Alcohol Monitoring Systems, Inc. v. BI Incorporated
Filing
160
ORDER Granting Summary Judgment on Patents '149 and '611 and Granting Motion for Partial Summary Judgment on Validity of the '149 Patent. The Trial Preparation Conference scheduled for April 14, 2014, and the Jury Trial scheduled to commence on April 21, 2014, are VACATED. It is so ORDERED by Judge David M. Ebel on 12/19/13.(jjhsl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 11-cv-00301-DME-CBS
ALCOHOL MONITORING SYSTEMS, INC., a Colorado Corporation,
Plaintiff/Counterclaim-Defendant,
vs.
BI INCORPORATED, a Colorado Corporation,
Defendant/Counterclaim-Plaintiff,
and
GEO CARE, INC., a Florida Corporation,
Defendant.
ORDER GRANTING SUMMARY JUDGMENT ON PATENTS
‘149 AND ‘611 AND GRANTING MOTION FOR PARTIAL SUMMARY
JUDGMENT ON VALIDITY OF THE ‘149 PATENT
This order addresses two matters pending before the Court: (1) Defendants BI
Incorporated and Geo Care, Inc.’s Motion for Summary Judgment of Non-Infringement
(Doc. 136) (the “Summary Judgment Motion”); and (2) Plaintiff Alcohol Monitoring
Systems, Inc.’s Motion for Partial Summary Judgment of Validity Regarding the ‘149
Patent (Doc. 135) (the “Validity Motion”), both of which have been thoroughly briefed
by the parties.
1
For the reasons discussed below, and exercising jurisdiction pursuant to 28 U.S.C.
§§ 1331 and 1338(a), the Court GRANTS defendants’ Summary Judgment Motion and
plaintiff’s Validity Motion.
I.
RELEVANT BACKGROUND
Currently before the Court are the claims of Alcohol Monitoring Systems, Inc.
(“AMS”) that the BI Incorporated (“BI”) BI TAD system infringes AMS’s patents, U.S.
Patent Nos. 7,462,149 (“‘149”), 7,641,611 (“‘611”). 1 AMS’s patents both describe
1
Claim 1 of the ‘149 patent reads as follows (United States Patent No. 7,462,149, Doc.
137-1, Col. 16, l. 51-Col. 17, l. 18):
A system for continuous remote blood alcohol monitoring of a human subject
comprising:
a monitor device adapted to be attached to the human subject, wherein said
monitor device takes a plurality of transdermal alcohol concentration
readings at predetermined time intervals according to a first schedule stored
in a first memory in said monitor device without active participation by the
human subject, wherein said plurality of transdermal alcohol concentration
readings are stored in said first memory;
a modem in communication with said monitor device, wherein said plurality of
transdermal alcohol concentration readings stored in said first memory are
communicated from said monitor device to said modem at predetermined
time intervals according to said first schedule through radio frequency
signals without active participation by the human subject, wherein said
plurality of transdermal alcohol concentration readings are stored in a
second memory in said modem;
a monitor network in communication with said modem, wherein said plurality of
transdermal alcohol concentration readings stored in said second memory
are communicated from said modem to said monitor network at
predetermined time intervals according to a second schedule stored in said
second memory through a first communication link without active
participation by the human subject, and further wherein said monitor
2
network analyzes said plurality of transdermal alcohol concentration
readings to determine if an alert condition exists;
and a supervising agency in communication with said monitor network, wherein
said monitor network communicates an alert to said supervising agency
through a second communication link when said alert condition exists.
Claim 1 of the ‘611 patent reads as follows (United States Patent No. 7,641,611, Doc.
137-3, Col. 16, l. 51-Col. 17, l. 18):
A monitor network for use with a modem and a continuous remote blood alcohol
monitoring device adapted to be attached to a human subject, the monitor network
comprising:
a communication server, wherein said communication server receives raw data
over a communication link from the modem, wherein said raw data is
gathered by the continuous remote blood alcohol monitoring device
adapted to be attached to the subject and transmitted to the modem;
a situation analyzer connectable to said communication server, wherein said
situation analyzer parses said raw data through a predetermined set of rules
into a plurality of messages;
a workflow instructions connectable to said situation analyzer, wherein said
situation analyzer queries said workflow instructions and a historical data
relating to similar said plurality of messages for an action to be applied to
each of said plurality of messages;
a supervising agency/subject database connectable to said situation analyzer for
storing said raw data, for storing information on the human subject, a
supervising agency, and a supervising person monitoring the human
subject, and for storing a predetermined notification method by said
supervising person;
and a notification server connectable to said situation analyzer, wherein when said
situation analyzer determines that said action to be applied to one of said
plurality of messages requires an immediate notification of said supervising
person, said situation analyzer will communicate said one of said plurality
of messages to said notification server, and further wherein said notification
server queries said supervising agency/subject database to determine said
predetermined notification method, and executes said predetermined
3
devices that attach to a person’s leg to detect alcohol consumption as indicated by the
person’s transdermal emissions, along with the associated networks through which such
data are transmitted, analyzed, and reported. BI answered, claiming various affirmative
defenses including that the ‘149 patent was invalid.
At the June 7-8, 2012 Markman 2 hearing , the Court heard argument regarding
claim construction of the ‘149 and ‘611 patents. The Court entered an order construing
the claims on June 20, 2012 (the “Markman Order,” Doc. 117). On August 2, 2013,
defendants filed the Summary Judgment Motion and AMS filed the Validity Motion.
The Court now rules on the Summary Judgment Motion and the Validity Motion,
having reviewed the record and the applicable law, and having considered the arguments
made in the parties’ briefs.
II.
THE SUMMARY JUDGMENT MOTION
Defendants argue that, under the undisputed material facts on the record, the BI
TAD system does not infringe the AMS ‘149 or ‘611 patents. As explained below, the
Court agrees that summary judgment is warranted based on non-infringement.
A. Legal standards
i.
Summary judgment
“The court shall grant summary judgment if 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. Pro. 56(a). Parties must “cit[e] to particular parts in the record,”
notification method to communicate one of said plurality of messages to
said supervising person.
2
See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).
4
including affidavits or admissions, in order to show the absence or presence of a genuine
dispute of fact. Id. 56(c)(1)(A); see also id. 56(c)(3) (“The Court need consider only the
cited materials, but it may consider other materials in the record.”). “The evidence of the
non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Only admissible evidence is
considered on motions for summary judgment. Adams v. Am. Guar. & Liab. Ins. Co.,
233 F.3d 1242, 1246 (10th Cir. 2000).
ii.
Patent infringement
Two methods of patent infringement are relevant in this case: literal infringement
and infringement under the doctrine of equivalents.
1. Literal patent infringement
To determine whether any claim in a patent has been literally infringed “requires a
two-step analysis: First, the claim must be properly construed to determine its scope and
meaning. Second, the claim as properly construed must be compared to the accused
device or process.” Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1361 (Fed. Cir.
2007) (citation, internal quotation marks omitted). In this case, the Court has already
construed the meaning of any remaining disputed claims in its Markman Order. Here,
then, the Court need only engage in the second, device-comparing step of the
infringement analysis. To succeed at that second step, “the patentee must show that the
accused device contains every limitation in the asserted claims. If even one limitation is
missing or not met as claimed, there is no literal infringement.” Elkay Mfg. Co. v. Ebco
Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999).
5
2. Patent infringement under the doctrine of equivalents
“Under the doctrine of the equivalents, a product or process that does not literally
infringe upon the express terms of a patent claim may nonetheless be found to infringe if
there is ‘equivalence’ between the elements of the accused product or process and the
claimed elements of the patented invention.” Honeywell Int'l, Inc. v. Hamilton
Sundstrand Corp., 523 F.3d 1304, 1312 (Fed. Cir. 2008). However, “[t]he doctrine of
prosecution history estoppel prevents a patent owner from recapturing with the doctrine
of equivalents subject matter surrendered to acquire the patent.” Id. Thus, if “the court
determines that a narrowing amendment has been made for a substantial reason relating
to patentability,” the court is to presume that “the patentee has surrendered all territory
between the original claim limitation and the amended claim limitation.” Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1367 (Fed. Cir. 2003). In
such a case, “if the patentee fails to rebut this Festo presumption, then prosecution history
estoppel bars the patentee from relying on the doctrine of equivalents for the accused
element.” Id. (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535
U.S. 722 (2002)).
It is “the patentee [who] bears the burden of showing that a narrowing amendment
did not surrender a particular equivalent.” Id. at 1368 (citing Festo, 535 U.S. at 741);
accord Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1312 (Fed. Cir.
2006). There are three ways to overcome the Festo presumption. Festo, 344 F.3d at 1368
(citing Festo, 535 U.S. at 740-41). Specifically,
6
the patentee must demonstrate that the alleged equivalent would have been
unforeseeable at the time of the narrowing amendment, that the rationale
underlying the narrowing amendment bore no more than a tangential
relation to the equivalent in question, or that there was ‘some other reason’
suggesting that the patentee could not reasonably have been expected to
have described the alleged equivalent.
Id.
The first way to rebut the presumption, foreseeability, “requires a patentee to show
that an alleged equivalent would have been ‘unforeseeable at the time of the amendment
and thus beyond a fair interpretation of what was surrendered.’ ” Id. (quoting Festo, 535
U.S. at 738). “This criterion presents an objective inquiry, asking whether the alleged
equivalent would have been unforeseeable to one of ordinary skill in the art at the time of
the amendment.” Id. at 1369. Normally, more advanced technology than the one patented
will not be foreseeable, whereas existing technology would more likely be foreseeable.
Id. The question of foreseeability depends on underlying factual issues such as the
understanding of a person of ordinary skill in the art at the time of the patent amendment,
so a district court may hear expert testimony. Id.
The second means of rebutting the Festo presumption “requires a patentee to
demonstrate that ‘the rationale underlying the narrowing amendment [bore] no more than
a tangential relation to the equivalent in question.’ ” Festo, 344 F.3d at 1369 (quoting
Festo, 535 U.S. at 740) (alterations in original). The objectively apparent reason for the
7
narrowing amendment will be discernible from the prosecution history. Id. 3 Thus, the
reason for the narrowing amendment may be compared to the equivalent in question.
AMS does not raise the third means to rebut the presumption, the “some other
reason” way, and the Court will not further address it.
B. Analysis of the ‘149 patent
The Court determines that summary judgment in favor of defendants is
appropriate on the ‘149 patent because the BI system lacks elements present in the ‘149
patent. The Court also determines that AMS cannot rely on the doctrine of equivalents to
establish infringement because prosecution history estoppel applies.
i.
Literal infringement
The BI TAD system does not literally infringe AMS’s ‘149 patent because the BI
system does not include two of the elements contained in that patent. Those two elements
involve the communication of the transdermal alcohol concentration readings (“TAC
3
For example, in a case where the patentee “made it clear that the difference between its
process and [that of the alleged infringer] was that its process did not have the
disadvantage of the [alleged infringer’s] process of a large compressor at the end of the
liner” and there was “no indication in the prosecution history of any relationship between
the narrowing amendment and a multiple cup process, which [was] the alleged equivalent
in th[at] case,” the Federal Circuit held that the patentee “successfully rebutted the Festo
presumption.” Insituform Techs., Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1370
(Fed. Cir. 2004). In contrast, where claims were initially “rejected as obvious in light of
the prior art” and then amended to include a limitation of adjustable inlet guide vanes
(IGV) to control airflow to an engine, the Federal Circuit held “[b]ecause the alleged
equivalent focuses on the IGV limitation, the amendment bore a direct, not merely
tangential, relation to the equivalent.” Honeywell Int'l, Inc. v. Hamilton Sundstrand
Corp., 523 F.3d 1304, 1316 (Fed. Cir. 2008). The court therefore held that
“[t]angentiality does not help Honeywell overcome the presumption of surrender.” Id.
8
readings”) from the monitor device to the modem, and the communication of the data
from the modem to the monitor network.
1.
First disputed element
The first element of the ‘149 patent that defendants identify as not being present in
its BI TAD system is that “said plurality of transdermal alcohol concentration readings
stored in said first memory are communicated from said monitor device to said modem at
predetermined time intervals according to said first schedule. . . .” The “first schedule”
here refers to the schedule from the immediately preceding element of the claim
describing the schedule at which the monitor device takes readings from the subject.
(United States Patent No. 7,462,149, Doc. 137-1, Col. 16, ll 53-60). Summary judgment
is appropriate for defendants here because AMS has not shown that in the BI TAD
system, the TAC readings “are communicated” according to a first schedule of
predetermined time intervals.
In the Markman hearing, this Court held that no construction of the above-quoted
term was required, and specifically found that the “are communicated” language in the
term was affirmative, not permissive, language. The Court’s Markman Order rejected
AMS’s contention that “a first schedule could set forth different sub-schedules for the
wearer-to-device communication and the device-to-modem communication—in a way
that a single train schedule might be said to contain multiple, unique sub-schedules for
specific trains”—because such a construction “lacks a basis in the patent language.” Id.
at 17-18. The Court further rejected defendants’ proposal that “said first schedule” be
construed as “same first schedule,” reasoning that such a construction was unnecessary
9
because “ ‘said first schedule’ and ‘same first schedule’ mean the same thing.” Id. Thus,
under the ‘149 patent, the monitor device’s TAC readings are communicated to the
modem on the same schedule of predetermined time intervals as those readings are taken
from the subject by the monitor device. See Markman Order at 17.
Dissimilarly from the AMS system’s communication of data from monitor device
to modem at predetermined time intervals according to a first schedule, the BI TAD
device communicates to the HomeBase (what the BI TAD system calls its modem) only
after twelve five-minute periods in which the TAC five-minute averages of one-minute
readings show a blood alcohol concentration in excess of 0.02. McAlexander Depo., Doc.
148 p. 38:12-39:6. The shortest period in which the BI TAD device would communicate
with the HomeBase is therefore once every sixty minutes, but the communication could
be less frequent depending on blood alcohol concentration readings. In sum, BI’s eventdriven communications of TAC readings to the HomeBase do not occur “at
predetermined time intervals according to said first schedule” of the BI TAD device’s
minute-by-minute TAC readings.
In its Response, AMS essentially argues against the Court’s previous Markman
Order determination as to claim construction. AMS states that the “ ‘first schedule’
limitation at issue requires only that the same schedule . . . defines both (1) when TAC
readings are taken and (2) when TAC readings are communicated from the TAD to the
HomeBase.” Summary Judgment Response, Doc. 149 at 11-12. AMS states that it “does
not contend that separate or sub-schedules are required to find literal infringement” but
rather that “the claim requires only that the First Schedule define when the readings and
10
communication occur.” Id. AMS similarly argues that the claim references “intervals” in
the plural and that “if the same time interval was required [for taking readings and
communicating those readings], the language of the claim would require the readings and
communication to occur at a predetermined time ‘interval.’ ” Summary Judgment
Response at 11. AMS appears to be essentially urging the Court to re-construe this claim
term so that the first schedule can encompass any timing arrangement possible, such as
the BI TAD’s event-driven communications to the HomeBase, which would render BI an
infringer. Id. 4
The Court rejects these arguments because it has already construed
“predetermined time intervals according to said first schedule” to require no construction
because the meaning of the claim language was clear. If the Court had believed that
AMS’s interpretation was possible, it would not have rejected AMS’s argument of
multiple sub-schedules or found that “same first schedule” added nothing to “said first
schedule.” Additionally, the Court concludes that the language of the claim does not
require the word “interval” to be used in the singular and that the use of “predetermined
time intervals” in the plural is appropriate for describing that the TAC readings taken by
4
AMS states that in the Markman Order, the Court “refused” to accept BI’s limitation
that “the pass-through of readings, from wearer to device to modem, is a single sequence
(one that is not simultaneous, but is uninterrupted) triggered by the same points in time
under a single first schedule” because it failed “to develop the true meaning of the term
beyond the current language, which is clear.” Summary Judgment Motion at 10 (quoting
Markman Order at 17). The reason why the Court needed no further development of the
term was that the Court determined that “ ‘said first schedule’ and ‘same first schedule’
mean the same thing.” Based on the claim language, the Court held that no construction
was needed, and the Court concludes now that the claim supports summary judgment for
defendants.
11
the AMS monitor device “are communicated” according to the first schedule in which
there will be intervals of a predetermined length between communications. Under the
Court’s construction, in order to infringe, the BI TAD device would have to transmit the
TAC readings to the HomeBase according to the “same” first schedule of predetermined
time intervals that it uses to take the TAC readings from the subject. See Markman Order
at 18. The BI TAD device does not do this, thus, it does not literally infringe.
AMS also states that said first schedule must be read to permit different time
intervals for communications between the monitor and the modem because “it is not
possible to both take and communicate the readings at the same time.” Summary
Judgment Response at 11. But, although data read and communicated on the same first
schedule may not happen truly “at the same time,” such a reference to the first schedule
in both elements of the claim can allow for the tiny immediate delay of processing and
still be on the same first schedule. Cf. Paragon Solutions, LLC v. Timex Corp., 566 F.3d
1075, 1089 (Fed. Cir. 2009) (“The specification’s references to “instantaneous” feedback
do not preclude some delay to allow for the processing limitations of the system and the
time required to accurately measure the data that is to be displayed.”)
Finally, BI’s Hello Timer does not cause the TAD device to communicate
according to the “said first schedule” of predetermined time intervals on which the TAD
device takes readings from the subject. In the Markman Order, this Court rejected that “a
first schedule could set forth different sub-schedules for the wearer-to-device
communication and the device-to-modem communication.” Markman Order at 17. BI
TAD transmissions occurring every four hours on the Hello Timer do not have the same
12
intervals as the schedule over which the TAD device takes TAC readings from the
subject.
The Court concludes that, viewing all material facts in the light most favorable to
AMS, it has not brought forward evidence to show that in the BI TAD system “said
plurality of transdermal alcohol concentration readings stored in said first memory are
communicated from said monitor device to said modem at predetermined time intervals
according to said first schedule” because the BI TAD device does not communicate with
the HomeBase according to the first schedule of predetermined time intervals.
2.
Second disputed element
The second element of the ‘149 patent that BI identifies as not being present in its
BI TAD system is the “monitor network in communication with said modem, wherein
said plurality of transdermal alcohol concentration readings stored in said second
memory are communicated from said modem to said monitor network at predetermined
time intervals according to a second schedule stored in said second memory . . . .”
Summary judgment is appropriate for defendants here because AMS cannot show that the
BI TAD system also features a modem communicating to a monitor network “at
predetermined time intervals according to a second schedule.” AMS does not present
evidence to show that any communication between the BI HomeBase and the BI “Central
Monitor Network” (what BI refers to as the “Host” in its Motion) happens according to
“predetermined time intervals.” As BI points out, the “HomeBase simply transmits to the
13
Host any TAC data it receives immediately upon receipt from the TAD.” Summary
Judgment Motion at 18. 5
AMS contends that, like the AMS modem and monitor network, the BI TAD
system also features a HomeBase where TAC readings are communicated to the Central
Monitor Network. Summary Judgment Response at 13. According to AMS, the BI
system’s communication from HomeBase to Central Monitor Network is triggered by a
software loop running continuously “that identifies that the HomeBase has received data,
confirms receipt of the complete set of data, and then opens a second communication link
with the Central Monitor Network”—communication “that necessarily occurs at
predetermined time intervals according to a second schedule.” Id.
As a preliminary matter, defendants are correct that AMS’s expert Mr.
McAlexander improperly introduced a new theory in his deposition that was not present
in his expert report. See Fiber Optic Designs, Inc. v. New England Pottery, LLC, 262
F.R.D. 586, 595 (D. Colo. 2009). However, defendants did not object at the time of the
deposition or in a timely manner afterwards to this new theory as they should have, see
Foreman v. Am. Road Lines, Inc., 623 F.Supp.2d 1327, 1330 (S.D. Ala. 2008), and in
any case, Mr. McAlexander’s theory is not persuasive. AMS’s evidence does not create a
5
This Court previously rejected AMS’s proposed construction changing “are
communicated” to “may be communicated” because the ‘149 language requires that the
modem will communicate with the monitor system on a second schedule even if it also
communicates when an alert condition exists.
14
genuine dispute about whether the TAC readings “are communicated from said modem to
said monitor network at predetermined time intervals according to a second schedule.”
Mr. McAlexander stated that the BI system’s intervals for communicating from
the HomeBase to the Central Monitor Network are predetermined because “there is a
specific amount of time that’s associated with processing the instructions.” McAlexander
Depo., Doc. 148 p. 63:17-18. However, Mr. McAlexander also stated that “there is some
variance in [the interval] because you’re dealing with hardware and systems and
communication.” Id. 64:1-3. This Court concludes that software running in a continuous
loop to look for and transfer data is distinguishable from a system in which
predetermined time intervals control the transfer of data. For example, a bus system
running in a continuous loop around a certain route does not run on predetermined time
intervals the way the bus system in the city where this Court is located does. Here, buses
arrive pursuant to a predetermined and known schedule, and the buses occasionally wait
extra time at certain stops if they are running ahead of schedule so that they will conform
to the schedule. Cf. Pause Tech., LLC v. TiVo, Inc., 419 F.3d 1326, 1333-34 (Fed. Cir.
2005) (finding that where a claim specified a “time interval of predetermined duration”
that “[b]y arguing that the time interval can vary after the determination is made . . .
[appellant] attaches no significance to the word predetermine ” (internal quotation marks
omitted)).
AMS further argues that the BI device communicates according to a schedule
because “the Central Monitor Network will communicate to the HomeBase every four
hours in the absence of communication from the HomeBase” to “confirm the equipment
15
is functioning properly.” Summary Judgment Response at 13 (citing Bloemendaal Depo.,
Doc. 148-1 p. 63:9-64:3.) Given that such a communication is not a communication of
“said plurality of transdermal alcohol concentration readings stored in said second
memory,” the BI TAD system cannot be said to infringe this element of AMS’s claim
because of this periodic hardware check-in function. Thus, the BI system lacks AMS’s
element that the TAC readings are communicated “from said modem to said monitor
network at predetermined time intervals according to a second schedule.” With no literal
infringement of either the first or the second element of claim 1, the Court concludes that
the BI TAD system does not literally infringe the ‘149 patent.
ii.
Infringement under the doctrine of equivalents
After examining the prosecution history, the Court further concludes that AMS
also cannot rely on the doctrine of equivalents to establish infringement. AMS made
substantive narrowing amendments to the claims of the ‘149 patent to secure patentability
after the PTO rejected AMS’s earlier application (Response to Office Action (After
Final), Doc. 137-11 p. 39-40 (“The Examiner has rejected [claim 1] . . . In
response, . . . Applicant has also amended independent [claim 1] to more distinctly
distinguish Applicant’s invention through the further limitation . . . .).) It is presumed that
AMS has surrendered all the territory between the original claim and the amended claim,
and AMS is presumptively estopped from making use of the doctrine of equivalents by
prosecution history estoppel. See Festo, 344 F.3d at 1366-67. AMS had the opportunity
to rebut the presumption by showing that the allegedly infringing device was either
16
unforeseeable or was only tangentially related to the narrowing amendment, but, for the
following reasons, the Court determines that AMS failed to do so.
First, AMS has not shown that the BI TAD device was unforeseeable at the time
of AMS’s amendment as relates to Claim 1. AMS states that it was unforeseeable that
“BI would develop the TAD system that stored TAC data from a monitoring device on
the HomeBase and then transmitted that data to the Central Monitoring Network as the
TAD system does.” Summary Judgment Response at 16. 6 AMS further argues, without
citation, that “[a]t the time, what existed in the prior art were pass-through systems,
where the modem neither stored data nor separately controlled when data would be
transmitted to a host monitor network.” Id. AMS provides no evidentiary support, such as
citation to expert testimony for these assertions. But to rebut the Festo presumption by
showing the unforeseeability of the infringing device, the party with the burden must
introduce evidence on the foreseeability issue. See Festo, 344 F.2d 1359, 1371
(remanding to district court so that parties could introduce evidence on disputed factual
issue of foreseeability); cf. Honeywell, 523 F.3d 1304, 1314 (relying on expert witness
testimony and other parts of the record introduced by both parties to determine that the
infringing device was foreseeable). “The district court [i]s not obligated to comb the
record in order to make [a plaintiff’s] arguments for him.” Mitchell v. City of Moore,
Oklahoma, 218 F.3d 1190, 1199 (10th Cir. 2000).
6
The Court notes that BI’s statement of facts characterizes the communication from
HomeBase to the Host as immediate, and does not mention storage on the HomeBase.
Summary Judgment Motion at 9. However, the Court will assume for the purposes of
summary judgment that there is a brief element of storage in the Modem, as AMS
contends. Such an assumption is not material to this matter.
17
Further, in the present case the record shows that the prior art at the time of
amendment included the Philips system’s storage of data on the monitor attached to the
subject’s body, which strongly suggests the feasibility and foreseeability of a design
where data was stored on a modem such as the BI HomeBase before being transferred to
a central network. (Response to Office Action (After Final), Doc. 137-11 p. 43.) Thus, in
the absence of evidence to the contrary, and with evidence suggesting that a person
skilled in the art would have foreseen BI’s system, AMS cannot rely on unforeseeability
to rebut the presumption of estoppel.
As for AMS’s second opportunity to rebut the presumption of prosecution history
estoppel—the tangential relationship method—AMS’s arguments that its narrowing
amendment bears only a tangential relationship to the BI TAD equivalent is directly
refuted by the prosecution history. AMS asserted in its narrowing amendments that the
‘149 patent was patentable and non-obvious because of its advantage over the prior art.
Response to Office Action (After Final), Doc. 137-11 p. 44.) AMS explicitly
distinguished its advance from the prior art of Karz in part because “[t]he system of Karz
also does not take readings at predetermined time intervals according to a schedule.” Id.
Although, as AMS asserts, AMS’s system also improved on the prior technology in ways
tangential to this particular equivalent, for example, by storing the data on the subject’s
monitor and then communicating when the subject was in range of the modem without
action by the human subject, this amendment was drafted to directly focus on the
measurements being taken at a schedule of predetermined time intervals. See id. When
the narrowing amendment is directly responsive to the subject matter over which the
18
infringer allegedly infringes, and is not merely tangentially related to the infringing art,
the presumption is not rebutted and prosecution history estoppel applies. See Honeywell,
523 F.3d at 1316.
iii.
Conclusion regarding the ‘149 patent
The Court concludes that summary judgment for defendants is appropriate on the
‘149 patent because the BI system does not literally infringe on the patent and the
doctrine of equivalents is not available to AMS.
C. Analysis of the ‘611 patent
i.
Literal infringement
Defendants claim that the BI system cannot literally infringe on the ‘611 patent
because the BI system lacks the characteristic of the AMS system “wherein said situation
analyzer queries said workflow instructions and a historical data relating to similar said
plurality of messages for an action to be applied to each of said plurality of
messages . . . .” Summary judgment is appropriate for defendants here because AMS has
not show that in the BI system, a “situation analyzer queries . . . a historical data relating
to similar said plurality of messages for an action to be applied. . . .”
For the BI system to infringe on ‘611 patent, the BI system would have to possess
a situation analyzer that would use historical data relating to prior messages in deciding
what action to apply to the incoming message just received. See Markman Order at 26. 7
7
The parties resolved the meaning of “historical data” after the Markman hearing, and
the Court noted the definition in its Markman Order. The term was construed as meaning
“data relating to prior messages, as opposed to data relating to the message just received
by the situation analyzer.” Markman Order at 25.
19
The defendants acknowledge that the TAD Processor in their BI system does fulfill part
of the role of the AMS situation analyzer, as defendants’ Summary Judgment Motion
admits. Summary Judgment Motion at 19 (“[T]he BI Host arguably possesses a ‘situation
analyzer’ in the form of the TAD Processor.”) The TAD Processor “analyzes a cluster of
the most recent 5-minute [TAC] averages using an algorithm to determine whether the
data constitutes an alcohol event.” ((Expert Report of Ruth H. Dameron, Doc. 137-8
¶ 62.) However, as the BI TAD Processor does not decide what action to apply to an
event, a function filled by the BI AutoAlertHandler, the BI TAD Processor does not meet
the claim limitation of the ‘611 patent’s situation analyzer. (Id. ¶ 64 (“[t]he processor
within the Host that determines what action to apply to each event is called the
AutoAlertHandler.”).)
The AutoAlertHandler likewise cannot fulfill the role of the situation analyzer, as
unlike the situation analyzer in the AMS device, which parses raw data and queries
workflow instructions and historical data, Ms. Dameron stated that “[t]he
AutoAlertHandler is not involved in determining whether a particular set of data
constitutes an event . . . .” (Id. ¶ 64.) Ms. Dameron’s report states that the
AutoAlertHandler’s “function is to follow a set of rules to decide what to do with each
event that has been placed in the event table” by the TAD Processor. (Id. ¶¶ 62, 64.) To
infringe, the BI system would have to contain a situation analyzer that queries historical
data to decide on an action to apply to the messages, and Ms. Dameron’s testimony
establishes that the BI system’s TAD Processor and AutoAlertHandler, which are
separate components, each lack this combination of functions.
20
In response to defendants’ argument, AMS presents no evidence on whether the
BI system includes a situation analyzer that decides which action will be applied to any
given message. AMS’s argument relies on the contention that the BI system’s MAD6 is
historical data, and that the BI system uses that data to determine whether an alert
message exists. Even granting AMS that premise, the Court finds that AMS has not
shown that this data is used to determine an action to apply to the alert messages. AMS
did not dispute defendants’ characterization of the BI TAD System’s separation between
the component that creates an alert event and the component that decides which action to
apply to that alert event. Thus, here, as a matter of law AMS cannot “show that the
accused device contains every limitation in the asserted claims.” Elkay, 192 F.3d at 980.
ii.
Infringement under the doctrine of equivalents
Defendants argue that AMS may not use the doctrine of equivalents as grounds for
infringement because the historical data element was added to the claims for
patentability. Summary Judgment Motion at 20. Defendants also assert that AMS’s
attorney has admitted that AMS amended the claims for patentability purposes. Id. at 6.
AMS does not dispute this argument that the doctrine of equivalents is not available, does
not dispute defendants’ assertions of fact, and does not make an argument for defeating
the presumption that prosecution history estoppel applies to this claim. Summary
Judgment Response at 2 (noting that “AMS does not dispute BI’s Statement of Facts” as
regarding this aspect of the ‘611 patent’s prosecution history). Therefore, no genuine
dispute of material fact exists and the Court finds the doctrine of equivalents is not
available to AMS on the ‘611 patent.
21
The Court concludes that summary judgment for defendants is appropriate on the
‘611 patent because the BI system does not literally infringe on the patent and the
doctrine of equivalents is not available to AMS.
III.
THE VALIDITY MOTION
The Court has discretion about whether to reach the affirmative defense of
invalidity raised by defendants. Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d
1473, 1481 (Fed. Cir. 1998) (holding that after all claims and counterclaims were decided
or withdrawn, the district court acted properly when it “recognized that it could, in its
discretion, decide this affirmative defense, but chose not to do so, citing Fed.R.Civ.P.
8(c)”). Nevertheless, the appellate court “stress[ed] the useful general rule that trial courts
should decide all litigated issues, in the interest of finality.” Id. Accordingly, the Court
turns to the Validity Motion (Doc. 135).
The parties in this litigation agree that “partial summary judgment is appropriate.”
Validity Motion Response, Doc. 143, at 6. Defendants state that “BI will not present any
evidence solely directed to the invalidity of the ‘149 Patent at trial” and that “[t]he
differences in the district court and PTO proceedings require that reexamination
proceeding be allowed to continue even if summary judgment is granted on BI’s
defense.” Id. at 4-5.
Defendants are correct that this Court’s grant of summary judgment against them
on their affirmative defense of invalidity will not impact the re-examination proceedings
before the PTO, see In re Baxter Int'l, Inc., 678 F.3d 1357, 1364 (Fed. Cir. 2012), which
defendants are free to continue despite that this Court has granted their Summary
22
Judgment Motion. In light of the judicial system’s interest in finality and defendants’
concession that summary judgment is appropriate because “BI agrees that it will not
present evidence in this Court sufficient to meet its burden of proving invalidity by clear
and convincing evidence,” Validity Motion Response at 7, the Court concludes that
granting AMS partial summary judgment on the affirmative defense of invalidity is
appropriate.
CONCLUSION
For the foregoing reasons, the Court GRANTS defendants’ Summary Judgment
Motion and GRANTS plaintiff’s Validity Motion. The Trial Preparation Conference
scheduled for April 14, 2014, and the Jury Trial scheduled to commence on April 21,
2014, are VACATED. It is so ORDERED.
DATED this 19th day of December, 2013.
BY THE COURT:
s/ David M. Ebel
_________________________
U.S. CIRCUIT JUDGE
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