BIAX Corporation v. NVIDIA Corporation et al

Filing 941

ORDER. The 729 motion for summary judgment filed by defendants Sony Computer Entertainment America, Inc. and Sony Electronics Inc. is granted. The 876 , 887 motion for summary judgment filed by defendant NVIDIA Corporation is granted. All of pl aintiff's claims are dismissed and the only remaining claims in this action are defendants' counterclaims. Those 723 , 726 , 727 , 731 , 734 , 735 , 879 pending motions and objections which relate only to the issue of infringement a nd damages resulting therefrom are deemed moot. Within ten days of entry of this order, the parties shall file briefs not exceeding five pages addressing whether the Court should exercise jurisdiction over defendants' counterclaims. By Judge Philip A. Brimmer on 2/15/12.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 09-cv-01257-PAB-MEH
BIAX CORPORATION,
Plaintiff,
v.
NVIDIA CORPORATION,
SONY COMPUTER ENTERTAINMENT AMERICA, INC., and
SONY ELECTRONICS INC.,
Defendants.
_____________________________________________________________________
ORDER
_____________________________________________________________________
This matter is before the Court on the motions for summary judgment [Docket
Nos. 701/729, 872/876, 882/887]1 filed by defendants Sony Computer Entertainment
America, Inc. and Sony Electronics Inc. (collectively, the “Sony defendants”) and
NVIDIA Corporation (“NVIDIA”). The motions are ripe for disposition.
The Court exercises federal question jurisdiction over this case pursuant to 28
U.S.C. § 1331 in conjunction with 28 U.S.C. § 1338(a), which grants district courts
original jurisdiction over patent cases.
I. BACKGROUND2
Plaintiff BIAX Corporation (“BIAX”) has brought suit against defendants NVIDIA
Corporation and the Sony defendants, alleging that defendants have infringed and
1

Each motion for summary judgment, including NVIDIA’s corrected version, has
been filed under seal, which accounts for the numerous docket entries.
2

Unless otherwise indicated, the following facts are not in dispute.

induced infringement of U.S. Patent No. 5,517,628 (the “’628 Patent”) and U.S. Patent
No. 6,253,313 (the “’313 Patent”) (collectively, the “patents”), both assigned to BIAX.
As stated in the patents’ shared specification, the “invention generally relates to parallel
processor computer systems and, more particularly, to parallel processor computer
systems having software for detecting natural concurrencies in instruction streams and
having a plurality of processor elements for processing the detected natural
concurrencies.” ’313 Patent col. 1 ll. 18-23. As the Court has previously noted, see
Docket No. 231 at 3, the invention relies on processor elements that access register
files containing relevant information for subsequent processing of instructions. Included
within the teachings of the inventions are condition code register files containing
multiple, addressable condition code registers, each of which contains condition codes
indicating whether the results of executed instructions meet certain conditions. The
condition codes can include indications of whether the next instruction in a series
should be executed or whether a branch must be taken, requiring a jump to an earlier or
later instruction. The provision of multiple, addressable condition code registers is a
central feature of the claimed invention.
BIAX accuses the Sony defendants of infringing the patents through the sale of
products containing RSX graphics processor chips and GeForce NV40 and NV50
processor chips employing a plurality of condition code registers. Within each RSX chip
are eight “vertex shaders” and six “fragment shaders.” Each vertex shader and
fragment shader contains an accused processor element3 or first circuit4 and multiple
3

In the Order Regarding Claim Construction, the Court construed “processor
element” to be “a device that is capable of interpreting and executing instructions, a
2

accused condition code registers5 and condition storage.6 The accused processor
elements or first circuits found in one RSX shader cannot access condition code
registers and condition storage found in any other shader. BIAX’s claims against
NVIDIA are based on NVIDIA’s production of the NV40 and NV50 chips. NV40 chips
operate in the same way for purposes of BIAX’s infringement allegations. NV50 chips
contain accused processor elements and first circuits which cannot access condition
code registers in other processors7 found in the NV50 chip.
II. STANDARD OF REVIEW
Summary judgment is warranted under Federal Rule of Civil Procedure 56 when
the “movant shows that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986); Concrete Works, Inc. v. City &
County of Denver, 36 F.3d 1513, 1517 (10th Cir. 1994); see also Ross v. The Board of
Regents of the University of New Mexico, 599 F.3d 1114, 1116 (10th Cir. 2010). A

quality it shares with all other processor elements, and which does not retain context
information after the execution of an instruction or a set of instructions.” Docket No.
231 at 47.
4

A “first circuit” is “an assemblage of electronic elements that receives an opcode
of a first type of instruction and generates a set of at least one condition value.” Docket
No. 231 at 48.
5

A “condition code register” is “a special purpose register for storing a condition
code.” Docket No. 231 at 47.
6

“Condition storage” is “a memory location designed to store condition code
values.” Docket No. 231 at 48.
7

A “processor” is the same as a “processor element.” See Docket No. 231 at 47.
3

disputed fact is “material” if under the relevant substantive law it is essential to proper
disposition of the claim. Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir.
2001). Only disputes over material facts can create a genuine issue for trial and
preclude summary judgment. Faustin v. City & County of Denver, 423 F.3d 1192, 1198
(10th Cir. 2005). An issue is “genuine” if the evidence is such that it might lead a
reasonable jury to return a verdict for the nonmoving party. Allen v. Muskogee, 119
F.3d 837, 839 (10th Cir. 1997). When reviewing a motion for summary judgment, a
court must view the evidence in the light most favorable to the non-moving party. Id.;
see McBeth v. Himes, 598 F.3d 708, 715 (10th Cir. 2010).
III. DISCUSSION
Defendants raise a number of arguments in support of their summary judgment
motions. They all contend, however, and the Court agrees, that they are entitled to
summary judgment on BIAX’s infringement claims based upon a comparison of the
Court’s constructions of the terms “condition code registers” and “condition storage”
with the allegedly infringing products. See SunTiger, Inc. v. Scientific Research
Funding Group, 189 F.3d 1327, 1334-35 (Fed. Cir. 1999) (“An infringement analysis
involves two steps. First is claim construction – the scope and meaning of the patent
claims asserted are determined. Second is determination of infringement – the properly
construed claims are compared to the allegedly infringing product.”) (citing Cybor Corp.
v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)).
BIAX contends that the patents do not require that all processor elements be
able to access all condition code registers and condition storage. The Court, however,

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has already unambiguously ruled that they do. In construing the ’628 Patent, the Court
determined that the defendants were “correct that any processor element is able to
access any condition code register.” Docket No. 231 at 37. The Court further found
that “‘condition storage’ appears to refer to any memory location designed to store
condition code values and is, therefore, potentially broader than other ‘registers,’ as
described in Claim 1 of the ’313 Patent.” Docket No. 231 at 43 (citing ’313 Patent col.
46 ll. 14-24 (“. . . each of said processor elements being capable of accessing said
plurality of registers and condition code storages in a program’s context during the
processing of the program’s instruction, a plurality of memory locations . . ., and second
means . . . for connecting each of said processor elements with any one of said plurality
of memory locations, each said processor element being capable of accessing said
memory locations during said processing of each said instruction.”)). Because the
claim language provided for shared access of the condition code storages by processor
elements, the Court did not import language to that effect into the definition of condition
storage. See Docket No. 231 at 44. However, the Court made clear that, “to the extent
there is any dispute over whether, despite the foregoing, condition code storage
locations are shared by all processor elements, the Court rules that they are.” Docket
No. 231 at 44.
In light of the foregoing constructions, the Court stated there was “little risk that
plaintiff will attempt to argue at trial that processor elements are not able to access any
condition code registers or condition storage locations.” Docket No. 455 at 2. Yet, that
is the very argument BIAX asserts in response to defendants’ motions.
BIAX admits that the accused processor elements and condition code registers
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are one of many within the RSX, NV40, and NV50 chips. See Docket No. 757 at 1-2,
¶¶ 1-3, 8, 9. Nevertheless, BIAX argues that it has identified a single processor
element or first circuit within each of the chips that infringe the patents and, “with only
one ‘first circuit’ and one ‘processor element’ the concept of condition code registers . . .
being ‘shared by all first circuits’ or ‘shared by all processor elements’ is immaterial and
irrelevant.” Docket No. 757 at 7. A processor element, however, still must be capable
of accessing any condition code register. See Docket No. 231 at 37 (“In the event there
is only one processor element, that processor element is capable of accessing any of
the condition code registers for storing condition code values. In that event, the register
is not shared by all processor elements since there would just be one.”). The attempted
isolation of a single processor element does not change the fact that any particular
processor element in the accused chips is incapable of accessing all condition code
registers and that any particular condition code register is not shared by all of the other
processor elements which exist within the accused chips.8
In short, BIAX does not dispute that the allegedly infringing processor elements
found in RSX, NV40 and NV50 chips are incapable of accessing condition code
registers or condition storage found in other processor elements within the respective
chips. Nor does it dispute that, if such access is a requirement of the patents, the
defendants are entitled to summary judgment. Because the Court has found such
access to be a requirement of the patents, defendants are entitled to summary

8

For this reason, BIAX’s reliance on the SunTiger court’s statement that, “[i]f a
claim reads merely on a part of an accused device, that is enough for infringement,”
189 F.3d at 1336, is unavailing.
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judgment on BIAX’s infringement claims.
Upon granting summary judgment to defendants on plaintiff’s claims of
infringement and on defendants’ counterclaims for a declaratory judgment of noninfringement, all that will remain in this action are the defendants’ counterclaims
seeking a declaratory judgment that the patents are invalid and unenforceable. A ruling
of non-infringement does “not moot in the Article III sense of the term” a counterclaim
seeking a declaratory judgment of invalidity, see Benitec Australia, Ltd. v. Nucleonics,
Inc., 495 F.3d 1340, 1353 (Fed. Cir. 2007) (citing Cardinal Chemical Co. v. Morton Int’l,
Inc., 508 U.S. 83, (1993)), or of unenforceability on account of inequitable conduct.
See Zenith Electronics Corp. v. PDI Communication Systems, Inc., 522 F.3d 1348,
1366 (Fed. Cir. 2008). Nevertheless, the Court retains discretion under the Declaratory
Judgment Act to determine whether to decide a counterclaim after concluding there has
been no infringement. Benitec, 495 F.3d at 1353 (“Our decisions holding that Cardinal
Chemical does not compel a district court to decide an invalidity counterclaim after
entering a judgment of non-infringement are best understood as recognizing district
court discretion under the Declaratory Judgment Act.”) (citing Liquid Dynamics v.
Vaughan Co., Inc., 355 F.3d 1361, 1371 (Fed. Cir. 2004) (“A district court judge faced
with an invalidity counterclaim challenging a patent that it concludes was not infringed
may either hear the claim or dismiss it without prejudice, subject to review only for
abuse of discretion.”); Cardinal Chemical, 508 U.S. at 95 n.17 (“[T]he Declaratory
Judgment Act affords the district court some discretion in determining whether or not to
exercise that jurisdiction, even when it has been established.”)).

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In the exercise of that discretion, “[i]t is appropriate for a district court to dismiss
as ‘moot’ counterclaims of unenforceability and invalidity when non-infringement is clear
and invalidity and unenforceability are not plainly evident.” Z Trim Holdings, Inc. v.
Fiberstar, Inc., 2008 WL 2717656, at *1 (W.D. Wis. April 10, 2008) (citations omitted)
(dismissing invalidity and unenforceability counterclaims because they were “hardly a
‘slam dunk’”); Voter Verified, Inc. v. Premier Election Solutions, Inc., 2011 WL 3268576,
at *2 (M.D. Fla. July 29, 2011) (dismissing counterclaims of invalidity without prejudice
after a ruling of non-infringement in light of, among other things, “the apparent
complexity of the invalidity issue, the Court’s heavy caseload, and the inordinate
amount of time it would take to address the validity of the ninety-two claims presently at
issue”). Here, the Court has already denied a motion for summary judgment by
defendant NVIDIA raising new matter and inequitable conduct defenses. See Docket
No. 663. In their counterclaims, defendants assert that the patents’ claims “are invalid
on numerous grounds, including lack of written description, lack of written description
relating to new matter, lack of enablement, double-patenting, and anticipation and/or
obviousness in light of the prior art.” Docket No. 748 at 8-9. They also seek a
declaratory judgment that the “patents-in-suit are unenforceable . . . . on numerous
grounds, including inequitable conduct , unclean hands, laches, estoppel, prosecution
laches, and other patent misuse.” Docket No. 748 at 9. Defendants, however, have
not sought summary judgment on their counterclaims.9
Furthermore, in determining whether to address the counterclaims, the Court
9

Plaintiff has filed a motion for summary judgment on defendants’ inequitable
conduct counterclaim. See Docket Nos. 707, 730.
8

may consider whether “a company once charged with infringement [is] concerned about
the risk of similar charges if it develops and markets similar products in the future.”
Cardinal Chemical, 508 U.S. at 100. “The ‘importance to the public at large of resolving
questions of patent validity’ has been long recognized, as there is a danger that holders
of invalid patents may be awarded improper monopoly privileges so long as the issue of
patent validity remains unsettled, and a declaratory judgment may be sought to ‘avoid
the threat of a “scarecrow” patent’ used to gain an advantage over a competitor.” Sony
Electronics, Inc. v. Soundview Technologies, Inc., 359 F. Supp. 2d 173, 175-76 (D.
Conn. 2005) (quoting Cardinal Chemical, 508 U.S. at 95-96). Beyond speculation,
however, the Court has no basis upon which to determine whether such is a concern in
this case. Therefore, the Court will afford the parties an opportunity to address whether
the Court should exercise jurisdiction over defendants’ counterclaims.
IV. CONCLUSION
For the foregoing reasons, it is
ORDERED that the motion for summary judgment [Docket Nos. 701, 729] filed
by defendants Sony Computer Entertainment America, Inc. and Sony Electronics Inc. is
GRANTED. It is further
ORDERED that the motion for summary judgment [Docket Nos. 872, 876, 882,
887] filed by defendant NVIDIA Corporation is GRANTED. It is further
ORDERED that all of plaintiff’s claims are DISMISSED and the only remaining
claims in this action are defendants’ counterclaims. It is further
ORDERED that those pending motions and objections which relate only to the

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issue of infringement and damages resulting therefrom [Docket Nos. 692/723, 697/726,
698/727, 708/731, 719/734, 721/735, 879] are deemed moot. It is further
ORDERED that, within ten days of entry of this order, the parties shall file briefs
not exceeding five pages addressing whether the Court should exercise jurisdiction over
defendants’ counterclaims.

DATED February 15, 2012.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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