Technology Properties Limited, LLC v. Canon, Inc. et al

Filing 527

Order by Hon. Claudia Wilken granting 479 Motion for Summary Judgment.(dtmS, COURT STAFF) (Filed on 9/16/2016)

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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 5 TECHNOLOGY PROPERTIES LIMITED LLC and MCM PORTFOLIO LLC, 8 v. United States District Court For the Northern District of California (Docket No. 479) CANON INC. et al., Defendants. 9 10 ORDER GRANTING MOTION FOR SUMMARY JUDGMENT Plaintiffs, 6 7 No. C 14-3640 CW ________________________________/ 11 Defendants Canon Inc. and Canon U.S.A., Inc. (collectively 12 Canon) file this motion for summary judgment against Plaintiffs 13 Technology Properties Limited LLC and MCM Portfolio LLC. 14 explained below, the Court grants Canon's motion because Canon's 15 products do not infringe the patents-in-suit. BACKGROUND 16 17 As Plaintiffs assert two patents in this case: Patent Numbers 18 7,295,443 (the '443 patent) and 7,522,424 (the '424 patent). The 19 patents describe technology that enables devices to read different 20 types of removable memory cards. 21 the '424 patent is a continuation of the '443 patent and that the 22 two patents contain the same figures and specification, except for 23 a few sentences that were added during the prosecution of the '424 24 patent. 25 facts concerning two types of removable memory cards: SD Cards and 26 MMC Cards. 27 nine, while MMC cards have seven contact pads, numbered one 28 through seven. The parties do not dispute that Additionally, the parties do not dispute the following SD cards have nine contact pads, numbered one through For both cards, the signal on pins two through 1 seven are identical, with seven used for data. 2 four signal lines in total for data, while the MMC card uses only 3 one: number seven. 4 The SD card uses Plaintiffs assert that many Canon products have infringed the 5 patents. The parties have agreed to six representative products. 6 Docket Nos. 413, 416. 7 representative products infringes each of the following claims: 8 claims 1, 3, 4, 7, 9, 11, 12 and 14 of the '443 patent and claims 9 25, 26, 28 and 29 of the '424 patent. Plaintiffs allege that at least one of the Response Br. at 3 n.3; United States District Court For the Northern District of California 10 Busciano Dec., Ex. A, Busciano Opening ¶¶ 101-04. 11 independent claims within this set discuss mapping: 12 13 14 15 16 17 18 19 20 21 22 23 The four Claim 1, '443 patent: "A multi-memory media adapter comprising . . . a controller chip to map at least a subset of the at least one set of contact pins to a set of signal lines or power lines, based on an identified type of a memory media card." Claim 9, '443 patent: "A system comprising . . . a controller integrated into the multi-memory media adapter to map at least a subset of the set of contact pins to a set of signal lines or power lines, based an [sic] identified type of the memory media card." Claim 25, '424 patent: "Apparatus comprising . . . means for mapping power, ground or data signals between said interconnection pins and said one or more contact pins depending upon the identification of the type of memory card inserted into said port." Claim 28, '424 patent: "Apparatus comprising . . . means for mapping power, ground or data signals between said interconnection means and said one or more contact pins depending upon the identification of the type of memory card inserted into said port." 24 The mapping terms were added during the prosecution of the '443 25 patent in light of the Hung-Ju patent, described below. 26 27 28 2 1 The Court construed the claims in an Order dated September 2 18, 2015. Docket No. 334, Claim Construction Order.1 There, the 3 Court concluded that "to map" means "to assign," id. at 11, and 4 that "means for mapping" is a means plus function claim in which 5 mapping is the function and the structure is "a controller," id. 6 at 17. 7 construction to conclude whether "mapping" must be physical or 8 logical. 9 its construction that "'mapping' must mean varying the assignments The Court noted that it was beyond the scope of claim Id. at 11. Also, the Court declined to incorporate into United States District Court For the Northern District of California 10 such that using signal lines in some circumstances but not in 11 others does not constitute mapping." 12 the Court declined Canon's invitation to further limit the terms 13 in a way that excludes card readers that accept SD and MMC memory 14 cards in the same slot using a shared set of contact pins. 15 Court reasoned that Canon's argument was less one of claim 16 construction than it was of non-infringement. 17 if the accused devices have "a single port and a shared set of 18 contact pins for both SD and MMC cards, it may be that the accused 19 devices do not infringe the patents-in-suit." 20 Id. at 10. Specifically, The It explained that Id. Canon makes two main arguments in its motion for summary 21 judgment: 1) Canon did not infringe the patents because 22 Plaintiffs' reading of the Claim Construction Order is overbroad; 23 and 2) if Plaintiffs' reading is correct then the patents are 24 invalid based on prior art. 25 dispute of material fact exists as to each of these issues, 26 27 28 Plaintiffs argue that a genuine This order was later amended. Docket No. 359. The amendment did not impact the construction of the terms at issue here. 1 3 1 particularly because Canon mischaracterizes Plaintiffs' reading of 2 the Claim Construction Order. 3 Canon did not infringe the patents, it need not decide the issues 4 related to invalidity. Because the Court concludes that 5 LEGAL STANDARD 6 In patent cases, the parties' burdens on summary judgment 7 differ based on whether the moving party has the burden of proof 8 on the issue at trial. 9 burden of proof, it "nonetheless bears the initial burden of Where a moving party does not have the United States District Court For the Northern District of California 10 coming forward with sufficient evidence to demonstrate that there 11 is no material issue of fact that would preclude summary judgment, 12 and that it is entitled to judgment as a matter of law." 13 Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 806 (Fed. 14 Cir. 1999). 15 need only show that the moving party is not entitled to judgment 16 or that there are material issues of fact. 17 contrast, where the moving party has the burden of proof on an 18 issue at trial, it must show that there is no genuine issue of 19 material fact as to every element of that issue. 20 Asics Corp., 974 F.2d 1304, 1307 (Fed. Cir. 1992). 21 Vivid The burden then shifts to the opposing party, who Id. at 806-07. By See Meyers v. Canon is entitled to summary judgment of noninfringement only 22 if the facts and inferences, when viewed in the light most 23 favorable to Plaintiffs, would not persuade a reasonable jury to 24 return a verdict in favor of Plaintiffs. 25 Microstrategy, Inc., 393 F.3d 1366, 1371-72 (Fed. Cir. 2005) 26 (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 27 (1986)). 28 reasonable jury could find that every limitation recited in a Bus. Objects, S.A. v. "Summary judgment of noninfringement is proper when no 4 1 properly constructed claim is found in the accused device either 2 literally or under the doctrine of equivalents." 3 Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed. 4 Cir. 2015). DISCUSSION 5 6 Advanced Steel To establish literal infringement2 following claim 7 construction, "every limitation set forth in a claim must be found 8 in an accused product, exactly." 9 Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). United States District Court For the Northern District of California 10 11 Southwall Techs., Inc. v. infringement is an issue of fact. Literal Id. Canon argues that its controller does not assign anything, 12 but rather "merely implements the SD and MMC standards." Reply 13 Br. at 4. 14 are predetermined in advance." 15 difference is that three of the pins are not used for MMC cards 16 but those three pins are used for data for SD cards. 17 ¶¶ 62-63. 18 signal lines based on whether an SD or MMC card is identified. 19 The controller both assigns contact pins to signal lines and 20 assigns signals between interconnection means and contact pins. 21 Buscaino Opening ¶¶ 70-92. 22 are not used in MMC cards are assigned data in SD cards. 23 the four SD data contact pads that accept data receive parallel 24 data signals, while the one MMC data contact pad receives serial 25 data signals. The "connection paths along which signals travel . . . Stevenson Dec. ¶ 66. The only See id. Plaintiffs argue that the controller assigns signals to Id. In particular, three signal lines that Further, This means that one contact pad switches 26 27 28 Plaintiffs make no argument regarding the doctrine of equivalents in opposing this motion. 2 5 1 between parallel and serial data signals depending on the card 2 inserted. 3 The mapping claim limitations were first added during 4 prosecution of the ’443 patent to overcome a § 102 rejection based 5 on the Hung-Ju patent (Patent Number 6,402,558). 6 11, Hung-Ju. 7 memory card adapter with multiple slots of varying sizes, each 8 equipped with a unique set of contact pins that come into contact 9 with a corresponding memory card. Hertko Dec., Ex. The original, pre-amended claims were directed to a The examiner rejected the United States District Court For the Northern District of California 10 claims based on Hung-Ju, which disclosed a memory card adapter 11 “suitable for different types of memory cards by physically 12 ‘positioning contact pins and entrance slots in various 13 locations.’” 14 examiner’s rejection, the applicant amended patented claims 1 as 15 described above. 16 Ju, the applicant stated: 17 18 19 20 21 22 23 24 25 Hertko Dec., Ex. 10 at 2554. In response to the In distinguishing the amended claims from Hung- As shown, Hung-Ju discusses a memory card adaptor suitable for different types of memory cards by physically “positioning contact pins and entrance slots in various locations”. Thus, Hung-Ju suggests using different sets of contact pins for different types of memory cards. By physically placing memory cards in different positions in the adaptor, different contact pins are in contact with the memory cards. Thus, Hung-Ju teaches away from the claim limitation using a controller chip to “map at least a subset of the at least one set of contact pins to a set of signal lines or power lines” where one set of pins is mapped to different signals depending on the type of identified memory card, as recited in Applicant’s independent claims 1 and 12 [patented claims 1 and 9]. Id. at 2554-55 (emphasis in original). 26 By changing the claims from using different sets of contact 27 pins for different memory cards to using only one set of contact 28 pins for a variety of memory cards, the amended claims mark a 6 1 significant departure from the nature of the originally claimed 2 invention. 3 claims were supported by the original specification, particularly 4 pointing to Figure 4 in the specification as an example. 5 2554. However, the applicant maintained that the amended Id. at 6 Figure 4 of the ’443 patent shows an embodiment of the 7 invention that utilizes twenty-one shared connector pins to 8 accommodate three different types of memory cards--namely, Smart 9 Media, MMC/SD, and Memory Stick--each with its own distinctive United States District Court For the Northern District of California 10 pin-outs. 11 from this table that, upon insertion of a Smart Media card, the 12 controller will “map” or “assign” the nineteen requisite Smart 13 Media card signals (e.g., D0/-WPSW, D1, D2) to the connector pins 14 1-19. 15 controller will “map” or “assign” the nine requisite MMC/SD card 16 signals (e.g., -WP, -CD, MCMD) to connector pins 2-4, 10-13, 18, 17 20, and 21. 18 will “map” or “assign” the six requisite Memory Stick card signals 19 (e.g., -CD, BS, SDIO) to connector pins 5-7, 18, 20, and 21. 20 A person of ordinary skill in the art would understand Alternatively, when an MMC or a SD card is inserted, the When a Memory Stick card is inserted, the controller However, and significantly, Figure 4 makes no distinction 21 between MMC and SD cards, putting them in the same column and 22 treating them as a single entity. 23 specification of the patents-in-suit, MMC and SD cards are 24 consistently treated as one and the same. 25 refers to the duo as “MMC/SD” twenty-two times, without making any 26 distinction between them, despite their well-known differences. 27 In particular, Figure 2 of the patents-in-suit shows a “Prior Art” 28 multimedia card adapter as having a set of nine contact pins (214) In fact, throughout the 7 The specification 1 that “provide interfaces for MMC/SD.” 2 2:24-28. 3 a standard commercial product” at the time of the invention. 4 at 2:9-10. 5 See, e.g., ’443 Patent at According to the patents, this adapter was “available as Id. Hung-Ju likewise described MMC and SD cards as sharing a slot 6 and a set of contact pins. Specifically, Hung-Ju described its 7 Figure 1, which shows a multimedia card adapter with a single slot 8 106b and one set of contact pins 104b for both MMC and SD cards, 9 as follows: “The card insertion slot 106b can accommodate a multi- United States District Court For the Northern District of California 10 media card [i.e., MMC card] or a digital card [i.e., SD card]. 11 Because the eight contact pins 104b are fixed at appropriate 12 position on the lower frame 102b, the multi-media card [MMC] or 13 the digital card [SD] can be inserted into the card insertion slot 14 106b with the input/output contact points facing down.” 15 at 3:31-36. 16 Hung-Ju MMC and SD cards are treated interchangeably in the 17 specification of the patents-in-suit and in Hung-Ju because the SD 18 card was designed such that an MMC card could be inserted into an 19 SD card socket--that is, they could share a single slot. 20 Dec., Ex. 6, SD Specification at 19-20. 21 primary differences between SD and MMC cards are that the newer SD 22 cards have nine contact pins/pads (four of which are for data) and 23 are capable of transferring data either serially on one data pin 24 or in parallel (i.e., four bits at a time) on all four data pins 25 while the MMC cards have seven contact pins/pads (only one of 26 which is for data) and can only transfer data serially (i.e., one 27 bit at a time). 28 at 3. Hertko As explained above, the Hertko Dec, Ex. 5, Infringement Contention Chart 8 1 Yet Plaintiffs’ infringement theory is based essentially on 2 the accused products’ use of a slot with a shared set of contact 3 pins for MMC and SD cards in compliance with the SD Specification. 4 Specifically, the accused products are Canon printer/copiers, 5 digital cameras, and card readers that include multi-memory card 6 connectors for receiving at least SD and MMC memory media cards. 7 Buscaino Opening ¶¶ 53, 55. 8 products infringe the “mapping” limitations in the ’443 patent in 9 the following manner. Plaintiffs contend that the accused When the controller identified the presence United States District Court For the Northern District of California 10 of an SD card, it would assign four parallel data signals to four 11 data signal lines, thereby assigning four contact pins to four 12 data signal lines. 13 an MMC card, it would assign one serial data signal to one of the 14 four data signal lines, thereby assigning one contact pin to one 15 data signal line. 16 infringement contention with regard to the “mapping” limitation 17 bears no discernable difference from the initialization and data 18 transfer process as set forth in the SD Specification. When the controller identified the presence of Opp. Br. at 5-6. Thus, Plaintiffs’ 19 The International Trade Commission's opinion further supports 20 the Court's conclusion that reading an SD or MMC card in the Canon 21 Products requires no mapping. 22 communicate with the SD and MMC cards, no mapping is required. 23 Similarly, the mere use of additional signal lines in some 24 circumstances but not others, based upon fixed assignments, does 25 not constitute mapping." It found that, "in order to Hertko Dec., Ex. 22 at 21. 26 Plaintiffs also contend that “Canon’s [non-infringement] 27 argument ignores the entirety of the mapping limitations which are 28 found in the accused products, but absent in the SD 9 1 Specification.” Opp. Br. at 9. Specifically, Plaintiffs contend 2 that infringement of the mapping limitations is not based solely 3 on sharing a set of contact pins or supporting more than one type 4 of memory card in the same slot, but relates, among other things, 5 to how the controller assigns signals to signal lines based on the 6 identified type of memory card that has been inserted and how the 7 signal lines, interconnection pins or means, and contact pins are 8 arranged. 9 limitations require “common physical connection to the In particular, Plaintiffs contend that the “mapping” United States District Court For the Northern District of California 10 controller,” id. at 14, which is found in the accused products but 11 not in the SD Specification. 12 any evidence from the patent or the prosecution history that 13 supports a construction that “mapping” requires “common physical 14 connection to the controller.” 15 arguing that the phrase “a controller chip to map at least a 16 subset of the at least one set of contact pins to a set of signal 17 lines or power lines” in the ‘443 patent should be construed as “a 18 controller chip to map at least a subset of the at least one set 19 of contact pins to a common set of signal lines or power lines,” 20 such a construction is unwarranted. 21 However, Plaintiffs fail to offer To the extent that Plaintiffs are Plaintiffs also contend that transferring data in parallel or 22 in serial constitutes mapping. See Opp. Br. at 14. However, 23 claim 25 of the '424 patent, for example, does not distinguish 24 between different types of data; instead, it describes "mapping 25 power, ground or data signals." 26 cards are capable of transferring data either serially or in 27 parallel. 28 does not amount to assignment. Further, as described above, SD Having the capacity to transfer data in either form 10 Because the patents-in-suit and Hung-Ju make clear references 1 to MMC/SD cards, and because it was well-known at the time of the 3 invention that the implementation of MMC/SD cards is controlled by 4 the SD Specification that dictates how the cards share a slot and 5 a set of contact pins, the claimed “mapping” limitations are not 6 met by the functionality of accepting SD and MMC memory cards in 7 the same slot using a shared set of contact pins. Because the 8 accused Canon products accept SD and MMC memory cards in 9 compliance with the SD Specification, and because no "assignment" 10 United States District Court For the Northern District of California 2 occurs, the Canon products do not infringe the mapping limitations 11 here. 12 CONCLUSION 13 The Court GRANTS Canon's motion for summary judgment that 14 Canon’s accused products do not infringe Plaintiffs’ asserted 15 patents. 16 the Clerk's Office to enter judgment in favor of Defendants and 17 against Plaintiffs in this case. 18 costs. 19 Canon’s invalidity claims are moot. The Court directs Defendants shall recover their IT IS SO ORDERED. 20 21 22 Dated: September 16, 2016 CLAUDIA WILKEN United States District Judge 23 24 25 26 27 28 11

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