Case 1:12-cv-00033-RGA Document 247 Filed 01/06/16 Page 1 of 56 PageID #: 12158
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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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`MOTOROLA SOLUTIONS, INC., TELIT
`COMMUNICATIONS PLC, and TELIT
`WIRELESS SOLUTIONS INC.,
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`Defendants.
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`Civil Action No. 12-33-RGA
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`MEMORANDUM OPINION
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`RichardD. Kirk, Esq., StephenB. Brauerman, Esq., VanessaR. Tiradentes, Esq., SaraE. Bussiere,
`Esq., BAYARD, P.A., Wilmington, DE; Marc N. Henschke, Esq. (argued), Jeffrey N. Costakos,
`Esq., Jason J. Keener, Esq. (argued), Jeffrey J. Mikrut, Esq., Kadie Jelenchik, Esq., Matthew J.
`Shin, Esq., FOLEY & LARDNER LLP, Boston, MA.
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`Attorneys for PlaintiffM2M Solutions LLC.
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`Jack B. Blumenfeld, Esq., Rodger D. Smith II, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP, Wilmington, DE; David Loewenstein, Esq. (argued), Clyde A. Shuman, Esq., Guy Yonay,
`Esq. (argued), Keren Livneh, Esq. (argued), PEARL COHEN ZEDEKLATZER, New York, NY.
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`Attorneys for Defendants Telit Communications PLC and Telit Wireless Solutions Inc.
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`January _{g_, 2016
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1218 p.1
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`Case 1:12-cv-00033-RGA Document 247 Filed 01/06/16 Page 2 of 56 PageID #: 12159
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`~.~~
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`Before the Court are various Motions for Summary Judgment filed by Defendants Telit
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`Communications PLC ("PLC") and Telit Wireless Solutions Inc. ("Telit U.S.") (collectively,
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`"Defendants"). Defendants bring three separate motions, all of which the Court will consider
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`here: Motion for Summary Judgment Related to Damages (D.I. 165), Motion for Summary
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`Judgment oflnvalidity (D.I. 171), and Motion for Summary Judgment of Non-Infringement (D.I.
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`175). The motions are fully briefed. (D.I. 166, 172, 177, 196, 198, 202, 226, 228, 230). The
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`Court heard oral argument on October 30, 2015. (D.I. 245). For the reasons that follow, the
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`Court will deny Defendants' Motion for Summary Judgment of Invalidity (D.I. 171) and Motion
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`for Summary Judgment ofNon-Infringement (D.I. 175) in their entirety, but will grant
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`Defendants' Motion for Summary Judgment Related to Damages (D.I. 165) in its entirety.
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`I.
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`BACKGROUND
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`On January 13, 2012, PlaintiffM2M Solutions LLC ("Plaintiff') filed five patent
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`infringement actions asserting infringement of U.S. Patent Nos. 8,094,010 ("'010 patent") and
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`7,583,197 ('"197 patent"). (D.1. 1). The Court held a Markman hearing, after which it
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`invalidated the '197 patent and construed several claim terms in the '010 patent. (D.1. 94). In
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`this action, the Court granted a stipulation as to Defendant Motorola Solutions, Inc., for entry of
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`final judgment of invalidity and non-infringement of the '197 patent, which reserved Plaintiff's
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`right to appeal. (D.I. 158). Accordingly, the present motions relate solely to Plaintiff's
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`remaining claims against the Telit Defendants for infringement of the '010 patent.
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`The '010 patent, broadly speaking, relates to mobile communications technology. ('010
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`patent, col. 2, 11. 56-57). It discloses "a programmable wireless communications apparatus" that
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`"serves to address [] diverse communication requirements" and allows for "remote data
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`2
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`Case 1:12-cv-00033-RGA Document 247 Filed 01/06/16 Page 3 of 56 PageID #: 12160
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`monitoring." (Id. col. I, 11. 22-23; id. col. 7, 11. 24-30). Plaintiff asserts that Defendants
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`indirectly infringe numerous dependent claims of the '010 patent. 1 Plaintiff dropped its direct
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`infringement contentions and now only asserts contributory infringement and induced
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`infringement. (D.I. 198 at 7-8). The asserted apparatus claims all depend from either unasserted
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`independent Claim 1 or Claim 52. Defendants' non-infringement contentions revolve
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`exclusively around these two independent claims. Claim 1 of the '010 patent reads as follows:
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`1. A programmable communicator device comprising:
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`a wireless communications circuit for communicating through an antenna over a
`communications network;
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`an identity module for storing a unique identifier that is unique to the
`programmable communicator device;
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`a processing module for authenticating an at least one transmission sent from a
`programming transmitter and received by the programmable communicator
`device, the at least one transmission including a coded number and at least one
`telephone number or Internet Protocol (IP) address corresponding to an at least
`one monitoring device, wherein the processing module authenticates the at least
`one transmission by determining ifthe at least one transmission contains the
`coded number, the processing module authenticating the at least one transmission
`if the transmission includes the coded number;
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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; and .
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`wherein the at least one transmission from a programming transmitter comprises a
`Short Message Service (SMS) data message, or a General Packet Radio Service
`(GPRS) or other packet switched data message.
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`('010 patent, claim 1).
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`I construed the term "wireless communications circuit for communicating through an
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`antenna" to require the inclusion of an antenna. (D.I. 94 at 15). Plaintiff, and its expert on
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`1 Specifically, Plaintiff asserts infringement of Claims 2, 5, 19, 26, 42, 54, 57-58, 62-64, 66-67, 70-71, 78-79,
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`81, 94, and 97. (D.I. 199-1iii!1, 34).
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`3
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`infringement, Dr. Ray W. Nettleton, opine that, as sold out-of-the-box, Defendants' accused
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`modules literally meet and embody all but one of the recited claim limitations. (D.I. 198 at 7-8;
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`D.I. 199-1 at 11-12, if 29). They allege that the accused products contain pads or connectors
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`specifically designed for connecting to an antenna. (D.I. 198 at 8; D.I. 199-1at15, if 41).
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`Plaintiff thus argues that in order to use the accused products at all, customers will have to
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`connect them to an antenna, something which Defendants instruct customers to do. (D.I. 198 at
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`8). Accordingly, the crux of Plaintiff's infringement contentions is that "[ o ]nee the customers
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`connect an accused product to an antenna, it then literally meets and embodies every limitation
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`ofM2M's asserted apparatus claims, and consequently any use of that product by the customer
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`would constitute an act of direct infringement." (Id. (citing D.I. 199-1 at 11-12, if 29)).
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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. CN. 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, 181 (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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`4
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`Case 1:12-cv-00033-RGA Document 247 Filed 01/06/16 Page 5 of 56 PageID #: 12162
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`Williams v. Borough of West Chester, Pa., 891F.2d458, 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 [by the 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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`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 ifthe 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. Motion for Summary Judgment of Non-Infringement (D.1.175)
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`Defendants' non-infringement arguments can be broken down into several overarching
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`categories. First, Defendants argue that the '010 patent does not claim functional capability but
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`instead covers structures and method steps, and that Plaintiff failed to prove that anyone directly
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`infringed by not showing that the product inherently contains these structures or that any of these
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`method steps actually occurred. (D.I. 177 at 17-19). Second, Defendants argue that even ifthe
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`'010 patent claims cover capability, there is no infringement because users must modify the
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`device to enable the alleged capability. (Id. at 19). Third, Defendants make three specific
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`arguments asserting that, even after the devices are so modified, certain technical aspects of the
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`accused products do not meet the claim limitations of the '010 patent. (Id. at 19-21). Fourth,
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`Defendants make several arguments relating to the standards for indirect infringement. (Id. at
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`21-25).
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`At the outset, some background on Plaintiffs specific infringement contentions is useful.
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`Plaintiff asserts that only two specific features of the accused products allow the products to
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`operate using infringing functionality: performing coded number authentication on 1) "incoming
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`'digest ATRUN SMS' message transmissions," and 2) "incoming TCP/IP transmissions received
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`in server mode subject to default automatic authentication."2 (D.I. 198 at 11-12 (citing D.I. 199-
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`1 at 20-24, iii! 55-63)). More specifically, according to Plaintiff and its expert, the accused
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`products are capable of acting as the claimed "processing module" because they can perform
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`coded number authentication-as required by the processing module limitation--on both of the
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`above types of incoming transmissions. (Id.). Plaintiffs position is that both of these features
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`can be enabled via AT Commands. (Id. (citing D.I. 199-1 at 20, ifif 55~56)).
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`Defendants characterize these functionalities as modes: "SMS Digest Mode" and "TCP
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`server mode using ... automatic authentication." (D.I. 177 at 10).3 Defendants argue that the
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`accused products need first to be programmed via AT Commands in order to operate in either of
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`these two accused modes. (Id. at 10-11 ). Defendants argue also that the accused products, as
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`sold, cannot execute wireless AT Commands to operate in the accused modes, but must first be
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`programmed by commands sent over a wired connection. (D.I. 177 at 10). Defendants'
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`characterization is relevant to their arguments in two ways. First, Defendants argue that there is
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`2 Defendants point out that its accused products can operate in modes that Plaintiff does not suggest are infringing:
`SMS simple mode and TCP server mode using step-by-step authentication. (D.I. 177 at 11).
`3 For the sake of clarity, I will refer to SMS digest authentication and TCP server automatic authentication as the
`"two accused modes" throughout the remainder of this opinion.
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`6
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`no infringement because Plaintiff presents no evidence that any of Defendants' customers ever
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`programmed the accused products to operate in either of the two accused modes. (Id. at 11).
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`Second, Defendants argue that even ifthe '010 patent does properly claim capability, the devices
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`as sold still do not contain the infringing capability because they need to be modified by users in
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`order to infringe. (Id. at 19).
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`1. Whether the '010 Patent Claims Capability
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`"A patent applicant is free to recite features of an apparatus either structurally or
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`functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Federal Circuit has
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`generally held that use of the word "for" within apparatus claims provides functional limitations
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`that "describe capabilities without requiring that any software components be 'active' or
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`'enabled."' Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204-05 (Fed. Cir. 2010);
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`see also Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir.
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`2002) ("Claim 1 also sets forth a number of functionally defined means that the software must
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`contain, including a 'means for scoring ... bonus points' for unusual scoring plays." (alteration
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`in original)). In Finjan, the Federal Circuit reasoned that the repeated use of the word "for" in
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`the claim limitations of a system patent covered functional capability and did not "require that
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`the program code be 'active,' only that it be written 'for causing' a server ... or a computer ...
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`to perform certain steps." Finjan, 626 F.3d at 1204-05. Likewise, the Federal Circuit has also
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`found that use of the word "programmable" is an indication that the patentee is claiming an
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`apparatus in terms of its functionality. See Intel Corp. v. U.S. Int 'l Trade Comm 'n, 946 F .2d
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`821, 832 (Fed. Cir. 199_1) ("Because the language of claim 1 refers to 'programmable selection
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`means' and states 'whereby when said alternate addressing mode is selected,' the accused device,
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`to be infringing, need only be capable of operating in the page mode.").
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`On numerous occasions, the Federal Circuit has looked at functional language in an
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`apparatus claim and concluded that the claim only requires that an accused apparatus possess the
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`capability of performing the recited function. See, e.g., Revolution Eyewear, Inc. v. Aspex
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`Eyewear, Inc., 563 F.3d 1358, 1369-70 (Fed. Cir. 2009) ("[C]laim 22 here only requires a
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`capacity to perform a function ... . ");Microprocessor Enhancement Corp. v. Texas Instrum.
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`Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) ("Claim 7 ... is clearly limited to a pipelined
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`processor possessing the recited structure and capable of performing the recited functions .... "
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`(emphasis in original)); Intel, 946 F.2d at 832. Accordingly, when accused products contain
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`multiple operating modes, "to infringe a claim that recites capability and not actual operation, an
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`accused device 'need only be capable of operating' in the described mode." Finjan, 626 F.3d at
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`1204 (quoting Intel, 946 F.2d at 832). "Thus, depending on the claims, an accused device may
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`be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it
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`may also be capable of non-infringing modes of operation." Id. (internal quotation marks
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`omitted); see also Intel, 946 F.2d at 832.
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`The Federal Circuit has cautioned, however, that the above "line of cases is relevant only
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`to claim language that specifies that the claim is drawn to capability." Ball Aerosol and
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`Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009). Accordingly,
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`"[ u]nless the claim language only requires the capacity to perform a particular claim element ...
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`it is not enough to simply show that product is capable of infringement; the patent owner must
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`show evidence of specific instances of direct infringement." Fujitsu Ltd. v. Netgear Inc., 620
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`F.3d 1321, 1329 (Fed. Cir. 2010). In all of these cases considering whether claim limitations are
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`drawn to capability, the Federal Circuit has repeatedly emphasized that "the language of the
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`claims, as well as the nature of the accused product, dictates whether an infringement has
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`occurred." Fantasy Sports, 287 F.3d at 1118. For instance, in Ball Aerosol, the court found that .
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`"[t]he claim language clearly specifies a particular con.figu,ration," rather than mere functional
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`capability. Ball Aersosol, 555 F.3d at 994 (emphasis added). Likewise, in Fujitsu, the court
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`rejected the argument that the claims at issue only required capability when it concluded that the
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`claims at issue were method claims. See Fujitsu, 620 F.3d at 1326. Thus, it appears that courts
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`must make a threshold inquiry into the disputed claim language and decide whether the claims
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`are directed to functional capability or instead require that certain method steps be taken or
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`structural configurations be present.
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`Here, an important threshold issue to most of Defendants' specific non-infringement
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`contentions is whether the '010 patent properly claims capability or requires actual method steps
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`to be taken. Defendants argue that the claims of the '010 patent are not directed to capability,
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`but instead cover structures and method steps which need to be performed or activated by
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`customers. (D.I. 177 at 17). Defendants argue that, in the processing module limitation of claim
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`1, the inclusion of the words "sent from" and "received by" demonstrates that the claims cover
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`actual events that need to be performed "and therefore, fall outside the Intel line of 'capability'
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`cases." (Id. at 17; D.I. 230 at 8-9). Defendants essentially argue that the addition of these verbs
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`during prosecution demonstrates that these steps-sending, receiving, etc.-. must physically
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`occur before the claim limitations are met. (D.I. 177 at 17; D.I. 230 at 7-8). Moreover,
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`Defendants rely on Fujitsu and Ball Aerosol as cases they contend involved similar claim
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`language that courts found did not properly claim capability. (D.I. 177 at 18). Defendants
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`therefore argue that because the claims here are not directed to capability, three steps must be
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`taken by a user before there is any direct infringement of the method limitations: 1) the user must
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`program the module "to receive and execute AT RUN commands in one of the two accused
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`modes, (2) the whitelist or firewall must be programmed and populated, and (3) a user must send
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`a single transmission including the coded number and the contact number." (Id. at 19). Thus,
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`according to Defendants, because there is no proof that any of these three steps have been taken,
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`there is no proof that anyone has directly infringed.
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`Plaintiff responds by arguing that the claims of the '010 patent are apparatus claims with
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`functional limitations, rendering the proper legal standard to be that "an accused device that
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`possesses the requisite functional capability infringes regardless of whether that capability is
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`activated or utilized in any way." (D.I. 198 at 22 (internal quotation marks and alterations
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`omitted)). Plaintiff cites a plethora of Federal Circuit cases-including Finjan, Fantasy Sports,
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`and Intel-supporting the proposition that where an apparatus claim is stated with functional
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`limitations, it is sufficient for purposes of infringement to show that the accused product contains
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`structure rendering it reasonably capable of performing the recited function. (Id. at 17-20).
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`Plaintiff distinguishes the cases relied upon by Defendants on the grounds· that these cases(cid:173)
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`Fujitsu and Ball Aerosol-did not involve apparatus claims with functional limitations, but
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`rather a method claim and an apparatus claim without any functional limitations, respectively.
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`(Id. at 23). Accordingly, Plaintiff contends that, under the proper standard, Defendants'
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`argument that there is no evidence that its customers actually ever enabled and used the allegedly
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`infringing modes of operation is legally irrelevant. (Id. at 22).
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`Here, the '010 patent unquestionably covers an apparatus. (See, e.g., '010 patent, col. 1,
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`11. 22-23 ("The invention relates to a programmable wireless communications apparatus."
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`(emphasis added)); id. claim 1 (claiming a "programmable communicator device" (emphasis
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`added))). Each claim limitation in the two relevant independent claims, much like in Finjan, is
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`described in terms of each component of the device's function, using the word "for." (See id.
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`col. 12, 1. 21 ("a wireless communications circuit for communicating ... . ");id. 11. 23-24 ("an
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`identity module for storing a unique identifier .... "); id. 11. 25-26 ("a programmable interface
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`for establishing a communication link ... . ");id. 1. 27 ("a processing module for authenticating .
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`. . . ");id. 1. 38 ("a memory module for storing ... . "));see also Finjan, 626 F.3d at 1204--05.
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`The use of adjectives such as "processing," "memory," "programmable," "identity," and
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`"communications," also suggests that each component of the device is defined in terms of its
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`function. See Intel, 946 F.2d at 832 (suggesting that word "programmable" indicates patentee is
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`claiming apparatus in terms of its functionality).
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`Defendants, however, seize on the language immediately following the "processing
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`module" claim limitation as purportedly requiring "actual events (i.e., sending, receiving, and
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`authenticating," thereby transforming the entire claim such that, rather than covering an
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`apparatus, it now covers "structures and method steps" that must be performed by customers.
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`(D.I. 177 at 17). The principal claim language Defendants rely on comes from claim 1:
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`a processing module for authenticating an at least one transmission sent from a
`programming transmitter and received by the programmable communicator
`device ....
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`Defendants essentially suggest that the Court look at the words "sent" and "received" in isolation
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`and regard this passage as requiring that some third-party user perform all of those steps before
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`there can be direct infringement. (D.I. 177 at 17; D.I. 230 at 7-8). The linguistic gymnastics
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`that Defendants engage in to make this argument are hardly convincing.4 See R.A.C.C. Indus.,
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`Inc. v. Stun-Tech, Inc., 1998 WL 834329, at *3 (Fed. Cir. 1998) ("This court has never
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`determined that functional language in a claim converts an apparatus claim into a method of use
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`or hybrid claim."). Indeed, the logic Defendants employ in their efforts to avoid the application
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`4 I find Defendants' arguments based on the prosecution history, which suggest that amendments that added
`certain verbs necessarily show that an action must take place, to be similarly unconvincing.
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`of Intel and its progeny is belied by the very claim language at issue in Intel. There, the claim
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`language stated "whereby when said alternate addressing mode is selected said p words in said
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`memory may be selected with less than n address signals." Intel, 946 F.2d at 831. Under
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`Defendants' line of argument here, such language, while appearing to claim capability, envisions
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`that a user actually selects said alternate addressing mode, making it a method step. (D.I. 177 at
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`18). The Court in Intel, however, expressly considered both similar claim language and
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`arguments, and concluded that "the accused device, to be infringing, need only be capable of
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`operating in the [accused] mode. Contrary to [Respondent's] argument, actual page mode
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`operation in the accused device is not required." Intel, 946 F.2d at 832.
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`The language Defendants point to in the ''processing module" and "memory module"
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`claim limitations unambiguously does not discuss the performance of method steps. With regard
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`to the ''processing module" claim limitation, "the claim recites a function, [and] the immediately
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`following words provide algorithmic structure for performing that function." (D.I. 237 at 9).
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`The Federal Circuit has stated that "[s]tructure may[] be provided by describing the claim
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`limitation's operation .... [which] is more than just its function; it is how the function is
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`achieved in the context of the invention." Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1299
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`(Fed. Cir. 2014). As I previously noted, it was particularly important that Plaintiff included
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`considerable description of how the claim's stated functions are achieved in order for "'the
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`presumption against means-plus-function claiming [to] remain[] intact.'" (D.I. 237 at 7 (quoting
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`Apple, 757 F.3d at 1299)). I conclude that the additional language following the processing
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`module claim limitation does not require that method steps be performed. It simply provides a
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`description of how the claimed function is achieved in the context of the invention. See Apple,
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`757 F.3d at 1299. The language of the "memory module" claim limitation similarly provides
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`additional structure to describe the operation of the stated "storing" function. (' 010 patent, col.
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`12, 11. 38-43). Because I conclude that the '010 patent contains apparatus claims with functional
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`limitations, Defendants' reliance on Fijitsu and Ball Aerosol, where the courts made initial
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`determinations that the language at issue claimed method steps and an apparatus claim without
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`any functional limitations, respectively, is unpersuasive. See Fujitsu, 620 F.3d at 1326; Ball
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`Aersosol, 555 F.3d at 994.
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`The Federal Circuit cases that allowed infiingement to be based upon a showing that an
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`accused product was reasonably capable of performing the recited function did not contain any
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`express requirement that the words "capability" or "capable" actually be used in the claims. For
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`instance, Defendants rely on Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1570 (Fed. Cir. 1996), for
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`the proposition that Intel does not apply unless the claim only required capability ''by its literal
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`terms." (D.I. 177 at 16-17). The claim language in Intel, however, did not use the word
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`"capable" or otherwise expressly refer to "capability," which the Zygo court itself noted. 5 Zygo,
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`79 F.3d at 1570. The court in Zygo therefore acknowledged that the language
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`"PROGRAMMABLE selections means" in Intel is what led it to conclude that the claims
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`required capability, rather than any use of the word capability. Id. at 1570 (emphasis in original)
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`(quoting Intel, 946 F.2d at 832). In addition to Intel, numerous other Federal Circuit cases have
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`found that claims were directed toward functional capability without the words "capability" or
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`"capable" being expressly included in the claims. See, e.g., Finjan, 626 F.3d at 1204-05 (finding
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`"claims describe capabilities" even though the words "capable" or "capability'' did not appear in
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`claim language); Microprocessor Enhancement Corp. v. Texas Instrum. Inc., 520 F.3d 1367,
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`1375 {Fed. Cir. 2008) (same).
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`5 The claim language is set forth in full at Intel, 946 F .2d at 831.
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`13
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1218 p.13
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`

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`Case 1:12-cv-00033-RGA Document 247 Filed 01/06/16 Page 14 of 56 PageID #: 12171
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`Accordingly, I conclude that the claims at issue here only require capability of
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`performing the recited function. In order to prove that the accused modules infringe the asserted
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`claims of the 'O 10 patent, therefore, the accused devices need only be capable of operating in the
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`allegedly infringing modes. See Finjan, 626 F.3d at 1204. Thus, because I reject Defendants'
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`argument that the '010 patent does not properly claim capability, they are not entitled to
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`summary judgment on the ground that Plaintiff failed to prove that any third-party performed
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`certain method steps.
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`2. Whether the Accused Functionality Exists in the Products As Sold
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`The Federal Circuit has also made clear that, even where apparatus claims use functional
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`language and only require the accused products to have the capability of exercising the accused
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`function, "the apparatus as provided must be 'capable' of performing the recited function, not
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`that it might later be modified to perform that function." Typhoon Touch Techs., Inc. v. Dell,
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`Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011). In fact, in Fantasy Sports, the Federal Circuit
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`rejected the proposition that Intel and its progeny allow infringement to "be based upon a finding
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`that an accused product is merely capable of being modified in a manner that infringes the claims
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`of a patent." Fantasy Sports, 287 F.3d at 1117-18; see also Telemac Cellular Corp. v. Topp
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`Telecomm., Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001) ("[T]hat a device is capable ofbeing
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`modified to operate in an infringing manner is not sufficient, by itself, to support a finding of
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`infringement."). Accordingly, the infringement analysis of claims that require capability differs
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`in a "situation in which an apparatus does not perform the function stated in the claim unless the
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`apparatus is specifically so programmed or configured." Typhoon Touch, 659 F.3d at 1380.
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`14
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1218 p.14
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`

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`Case 1:12-cv-00033-RGA Document 247 Filed 01/06/16 Page 15 of 56 PageID #: 12172
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`Fantasy Sports similarly involved claims that were defined in terms of their function.
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`See Fantasy Sports, 287 F.3d at 1118. The Federal Circuit analyzed whether the accused
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`products were inherently capable of the infringing function as follows:
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`Software is a set of instructions, known as code, that directs a computer to perform
`specified functions or operations. Thus, the software underlying a computer
`program that presents a user with the ability to select among a number of different
`options must be written in such a way as to enable the computer to carry out the
`functions defined by those options when they are selected by the user. Therefore,
`although a user must activate the functions programmed into a piece of software by
`selecting those options, the user is only activating means that are already present
`in the underlying software. Otherwise, the user would be required to alter the code
`to enable the computer to carry out those functions. Accordingly, in order to
`infringe the '603 patent, the code underlying an accused fantasy football game must
`be written in such a way as to enable a user of that software to utilize the function
`of awarding bonus points for unusual plays such as out-of-position scoring, without
`having to modify that code. In other words, an infringing software must include
`the "means for scoring ... bonus points" regardless whether that means is activated
`or utilized in any way.
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`Id. The critical inquiry was whether the accused functionality was already contained in the
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`underlying software such that it only had to be "activated," or whether the user needed to alter
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`the code to enab