Emblaze Ltd. v. Apple Inc.

Filing 520

ORDER GRANTING-IN-PART APPLE'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF EMBLAZE'S ACCUSED METHOD CLAIMS by Judge Paul S. Grewal granting-in-part 469 (psglc2, COURT STAFF) (Filed on 6/18/2014)

1
2
3
4
5
6
7
UNITED STATES DISTRICT COURT

9

NORTHERN DISTRICT OF CALIFORNIA

10
United States District Court
For the Northern District of California

8

SAN JOSE DIVISION

11

EMBLAZE LTD.,

12

Plaintiff,
v.

13
14

APPLE INC.,
Defendant.

15

)
)
)
)
)
)
)
)
)

Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART
APPLE’S MOTION FOR PARTIAL
SUMMARY JUDGMENT OF
NON-INFRINGEMENT OF
EMBLAZE’S ACCUSED METHOD
CLAIMS
(Re: Docket No. 469)

16

Before the court is Defendant Apple Inc.’s motion for partial summary judgment of

17
18

non-infringement of Plaintiff Emblaze Ltd.’s asserted method claims in this patent case. Emblaze

19

opposes Apple’s motion, but only in-part. Emblaze now concedes it may not pursue certain

20

method claims in light of the Supreme Court’s recent opinion in Limelight Networks, Inc. v.

21

Akamai Technologies, Inc. 1 After considering the arguments, both in the papers and at the pre-trial

22

conference, the court GRANTS Apple’s motion, but only IN-PART. 2

23
24
25
1

26
2

27
28

134 S.Ct. 2111, 2117 (2014).

In the interests of providing expedient guidance to the parties on the eve of trial, the court turns
directly to the motion before it. Background information on the case can be gleaned from the
docket. See, e.g., Docket No. 424
1
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION FOR PARTIAL SUMMARY JUDGMENT
OF NON-INFRINGEMENT OF EMBLAZE’S ACCUSED METHOD CLAIMS

I. LEGAL STANDARDS

1

The Patent Act provides four categories of statutory subject matter eligible for patent

2
3

protection: process, machine, manufacture, and composition of matter. 3 If a claim is not directed to

4

one of the four subject matter categories, it is invalid. At issue here are process or “method” patent

5

claims. The Patent Act also provides for both direct and indirect infringement. 4

6
7

Direct infringement, codified in Section 271(a), provides: “Except as otherwise provided in
this title, whoever without authority makes, uses, offers to sell, or sells any patented invention,

8
9
United States District Court
For the Northern District of California

10

within the United States or imports into the United States any patented invention during the term of
the patent therefor, infringes the patent.”
Induced infringement, found in Section 271(b), continues: “Whoever actively induces

11
12

infringement of a patent shall be liable as an infringer.”

13
3

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

See 35 U.S.C. 101 (“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.”); see also MPEP § 2106.
A summary of the four categories of invention, as they have been defined by the courts, are:
i. Process – an act, or a series of acts or steps. See Gottschalk v. Benson, 409 U.S.
63, 70, (1972) (“A process is a mode of treatment of certain materials to produce a
given result. It is an act, or a series of acts, performed upon the subject-matter to
be transformed and reduced to a different state or thing.” (quoting Cochrane v.
Deener, 94 U.S. 780, 788 (1876)); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d
1282, 1316 (Fed. Cir. 2005) (“A process is a series of acts.” (quoting Minton v.
Natl. Ass’n. of Securities Dealers, 336 F.3d 1373 (Fed. Cir. 2003))).
See also 35 U.S.C. 100(b); Bilski v. Kappos, 130 S. Ct. 3218 (2010).
ii. Machine – a concrete thing, consisting of parts, or of certain devices and
combination of devices. Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1863). This
includes every mechanical device or combination of mechanical powers and
devices to perform some function and produce a certain effect or result. Corning v.
Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854).
iii. Manufacture – an article produced from raw or prepared materials by giving to
these materials new forms, qualities, properties, or combinations, whether by
handlabor or by machinery. Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)
(quoting Am. Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)).
iv. Composition of matter – all compositions of two or more substances and all
composite articles, whether they be the results of chemical union, or of mechanical
mixture, or whether they be gases, fluids, powders or solids, for example.
Chakrabarty, 447 U.S. at 308.
4
See 35 U.S.C. § 271.
2
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION FOR PARTIAL SUMMARY JUDGMENT
OF NON-INFRINGEMENT OF EMBLAZE’S ACCUSED METHOD CLAIMS

The interplay of those two sections is at issue in Apple’s motion. Liability “for inducement

1
2

must be predicated on direct infringement.” 5 “A method patent claims a number of steps; under

3

[the Supreme Court’s] case law, the patent is not infringed unless all the steps are carried out.” 6 A

4

“method’s steps have not all been performed as claimed by the patent unless they are all

5
6
7
8

attributable to the same defendant, either because the defendant actually performed those steps or
because he directed or controlled others who performed them.” 7 Apple thus cannot be liable for
inducement if “performance of all the claimed steps cannot be attributed to a single” actor. 8
II. DISCUSSION

9

Apple urges summary judgment of non-infringement of the ’473 patent as to method claims

United States District Court
For the Northern District of California

10
11

1-2, 8-14, 21 and 23-24 is warranted because Emblaze’s induced infringement theory attributes

12

performance of the various steps of the method claims to multiple entities. Emblaze concedes that

13

dependent “claims 2 and 8-14, require multiple parties, e.g., a content provider and someone

14
15

operating a client computer (i.e., an iPhone, iPads etc.), and therefore Emblaze agrees to withdraw
those claims form this case in view of Akamai.” 9 While Emblaze’s offer is appreciated, in light of

16
17
18

its concession that it has insufficient proof, the appropriate outcome regarding those claims is not
withdrawal, but summary judgment in favor of Apple.

19
5

20
21
22
23

Akamai, 134 S. Ct. 2111, 2117 (explaining that “inducement liability may arise ‘if, but only if,
[there is] . . . direct infringement’”) (quoting Aro Mfg. Co. v. Convertible Top Replacement Co.,
365 U.S. 336, 341 (1961)); id. (Where “there has been no direct infringement, there can be no
inducement of infringement under § 271(b).”).
6

Akamai, 134 S. Ct. 2111, 2117 (citing Aro, supra, at 344, 81 S.Ct. 599 (a “patent covers only the
totality of the elements in the claim and . . . no element, separately viewed, is within the grant”)).
7

24
25
26

Id. (citing Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329-30 (Fed. Cir. 2008) (“In this
case, Thomson neither performed every step of the claimed methods nor had another party perform
steps on its behalf, and Muniauction has identified no legal theory under which Thomson might be
vicariously liable for the actions of the bidders. Therefore, Thomson does not infringe the asserted
claims as a matter of law.”)
8

Id. at 1218.

9

Docket No. 500 at 2.

27
28

3
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION FOR PARTIAL SUMMARY JUDGMENT
OF NON-INFRINGEMENT OF EMBLAZE’S ACCUSED METHOD CLAIMS

What Emblaze does dispute is Apple’s suggestion that performance of the steps of method

1
2

claims 1, 21, 23 and 24 has only been attributed to more than a single actor. According to

3

Emblaze, its expert Vijay Madisetti tendered an analysis supporting infringement by the content

4

providers acting alone. Because Madisetti’s solo theory survives Akamai, Emblaze says, summary

5

judgment as to claims 1, 21, 23 and 24 is not warranted.

6

While the bulk of Madisetti’s analysis focuses on a multiple actor theory now discredited

7
8
9
United States District Court
For the Northern District of California

10

by Akamai, there is language in Madisetti’s report that MLB Advanced Media, on its own,
practices all of the limitations at issue in claim 1 – and unchallenged dependent claims 21, 23 and
24. The key language from the report, paragraph 97, reads:
97. In my opinion and for the reasons discussed below, Apple has infringed Claim 1 of the
‘473 Patent by inducing MLB Advanced Media LP (“MLB Advanced Media”) to carry out
the steps in claim 1. More particularly, Apple induced third parties such as MLB Advanced
Media to practice Apple’s HLS protocol in an app entitled “MLB.com AT BAT”
(hereinafter “MLB AT BAT”) that utilizes HLS. Apple encourages third parties (such as
MLB Advanced Media) to practice all of the limitations of this and each of the Asserted
Claims by distributing literature, such as the Apple Overview and the IETF Specification,
which explains how to implement Apple’s HLS, by selling Apple client devices that can
play multimedia live streamed using Apple’s HLS protocol, and by encouraging app
developers to develop apps for Apple client devices that facilitate the live streaming of
multimedia to Apple client devices.

11
12
13
14
15
16
17

This language, while hardly a model of conviction or clarity, is enough to avoid summary

18

judgment. Madisetti’s approach is bolstered by his deposition testimony in which he offered “two

19

parallel analyses of the claim.” 10 The reason is this: the court cannot say that no reasonable jury

20
would credit Madisetti’s pleading in the alternative analysis. Perhaps this hedging will expose
21
22
23
24
25
26
27
28

Madisetti in cross examination. But that is Emblaze’s problem, not Apple’s. In any event, Apple
can examine his theories and the jury can assess whether they credit his opinion.
10

See Madisetti Depo Tr. at 338-40.
Q. So is it your position that at least some of the Claim 1 elements for MLB are performed
by Akamai? A. No. It’s an opinion that I offer two parallel analyses of the claim. In the
first, MLB by itself satisfies and carries out the limitations of the transmitting computer. In
the second independent analysis, MLB, combined with an Akamai server that provides
these files to Akamai’s edge servers, is also satisfying the steps required to be performed by
the transmitting computer.
4
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION FOR PARTIAL SUMMARY JUDGMENT
OF NON-INFRINGEMENT OF EMBLAZE’S ACCUSED METHOD CLAIMS