Nomadix, Inc. v. Hospitality Core Services LLC

Filing 142

ORDER RE MOTIONS FOR SUMMARY JUDGMENT 72 , 81 , 85 , 88 by Judge Dean D. Pregerson: The Court: GRANTS Nomadixs Motion for Summary Judgment on Infringement of the 246 Patent; DENIES Blueprints Cross-Motion for Summary Judgment of Non infringement of the 246 Patent; DENIES Blueprints Motion for Summary Judgment under 35 U.S.C. 112 and Double Patenting; and DENIES Blueprints Motion for Summary Judgment under 35 U.S.C. 102 and 103. (lc). Modified on 1/27/2016 (lc).

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NO JS-6

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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NOMADIX, INC.,

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Plaintiff,
v.
HOSPITALITY CORE SERVICES
LLC, d/b/a BLUEPRINT RF,

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Defendant.
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Case No. CV 14-08256 DDP (VBKx)
ORDER RE MOTIONS FOR SUMMARY
JUDGMENT
[Dkt. Nos. 72, 81, 85, 88]

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Presently before the Court are: (1) Plaintiff Nomadix, Inc.’s

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(“Nomadix”) Motion for Summary Judgment on Infringement of the ‘246

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Patent; (2) Defendant Hospitality Core Services LLC d/b/a Blueprint

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RF’s (“Blueprint”) cross-Motion for Summary Judgment on

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Noninfringement of the ‘245 Patent; (3) Defendant Blueprint’s

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Motion for Partial Summary Judgment of Patent Invalidity Under 35

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U.S.C. § 112 and Double Patenting; and (4) Defendant Blueprint’s

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Motion for Partial Summary Judgment of Patent Invalidity Under 35

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U.S.C. §§ 102 and 103.

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considering the parties’ submissions and hearing oral argument, the

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Court enters the following Order.

(Dkt. Nos. 72, 85, 81, 88.)

After

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I.

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BACKGROUND
This Court has discussed the patents and claims at issue in

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this case in its two prior Orders so the recitation will be brief

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here.

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(See Dkt. Nos. 47, 69.)
Nomadix’s patents at issue here cover the process and

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mechanisms of connecting a user device to an internet network

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through a gateway device.

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The gateway

complete[s] a handshake with the user device and
redirect[s] the user device’s web browser to a portal page,
all while appearing to be the . . . web server that the
user’s device sought to access. Once redirected to the
portal page, the user can take steps to obtain network
access, such as verifying an identity or agreeing to
payment terms.

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(Pl. Mot. Summ. J., dkt. no. 72, at 1.)

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targets its product and system at the hospitality industry, such as

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hotel internet connection and other similar services.

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Nomadix particularly

Blueprint is a competitor of Nomadix in the field of

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hospitality internet connection.

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infringement of Nomadix’s patents1 by Blueprint’s “Dominion”

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gateway devices that also connect users to internet networks

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through a portal page redirect.

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This suit is based on the alleged

(See id.; First Am. Compl.)

Presently disputed in these motions are two main issues: (1)

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the infringement or lack thereof of Nomadix’s ‘246 patent by

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Blueprint’s Dominion gateway device; and (2) the validity or lack

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thereof of several Nomadix patents: ‘246; ‘266; ‘269; ‘806; ‘690.

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Nomadix has asserted seven patents in this suit: U.S.
Patent Numbers 6,636,894 (the ‘894 patent); 6,868,399 (the ‘399
patent); 8,156,246 (the ‘246 patent); 8,266,266 (the ‘266 patent);
8,266,269 (the ‘269 patent); 8,364,806 (the ‘806 patent); and
8,788,690 (the ‘690 patent).
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II.

LEGAL STANDARD
Summary judgment is appropriate where the pleadings,

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depositions, answers to interrogatories, and admissions on file,

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together with the affidavits, if any, show “that there is no

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genuine dispute as to any material fact and the movant is entitled

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to judgment as a matter of law.”

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seeking summary judgment bears the initial burden of informing the

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court of the basis for its motion and of identifying those portions

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of the pleadings and discovery responses that demonstrate the

Fed. R. Civ. P. 56(a).

A party

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absence of a genuine issue of material fact.

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Catrett, 477 U.S. 317, 323 (1986).

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the evidence must be drawn in favor of the nonmoving party.

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Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986).

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moving party does not bear the burden of proof at trial, it is

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entitled to summary judgment if it can demonstrate that “there is

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an absence of evidence to support the nonmoving party’s case.”

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Celotex, 477 U.S. at 323.

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See Celotex Corp. v.

All reasonable inferences from
See
If the

Once the moving party meets its burden, the burden shifts to

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the nonmoving party opposing the motion, who must “set forth

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specific facts showing that there is a genuine issue for trial.”

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Anderson, 477 U.S. at 256.

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party “fails to make a showing sufficient to establish the

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existence of an element essential to that party’s case, and on

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which that party will bear the burden of proof at trial.”

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477 U.S. at 322.

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that a reasonable jury could return a verdict for the nonmoving

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party,” and material facts are those “that might affect the outcome

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of the suit under the governing law.”

Summary judgment is warranted if a

Celotex,

A genuine issue exists if “the evidence is such

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Anderson, 477 U.S. at 248.

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There is no genuine issue of fact “[w]here the record taken as a

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whole could not lead a rational trier of fact to find for the

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nonmoving party.”

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Corp., 475 U.S. 574, 587 (1986).

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Matsushita Elec. Indus. Co. v. Zenith Radio

It is not the court’s task “to scour the record in search of a

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genuine issue of triable fact.”

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1278 (9th Cir. 1996).

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support clearly.

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1026, 1031 (9th Cir. 2001).

Keenan v. Allan, 91 F.3d 1275,

Counsel has an obligation to lay out their

Carmen v. San Francisco Sch. Dist., 237 F.3d
The court “need not examine the entire

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file for evidence establishing a genuine issue of fact, where the

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evidence is not set forth in the opposition papers with adequate

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references so that it could conveniently be found.”

Id.

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Summary judgment motions are evaluated under the “substantive

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evidentiary standard of proof that would apply at the trial on the

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merits” for a particular case.

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patents are presumed valid, and the burden is on the party

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asserting invalidity to prove such invalidity.

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This presumption of invalidity requires clear and convincing

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evidence to overcome.

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Inc., 251 F.3d 955, 962 (Fed. Cir. 2001); Apple Computer, Inc. v.

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Articulate Sys., Inc., 234 F.3d 14, 20 (Fed. Cir. 2000).

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contrast, patent infringement, “whether literal or by equivalence,

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is an issue of fact, which the patentee must prove by a

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preponderance of the evidence.”

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Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1279 (Fed.

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Cir. 2011).

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Anderson, 477 U.S. at 252.

Issued

35 U.S.C. § 282(a).

See, e.g., Eli Lilly & Co. v. Barr Labs.,

By

Siemens Med. Sols. USA, Inc. v.

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III. DISCUSSION
A.

Cross-Motions for Summary Judgment on Infringement of
‘246 Patent

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Plaintiff Nomadix has moved for summary judgment on
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infringement of its ‘246 patent; Defendant Blueprint has cross5
moved for summary judgment on noninfringement of the same.
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Nomadix argues that Blueprint’s device literally infringes the
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‘246 patent based on the undisputed facts of how the device
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functions and on the ordinary meaning of the claim terms in the
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‘246 patent.

(See Pl. Mot. Summ. J. (“Pl. MSJ”), dkt. no. 72.)

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Nomadix asserts that the motion can and should be decided based on
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claim construction — Nomadix’s position is that the ‘246 patent’s
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claim terms are broad (and valid) under their ordinary meaning and
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that Blueprint’s device reads on those claim terms.

See id.

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Blueprint’s position is that the claim terms are either narrower
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than Nomadix proposes and so the claims do not read on Blueprint’s
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device, or that Nomadix’s broad interpretation of the claims
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renders the claims invalid.

(Def. Opp’n & Cross-MSJ (“Opp’n”),

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dkt. no. 85.)

Thus, both parties agree that this motion is

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essentially a claim construction issue.
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1.

Legal Standard for Infringement

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Patent infringement suits require the patentee to show that
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the defendant “makes, uses, offers to sell, or sells any patented
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invention, within the United States or imports into the United
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States any patented invention during the term of the patent
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therefor.”

35 U.S.C. § 271(a).

“Victory in an infringement suit

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requires a finding that the patent claim ‘covers the alleged
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infringer’s product or process,’ which in turn necessitates a
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determination of ‘what the words in the claim mean.’” Markman v.

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Westview Instruments, Inc., 517 U.S. 370, 374 (1996).

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“A literal patent infringement analysis involves two steps:

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the proper construction of the asserted claim and a determination

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as to whether the accused method or product infringes the asserted

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claim as properly construed.”

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Inc., 90 F.3d 1576, 1580-81 (Fed. Cir. 1996).

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is a matter of law, with the court examining both intrinsic and

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extrinsic evidence of meaning, with the court first examining the

Vitronics Corp. v. Conceptronic,
Claim construction

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intrinsic evidence as it “is the most significant source of the

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legally operative meaning of disputed claim language.”

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1582.

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the claims, the specification, and, if in evidence, the prosecution

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history.”

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reference, is only examined if the intrinsic evidence is

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insufficient to determine the meaning and scope of the claims.

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at 1583.

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Id. at

Intrinsic evidence includes “the patent itself, including

Id.

Extrinsic evidence, or evidence outside this set of

Id.

This analysis “holds true whether it is the patentee or the

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alleged infringer who seeks to alter the scope of the claims.”

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Claims are construed the same way for both validity and

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infringement.

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F.2d 1275, 1279 (Fed. Cir. 1988), abrogated on other grounds Zoltek

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Corp. v. United States, 672 F.3d 1309 (Fed Cir. 2012).

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2.

Id.

See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842

Claim Construction

Both parties agree that this cross-motion turns on claim
construction.

(See Pl. MSJ at 11; Opp’n at 13.)

According to Nomadix, the undisputed facts demonstrate that
the Dominion gateway device “satisfies every limitation of claims 6
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and 7 of the ‘246 patent.”

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noninfringement, according to Nomadix, is based on interpreting

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terms from claim 6 narrowly.

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undisputed that, if the claims are not limited in the way Blueprint

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proposes, then the Dominion gateway satisfies all the claim

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limitations.”

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(Pl. MSJ at 11.)

(Id.)

Blueprint’s theory of

According to Nomadix, “[i]t is

(Id.)

This appears consistent with how Blueprint characterizes its

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position.

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infringes if Nomadix’s broad claim construction is accepted, but if

(Opp’n at 13.)

Blueprint argues that its device only

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such a broad claim construction is accepted, then the ‘246 patent

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is invalid for lack of adequate written description, obviousness,

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and anticipation, as described in Blueprint’s other motions.

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at 14-15.)

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of the claim terms, Nomadix’s patents are valid but Blueprint’s

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Dominion device does not infringe.

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(Id.

According to Blueprint, under its narrow construction

(Id. at 15-16.)

The parties make several claim construction arguments, running

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from claim indefiniteness to the meaning of preamble language to

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means-plus-function claims to the doctrine of equivalents and so

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on.

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12, 16-20; Pl. Reply at 18-23; Def. Reply at 8-15.)

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notes that the parties have in one sense raised all doctrines

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related to claim construction, which is rarely conducive to an

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efficient analysis.

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that the nub of the dispute is two claim terms from claim 6 of the

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‘246 patent, which the parties appear to agree controls whether

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Blueprint infringes: “redirection server” and “processor.”

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e.g., Pl. MSJ at 20-22 (Plaintiff’s motion also discusses two other

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terms that are not discussed by Blueprint in its papers); Opp’n at

(See Pl. MSJ at 15-16; Opp’n at 16-21, 23-25; Pl. Opp’n at 9The Court

But what is clear from the parties’ papers is

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(See,

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18; Pl. Opp’n at 1; Pl. Reply at 5-6; Def. Reply at 3.)

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Court will examine only these two terms under the standard claim

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construction analysis from Markman and determine infringement on

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that basis.

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Thus, the

Claim 6 of the ‘246 patent reads, with the terms at issue
emphasized:
6. A network management system, configured to redirect a
computer to a portal page, the computer being connected to
the network management system by a network, the system
comprising:
a communications port configured to receive an
incoming request from the computer relating to accessing an
external server; and
a processor configured to receive incoming data from
a redirection server, the incoming data identifying a
portal page server to which the computer should be
redirected, the portal page server being different from the
external server; and
the processor further configured to send to the
computer, an outgoing response based on the incoming data,
the outgoing response configured to be responsive to the
incoming request from the computer, and the outgoing
response configured to cause the computer to initiate a
second request for content from the portal page server;
wherein the processor is further configured to
complete a connection handshake while appearing to be the
external server, and wherein the outgoing response includes
a source address corresponding to the external server,
whereby the outgoing response appears to have originated
from the external server.

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3.

Processor

Blueprint interprets “processor” as a “network gateway

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processor or system that routes messages to the redirection server

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through stack address translation using packet address modification

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and connects a user’s computer to the network without reconfiguring

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the network settings or installing the network settings or

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installing reconfiguration software on the user’s computers,” and

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which “excludes DHCP reconfiguration of network settings on user’s

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computer.”

(Opp’n at 14 (table).)
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Nomadix argues that the claim term “processor” does not

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require claim construction.

(Pl. Opp’n at 3; Pl. Reply at 6

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(tables).)

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Nomadix argues that “processor” should be given its ordinary

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meaning, which does not require formal claim construction in part

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because Blueprint “has admitted that each Dominion gateway includes

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a processor.”

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18)).)

To the extent this Court does construe the term,

(Pl. Reply at 6 (citing Lezama Decl. Ex. 3 (RFA

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The Court notes that under Markman, the Court determines claim

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meaning primarily based on claim language, prosecution history, and

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the specification.

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construction of the term “processor” because it is a well-known

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term in the relevant art.

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language to the claim term rather than construct it.

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definition ensures its device is excluded from possible

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infringement, but the construction is not based on the claim

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language or specification.

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provide that DHCP is excluded, and there are instances in the

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patent that discuss the invention with DHCP.

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Patent Fig. 50B.)

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based on intrinsic evidence; instead, it is an argument to limit

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the claim language to exclude DHCP reconfiguration.

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But here, there is no reason for a formal claim

Blueprint’s argument attempts to add
Blueprint’s

Nowhere does the specification or claim

(See, e.g., ‘246

Blueprint’s approach is not a claim construction

Further, Blueprint’s discovery response in Exhibit 3 to the

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Lezama declaration states that the Dominion device has a processor,

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showing that the term has an ordinarily understood meaning and that

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the Dominion device is consistent with that meaning.

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no reason to depart from this ordinary meaning, the Court declines

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to make a formal construction of “processor” at this time.
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As there is

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4.

Redirection Server

According to Blueprint, “redirection server” means “server

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that creates a browser redirect message through stack address

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translation using packet address modification,” which would

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“exclude[] the local or forced proxy disclosed by Slemmer.”

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at 14 (table).)

(Opp’n

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Nomadix argues that “redirection server” means “a server that

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prepares a message instructing a computer receiving the message to

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redirect its browser to content differing from what was initially

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requested.”

(Pl. Opp’n at 3; Pl. Reply at 6 (tables).)

Essentially, this claim construction dispute centers on

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“redirection” — Nomadix’s argument is that “redirection” covers

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redirection through stack address translation using packet address

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modification as well as through other means, and Blueprint’s

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argument is that “redirection” only covers redirection through

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stack address translation using packet address modification.

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As Nomadix points out, there is no language in the claim that

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limits redirection to redirection through stack address translation

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using packet address modification.

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Nomadix’s plain language approach is unsupported by the

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specification and disclosures of the patent.

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motion is not the place for an argument regarding patent invalidity

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based on lack of enablement or adequate written description, which

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Blueprint falls into several times in its briefing.

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Markman analysis does require the Court to examine the

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specification and prosecution history as well as the plain language

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of the claims in constructing the claim language.

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looking at the language of the claim is not enough here.
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But Blueprint argues that

An infringement

But the

Thus, simply

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The specification does not appear to limit the claims,

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however, to stack address translation using packet address

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modification.

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absence of a clear embodiment of redirection involving more than

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stack address translation is required to affirmatively include

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other embodiments in the claims, particularly if such other methods

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would be known to a person having ordinary skill in the art.

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language of the patent notes that “one embodiment” would be limited

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to stack address translation, but that does not mean that this is

Blueprint is not convincing in arguing that the

The

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the only embodiment, and in fact it implies that other embodiments

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of the invention would not be so limited.

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to other embodiments discussed in the patent that do not mention

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stack address translation at all and that accomplish the

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redirection claim limitation.

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patent col. 36 l. 5-29).)

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the claim to only stack address translation using packet address

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modification because such a limit is unsupported by the plain

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language and specification of the patent.

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5.

Further, Nomadix points

(See Pl. Reply at 13 (citing ‘246

Therefore, the Court declines to limit

Means-Plus-Function Claims

Blueprint argues that claims 6 and 7 of the ‘246 patent are

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means-plus-function claims, which means the claims must be

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functionally defined as limited by the patent’s particularly

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disclosed embodiments as set forth in 35 U.S.C. § 112 ¶ 6.

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at 18-21.)

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“processor” and “redirection server,” are “generic computer terms

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or ‘nonce words’ understood as ‘verbal constructs not recognized

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structure’ tantamount to using the word ‘means’ invoking § 112,

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par. 6 under the Williamson standard.”

(Opp’n

Blueprint alleges that the claim terms at issue,

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(Id. at 19 (quoting Mass.

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Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462

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F.3d 1344, 1354 (Fed. Cir. 2006).)

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redirection server in claim 6 that performs packet translation or

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redirection is limited to stack address translation using packet

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address modification because that is the “only packet redirection

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technique described” in the patent and shown in figures 11A and

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11B.

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language defines “redirection server” at such a high level of

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structural and functional detail that “a person of ordinary skill

(Opp’n at 20.)

According to Blueprint, the

As Blueprint’s Reply details, the claim

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in the art would have no way of knowing from the claim language the

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basis on which the ‘redirection server’ generates the ‘incoming

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data identifying a portal page server to which the computer should

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be redirected.’” (Reply at 11 (quoting ‘246 patent, claim 6).)

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Nomadix denies that § 112 ¶ 6 applies to the terms “processor”

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and “redirection server” in claim 6, explaining that the terms “are

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not mere verbal constructs” and instead “are commonly used terms in

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the computer and networking fields referring to well-understood

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computing structures.”

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points out that Blueprint uses the terms “processor” and “server”

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in its proposed claim construction of those very terms, thus

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indicating, according to Nomadix, that the terms “convey well-

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understood, meaningful structure that does not require further

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elaboration in this case.”

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that Blueprint’s constructions “are not designed to address any

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means-plus-function issues but rather to import limitations into

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the claims under the pretense of claim interpretation.”

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(Pl. Opp’n at 11-12.)

(Id. at 12.)

Further, Nomadix

Lastly, Nomadix argues

(Id.)

In Williamson, the Federal Circuit stated the standard for
determining if particular claim language falls into § 112 ¶ 6 as
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“whether the words of the claim are understood by persons of

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ordinary skill in the art to have a sufficiently definite meaning

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as the name for structure.”

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F.3d 1339, 1349 (Fed. Cir. 2015) (citing Greenberg v. Ethicon Endo-

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Surgery, Inc., 91 F.3d 1580, 1583 (Fed Cir. 1996)).

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a presumption that a claim without the term “means” is not a claim

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that falls into § 112 ¶ 6, that presumption can be overcome with a

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showing that the claim terms “fail[] to ‘recite sufficiently

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definite structure’ or else recite[] ‘function without reciting

Williamson v. Citrix Online, LLC, 792

While there is

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sufficient structure for performing that function.’” Id. (quoting

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Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

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“Nonce” claim terms are those terms that act as fillers because

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they do not describe an actual structure:

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Generic terms such as “mechanism,” “element,” “device,” and
other nonce words that reflect nothing more than verbal
constructs may be used in a claim in a manner that is
tantamount to using the word “means” because they
“typically do not connote sufficiently definite structure”
and therefore may invoke § 112, para. 6.

17
Id. at 1350 (citing Abacus Software, 462 F.3d at 1354).
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In Williamson, the claim term “distributed learning control
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module for receiving communications transmitted between the
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presenter and the audience member computer systems and for relaying
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the communications to an intended receiving computer system and for
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coordinating the operation of the streaming data module” was held
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to be a means-plus-function claim term.

Id.

The Federal Circuit

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noted that the claim’s format was “consistent with traditional
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means-plus-function claim limitations” in that it “replaces the
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term ‘means’ with the term ‘module’ and recites three functions
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performed by the ‘distributed learning control module.’”
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13

Id.

The

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court held that “module” was a “well-known nonce word” that “does

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not provide any indication of structure because it sets forth the

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same black box recitation of structure for providing the same

4

specified function as if the term ‘means’ had been used.”

Id.

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Further, the prefix “distributed learning control” did not

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provide structure because the written description of the patent

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described the terms at too high a level and “the claim does not

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describe how the ‘distributed learning control module’ interacts

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with other components in the distributed learning control server in

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a way that might inform the structural character of the limitation-

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in-question or otherwise impart structure.”

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found unavailing the testimony of an expert who claimed to be able

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to perform the claim limitations by reading the claim and the

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specification of the patent because “the fact that one of skill in

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the art could program a computer to perform the recited functions

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cannot create structure where none otherwise is disclosed.”

17

Id.

The court lastly

Id.

“A limitation has sufficient structure when it recites a claim

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term with a structural definition that is either provided in the

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specification or generally known in the art.”

20

Motorola, Inc., 757 F.3d 1286, 1299 (Fed. Cir. 2014), overruled on

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other grounds by Williamson, 792 F.3d 1339.

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has noted, “looking for traditional ‘physical structure’ in a

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computer software claim is fruitless because software does not

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contain physical structures,” and instead, the structure “is

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understood through, for example, an outline of an algorithm, a

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flowchart, or a specific set of instructions or rules.”

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1298.

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the claim limitation’s operation, such as its input, output, or

Apple Inc. v.

As the Federal Circuit

Id. at

Further, a claim term can denote structure “by describing

14

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connections,” which means “how the function is achieved in the

2

context of the invention.”

3

term “analyzer server” was not discussed by the Federal Circuit

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argued by either party in the Apple case as being a means-plus-

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function claim term.

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of the term “an analyzer server for detecting structures in the

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data, and for linking actions to the detected structures”; the

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claim term “processor” was similarly not disputed).

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Id.

The Court notes that the claim

See id. at 1304 (providing claim construction

Here, the claim term “processor” is a structural term that

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cannot be reasonably disputed by Blueprint to be a “verbal

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construct[] not recognized [as] structure.”

12

processor in claim 6 has many configurations, but those

13

configurations are what provide both operation and function to the

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term “processor.”

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server.”

16
17

(Opp’n at 18-19.)

The

A closer question is the term “redirection

The claim language surrounding the term is:

a processor configured to receive incoming data from a
redirection server, the incoming data identifying a portal
page server to which the computer should be redirected, the
portal page server being different from the external server

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The “redirection server” sends data to the processor that results
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in the user computer’s browser being redirected to the portal page
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server, which eventually results in the connection handshake with
21
the network management system rather than the external server that
22
the user computer was originally attempting to access.

A “server”

23
is also a well-known structural term.

It is included in

24
Blueprint’s own proposed construction of “redirection server.”
25
Redirection of the data packets can be accomplished through
26
different means, as Blueprint’s noninfringement arguments have
27
28
15

1

attempted to show, but that does not mean that the claim term lacks

2

sufficient structure.

3

Turning to the specification of the ‘246 patent, it provides

4

embodiments of the invention that include descriptions of packet

5

redirection and browser redirection, thus cutting against a finding

6

that the claim is a means-plus-function claim.

7

50B provides a flowchart that includes connection instructions for

8

both DHCP users and non-DHCP users, as well as a simple instruction

9

to “perform any needed translation or redirection” before

10

processing the packet.

11

description clarifies, “[o]ne embodiment for performing the step of

12

providing any needed translation or redirection, as specified in

13

Fig. 50, is described in steps 5, 6, and 7 of Fig. 11A.”

14

Patent col. 112 l. 12-14.)

15

translation or packet modification is mentioned, much less

16

required, in order to achieve the flowchart’s result of

17

redirection.

18
19
20
21
22
23

(‘246 Patent Fig. 50B.)

For example, figure

As the written

(‘246

Looking at Figure 11A, no stack address

(‘246 Patent Fig. 11A.)

The patent’s specification further provides for redirection
through browser redirection:
Redirecting the user to a login page can include
redirecting a browser located on the user’s computer to the
login page. Furthermore, redirecting the browser located
on the user’s computer can include receiving a Hyper-Text
Transfer Protocol (HTTP) request for the destination
address and responding with an HTTP response corresponding
to the login page.

24

(‘246 Patent col. 11 l.15-21.)

Another embodiment of the invention

25

discloses using an Authentication, Authorization and Accounting

26

(“AAA”) server to perform the needed redirection.

27

col. 11 l. 35-40.)

28

another embodiment for redirection:

(‘246 Patent

Stack address translation is mentioned as

16

1
2
3

[T]he user can be redirected from the portal page via Home
Page Redirect (HPR) and Stack Address Translation (SAT) to
a location, such as a login page, established to validate
new users. SAT and HPR can intervene to direct the user to
a webserver (external or internal) where the user has to
login and identify themselves.

4
(‘246 Patent col. 23 l. 19-25 (referencing the “Redirection
5
Application,” which is Nomadix’s ‘894 patent).)

At another point,

6
the specification notes that “the nomadic router is able to
7
redirect all outbound packets from the host computer to itself” and
8
that “redirection can be accomplished in several ways,” describing
9
redirection through: (1) “Proxy ARP Packet Interception and Host
10
Reconfiguration,” (2) “Promiscuous Mode Packet Interception,” and
11
(3) “Dynamic Host Configuration Protocol (DHCP) Service.”

(‘246

12
Patent col. 30 l. 59-67; col. 31 l. 1-44.)
13
As a last example of the redirection discussion in the
14
patent’s detailed description, the specification states that,
15
16
17
18

According to one aspect of the present invention, when a
user initially attempts to access a destination location,
the gateway device, AAA server or portal page redirect unit
receives this request and routes the traffic to a protocol
stack on a temporary server, which can be local to the
gateway device.

19

(‘246 Patent col. 36, l. 5-10.)

Each of the three different

20

redirection servers can have a different method of redirection.

21

The gateway device uses Home Page Redirect, which uses stack

22

address translation that “is accomplished by redirecting the user

23

to a protocol stack using network and port address translation to

24

the portal server than can be internal to the computer network or

25

gateway device.”

26

method is just one embodiment provided by the specification in the

27

patent.

(‘246 Patent col. 35 l. 52-62.)

The HPR and SAT

At another part of the specification, the AAA server is

28
17

1

described as able to use either SAT or dynamic address translation

2

(DAT) to redirect.

3

(‘246 Patent col. 48 l. 20-27.)

In all, the specification makes clear that the claim term

4

“redirection server” can include several embodiments.

5

is clearly structural and together, “redirection server” has

6

operational meaning based on the specification.

7

holds that claim 6 is not a means-plus-function claim.

8

6.

A “server”

Thus, the Court

Infringement

9

Taking as true Blueprint’s admission that its Dominion device

10

has a processor, and taking that term to mean the same thing as in

11

the ‘246 patent claims as discussed above, the only question for

12

infringement according to the parties’ papers is whether

13

Blueprint’s device also performs redirection as defined in the

14

patent’s claims.

15

The Dominion gateway performs redirection through its IPFW FWD

16

command, which adds a “forwarding tag” to the user’s data packets

17

in order redirect the packets.

18

the Court’s construction of the claim term “redirection,” the IPFW

19

FWD command redirects the packets just as in claim 6 of the ‘246

20

patent.

21

albeit differently than packet address modification within the

22

user’s packet, as Blueprint alleges Nomadix does.

23

method modifies the address packet because the IPFW FWD command

24

adds a forwarding tag, thus modifying the packet by adding that

25

forwarding tag to the packet.

26

Blueprint alleges Nomadix’s invention does.

(See Def. Reply at 15-22.)

Under

IPFW FWD command redirection does modify the packet,

Blueprint’s

This method is an equivalent to what

27

In fact, as Nomadix argues, Blueprint’s method of redirection

28

would result in infringement regardless of the Court’s means-plus18

1

function analysis because literal infringement also includes

2

equivalents under § 112 ¶ 6.

3

states, means-plus-function claims cover “the corresponding

4

structure, material, or acts described in the specification and

5

equivalents thereof.”

6

equivalent to what Blueprint proposes this Court interpret

7

“redirection server” to mean, namely, “server that creates a

8

browser redirect message through stack address translation using

9

packet address modification.”

(Pl. Opp’n at 16.)

35 U.S.C. § 112.

As the statute

The IPFW FWD command is an

(Opp’n at 14.)

Under any theory of

10

literal patent infringement, the IPFW FWD command is an equivalent

11

to Nomadix’s method of packet address modification.

12

Court finds that under the above claim construction, Blueprint’s

13

Dominion device infringes the ‘246 patent.

14

B.

Therefore, the

Motion for Summary Judgment on Patent Invalidity under 35
U.S.C. § 112 and Double Patenting

15
Blueprint has also filed for partial summary judgment, arguing
16
that patents ‘246, ‘266, ‘269, ‘806, and ‘690 are invalid under 35
17
U.S.C. § 112 and under a double patenting theory.

(See Def. Mot.

18
Summ. J. of Patent Invalidity under 35 [U.S.C.] § 112 and Double
19
Patenting (“MSJ for 112”), dkt. no. 81 at 1.)

Blueprint only cites

20
to the ‘246 patent throughout its motion, explaining that “the
21
specifications of the ‘246, ‘269, ‘806, and ‘690 patents are nearly
22
identical” so that the citations to ‘246 are “representative.”2
23
(Id. at 1 n.1.)

Blueprint’s theory is (1) if the patents are read

24
as broadly as Nomadix seems to say they should be, then the patents
25
are invalid because the claims are not supported by the patents’
26
27
28

2

Presumably, Blueprint also wants to include the ‘266
patent in this list, because Blueprint otherwise does not discuss
the ‘266 patent at all other than to argue for its invalidity.
19

1

written description; (2) that the patents fail a “concise

2

requirement” from Section 112; (3) that the patents’ specifications

3

do not enable a person having ordinary skill in the art to practice

4

the claimed invention; and (4) that the patents all cover the same

5

invention, so they fail for double patenting.

6

In response, Nomadix argues primarily that Blueprint has

7

failed to meet the standard required at summary judgment for

8

invalidating a patent under Section 112.

9

for 112 (“Opp’n 112”) at 2-4.)

(Pl. Opp’n to Def. MSJ

Nomadix claims that Blueprint

10

“rests its entire motion on conclusory attorney argument,” lacks

11

evidence to support its broad motion (“108 claims spanning five

12

patents”), and “does not identify a single claim by number until

13

page 24 of its opening brief,” which is the only place where

14

Blueprint addresses claim language.

15

Nomadix argues that (1) there is no patent invalidity argument

16

based on concision; (2) Blueprint’s written description argument is

17

unsupported by evidence, what evidence is present is disputed, and

18

Blueprint has applied the wrong legal standard; (3) Blueprint fails

19

to make an argument about enablement, much less provide evidence;

20

and (4) Blueprint fails to demonstrate that any two claims from the

21

patents at issue have “identical scope” so as to double patent, or

22

that any of the claims render another patent obvious in spite of

23

Nomadix’s terminal disclaimers.

24

(written description), 20-21 (enablement), 21-30 (double

25

patenting).)

26

(Id. at 2-3.)

On the merits,

(Id. at 4-6 (concise), 10-20

In its reply, Blueprint argues (1) there is a concision

27

requirement in the Patent Act and the patents involved here are

28

overly verbose in an attempt to confuse courts and future
20

1

defendants; (2) the written descriptions of the patents at issue do

2

not disclose or teach an invention that would make Blueprint’s

3

Dominion device infringing; (3) “the written description and

4

enablement inquiries are similar” in this case and the

5

specifications in these patents fail to enable the invention as

6

claimed by Nomadix; and (4) there is double patenting here because

7

by Nomadix’s own construction, the claims of the challenged patents

8

would literally infringe each other.

9

(“Reply 112”) at 2-9 (concise), 9-15 (written description), 16-19

10
11
12

(Def. Reply ISO MSJ for 112

(enablement), 19-20 (double patenting).)
1.

Concision

It is basic hornbook law that Section 112 contains three

13

requirements for an inventor seeking a patent: (1) written

14

description; (2) enablement; and (3) best mode.

15

Chisum, Chisum on Patents § 7.01 (Matthew Bender 2014); see also

16

Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 921

17

(Fed. Cir. 2004) (describing the three requirements of Section 112

18

of the 1952 Patent Act).

19

statutory section as part of the second requirement of enablement:

20
21
22
23
24

See 3 Donald S.

The word “concise” is included in the

(1) the specification shall contain a written description
of the invention; (2) the specification shall contain a
written description . . . of the manner and process of
making and using it [i.e., the invention] in such full,
clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it
is most nearly connected, to make and use the same; and (3)
the specification . . . shall set forth the best mode
contemplated by the inventor of carrying out his invention.

25

Univ. of Rochester, 358 F.3d at 921 (quoting 35 U.S.C. § 112)

26

(internal quotations and brackets omitted) (emphasis added).

27
28

Blueprint would have a fourth requirement be made out of the
inclusion of the word “concise” in the statute.
21

However, Blueprint

1

acknowledges that there are no controlling cases — or any cases —

2

finding this “concise” language in the statute to be a formal

3

requirement, much less a requirement that can lead to the

4

invalidation of a patent.

5

opportunity to create an additional requirement in Section 112.

6
7

2.

Therefore, this Court declines the

Written Description

As explained above, Section 112 does have a written

8

description requirement.

9

patentee to “convey with reasonable clarity to those skilled in the

10

art that, as of the filing date sought, he or she was in possession

11

of the invention.

12

description’ inquiry, whatever is now claimed.”

13

Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).

14

sufficiency of support in a patent application is whether the

15

disclosure of the application relied upon reasonably conveys to the

16

artisan that the inventor had possession at that time of the later

17

claimed subject matter.”

18

Compliance with this requirement is a question of fact.

19

requirement is a separate and broader requirement than the

20

enablement requirement.

21

See 35 U.S.C. § 112.

This requires the

The invention is, for purposes of the ‘written
Vas-Cath Inc. v.
“The test for

Id. at 1563 (internal quotation omitted).
Id.

This

Id.

Blueprint here acknowledges that “[t]o some extent, compliance

22

with the written description requirement may come down to a matter

23

of claim construction.”

24

understatement — the very legal standard discussed by all parties

25

and this Court above establish that the written description

26

analysis requires claim construction because the relevant question

27

is whether the description demonstrates possession of the

28

invention, the invention being what is claimed.

(MSJ for 112 at 21.)

22

This is a bit of an

1

To that end, Blueprint provided in Exhibit 14 a chart with

2

competing claim constructions for certain words in certain patents.

3

This kind of analysis is insufficient to meet a clear and

4

convincing standard.

5

of each of the challenged claims, is what needs to be analyzed;

6

that is, the Court can only consider whether the written

7

description requirement is met for a particular claim after

8

considering the actual claim language, what that language means

9

(its scope and limit), and what the description in the patent

10

Actual quoted language, taken in full context

provides.

11

The most complete analysis that Blueprint provides regards

12

only the ‘246 patent, which is provided as marked up by Blueprint

13

in Exhibit 3.

14

that

15
16
17
18

(MSJ for 112 at 22-23; Ex. 3.)

Blueprint argues

[u]nder the broad claim construction that form[s] the basis
of Nomadix’s infringement contentions, the claims of the
challenged patents are not limited to captive portal
redirection utilizing packet address modification. They
therefore fail to comply with the written description
requirement because the claims cover subject matter that is
not described in the specification.

19

(Id. at 22.)

20

argues, is not supported by the statements in the specification

21

regarding what Nomadix considered its invention or improvement on

22

the prior art, which is not changing the IP settings on the user’s

23

computer through the captive portal redirection feature.

24
25
26
27
28

Also, the broad construction of the claims, Blueprint

(Id.)

Lastly, Blueprint argues that the broad view of the claims
would cover subject matter that the patent is teaching away from:
Specifically, the challenged patents teach away from
relying exclusively [o]n DHCP to reconfigure the network
setting on a user’s computer with DHCP, and describe
transparent address translation as a better alternative
allowing computers that do not utilize DHCP to be connected
23

1

to the network. . . . While this teaching is buried in the
back of the ‘246 patent, it is upfront and the center of
the description of the invention in the priority
application.

2
3
4

Id. at 22-23 (citing “‘246 at 111/48-112-17; Figs. 50A-B” and “App.

5

Ser. No. 60-111,497 at pp.1-3,5 and Fig. 1 (Ex-2)”.)

6

Nomadix takes issue with Blueprint’s Exhibit 14 and

7

characterization of Nomadix’s claim construction.

8

9.)

9

ignored, and all 108 claims of the patents that Blueprint appears

10

to be challenging in its motion are not included in the chart, or

11

anywhere in the moving papers.

12

omission gives rise to triable issues of fact.

13

(Opp’n 112 at 7-

As Nomadix points out, most of the patents’ claim language is

The Court agrees that such an

To the part of Blueprint’s argument that is included in the

14

moving papers, Nomadix responds that Blueprint is erroneously

15

arguing that the Patent Act requires “‘literal’ description of

16

every embodiment of the claimed invention” to be included in the

17

written description.

18

although Blueprint could be making a different argument — it is not

19

entirely clear from the papers.

20

arguing that Nomadix is now claiming embodiments including DHCP

21

connection and redirection without static address translation using

22

packet address modification, neither of which Nomadix included in

23

its written description.

24

(Id. at 10.)

This appears to be true,

It appears that Blueprint is

But Nomadix’s Opposition explains that DHCP would be

25

understood by a person having ordinary skill in the art as being

26

included in the scope of the claimed invention.

27

DHCP is also in the ‘246 patent’s specification.

28

Patent Fig. 50B.)

(Id. at 12-14.)
(See, e.g., ‘246

In addition, Nomadix points to an embodiment in
24

1

the ‘246 patent that, “immediately after discussing embodiments

2

involving stack address translation,” does not mention stack

3

address translation but which does include the browser redirection

4

at issue.

5

juxtaposition of these teachings reasonably conveys to one of

6

ordinary skill in the art that stack address translation is not

7

required in the latter embodiment.”

8

earlier in the Court’s claim construction for the ‘246 patent,

9

there are many discussions of redirection in the ‘246 patent’s

(Id. at 13.)

Nomadix’s expert claims that “the

(Id.)

And as discussed

10

specification that do not require stack address translation using

11

packet address modification.

12

issues of fact as to Nomadix having possession of the claimed

13

invention, with that invention being as broad as Nomadix claims it

14

is.

15

All of these instances raise triable

Based upon the state of the factual record, and the clear

16

material factual disputes between the parties, the Court cannot

17

find for Blueprint on the written description theory of invalidity

18

because Blueprint has not met the clear and convincing standard of

19

proof.

20
21

3.

Enablement

Blueprint’s enablement argument is found at lines eight

22

through sixteen on page twenty-three of its opening brief.

23

MSJ for 112 at 23.)

24

written description are separate requirements of 35 U.S.C. § 112,

25

but says that “the legal analysis in this case is virtually the

26

same because the challenged patents fail to describe or enable any

27

type of packet redirection that does not utilize packet address

28

modification.”

(Def.

Blueprint acknowledges that enablement and

(Def. MSJ for 112 at 23.)
25

This is the extent of

1

Blueprint’s argument; none of the new arguments or evidence

2

included in Blueprint’s reply brief can be considered by this Court

3

because such argument and evidence must be raised in the moving

4

papers to allow the opposing party an opportunity to dispute them.

5

“Enablement ‘is a legal determination of whether a patent

6

enables one skilled in the art to make and use the claimed

7

invention.’”

8

F.3d 1269, 1288 (Fed. Cir. 2012) (quoting Hybritech, Inc. V.

9

Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)).

Streck, Inc. V. Research & Diagnostic Sys., Inc., 665

10

“The enablement requirement is met where one skilled in the art,

11

having read the specification, could practice the invention without

12

‘undue experimentation.’”

Id. (quoting In re Wands, 858 F.2d 731,

13

736-37 (Fed. Cir. 1988).

The specification “need not disclose what

14

is well-known in the art.”

15

one with “factual underpinnings,” particularly in terms of the

16

Wands factors for determining whether undue experimentation is

17

needed to practice the invention.

18

presumed valid, lack of enablement must be shown by clear and

19

convincing evidence.”

20

Id.

Enablement is a matter of law, but

Id.

“Because patents are

Id.

Here, there is a lack of clear and convincing evidence.

21

Because Blueprint’s enablement argument is not developed or

22

supported by evidence tailored and applied to the proper legal

23

standard — which is not the same as the standard for written

24

description — this Court cannot find for Blueprint on its motion

25

for summary judgment based on an alleged lack of enablement.

26

4.

Double Patenting

27

Blueprint’s argument for double patenting is that certain

28

claims in four of the challenged patents “are invalid for statutory
26

1

double patenting.”

(Def. MSJ for 112 at 23.)

2

for the ‘246 patent, claims 6, 7, 9, 10, 12-17; for the ‘266

3

patent, claims 1, 2, 5-7, 9, 11, 14, 15, 17-20, 22; for the ‘269

4

patent, claims 1, 4, 5, 8, 17, 20; and for the ‘806 patent, claims

5

1, 2, 4, 5, 17, 19.

6

Exhibit 16 demonstrates that “other than different labels applied

7

to the same elements, the claims have the same scope.”

8

Further, Blueprint points out that “Nomadix is asserting that all

9

of the claims cover the same aspect of the accused product —

(Id. at 24.)

These claims are:

Blueprint argues that its

(Id.)

10

redirection to a portal page — rather than different aspects of the

11

product,” which demonstrates that Nomadix “interpret[s] all of

12

these claims to literally cover the same exact feature.”

13

24-25.)

14

(Id. at

Blueprint also argues that “even if the claims were to be

15

deemed to vary sufficiently to avoid statutory double patenting,

16

they are certainly obvious variations of each other and Nomadix

17

failed to enter all of the terminal disclaimers for the ‘266, ‘269,

18

and ‘806 patents required to avoid invalidity for obvious-type

19

double patenting.”

20

has attached” so it is too late for Nomadix to provide the missing

21

terminal disclaimers.

22

(Id. at 25.)

Blueprint states that “prejudice

(Id.)

Nomadix responds that the four challenged patents “belong to

23

the same priority family” and “have always been set to expire on

24

the same day: December 8, 2019,” thus, “[t]he four patents

25

therefore do not extend Nomadix’s monopoly period.”

26

24.)

27

U.S. PTO for these patents.

28

Blueprint failed to carry its burden to show by clear and

(Opp’n 112 at

Nomadix states that terminal disclaimers were filed with the
(Id.)

27

Further, Nomadix argues that

1

convincing evidence that “thirty-six claims from four patents are

2

invalid for same-invention double patenting” because no reference

3

patent is established, only attorney argument in an attached

4

exhibit table is provided as evidence, the exhibit does not include

5

all the claim language from the claims at issue, Blueprint itself

6

acknowledges that the claims use different terms, and there is no

7

allegation (or evidence) that all the limitations of one claim

8

appear in another as is needed to show statutory double patenting.

9

(Id. at 25-26.)

10

Nomadix also states that there is no argument, much less any

11

proof, for obviousness-type double patenting beyond a sentence that

12

the claims are invalid for rendering a later claim obvious.

13

at 26.)

14

preclude this defense.

15

case law stating that a patentee can file a disclaimer even during

16

litigation.

17

Barr Labs., Inc., 592 F.3d 1340, 1347-50 (Fed. Cir. 2010) (“[A]

18

patentee may file a disclaimer after issuance of the challenged

19

patent or during litigation, even after a finding that the

20

challenged patent is invalid for obviousness-type double

21

patenting.”).)

(Id.

Further, Nomadix claims that its terminal disclaimers
(Id. at 27-29.)

It cites Federal Circuit

(Id. at 28 (citing Boehringer Ingelheim Int’l GMBH v.

22

The double patenting doctrine is meant to prevent a patentee

23

from extending the life of a patent through additional patents on

24

the same invention or through an obvious modification of the

25

original patent.

26

611 F.3d 1381, 1384-85 (Fed. Cir. 2010).

27

double patenting takes two forms: (1) statutory double patenting,

28

which stems from 35 U.S.C. § 101 and prohibits a later patent from

See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co.,

28

“The proscription against

1

covering the same invention, i.e., identical subject matter, as an

2

earlier patent, and (2) obviousness-type double patenting, which is

3

a judicially created doctrine that prevents a later patent from

4

covering a slight variation of an earlier patented invention.”

5

at 1384.

6

Id.

Statutory double patenting requires the two (or more) patents

7

to be “identical in scope.”

8

(Fed. Cir. 1993).

9

patenting is a judicially created doctrine adopted to prevent

In re Goodman, 11 F.3d 1046, 1052

“Non-statutory, or ‘obviousness-type,’ double

10

claims in separate applications or patents that do not recite the

11

‘same’ invention, but nonetheless claim inventions so alike that

12

granting both exclusive rights would effectively extend the life of

13

patent protection.”

14

1368, 1373 (Fed. Cir. 2005).

15

Perricone v. Medicis Pharm. Corp., 432 F.3d

For this Court to invalidate four patents for double patenting

16

under either a statutory or non-statutory theory, Blueprint needs

17

to produce clear and convincing evidence to support its argument.

18

See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1580 (Fed.

19

Cir. 1991).

20

finder ‘an abiding conviction that the truth of [the] factual

21

contentions are highly probable.’”

22

Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting

23

Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).

24

is not confident that such a showing has been made.

25

Clear and convincing evidence “places in the fact

Procter & Gamble Co. v. Teva

Here, the Court

First, Exhibit 16 is the crux of Blueprint’s argument that the

26

claims are identical in scope or one patent renders the later ones

27

obvious.

28

Exhibit 16 in its legal analysis section.

However, Blueprint’s brief fails to apply and explain

29

The evidentiary burden

1

is on Blueprint as the party alleging invalidity.

2

patenting challenge requires a “claim-by-claim” evaluation.

3

Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 942 (Fed. Cir. 1992).

4

While Exhibit 16 purports to do this by putting into a chart most

5

of the claim language of the claims Blueprint alleges to be double

6

patenting with the other one to three patents, in its brief,

7

Blueprint only discusses two particular issues.

8
9

A double
See

Blueprint says that “almost all of the claim elements are
recited in each patent, and all of the claim elements are recited

10

in at least two patents, with Nomadix merely changing the labels or

11

switching between method claims and functionally defined apparatus

12

claims.”

13

through the evidence for a moving party at summary judgment.

14

Rather, Blueprint needs to either show that the scope of the

15

inventions are identical or are so alike that the later patents

16

extend the life of the earlier patent.

17

this.

18

(Def. MSJ for 112 at 24.)

The Court will not piece

Blueprint has failed to do

Blueprint’s argument that Nomadix’s use of the terms

19

“redirection server” in the ‘246 patent, “redirected destination

20

HTTP server” in the ‘266 patent, and “redirection data generation

21

module” in the ‘269 patent is either just changing labels or

22

switching between different kind of claims is just that, an

23

assertion that this is the case, rather than an explanation of how

24

and why that is the case.

25

Blueprint’s other points regarding different claim language meaning

26

the same thing or having the same scope.

27

language has not been determined or alleged in this part of the

(See id.)

28
30

The same holds true for

The scope of the claims’

1

brief, thus, the Court has no grounds for finding double patenting

2

at this stage of the case.

3

Lastly, Blueprint’s point about the terminal disclaimers seems

4

to be contrary to the evidence, and there is no prejudice according

5

to the Federal Circuit’s case law allowing terminal disclosures to

6

be filed even during litigation.

7

Lezama Opp’n Decl. Ex. 1 (providing Nomadix’s terminal disclosures

8

for the ‘866 patent, ‘246 patent, ‘266 patent, ‘269 patent, and

9

‘806 patent).

10

See Boehringer, 592 F.3d at 1347;

Nomadix raises triable issues of fact regarding double

11

patenting, and Blueprint has failed to develop a record and a

12

claim-by-claim analysis that would allow this Court to rule as a

13

matter of law.

14

without detailed, claim-by-claim analysis, this Court cannot find

15

for Blueprint on its double patenting summary judgment motion.

16

C.

Therefore, based on this lack of a record and

Motion for Summary Judgment on Patent Invalidity under 35
U.S.C. §§ 102 and 103

17
18

Blueprint has another motion for partial summary judgment on

19

patent invalidity, arguing that claims 6 and 7 of the ‘246 patent

20

are invalid under 35 U.S.C. §§ 102 and 103.

21

J. of Patent Invalidity under 35 [U.S.C.] §§ 102 and 103 (“MSJ for

22

102/103”), dkt. no. 88 at 1.)

23

are both anticipated and obvious based on the prior art.

24

17-20.)

25

alleged “broad” view of the ‘246 claims, at least two prior art

26

disclosures anticipate and/or render obvious the ‘246 patent’s

27

claims: the Connect Group gateway device and the Slemmer patent

28

(which, when combined with other “secondary references” at the very

(See Def. Mot. Summ.

Blueprint is arguing that the claims
(Id. at

The crux of the argument is that, based on Nomadix’s

31

1

least renders the patent obvious).

2

argues that if the Court adopts a “narrow” view of the claims, then

3

the claims are invalid for anticipation based on ATCOM white papers

4

and an IPORT gateway device.

5

(Id. at 24-25.)

Blueprint also

(Id. at 25.)

Nomadix responds both on the merits of the argument and on a

6

procedural issue.

7

relies on conclusory attorney argument without any meaningful

8

supporting expert opinions and falls markedly short of carrying its

9

burden.

For the latter, Nomadix states that “Blueprint

Ultimately, Blueprint leaves the Court to wade through the

10

600+ page record in search of a viable invalidity theory.”

11

Opp’n to Def. MSJ for 102/103 (“Opp’n 102/103”) at 1.)

12

merits, Nomadix contends that Blueprint’s brief comes down to

13

relying on three prior art references: the Slemmer patent, the

14

Connect Group device, and the IPORT device.

15

Nomadix sees it, all three are related to Blueprint’s anticipation

16

argument, and Slemmer is alleged to combine with other prior art

17

references to render Nomadix’s patent obvious.

18

(Pl.

As to the

(Id. at 4.)

As

(Id. at 4-5.)

On the merits, Nomadix primarily relies on the clear and

19

convincing standard that Blueprint must meet to invalidate the

20

patent.

21

motion does not explain the appropriate legal standard or the

22

application of the alleged prior art combined with the ‘246

23

patent’s claims at issue; thus, Blueprint cannot overcome the clear

24

and convincing standard.

25

argues that the arguments that are set out fail because there are

26

material fact disputes regarding: (1) what the Slemmer patent

27

discloses and what the ‘246 patent’s claims cover; (2) the relevant

28

date for the Connect Group device in terms of the device reading on

Nomadix argues that the legal discussion in Blueprint’s

(See generally id.)

32

Further, Nomadix

1

the ‘246 claims; and (3) whether the IPORT device satisfied the

2

‘246 claim limits at the relevant time.

3

(Id. at 19-28.)

In reply, Blueprint alleges that it has a “smoking gun” in the

4

case: “the Connect Group source code” and that this resolves

5

disputes over the timeliness and scope of the invention disclosed

6

by the device.

7

at 1-2.)

8

obviousness not raised in its opening brief as well as proffer new

9

evidentiary arguments.

(Def. Reply ISO MSJ for 102/103 (“Reply 102/103”)

Blueprint also makes several new arguments relating to

(Id. at 19-30, exs. 1-8, Q-P.)

However, as

10

discussed above with Blueprint’s § 112 arguments, arguments and

11

evidence must be presented in moving papers to give the opposing

12

party notice and opportunity to respond.

13
14

1.

Legal Standards for 35 U.S.C. §§ 102 and 103

A party seeking to invalidate a patent by showing it is

15

anticipated or obvious must produce evidence to satisfy a clear and

16

convincing standard of proof.

17

P’ship, 131 S. Ct. 2238, 2242 (2011).

18

See Microsoft Corp. v. i4i Ltd.

Section 102 of the Patent Act covers the novelty requirement

19

for patentability; an argument that a patent fails to meet this

20

requirement must show that the patent is anticipated by prior art.

21

See 35 U.S.C. § 102; Finisar Corp. V. DirecTV Group, Inc., 523 F.3d

22

1323, 1334 (Fed. Cir. 2008).

23

anticipation inquiry done “on a claim-by-claim basis” and “a single

24

prior art reference must expressly or inherently disclose each

25

claim limitation.”

26

requires the presence in a single prior art disclosure of all

27

elements of a claimed invention arranged as in the claim.”

28

v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).

This is a question of fact, with the

Finisar, 523 F.3d at 1334.

33

“Anticipation

Connell

1
2

Section 103 of the Patent Act requires a patented invention to
not be obvious.

3

35 U.S.C. § 103.

The statute states:

A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not
identically disclosed as set forth in section 102, if the
differences between the claimed invention and the prior art
are such that the claimed invention as a whole would have
been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the
art to which the claimed invention pertains.

4
5
6
7
8

Id.

9

examining a single prior art reference that is required to render a

Thus, the scope of a court’s obviousness inquiry goes beyond

10

patent anticipated under section 102.

11

prior art can be considered to determine if the patent is obvious,

12

with prior art references being determined by section 102 (a), (b),

13

(e), (f), and (g).

14

F.3d 1396, 1401-02 (Fed. Cir. 1997).

15

Instead, the whole of the

See OddzOn Prods., Inc. v. Just Toys, Inc., 122

Further, the Federal Circuit has found that “certain factual

16

predicates are required before the legal conclusion of obviousness

17

or nonobviousness can be reached,” namely, the district court must

18

apply and make factual findings of the Graham factors from Graham

19

v. John Deere Co., 383 U.S. 1, 17 (1966).

20

F.3d at 26.

21

the prior art; (2) the differences between the claimed invention

22

and the prior art; (3) the level of ordinary skill in the art; and

23

(4) objective evidence of non-obviousness, such as commercial

24

success, long-felt but unsolved need, failure of others, copying,

25

and unexpected results.”

26
27
28

2.

See Apple Computer, 234

The Graham factors are: “(1) the scope and content of

Id. (citing Graham, 383 U.S. at 17).

Anticipation

As discussed above, anticipation requires all limitations of
the challenged patent and claims to be in a single prior art
34

1

reference.

2

analysis.

3

make such an analysis.

4

Blueprint has met its evidentiary burden at this point.

5

This theory of invalidity requires a claim-by-claim
At no point does Blueprint’s moving brief in this motion

3.

Therefore, the Court cannot find that

Obviousness

6

First, Blueprint argues that there “is no material dispute

7

about the level of skill in the art, which is not a significant

8

factor in the legal arguments of either party.”

9

at 21.)

(MSJ for 102/103

However, the level of ordinary skill in the art is one of

10

the Graham factors, so even if undisputed, the moving party must

11

make a factual showing of what the level is.

12

does not contain enough information for the Court to properly make

13

an evaluation of this factor.

14

The current motion

Second, Blueprint’s prior art references are attached to the

15

motion in the forty-six exhibits.

16

Blueprint appear to be the Connect Group gateway device, the IPORT

17

gateway, and the Slemmer patent, but Blueprint has attached

18

voluminous other patents, non-patent publications, and explanations

19

of the gateway devices in its exhibits to the motion and its reply.

20

(See id. at 21-22.)

21

support to establish the scope and content of the prior art because

22

it is another Graham factor.

23

sufficient factual support for the scope and content of the prior

24

art, the Court also requires some analysis that these references

25

(a) are prior art under the statutory sections; (b) establish the

26

relevant scope of the prior art; and (c) are prior art to the

27

specific claims and patent at issue in this case.

The references most important to

The Court requires analysis and factual

While the current motion may contain

28
35

1

Third, Blueprint’s brief has a section for a comparison of the

2

claimed invention to the prior art, as is needed for this Court to

3

make a proper Graham analysis of obviousness.

4

However, the moving brief fails to undertake the comparison.

5

Instead, Blueprint states that “[o]nce the content of the prior art

6

has been established, the invalidity analysis follows directly.”

7

(Id.)

8

cannot tell.

9

Court wade through all the exhibits for the party offering them.

(Id. at 23.)

This may be true; however, at this juncture, the Court
The Court is not a technical expert, nor can the

10

Without understanding what all the claims in the ‘246 patent cover,

11

and without understanding exactly what the prior art references

12

cover, a comparison between the two is impossible.

13

to early discovery responses that are perhaps “evasive” is not

14

enough at this point to support a comparison between the prior art

15

and the claims at issue here. (See id.)

16

clear and convincing evidence fully explained in the briefing, with

17

the opposing party having the same opportunity to argue based on

18

the proffered evidence and argument.

19

Simply pointing

What the Court needs is

Further, the exhibits pointed to in the moving papers are more

20

appropriately explained and included in the moving brief’s

21

arguments.

22

(table comparing prior art references to ‘246 patent).)

23

exhibits are attorney arguments that can be laid out in a visual

24

form to help aid the Court’s understanding, but attorney arguments

25

they are nonetheless.

26

moving papers, much less in the exhibits themselves.

27

24-25.)

28

other sources side by side.

(See Exs. 42 (claim construction table); Exs. 43-45
These

The arguments are not explained in the
(See id. at

The exhibits place unexplained text from the patents and
It is not this Court’s job to comb
36

1

through prior art references, technical language, or voluminous

2

exhibits and vague arguments in order to tell if a moving party has

3

met their burden, and so this Court is unable to do so at this

4

point.

5

patent is invalid for obviousness based on the current record.

6

IV.

Therefore, the Court holds it cannot determine that the

CONCLUSION

7

For the reasons stated above, the Court:

8

GRANTS Nomadix’s Motion for Summary Judgment on Infringement

9
10
11
12
13
14
15

of the ‘246 Patent;
DENIES Blueprint’s Cross-Motion for Summary Judgment of
Noninfringement of the ‘246 Patent;
DENIES Blueprint’s Motion for Summary Judgment under 35 U.S.C.
§ 112 and Double Patenting; and
DENIES Blueprint’s Motion for Summary Judgment under 35 U.S.C.
§§ 102 and 103.

16
17

IT IS SO ORDERED.

18
19
20

Dated: January 27, 2016
DEAN D. PREGERSON
United States District Judge

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22
23
24
25
26
27
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