Fujitsu Limited v. Belkin International, Inc. et al

Filing 302

Tentative Rulings on Motions for Summary Judgment. Signed by Judge Lucy H. Koh on 9/20/12. (lhklc3S, COURT STAFF) (Filed on 9/20/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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FUJITSU LIMITED,

)
)
Plaintiff,
)
)
v.
)
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BELKIN INTERNATIONAL, INC.; BELKIN, )
INC.; D-LINK CORPORATION; D-LINK
)
SYSTEMS, INC.; NETGEAR, INC.; ZYXEL )
COMMUNICATIONS CORPORATION; and )
ZYXEL COMMUNICATIONS, INC.,
)
)
Defendants.
)
)

Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS
FOR SUMMARY JUDGMENT

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The parties shall address the issues raised in bold below at the hearing and will be given an
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additional ten minutes to address any of the Court’s other tentative rulings.
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Issue

Dispute

Tentative
Ruling

Defendants’ MSJ of Invalidity
Claim Construction
Claim
Fujitsu argues that “card” should be construed as “IC-type
Plain
construction of
card,” but admits that a PHOSITA in 1991 would also
meaning
“card”
understand a printed circuit board (PCB) to be a “card” as that (no change)
term is ordinarily understood. Fujitsu did not act as its own
lexicographer, and made no clear disavowal of non-IC type
cards in either the specification or prosecution history. Thus,
there is no basis for importing this “IC-type” limitation from
the specification and limiting the plain and ordinary meaning
of “card” as used in the claims.
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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT

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Claim
construction of
“slot”

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United States District Court
For the Northern District of California

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Claim
construction of
data transfer
circuit . . . “in
response to”

The parties should address the relationship between a
“card” and a “cartridge,” as understood by a POSITA in
April 1991, and relatedly, the significance of Fujitsu’s
reexamination statement distinguishing the Mizutani
reference because it disclosed a “cartridge,” not a “card.”
The parties appear to agree that “an opening” is a slot, but
“an
Fujitsu resurrects its previously abandoned argument that
opening”
“slot” should have a locational limitation and be construed as
“an opening in the exterior of the electronic device.” Again,
Fujitsu seeks to import limitations from the specification in
the absence of a clear disavowal. Fujitsu argues that it
disavowed internal slots, such as those that accept internal
PCI, during reexamination proceedings, but this does not rise
to the level of a clear disavowal, as an equally reasonable
interpretation is that Fujitsu was disclaiming “installation onto
a motherboard” by insertion into a connector, and not mere
“insertion” into all internal openings. Thus, there is no basis
for importing the locational limitation from the specification
and limiting the plain and ordinary meaning of “slot” as used
in the claims.
The parties should address the relationship between a
“slot,” an “expansion slot,” and a “connector,” as
understood by a POSITA in April 1991, and relatedly, the
significance of Fujitsu’s reexamination statement
distinguishing the Arlan reference for failure to disclose a
card “to be inserted into a slot.”
Fujitsu argues that the claims require a data transfer circuit
that transfers data to the first data interface unit “in response
to,” i.e., automatically upon, receipt of input information by
the second data interface unit, and without further
intervention. Defendants argue that this is an improper
limitation without support in the claim language,
specification, or prosecution history. However, the Federal
Circuit recently affirmed a construction of “in response to” as
used in an analogously worded claim, holding that “‘[i]n
response to’ connotes that the second event occur in reaction
to the first event,” and without further intervening conduct on
the user’s part. Am. Calcar, Inc. v. Am. Honda Motor Co.,
651 F.3d 1318, 1339-40 (Fed. Cir. 2011). Thus, the plain
meaning of “in response to” requires a cause-and-effect
relationship, and the limitation is not satisfied where the
effect occurs only in the face of intervening user actions.

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Fujitsu shall address Defendants’ argument regarding the
“start-stop synchronization control unit” disclosed in
Figure 5 of the ’769 Patent.
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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT

Having a
cause-andeffect
relationship

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United States District Court
For the Northern District of California

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Anticipation
ARLAN 450
anticipates claims
41, 47, and 48
Mizutani
anticipates claims
2, 4, 8, 20, 41, 47,
and 48
Murakami
anticipates claims
2, 4, 8, 20, 41, 47,
and 48
HP82950A
anticipates claims
9, 14, and 27
Obviousness
Claims 41, 47,
and 48 are
obvious in light of
ARLAN 450 and
Murakami
Claims 2, 4, 8, 20,
41, 47, and 48 are
obvious in light of
Mizutani and
Murakami
Claims 2, 4, 8, 20,
41, 47, and 48 are
obvious in light of
Murakami and
other prior art
Claims 9, 14, and
27 are obvious in
light of
HP82950A and
Murakami

There is a factual dispute at least as to whether ARLAN
DENY
discloses a “slot” and whether ARLAN discloses a card “to be
inserted into a slot.”
There is a factual dispute at least as to whether Mizutani
DENY
discloses a “card.”

There is a factual dispute as to whether Murakami discloses a
data transfer circuit that meets the “in response to” limitation.

DENY

There is a factual dispute at least as to whether the HP82950A DENY
Modem discloses a “card.”

There are factual disputes regarding motivation to combine,
field of endeavor, and problems to be solved.

DENY

There are factual disputes regarding motivation to combine,
field of endeavor, and problems to be solved.

DENY

There are factual disputes regarding motivation to combine,
field of endeavor, and problems to be solved.

DENY

There are factual disputes regarding motivation to combine,
field of endeavor, and problems to be solved.

DENY

Fujitsu’s MSJ of Infringement
Third-party cards
Claims 2, 4, 9, 14, Under the Patent Local Rules of this District, a patentee’s
and 41 – meet all Infringement Contentions must identify the alleged thirdlimitations
party direct infringers in order to allege indirect infringement.
See Patent L.R. 3-1(d). “Insofar as alleged direct
infringement is based on joint acts of multiple parties, the role
of each such party in the direct infringement must be
described.” Patent L.R. 3-1(d). Fujitsu failed to timely
disclose these 19 third-party cards in its infringement
contentions.
Claims 20, 27, 47, See immediately above.
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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT

DENY
MSJ and
GRANT
Defs.’
motion to
strike for
untimely
disclosure
DENY

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and 48 – satisfy
all card-related
limitations

MSJ and
GRANT
Defs.’
motion to
strike for
untimely
disclosure

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Claim Construction
Claim
construction of
“data interface
unit”

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United States District Court
For the Northern District of California

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Claim
construction of
“provided on one
end of the card”
and “opposing
end”

This term appears in asserted claims 2, 4, 9, 14, 20, and 27.
The Court previously construed this term, pursuant to the
parties’ stipulation, to mean “a unit for buffering or
receiving/transmitting data.” Defendants appear to be arguing
that the “or” in the construction is an “exclusive or” (i.e., one
or the other, but not both), rather than a “logical or” (i.e.,
either or both). There is no basis for this construction, and
Defendants offer none.
These terms appear in asserted claims 2, 4, 9, 14, 20, and 27.
Defendants argue that the first data interface unit must be
entirely and exclusively on one half of the card, and the
second data interface unit must be entirely and exclusively on
the other half of the card. Fujitsu argues that there is no size
limitation in the claims.

“A unit for
buffering
or
receiving/tr
ansmitting
data” (No
change)
TBD

The Court is inclined to agree with Fujitsu that, based on
plain meaning, a data interface unit can be “provided on
one end” of the card even if it extends past the “50-yard
line” of the card, but would like to hear from both sides on
this issue, as neither offers much by way of intrinsic or
extrinsic evidence in support of its respective construction.
Claim
This term appears in asserted claims 9, 14, and 27 only.
TBD
construction of
Defendants argue that the second data interface unit must be
projection “in
entirely and exclusively contained within the projection,
which said second while Fujitsu argues that the limitation is met even if some
data interface unit parts of the circuitry comprising the second DIU extends
is provided”
beyond the projection.

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The Court is inclined to agree with Defendants based on
plain meaning, but would like to hear from both parties
on this issue. In particular, the Court would like Fujitsu
to identify where in the specification it specifically states
that the buffering circuitry in the disclosed embodiments
is located outside of the connector-shaped projections.
Defendants’ card interface devices
Claim 41 – direct No dispute.
infringement
Claim 47 – satisfy No dispute.
card-related
limitations
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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT

GRANT
GRANT

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Claim 48 – satisfy No dispute.
card-related
limitations
Claim 2 – direct
Fujitsu is entitled to summary adjudication that the accused
infringement
cards satisfy the “radio transmitter/receiver means” limitation,
and has shown that at least some “representative” cards
satisfy the following limitations: (1) “first data interface unit,
provided on one end of the card;” and (2) “second data
interface unit, provided on an opposing end of the card.”
Defendants offer no actual non-infringement evidence in
rebuttal to Dr. Williams’ report. Rather, Defendants simply
attack the sufficiency of Dr. Williams’ analysis based on his
alleged failure to perform a limitation-by-limitation analysis
as to each individual accused product.

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United States District Court
For the Northern District of California

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Claim 4 – direct
infringement

Do the parties disagree as to what components comprise
the “first data interface unit” and the “second data
interface unit” on each of the accused cards for purposes
of determining whether the data interface unit extends
past the “50-yard line”?
Same as for claim 2.

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Claim 20 – satisfy Same as for claim 2.
card-related
limitations

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Claim 9 – direct
infringement

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Claim 14 – direct
infringement

Fujitsu has proffered insufficient limitation-by-limitation
analysis as to each accused card to win on SJ. There is
insufficient evidence as to whether all cards satisfy the
following limitations: (1) “first data interface unit, provided
on one end of the card;” (2) “second data interface unit,
provided on an opposing end of the card;” and (3) “projection
in which said second data interface unit is provided.”
Same as for claim 9.

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Possibly
GRANT IN
PART and
DENY IN
PART

Do Defendants agree that summary judgment can be
granted with respect to the specific “representative” cards
for which Dr. Williams did provide individualized
analysis?

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GRANT

Claim 27 – satisfy Same as for claim 9.
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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT

Possibly
GRANT IN
PART and
DENY IN
PART
Possibly
GRANT IN
PART and
DENY IN
PART
Possibly
GRANT IN
PART and
DENY IN
PART

Possibly
GRANT IN
PART and
DENY IN
PART
Possibly

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card-related
limitations

GRANT IN
PART and
DENY IN
PART

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Defendants’ Wireless Access Points and Routers (“External Devices”)
Claim 20 – use of See Claim 20 re: cards above. No new arguments raised.
external devices
w/cards
constitutes direct
infringement
Claim 27 – same
See Claim 27 re: cards above. No new arguments raised.

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United States District Court
For the Northern District of California

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Possibly
GRANT IN
PART and
DENY IN
PART
Possibly
GRANT IN
PART and
DENY IN
PART
GRANT
GRANT

Claim 47 – same
See Claim 47 re: cards above. No new arguments raised.
Claim 48 – same
See Claim 48 re: cards above. No new arguments raised.
Defendants’ Network Kits
Claim 47 – direct See Claim 47 re: cards above. No new arguments raised.
GRANT
infringement
Claim 48 – direct See Claim 48 re: cards above. No new arguments raised.
GRANT
infringement
Defendants’ MSJ of No Willfulness and No Inducement
No Willfulness
There is undisputed evidence that Defendants relied on
TBD
opinions of counsel that the ’769 Patent is invalid, and that
the PTO granted 3 reexamination requests and ultimately
cancelled several claims, including independent claims 38 and
39, which were previously asserted against Defendants in this
case (although the 10 remaining asserted claims have now
survived 3 reexams). Defendants have consistently asserted
invalidity defenses that are not clearly frivolous. In the face
of this evidence, it does not seem that Fujitsu can meet its
burden of proving objective recklessness by “clear and
convincing” evidence. At the same time, however, because
Defendants’ anticipation and obviousness defenses all turn on
jury findings of fact, the Court can defer on deciding the
objective Seagate prong until after the jury makes the
underlying factual determination. See Bard Peripheral, 682
F.3d at 1006 (“In considering the objective prong of Seagate,
the judge may when the defense is a question of fact or a
mixed question of law and fact allow the jury to determine the
underlying facts relevant to the defense in the first instance,
for example, the questions of anticipation or obviousness.”).
The parties should address whether, under Bard
Peripheral, the Court should defer ruling on the objective
prong of willfulness until after the record on anticipation
and obviousness has been fully developed and the Court
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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT

has the benefit of the jury’s factual findings.

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No Inducement

The parties should also address whether the
reasonableness of Defendants’ reliance on opinions of
counsel is a question for the jury or for the Court. See
Acumed LLC v. Stryker Corp., 483 F.3d 800, 811 (Fed. Cir.
2007).
Fujitsu has proven direct infringement of at least a few claims
and has raised a genuine issue of material fact as to specific
intent to induce that should go to a jury, in light of evidence
that: (1) Fujitsu notified Defendants of their alleged
infringement; (2) Defendants affirmatively instruct users to
combine the accused wireless access points and routers with
infringing cards in a manner that infringes Fujitsu’s system
claims; and (3) Defendants made pre-suit licensing offers,
suggesting they did not think their defenses were strong.

DENY

United States District Court
For the Northern District of California

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IT IS SO ORDERED.

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Dated: September 20, 2012

________________________________
LUCY H. KOH
United States District Judge

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Case No.: 10-CV-03972-LHK
TENTATIVE RULINGS ON MOTIONS FOR SUMMARY JUDGMENT