the prior
`
`art references asserted against
`
`them,
`
`together.
`
`However,
`
`it
`
`should be emphasized that the applicability of each prior art
`
`reference
`
`is
`
`still
`
`determined
`
`with
`
`regard
`
`to
`
`each
`
`claim
`
`individually.
`
`As stated above, the party seeking summary judgment on the
`
`issue
`
`of
`
`patent
`
`invalidity
`
`"must
`
`submit
`
`such
`
`clear
`
`and
`
`convincing evidence of invalidity so that no reasonable jury
`
`could find otherwise."
`
`Eli
`
`Lilly &
`
`Co.,
`
`251 F.3d at
`
`962.
`
`However,
`
`before addressing the
`
`questions
`
`of
`
`anticipation and
`
`obviousness,
`
`the
`
`necessary
`
`first
`
`step
`
`in
`
`considering patent
`
`validity or invalidity is to determine the proper meaning of the
`
`relevant disputed claim terms.
`
`Akamai Techs., Inc., 344 F.3d at
`
`1195 n.4.
`
`15
`
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`
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`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 16 of 72 PageID# 12397
`
`i. Construction of Claim Terms
`
`The Court resolved the construction of the majority of the
`
`disputed claim terms through the issuance of its Markman opinion
`
`on September 25, 2013.
`
`However, a new dispute has arisen over
`
`the course of the parties' submissions on Samsung's Motion for
`
`Summary Judgment.
`
`VIS asserts that decompression of
`
`the video signal is a
`
`required limitation of all of its asserted claims.
`
`Pi. Virginia
`
`Innovation Sciences Inc.'s Mem. In Opp. to Def.'s Mot. for Summ.
`
`J. ("Mem. in Opp.") at 15, ECF No. 163.
`
`More specifically, VIS
`
`asserts that the conversion from a signal format appropriate for
`
`the
`
`mobile
`
`terminal
`
`to
`
`a
`
`display
`
`format
`
`for
`
`output
`
`to
`
`the
`
`alternative
`
`display
`
`inherently
`
`requires
`
`conversion
`
`from
`
`a
`
`compressed format,
`
`e.g.
`
`the signal format,
`
`to an uncompressed
`
`format,
`
`e.g.
`
`the display format.
`
`Id. at 16.
`
`Samsung argues
`
`this assertion by VIS constitutes an argument for a different
`
`claim construction than that already determined by the Court, in
`
`its
`
`Markman Opinion,
`
`for
`
`the
`
`term "converted video signal."
`
`Rebuttal Br. in Supp. of Samsung's Mot. for Summ. J. ("Rebuttal
`
`Br.") at 6-7, ECF No. 168.
`
`However, VIS's argument is based not
`
`on the
`
`term
`
`"converted video
`
`signal,"
`
`but
`
`on the remaining
`
`language
`
`in
`
`the
`
`claims
`
`setting
`
`forth
`
`additional
`
`limitations
`
`beyond those included through the term "converted video signal"
`
`alone.
`
`Although
`
`conversion
`
`is
`
`the
`
`necessary
`
`process
`
`for
`
`16
`
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`
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`
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`
`obtaining the product, a "converted video signal," there is no
`
`rule
`
`which
`
`prevents
`
`a
`
`claim
`
`from
`
`including
`
`additional
`
`limitations
`
`beyond
`
`those
`
`set
`
`forth
`
`as
`
`the
`
`baseline
`
`in
`
`the
`
`Court's
`
`claim
`
`construction.
`
`In
`
`this
`
`case,
`
`the
`
`claim
`
`construction of the term "converted video signal" sets forth the
`
`minimum baseline
`
`regarding what
`
`must
`
`take
`
`place
`
`during
`
`the
`
`processing for the video signal to be considered "converted."5
`
`Thus,
`
`the
`
`inclusion
`
`of
`
`additional
`
`limiting
`
`language
`
`in
`
`the
`
`claims requiring the additional step of decompression beyond the
`
`baseline contemplated by the Court's construction of the term
`
`"converted video signal"
`
`would not require a change
`
`to the
`
`Court's
`
`construction
`
`of
`
`the
`
`term
`
`in
`
`its
`
`Markman
`
`Opinion.
`
`Moreover, while this issue might have been raised by the parties
`
`for
`
`resolution
`
`during
`
`claim
`
`construction,
`
`the
`
`Court
`
`has
`
`discretion to address
`
`it during consideration of a summary
`
`judgment motion.
`
`See Stern v. SeQual Technologies, Inc., 840 F.
`
`Supp. 2d 1260,
`
`1266 (W.D. Wash. 2012) aff'd, 493 F. App'x 99
`
`(Fed. Cir. 2012); SanDisk Corp. v. Memorex Products, Inc., 415
`
`F.3d 1278, 1292 (Fed. Cir. 2005).
`
`In support of their argument that conversion, as recited in
`
`the claims asserted, requires decompression, VIS cites to Figure
`
`3 of the '492 specification, which shows receipt of a signal
`
`5 In its Markman Opinion, the Court gave the term "converted video
`signal" its plain and ordinary meaning, which is "a video signal that
`has been changed."
`Markman Opinion at 44 & 52, ECF No. 198.
`
`17
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`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 18 of 72 PageID# 12399
`
`through
`
`a
`
`wireless
`
`network,
`
`processing
`
`by
`
`Video
`
`Compress
`
`Decoder,
`
`304a,
`
`and transmission of
`
`the video
`
`signal
`
`to
`
`the
`
`display via an uncompressed format.
`
`Mem. in Opp. at 17, ECF No.
`
`163.
`
`There is undoubtedly support in the '492 specification for
`
`an embodiment requiring processing of the video signal from a
`
`compressed format to an uncompressed format during conversion of
`
`the
`
`video
`
`signal,
`
`specifically
`
`Figure
`
`3
`
`and
`
`the
`
`associated
`
`description
`
`of
`
`that
`
`Figure
`
`at
`
`5:44-6:47
`
`of
`
`the
`
`'492
`
`specification.
`
`Furthermore,
`
`"[w]hile it is true,
`
`of course,
`
`that 'the claims define the scope of the right to exclude' and
`
`that 'the claim construction inquiry, therefore, begins and ends
`
`in all cases with the actual words of the claim, ' Renishaw PLC
`
`v.
`
`Marposs
`
`Societa'
`
`per
`
`Azioni,
`
`158
`
`F.3d
`
`1243,
`
`1248
`
`(Fed.Cir.1998), the written description can provide guidance as
`
`to the meaning of the claims, thereby dictating the manner in
`
`which the claims are to be construed."
`
`SciMed Life Sys., Inc.
`
`v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed.
`
`Cir. 2001).
`
`However, the courts have repeatedly stated that
`
`"limitations from the specification are not to be read into the
`
`claims."
`
`Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182,
`
`1186 (Fed. Cir. 1998)
`
`(citing E.I, du Pont de Nemours & Co. v.
`
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988)).
`
`The Federal Circuit has gone so far as to characterize "reading
`
`a limitation from the written description into the claims" as
`
`18
`
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`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 19 of 72 PageID# 12400
`
`"one of the cardinal sins of patent law."
`
`SciMed Life Sys.,
`
`Inc.,
`
`242 F.3d at 1340
`
`(citing Comark Communic'ns,
`
`Inc.,
`
`156
`
`F.3d at
`
`1186).
`
`Thus,
`
`in
`
`construing
`
`the
`
`claims,
`
`the
`
`most
`
`important
`
`question
`
`for
`
`the
`
`Court
`
`to
`
`consider
`
`is
`
`whether
`
`decompression is a limitation encompassed by the language of the
`
`claims asserted by VIS,
`
`without reading limitations from the
`
`specification into the claims.
`
`Language describing conversion of the video signal from a
`
`signal format to a display format appears in some form in the
`
`processing element of every independent claim relevant to VIS's
`
`asserted claims.6
`
`However, as the specific language used in the
`
`independent claims differs with regards to this element, each
`
`claim must be evaluated individually with regard to the asserted
`
`decompression limitation.
`
`1. '492 Patent, Claim 23
`
`The
`
`'492 patent's independent claim,
`
`claim 23, uses
`
`the
`
`following language with regard to the processing element:
`
`"wherein processing by the signal conversion module
`includes
`converting
`the
`video
`signal
`from
`a
`compression format appropriate for the mobile terminal
`to a
`display
`format
`for
`the alternative
`display
`terminal
`that
`is
`different
`from
`the
`compression
`format, such that the converted video signal comprises
`a display format and a power level appropriate for
`driving the alternative display terminal."
`
`6 All dependent claims asserted by VIS depend from an independent claim
`that is also asserted with one exception.
`The claims of the '381
`patent which are asserted by VIS are dependent claims which depend
`from independent claim 15 of the '381 patent, however, claim 15 is not
`itself asserted in these motions.
`
`19
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 20 of 72 PageID# 12401
`
`'492 patent,
`
`10:17-24.
`
`Specifically,
`
`the processing of
`
`the
`
`video signal in claim 23 must include "converting . . . from a
`
`compression format
`
`. . . to a display format
`
`. . . that is
`
`different from the compression format."
`
`Id.
`
`(emphasis added).
`
`In examining this claim language, it is clear that decompression
`
`is
`
`encompassed by the
`
`language of
`
`claim 23
`
`and,
`
`thus,
`
`its
`
`dependent claims as well.
`
`It might be argued that a format
`
`different
`
`from
`
`the
`
`first
`
`compression
`
`format
`
`could
`
`simply
`
`constitute a different
`
`compression format, achievable through
`
`the performance of a process referred to as "transcoding"7 by an
`
`encoder.
`
`However,
`
`the requirement that it be in a display
`
`format after conversion seems to indicate otherwise as evidence
`
`has been presented indicating that a video must be decompressed
`
`before it may be displayed.
`
`Mem. In Opp., Ex. A at f 14, ECF.
`
`No. 163.
`
`Specifically, the evidence before the Court indicates
`
`that a video in a display format must be uncompressed, and the
`
`Court finds this evidence compelling.
`
`Furthermore,
`
`the Court
`
`may
`
`examine relevant
`
`treatises addressing the art
`
`at issue.
`
`NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed.
`
`Cir. 2005) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314
`
`(Fed. Cir. 2005) (en banc)).
`
`At the time of filing of the '492
`
`patent, the process of transcoding itself required decompression
`
`7 See Mem. In Opp, Ex. A-2 at 3 29, ECF. No. 163 ("Some encoders can
`also 'transcode' or change one compressed video signal format into
`another compressed video signal format.").
`
`20
`
`Virginia Innovation Sciences, Ex. 2006
`
`
`
`Case 2:12-cv-00548-MSD-TEM Document 413 Filed 01/08/14 Page 21 of 72 PageID# 12402
`
`as a decoder would have to decode the compressed video befo
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