Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 1 of 20 PageID #: 8427
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`M2M SOLUTIONS LLC,
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`Plaintiff,
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`v.
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`SIERRA WIRELESS AMERICA, INC. and
`SIERRA WIRELESS, INC.,
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`Defendants.
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`Civil Action No. 12-30-RGA
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`MEMORANDUM OPINION
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`Richard D. Kirk, Esq., Stephen B. Brauennan, Esq., Vanessa R. Tiradentes, Esq., Sara E. Bussiere,
`Esq., BAYARD, P.A., Wilmington, DE; Marc N. Henschke, Esq., FOLEY & LARDNER LLP,
`Boston, MA; Jeffrey N. Costakos, Esq., Kadie Jelenchick, Esq., FOLEY & LARDNER LLP,
`Milwaukee, WI; Jason J. Keener, Esq., Jeffrey J. Mikrut, Esq., FOLEY & LARDNER LLP,
`Chicago, IL.
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`Attorneys for Plaintiff M2M Solutions LLC.
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`Thomas C. Grimm, Esq., Jeremy A. Tigan, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP, Wilmington, DE; Robert E. Krebs, Esq., Jennifer Hayes, Esq., Christopher M. Mooney, Esq.,
`NIXON PEABODY LLP, Palo Alto, CA; Ronald F. Lopez, Esq., NIXON PEABODY LLP, San
`Francisco, CA.
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`Attorneys for Defendants Sierra Wireless America, Inc. and Sierra Wireless, Inc.
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`March l_, 2016
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`1
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`M2M
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 2 of 20 PageID #: 8428
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`~'~E:
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`Presently before the Court are two summary judgment motions: Defendants' Motion for
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`Summary Judgment oflnvalidity (D.I. 181) and Defendants' Motion for Summary Judgment of
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`Non-Infringement (D.I. 185). The motions are fully briefed. (D.I. 182, 186, 205, 207, 216,
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`217). 1 For the reasons that follow, I will deny both motions in their entirety.
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`I.
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`BACKGROUND
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`On January 13, 2012, PlaintiffM2M Solutions LLC filed five related patent infringement
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`actions asserting infringement of U.S. Patent Nos. 8,094,010 ("the '010 patent") and 7,583,197
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`("the '197 patent"). The Court held a Markman hearing, after which it invalidated the '197
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`patent and construed several claim terms in the '010 patent. (D.I. 92). Subsequently, in a
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`Memorandum Order deciding multiple defendants' joint motion for reconsideration of the
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`Court's claim construction order, the Court addressed certain indefiniteness arguments that
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`Defendants raise again in their current invalidity motion. (D.I. 215). The Court also issued a
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`Memorandum Opinion on summary judgment motions in Plaintiffs related case against Telit
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`(the "Telit SJ opinion"), which is relevant to certain issues raised here. (C.A. No. 12-33-RGA,
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`D.I. 247).
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`The '010 patent claims a "programmable communicator device" that is capable of
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`receiving transmissions, authenticating them using a particular form of coded number
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`authentication, and storing numbers from authenticated transmissions in a list of permitted
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`callers. ('010 patent, abstract & claim 1). ·The patent further contemplates a device that is
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`remotely programmable and that allows for remote data monitoring, "which can be used to relay
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`1 Unless otherwise specifically noted, all references to the docket refer to Civil Action No. 12-30-RGA.
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 3 of 20 PageID #: 8429
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`information about the status of a remote piece of technical equipment such as a vending
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`machine." (Id. col. 3, 11. 43-47; id. col. 4, 11. 3-7; id. col. 7, 11. 24-30).
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`II.
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`LEGAL STANDARD
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`"The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." FED.
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`R. Crv. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
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`disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
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`330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
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`dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury
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`to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, i'81 (3d Cir.
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`2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the
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`moving party may be discharged by pointing out to the district court that there is an absence of
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`evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
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`The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
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`for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);
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`Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving
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`party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
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`particular parts of materials in the record, including depositions, documents, electronically stored
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`information, affidavits or declarations, stipulations ... , admissions, interrogatory answers, or
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`other materials; or (B) showing that the materials cited [bythe opposing party] do not establish
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`the absence ... of a genuine dispute .... " FED. R. Crv. P. 56(c)(l).
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`When determining whether a genuine issue of material fact exists, the court must view
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`the evidence in the light most favorable to the non-moving party and draw all reasonable
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 4 of 20 PageID #: 8430
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`inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter,
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`476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a
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`reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49.
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`If the non-moving party fails to make a sufficient showing on an essential element of its case
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`with respect to which it has the burden of proof, the moving party is entitled to judgment as a
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`matter oflaw. See Celotex Corp., 477 U.S. at 322.
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`III. DISCUSSION
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`A.
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`Defendants' Motion for Summary Judgment of Invalidity (D.I. 181)
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`Defendants' Motion for Summary Judgment of Invalidity raises three issues. First,
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`Defendants argue that the '010 patent is invalid for failure to meet the written description and
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`enablement requirements of 35 U.S.C. § 112. (D.I. 182 at 7-11 ). Second, Defendants argue that
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`the '010 patent is invalid as indefinite because the processing module claim limitation is an
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`. improper hybrid claim, claiming both an apparatus and method steps. (Id. at 11-14). Third,
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`Defendants argue that the '010 patent is invalid for containing means-plus-function claim terms
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`without sufficient corresponding structure. (Id. at 14-19).
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`1. Written Description and Enablement
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`The written description requirement contained in 35 U.S.C. § 112;if 1 requires that the
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`specification "clearly allow persons of ordinary skill in the art to recognize that [the inventor]
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`invented what is claimed." Ariad Pharm., Inc., v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
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`Cir. 2010) (en bane) (alteration in original) (internal quotation marks omitted). "In other words,
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`the test for sufficiency is whether the disclosure of the application relied upon reasonably
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`conveys to those skilled in the art that the inventor had possession of the claimed subject matter
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`as of the filing date." Id. The written description inquiry is a question of fact. See id. Although
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`it is a question of fact, "[ c ]ompliance with the written description requirement ... is amenable to
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`summary judgment in cases where no reasonable fact finder could return a verdict for the non-
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`moving party." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).
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`"A party must prove invalidity for lack of written description by clear and convincing evidence."
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`Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015).
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`The enablement requirement, considered a separate and distinct requirement contained in
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`35 U.S.C. § 112, if 1, assesses whether "one skilled in the art, after reading the specification,
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`could practice the claimed invention without undue experimentation." Sitrick v. Dreamworks,
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`LLC, 516 F.3d 993, 999 (Fed. Cir. 2008). Because the enablement inquiry takes into account
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`what is known to one skilled in the art, the Federal Circuit has "repeatedly explained that a patent
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`applicant does not need to include in the specification that which is already known to and
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`available to one of ordinary skill in the art." Koito Mfg. Co. v. Tum-Key-Tech, LLC, 381 F.3d
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`1142, 1156 (Fed~ Cir. 2004). "Enablement is a legal question based on underlying factual
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`determinations." Vasudevan, 782 F.3d at 684. Factors considered in assessing the enablement
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`requirement include:
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`(1) the quantity of experimentation necessary, (2) the amount of direction or
`guidance presented, (3) the presence or absence of working examples, ( 4) the nature
`of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art,
`(7) the predictability or unpredictability of the art, and (8) the breadth of the claims.
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`In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). "A party must prove invalidity for lack of
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`enablement by clear and convincing evidence." Vasudevan, 782 F.3d at 684.
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`Defendants argue that the "programmable interface" limitation does not meet the written
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`description and enablement requirements. Defendants essentially make their written description
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`and enablement arguments simultaneously, and do not meaningfully differentiate between the
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`two requirements. (D.I. 182 at 7-11 ). Accordingly, I consider them jointly here. First, relying
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 6 of 20 PageID #: 8432
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`entirely on attorney argument, Defendants assert that the claims of the '010 patent are not
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`adequately described or enabled because "not a single example of an interface or port is
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`disclosed in the specification, let alone one that could be directly programmed." (Id. at 7-8).
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`Second, again only providing attorney argument, Defendants contend that the specification does
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`not provide any written description support for the "programmable interface" that performs the
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`claimed function of "establishing a communication link with at least one monitored technical
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`device." (Id. at 8-9). Lastly, relying on the expert report of their technical expert, Dr. Kevin J.
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`Negus, Defendants argue that the requirement in dependent claims 2 and 54 that the
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`programmable interface be programmed by wireless transmissions is not described or enabled.
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`(Id. at 10-11 (citing D.I. 184 at ifiI 4-5)).
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`Plaintiff, on the other hand, responds to these arguments with citations to the expert
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`report of its validity expert, Dr. Alan Konchitsky. (D.I. 207 at 8-11). Plaintiff notes Dr.
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`Konchitsky's conclusion, which he makes by citing to numerous portions of the '010 patent, that
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`the specification "provide[ s] adequate written description of an interface that was directly
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`programmable and capable of being used for communicating with a monitored technical
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`device .... " (D.I. 208-2 at 9-10, ifir 910-11). Dr. Konchitsky points out a particular portion of
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`the specification that describes the programmable interface connecting to various types of
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`technical equipment to form a communication link through which data transmissions can be
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`received. (Id. at 9, ir 910 (citing '010 patent, col. 2, IL 3-8)). Dr. Konchitsky opines that the
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`specification adequately describes the programmable nature of the interface, because, "A
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`POSIT A would have recognized that a data request from a remote monitoring device would have
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`constituted a wireless programming instruction to send data that the 'programmable interface'
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`could have accepted and executed." (Id. at 12, if 916 (citing '010 patent, col. 8, IL 58-63)).
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 7 of 20 PageID #: 8433
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`Further, with regard to enablement, Dr. Konchitsky opined that "[t]he types of hardware
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`interfaces described in the '010 specification for connecting two electrical hardware devices
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`together and facilitating data transfer between them were well known in the prior art." (Id. at 10,
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`if 912). Accordingly, Dr. Konchitsky concludes that the specification conveys a sufficient
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`disclosure to allow a POSIT A to practice the invention without undue experimentation. (Id.).
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`Most of Defendants' arguments, while purporting to address the written description and
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`enablement requirements simultaneously, do not meaningfully address the enablement
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`requirement. The arguments fail to mention any of the relevant Wands factors. Plaintiffs
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`written description arguments, supported by the expert report of Dr. Alan Konchitsky and his
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`numerous citations to the patent, raise genuine issues of material fact that are not susceptible to
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`summary judgment. In fact, with regard to most of their written description arguments,
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`Defendants cite no expert testimony, relying instead on pure attorney argument. Yet the written
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`description illquiry is a fact question, viewed from the perspective of a person of ordinary skill in
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`the art, and attorney arguments are not facts. These conclusory arguments, unsupported by
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`expert opinion about what a person of skill in the art would understand and directly contradicted
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`by considerable expert testimony, do not meet Defendants' considerable burden of establishing
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`invalidity for lack of written description by clear and convincing evidence. See Vasudevan, 782
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`F.3d at 681. Where Defendants do actually cite expert testimony, solely with regard to claims 2
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`and 54, that opinion is rebutted by Plaintiffs expert, Dr. Konchitsky, creating a factual dispute
`for a fact finder to assess. Accordingly, based on the evidence presented, I cannot conclude that
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`a reasonable jury would be unable to find that the '010 patent meets the written description
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`requirement.
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 8 of 20 PageID #: 8434
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`Likewise, Defendants' failure to reference the enablement standard with any specificity
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`or to otherwise make specific enablement arguments provides grounds to find that this argument
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`has been waived. Plaintiff offers the expert opinion of Dr. Konchitsky in support of its argument
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`that the '010 patent's disclosure would allow a POSITA to practice the invention without undue
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`experimentation. (D.I. 208-2 at 10, if 912). Defendants offer nothing more than vague
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`references to the enablement standard, without any discussion of the state of the art, the relative
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`skill and understanding of a POSIT A, the amount of experimentation that would be necessary, or
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`any other relevant Wands factors. Defendants' cursory argument plainly fails to establish by
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`clear and convincing evidence the underlying facts necessary to determine that the '010 patent is
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`invalid for lack of enablement. See Vasudevan, 782 F.3d at 684. Accordingly, I will deny
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`Defendants' motion for summary judgment of invalidity for lack of written description and
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`enablement.
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`2. Indefiniteness Under § 112, ~2 for Improper Hybrid Claims
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`In IPXL Holding, the Federal Circuit held that when a claim "recites both a system and
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`the method for using that system, it does not apprise a person of ordinary skill in the art of its
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`scope, and[] is therefore [indefinite] under section 112, paragraph 2." IPXL Holding, L.L.C. v.
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`Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Subsequent decisions by the Federal
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`Circuit upheld this rule where, as in IPXL, the claim language expressly required both an
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`apparatus and that a user actually use the apparatus. See H-W Tech., L.C. v. Overstock.com, Inc.,
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`758 F.3d 1329, 1336 (Fed. Cir. 2014) (applying this principle to claim language stating
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`"'wherein said user completes ... ' and 'wherein said user selects .... '" (alterations in original));
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`In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011)
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`(applying this principle to claim language stating "'wherein ... callers digitally enter data' and
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 9 of 20 PageID #: 8435
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`'wherein ... callers provide ... data"' (alterations in original)). Numerous district courts have
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`described this rule oflaw, however, as a narrow one, with the general understanding that "the
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`rule does not apply to claims containing language simply describing a system as well as the
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`capabilities of the claimed system; rather, the rule applies to claims describing a system that also
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`require the user of the recited system to take specific action." Bayer Pharma AG v. Watson
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`Labs., Inc., 2014 WL 4954617, at *6 (D. Del. Sept. 30, 2014) (citing various district court
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`opinions in accord with this position).
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`Defendants argue that "Claims 1 and 52 [of the '010 patent] are invalid as indefinite
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`because they impermissibly combine statutory classes of invention-apparatus and method-and
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`thus one of ordinary skill in the art cannot ascertain the scope of the claims with reasonable
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`certainty." (D.I. 182 at 12-13). Specifically, Defendants pinpoint language in the "processing
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`module" claim limitation within those claims: "claims 1 and 52 combine a 'processing module
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`for authenticating' a transmission with the requirement that the processing module actually
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`authenticate the transmission: 'wherein the processing module authenticates;'" (Id. at 13).
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`According to Defendants, "[ t ]he difference in verb usage illustrates that the step of requiring the
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`processing module to authenticate the transmission is actually required in the second limitation."
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`(Id.). In essence, Defendants contend that it is unclear to manufacturers and sellers of products
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`whether they infringe the 'O 10 patent merely by making and selling a product with the capability
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`of authenticating incoming transmissions or if the product must also actually perform the method
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`step of authenticating an incoming transmission in order to infringe. (Id. at 13-14 ). Plaintiff, on
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`the other hand, argues that the "processing module" claim limitation is drafted in a manner that
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`describes an apparatus with certain functional capability. (D.I. 207 at 21).2 Plaintiff also argues
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`2 Plaintiff supports its assertions-that a POSIT A would understand that the claims of the 'O 10 patent are drawn
`to functional capability and that the '010 patent provides adequate notice that infringement occurs when a product is
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 10 of 20 PageID #: 8436
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`that Defendants misread the narrow IPXL line of cases and insist that the claim language here is
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`not analogous to the claim language at issue in IPXL and its progeny. (Id. at 22).
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`In the Telit SJ opinion, I held that the '010 patent, including the "processing module"
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`limitation, claimed an apparatus with certain functional capability. (C.A. No. 12-33-RGA, D.I.
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`247 at 7-14). In that related case, Telit made indefiniteness arguments that are nearly identical
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`to those raised by Defendants here, but that focused on different claim language. (Id. at 30-32).
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`In the Telit SJ opinion, I first noted that Telit's indefiniteness arguments relied on the same
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`premise as its unsuccessful non-infringement arguments: "that claim 1 of the '010 patent requires
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`a user to perform method steps." (Id. at 32). I concluded, "Because I have already held that this
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`claim language properly claims functional capability, as opposed to method steps, Defendants'
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`indefiniteness argument merits no relief" (Id.). Second, I held that the IPXL line of cases did
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`not support Defendants' argument, because the claim language at issue in the '010 patent does
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`not specifically "'require the user of the recited system to take specific action.'" (Id. (quoting
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`Bayer Pharma, 2014 WL 4954617, at *6)). The reasoning of the Telit SJ opinion applies with
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`equal force here, as Defendants are asserting that the same claim limitation in the same patent is
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`indefinite under the same legal theory.
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`Defendants argue, however, that the Telit SJ opinion should not impact their
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`indefiniteness argument here, because Telit argued that different language (within the same
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`claim limitation) created the requirement that method steps be performed. (D.I. 223 at 2).
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`Specifically, Defendants note that Telit relied on the "sending" and "receiving" words in the
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`processing module limitation, while Defendants here assert that "the 'authenticates' language
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`sold with this functional capability-with citation to the expert opinion of Dr. Alan Konchitsky. (D.I. 207 at 21 (citing
`D.I. 208-2 at 14-15, ii 933)). Defendants do not cite expert testimony in support of their indefiniteness argument.
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 11 of 20 PageID #: 8437
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`that appears in the wherein clause provides the basis for [their] position that the claim recites a
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`hybrid mixture of apparatus structure and method steps." (Id.).
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`Despite the fact that I did not explicitly consider an argument based on the
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`"authenticating" language, I conclude that the rationale and conclusions of the Telit SJ Opinion
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`are applicable and dispositive as to Defendants' indefiniteness arguments here. First, I expressly
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`held in the Telit SJ opinion that "the additional language following the processing module claim
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`limitation does not require that method steps be performed. It simply provides a description of
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`how the claimed function is achieved in the context of the invention." (C.A. No. 12-33-RGA,
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`D.I. 247 at 12). Thus, I unambiguously held that this entire claim limitation does not require the
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`performance of method steps. The "authenticating" claim language that Defendants now point to
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`does not convince me otherwise. Second, the narrow IPXL line of cases does not help
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`Defendants' cause with this different claim language, because the claim language does not
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`mention a user at all or otherwise require that a user take specific action. See Bayer Pharma,
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`2014 WL 4954617, at *6. Instead, this "wherein" clause describes how the processing module
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`itself performs its recited authenticating function in the context of the invention. ('010 patent,
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`claim 1). Accordingly, Defendants' indefiniteness arguments based on hybrid claiming do not
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`warrant summary judgment.
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`3. Indefiniteness Under§ 112, ~ 6 for Means-Plus-Function Terms Without
`Sufficient Corresponding Structure
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`Defendants argue that the "processing module," "programmable interface," and "memory
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`module" claim limitations are all means-plus-function claim limitations that are indefinite
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`because the '010 patent specification does not provide sufficient corresponding structure. (D.I.
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`182 at 14-19). With regard to the processing module and programmable interface claim terms,
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`Defendants made these arguments during claim construction, and I rejected them, noting the
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 12 of 20 PageID #: 8438
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`absence of the word "means" in any of the claim limitations and the "strong presumption" that§
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`112, -ir 6 did not apply in the absence of the word means. (D.I. 92 at 10-13). Subsequently, in
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`Williamson v. Citrb: Online, LLC, the Federal Circuit overruled prior precedent by deciding to
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`"abandon characterizing as 'strong' the presumption that a limitation lacking the words 'means'
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`is not subject to § 112, para. 6." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
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`Cir. 2015) (en bane). Defendants, including the other defendants in Plaintiff's related cases, then
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`moved for reconsideration, asserting Williamson as an intervening change in the law that
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`rendered these claim limitations mean-plus-functions terms subject to § 112, if 6. (D.I. 180).
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`After holding oral argument, I rejected Defendants' renewed arguments that these two terms
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`were subject to § 112, if 6, even after Williamson. I held, "While the presumption against the
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`application of§ 112, if 6 is no longer a 'strong' one after Williamson, it nonetheless remains a
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`presumption that Defendants must affirmatively overcome." (D.I. 215 at 4 (citing Williamson,
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`792 F.3d at 1349)). I ultimately held that Defendants did not overcome that presumption. (Id.).
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`Defendants later conceded that this Court's decision on the motion for reconsideration is
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`dispositive as to their arguments here, at least with regard to the processing module and
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`programmable interface terms. (D.I. 223 at 1 ). Accordingly, these arguments provide
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`Defendants no grounds for relief.
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`In order to overcome the presumption that § 112, if6 does not apply to claim terms not
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`including the word "means," Defendants must "demonstrate[] that the claim term fails to recite
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`sufficiently definite structure or else recites function without reciting sufficient structure for
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`performing that function." Williamson, 792 F.3d at 1349. This inquiry is made from the
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`perspective of a person of ordinary skill in the art. See id. With regard to the remaining
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`"memory module" limitation, Defendants argue, without citation to any expert testimony, that
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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 13 of 20 PageID #: 8439
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`because the claim employs only "high level functional terms," it "does not recite even an
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`indication of how the numbers will be stored 'as one or more permitted callers."' (D.I. 182 at
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`16). Thus, according to Defendants, "the now weakened presumption is rebutted, and the
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`module limitations are subject to§ 112 if 6." (Id.). Plaintiff raises a number of alleged
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`deficiencies with Defendants' argument, including that the argument was never previously raised
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`as to this claim limitation and makes no reference to the perspective of a POSITA, as the
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`standard requires. (D.I. 207 at 23-25).
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`The entire claim limitation at issue here reads:
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`a memory module for storing the at least one telephone number or IP address from
`the authenticated transmission as one of one or more permitted callers if the
`processing module authenticates the at least one transmission by determining that
`the at least one transmission includes the coded number ....
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`('010 patent, claim 1). "[I]f a limitation recites a term with a known structural meaning, or
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`recites either a known or generic term with a sufficient description of its operation, the
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`presumption against means-plus-function claiming remains intact." Apple Inc. v. Motorola, Inc.,
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`757 F.3d 1286, 1300 (Fed. Cir. 2014). On its face, the entire claim limitation seems to convey a
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`sufficient description of its operation. The memory module stores numbers in a list of permitted
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`callers if the processing module authenticates them using coded number authentication.
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`Moreover, the only reference to the perspective of a POSIT A that either party points out in the
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`briefing is a citation to the expert report of Defendants' technical expert, Dr. Negus, who opines
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`that:
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`[P]rior art references describing local storage of access control lists within
`programmable wireless data modules that disclosed the limitation of the 'memory
`module for storing' claim element as well as the incoming and outgoing permitted
`caller limitations. . . . were well known to the POSITA at or before the time of
`[Plaintiffs] alleged priority date.
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`13
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`13
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`M2M
`Ex. 2008
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`

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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 14 of 20 PageID #: 8440
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`(D.I. 208-4 at 11, if 173). While not opining directly as to indefiniteness here, the implication of
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`Dr. Negus's testimony is clear. A POSITA would understand the '010 patent's memory module
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`as referring to access control lists, which were well known in the art. Thus, it appears that the
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`memory module claim limitation recites a function, but recites sufficient structure for performing
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`that function from the perspective of a POSITA. See Williamson, 792 F.3d at 1349.
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`Even in the absence of the substantive considerations discussed above, I would still
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`conclude that Defendants' two sentences of attorney argument with regard to the memory
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`module claim limitation wholly fail to rebut the presumption that § 112, '1f 6 does not apply in the
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`absence of the word means. While the presumption against the application of §112,'if 6 is no
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`longer a "strong" one after Williamson, it nonetheless remains a presumption that Defendants
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`must affirmatively overcome. See Williamson, 792 F.3d at 1349. Even under the presumption as
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`understood after Williamson, Defendants do nothing to meet their burden of demonstrating that
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`"the claim term fails to recite sufficiently definite structure or else recites function without
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`reciting sufficient structure for performing that function." Williamson, 792 F.3d at 1349 (internal
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`quotation marks omitted). Instead, Defendants simply offer conclusory attorney statements that
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`the claim limitation does not provide an indication of how to store numbers of permitted callers.
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`Accordingly, I will deny Defendants' motion for summary judgment of invalidity on
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`indefiniteness grounds.
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`B.
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`Defendants' Motion for Summary Judgment of Non-Infringement (D.I. 185)
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`A patent is infringed when a person "without authority makes, uses, offers to sell, or sells
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`any patented invention, within the United States ... during the term of the patent .... " 35
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`U.S.C. § 271(a). A two-step analysis is employed in making an infringement determination. See
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), ajj'd, 517
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`14
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`14
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`M2M
`Ex. 2008
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`

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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 15 of 20 PageID #: 8441
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`U.S. 370 (1996). First, the court must construe the asserted claims to as~ertain their meaning and
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`scope. See id. Second, the trier of fact must then compare the properly construed claims with
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`the accused infringing product. See id. This second step is a question of fact. See Bai v. L & L
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`Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
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`"Literal infringement of a claim exists when every limitation recited in the claim is found
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`in the accused device." Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If
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`any claim limitation is absent from the accused device, there is no literal infringement as a matter
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`oflaw." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an
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`accused product does not infringe an independent claim, it also does not infringe any claim
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`depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir.
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`1989). The patent owner has the burden of proving infringement and must meet its burden by a
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`preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d
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`878, 889 (Fed. Cir. 1988). When an accused infringer moves for summary judgment of non(cid:173)
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`infringement, such relief may be granted only if at least one limitation of the claim in question
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`does not read on an element of the accused product, either literally or under the doctrine of
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`equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also
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`TechSearch, L.L.C. v. Intel Corp., 286 F3d 1360, 1369 (Fed. Cir. 2002) ("Summary judgment of
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`noninfringement is ... appropriate where the patent owner's proof is deficient in meeting an
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`essential part of the legal standard for infringement, because such failure will render all other
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`facts immaterial."). "Thus, summary judgment of non-infringement can only be granted if, after
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`viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue
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`as to whether" the accused product is covered by the claims (as construed by the court). Pitney
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`Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
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`15
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`15
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`M2M
`Ex. 2008
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`

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`Case 1:12-cv-00030-RGA Document 224 Filed 03/31/16 Page 16 of 20 PageID #: 8442
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`1. The "Programmable Interface" Claim Limitation
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`Defendants argue that they are entitled to summary judgment of non-infringement
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`because the accused products are not directly programmable, as stated in my construction of
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`''programmable interface," but instead are only indirectly programmable. (D.I. 186 at 11 ).
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`Specifically, Defendants assert that AT commands do not directly program the accused
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`interfaces, but instead first go to an intermediary, a microprocessor, which itself process