Intermec Technologies Corp. v. Palm Inc.
Filing
312
MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 12/19/2011. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
INTERMEC TECHNOLOGIES CORP., )
)
Plaintiff,
)
)
v.
) Civ. No. 07-272-SLR
)
PALM INC.,
)
Defendant.
)
Jack B. Blumenfeld, Esquire and Rodger Dallery Smith, II, Esquire of Morris, Nichols,
Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff and Counterclaim
Defendant. Of Counsel: Carson P. Veach, Esquire, Leland W. Hutchinson, Jr.,
Esquire, David S. Becker, Esquire and Jacob D. Koering, Esquire of Freeborn & Peters
LLP.
Richard L. Horwitz, Esquire and David Ellis Moore, Esquire of Potter Anderson &
Corroon, LLP, Wilmington, Delaware. Counsel for Defendant and Counterclaim
Plaintiff. Of Counsel: Robert T. Haslam, Esquire, Michael M. Markman, Esquire, and
Robert J. Williams, Esquire of Covington & Burling LLP.
MEMORANDUM OPINION
Dated: December 19, 2011
Wilmington, Delaware
RUN
I. INTRODUCTION
On May 18, 2007, lntermec Technologies Corporation ("lntermec" or "plaintiff')
filed an action against Palm, Inc. ("Palm" or "defendant") for infringement of five U.S.
patents ("the lntermec patents"). (D. I. 1) In its third amended answer, Palm asserted
infringement of Palm's U.S. Patent Nos. 6,665,803 ("the '803 patent") and 7,096,049
("the '049 patent", collectively "the Palm patents").
On September 14, 2010, the court issued a memorandum opinion with respect to
the lntermec patents (0.1. 284). Both parties agreed to mediation of the case which
was scheduled for December 14, 2010. (0.1. 288; 0.1. 289) The parties stipulated, on
February 16, 2011, to stay all claims regarding the Palm patents until the conclusion of
mediation. (0.1. 291)
On March 22, 2011, lntermec filed a notice of appeal to the Federal Circuit
concerning the parties' stipulated judgment of non infringement of the lntermec patents,
which the Federal Circuit docketed on April 6. (0.1. 303) On May 5, 2011, the parties
reported to the court that "efforts to mediate the case have not been successful." (/d.)
After consideration of the parties' respective positions on how to proceed with issues
relating to the Palm patents, the court lifted the stay. (D. I. 304)
On September 15, 2011, the court issued a Memorandum Opinion (0.1. 305) and
Order (D. I. 306) (collectively "decision at bar") granting in part and denying in part
Palm's motion for summary judgment of no invalidity and infringement of Palm's '803
and '049 patents (D. I. 175), and granting in part and denying in part lntermec's motion
for summary judgment of non infringement and invalidity of the '803 and '049 patents
(D. I. 162). The court incorporates by reference the detailed introduction and
background provided in the decision at bar.
Currently pending before the court is lntermec's motion for reconsideration (D. I.
308) of the decision at bar. Fact and expert discovery are now closed. Trial has not yet
been scheduled. This court has jurisdiction under 28 U.S.C. § 1338(a) and 35 U.S.C. §
101 et seq.
II. BACKGROUND
On September 11, 2009, Palm filed a motion for summary judgment of no
invalidity and infringement of the '803 and '049 patents (D.I. 175). With respect to no
invalidity, Palm sought "summary judgment that seven claims of the '049 patent are not
invalid [and] that three claims of the '803 patent are not invalid." 1 (D.I. 176 at 1)
lntermec filed a cross-motion for summary judgment of noninfringement and invalidity of
the '803 and '049 patents (D.I. 162) putting at issue the validity of the asserted claims.
(D.I. 163 at 2) As lntermec noted in its opening brief, "Palm has asserted infringement
of[c]laims 1-30 of the '803 patent, and [c]laims 1-7 and 9-17 of the '049 patent." 2 (/d. at
5)
In the decision at bar, the court found that all of the independent claims of the
'803 patent shared both a "signal line" and a "suspension" limitation. (D. I. 305 at 19,
21) lntermec's arguments in support of anticipation of the claims of the '803 patent
1
At issue with respect to Palm's motion for summary judgment of no invalidity are
claims 6, 18 and 22 of the '803 patent and claims 4-6, 9, 12 and 16-17 of the '049
patent. (D .I. 176 at 1)
2
The '803 patent has a total of 30 claims; the '049 patent has a total of 20 claims.
2
were largely directed to these two limitations of the three independent claims. (D.I. 163
at 23-25) With respect to the '049 patent, the court found that the "low level" limitation
was common to all of the asserted independent claims. 3 (D.I. 305 at 29) lntermec's
argument in support of anticipation of the asserted claims of the '049 patent was, again,
largely based on this shared limitation of the asserted independent claims. (D.I. 163 at
25-27) lntermec also argued as to the invalidity of claims 3 and 9 of the '049 patent for
reasons of indefiniteness, enablement, and written description. (D.I. 150 at 40; D.l.
163 at 28-29) The court found no indefiniteness, lack of enablement or lack of written
description with respect to these claims.
Ill. STANDARD OF REVIEW
Motions for reconsideration are the "functional equivalent" of motions to alter or
amend judgment under Federal Rule of Civil Procedure 59( e). See Jones v. Pittsburgh
Nat'/ Corp., 899 F.2d 1350, 1352 (3d Cir. 1990) (citing Fed. Kemper Ins. Co. v.
Rauscher, 807 F.2d 345, 348 (3d Cir. 1986)). The standard for obtaining relief under
Rule 59( e) is difficult for a plaintiff to meet. The purpose of a motion for reconsideration
is to "correct manifest errors of law or fact or to present newly discovered evidence."
Max's Seafood Cafe ex-ref Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999)
(citing Harsco Corp. v. Zlotnicki, 779 F.2d 906, 909 (3d Cir. 1985)). Therefore, a court
should exercise its discretion to alter or amend its judgment only if the movant
demonstrates one of the following: (1) a change in the controlling law; (2) a need to
3
Palm did not assert independent claim 20 of the '049 patent, from which no
other claims depend.
3
correct a clear error of law or fact or to prevent manifest injustice; or (3) availability of
new evidence not available when the judgment was granted. See id.
A motion for reconsideration is not properly grounded on a request that a court
rethink a decision already made. See Glendon Energy Co. v. Borough of Glendon, 836
F. Supp. 1109, 1122 (E.D. Pa. 1993). Motions for reargument or reconsideration may
not be used "as a means to argue new facts or issues that inexcusably were not
presented to the court in the matter previously decided." Brambles USA, Inc. v.
Blocker, 735 F. Supp. 1239, 1240 (D. Del. 1990). Reargument, however, may be
appropriate where "the Court has patently misunderstood a party, or has made a
decision outside the adversarial issues presented to the Court by the parties, or has
made an error not of reasoning but of apprehension." /d. at 1241 (citations omitted);
see also D. Del. LR 7.1.5.
IV. DISCUSSION
lntermec submits that reconsideration is necessary to "correct errors of law and
fact and to prevent manifest injustice." (D. I.) Specifically, lntermec argues that
[t]he Court's rulings are in error because they (i) improperly grant Palm
summary judgment of validity on claims that were not the subject of
Palm's motion and for which lntermec was not given notice of the Court's
intent to grant or an opportunity to oppose such a grant of summary
judgment; (ii) improperly rejected evidence that the 700 Mono, as a 700
Series product, met every single limitation of the '049 patent claims; (iii)
did not consider evidence from lntermec showing the 700 Mono operated
the same way as the 700 Color and thus met every single limitation of the
'049 patent claims; (iv) did not consider evidence that Koenck '523
disclosed the Low Level Limitation, or erroneously imported a requirement
to show a specific operational voltage into that claim limitation (contrary to
the Court's holding on infringement); and [v] did not apply the proper
standard to these and other facts in granting Palm summary judgment.
4
(0.1. 309 at 1)
A. Judgment on Claims Not the Subject of Palm's Motion
lntermec argues that the language of the decision at bar is unclear as to whether
or not the court granted, sua sponte, relief not specifically requested by Palm as to
invalidity of claims 1-5, 7-17, 19-21 and 23-30 of the '803 patent, and claims 1-3, 7, 1011 and 13-15 of the '049 patent ("omitted claims"). (0.1. 309 at 2) lntermec further
argues that the court committed error to the extent that the court granted relief for the
omitted claims without giving notice of the court's intent to do so or granting an
opportunity to oppose. (/d. at 1).
The decision at bar provided that
Palm's motion for summary judgment of no invalidity and infringement of
the '803 and '049 patents is granted-in-part with respect to no invalidity of
either patent, and is otherwise denied. lntermec's motion for summary
judgment of [non infringement] and invalidity of the '803 and '049 patents
is granted-in part with respect to no infringement of claims 17, 18 and 22
of the '803 patent and no infringement of claim 17 of the '049 patent, and
otherwise denied.
(0.1. 305 at 50-51) In the decision at bar, the court was ruling on Palm's motion,
granting-in-part Palm's motion for summary judgment with respect to no invalidity of
either patent. The grant of summary judgment, thus, was limited to the relief sought in
Palm's motion, and was not a grant, sua sponte, of summary judgment with respect to
all claims.
The court, therefore, clarifies that in the decision at bar, the court's grant of
Palm's motion for summary judgment of no invalidity applied only to claims 6, 18 and
22 of the '803 patent and claims 4-6, 9, 12 and 16-17 of the '049 patent. As the court
5
did not grant relief sua sponte, the court does not reach the parties' remaining
arguments regarding this issue.
B. Anticipation of the '049 Patent by the 700 Mono Product
In the decision at bar, the court considered lntermec's argument that Palm itself
showed that the '049 patent claims were invalid by accusing a prior art product (the
lntermec 700 Mono) of infringement. (D.I. 305 at 45) The court determined that Palm's
preliminary infringement contentions were not directed to the 700 Mono product as
claimed by lntermec. (/d. at 45-46) Although the court considered lntermec's assertion
that the 700 Mono "operated in the same manner as the 700 Color," the court
determined that the cited evidence4 did not rise to the level of clear and convincing as
necessary to show anticipation. The court did not reach the issue of whether or not the
700 Mono was prior art to the '049 patent.
In the motion at bar, lntermec again argues that "Palm's allegations of
infringement against lntermec's '700 Series' products demonstrated on a claim-byclaim, element-by-element basis how those products were covered by the asserted
4
lntermec cited to the deposition testimony of Arvin Danielson. (D. I. 246 at 16)
(citing D.l. 247, tab 56 at SIA 748) The cited deposition testimony is contained on a
single page of the appendix, out of context, and includes the following passages
(emphasis added):
Q: Does Exhibit 542 confirm to you that the 700 mono operated in the
same way you described yesterday with respect to the 700C?
A: Yes I believe so.
***
Q: Did you use [Exhibit 543] to refresh your recollection to confirm that it,
the 700 Mono[,] operated in the same way you described yesterday with
respect to the 700C?
A: Yes. Basically, yes.
6
claims of the '049 [p]atent." (0.1. 309 at 4) (citing D.l. 169 at IA1864-2300) lntermec
further argues that "[t]he '700 Series' includes the 700 Mono product." (!d.) (citing D. I.
174 at IA-5 104, 111127-28) The court notes that the portion of the record pointed to by
lntermec recites: "The 700 series is a 'Color Mobile Computer, developed by
lntermec."' (D. I. 169 at IA-1868). "700 series" is not a term of art. Regardless of how
lntermec or its expert define the term "700 series," there is no indication that Palm used
the term to include the 700 Mono in Palm's preliminary infringement contentions.
lntermec had the opportunity to provide its own claim-by-claim, element-by-element
expert analysis of anticipation of the '049 patent by the 700 Mono device. It failed to do
so, instead relying on a preliminary contention comparing the '049 patent to a different
device.
Upon review, the court finds lntermec's remaining arguments regarding
anticipation of the '049 patent by the 700 Mono product to be similarly without merit. 5
The court, therefore, denies lntermec's motion for reconsideration as to anticipation of
the '049 Patent by the 700 Mono product.
C. Anticipation of the '049 Patent by Koenck '523
lntermec states that the court "rejected Koenck '523 as prior art because it failed
to show a 'charge supplied by the recharger ... sufficient to supply [the] relatively high
5
For example, lntermec argues that "[e]ven on summary judgment, Palm failed to
provide any factual evidence demonstrating that the 700 Mono was structurally or
functionally different from the '700 Series' that Palm accused in the infringement
contentions," and "[o]n summary judgment, when an accused infringer establishes a
prima facie case of anticipation, it is up to the patentee to provide some evidence
showing a genuine issue of material fact." (D. I. 309 at 5) (citing D. I. 209 at 19, other
citations omitted)
7
peak current required of the transceiver when the battery charge is too low to do so.'6
(0.1. 309 at 8) (brackets in original) (citing 0.1. 305 at 49-50) lntermec asserts here that
"the disclosure in Koenck '523 shows a 'portable RF terminal' that can 'establish an RF
link with a base station computer' even while the 'portable RF terminal [is coupled] to a
charger' and 'the battery has a relatively low charge."' (/d.) (emphasis added) (citing
0.1. 174, tab 118 at IA-5118) lntermec's fragmented quotation is taken from paragraph
90 of Koenck's expert report. 7 Paragraph 90 recites in full: "Koenck '523 teaches using
a portable RF terminal to establish an RF link with a base station computer. Fig. 27
illustrates coupling the portable RF terminal to a charger, which can occur while the
battery has a relatively low charge." (0.1. 174, tab 118 at IA-5118) (citations omitted)
Paragraph 90 refers to an RF terminal. The RF terminal of Koenck '523 corresponds to
the handheld computer system of the '049 patent and not to the transceiver
component/circuitry of the RF terminal. (See, e.g., '049 patent at col. 4:24-27, figure 3;
Koenck '523 at col. 4:27-32, col. 6:35-39, col. 19:18-21) Moreover, paragraph 90
contains two distinct assertions, first that the RF terminal may be used to establish an
RF link and, second, that the RF terminal can be coupled to a charger when the battery
6
1n fact, the court found that "Koenck '523 does not anticipate the claims of the
'049 patent," assuming arguendo that Koenck '523 was prior art. (0.1. 305 at 50) The
court did not rule on the issue of whether or not Koenck '523 was prior art to the '049
patent.
7
The court notes that lntermec's earlier brief in the decision at bar cited
specifically to paragraphs 89 and 90 (on page IA-5118) in support of this point. (0.1.
163 at 15, 27) ("In addition to disclosing these basic elements, Koenck '523 discloses a
device that will power the transceiver on the device when plugged into a dock.")
8
has a relatively low charge. Koenck's expert report, at paragraph 90, does not combine
these separate assertions as does lntermec in its fragmented quotation.
As the court held in the decision at bar, demonstrating compliance with the low
level limitation does not require identification of a specific voltage level. (0.1. 305 at 3031) To comport with the low level limitation one must, however, adduce evidence, inter
alia, that the transceiver is operable when the battery is below a low level and external
power is provided to the battery and transceiver through the recharging connector.
That other circuitry of the hand held computer (or RF terminal) can be operated is
inapposite. 8 The evidence must show that the transceiver, and not just the hand held
computer, is capable of operation under the imposed conditions. With respect to
anticipation, the evidence must be clear and convincing.
Again, lntermec attempts only to reargue the same issues and evidence that
were before the court in the decision at bar. The court, therefore, denies lntermec's
motion for reconsideration as to anticipation of the '049 patent by Koenck '523.
D. lntermec's Motion for Non infringement and the Low Level Limitation
8
The specification of the '049 patent teaches:
Handheld computing devices that utilize radio frequency (RF) connections
for data or voice communications require power for the RF transceiver
modules that require substantial signal amplification for transmission and
further require transceiver power for reception. Conventionally, handheld
computing devices do not allow receiving of RF transmissions and/or the
performance of RF transmissions when the battery has a charge that is
below a minimum level.
('049 patent at col. 1:28-35) The court, in the decision at bar, noted that Koenck '523
also teaches that operation of the RF transceiver requires more power than other
circuitry. (0.1. 305 at 49-50)
9
In the decision at bar, the court concluded that the plain and ordinary meaning of
the claim language, with respect to the low level limitation of the '049 patent, required
no construction. (D. I. 305 at 29) The court included a graphical representation
corresponding to the low level limitation as Diagram 1. (/d.) The court found no support
for lntermec's argument that "proof of infringement requires identification of a specific
voltage level meeting the low level limitation" and, instead, held that "[t]o prove
infringement, Palm need only show that a low level exists, such that it comports with the
conditions specified by the claims." (/d. at 30)
As the court then noted, the claims do not require the battery charge to be
measured in volts or any other particular unit, nor must such a specific low level be
determined by experimentation or measurement. (/d. at 30-31) To comport with the
claim language, it is sufficient to demonstrate that two battery charge levels "A" and "B"
exist such that: (1) A is greater than B; (2) when not connected to the recharger, the
transceiver is operable at level A; (3) when not connected to the recharger, the
transceiver is not operable at level B; and (4) the transceiver is operable at level B
when connected to the recharger. 9 Such a boundary (the low level) must then exist
somewhere between A and B, even if the specific battery charge level at which it exists
is not known. The parties' experts each performed experiments on the CN3 of the
aforesaid nature, reporting different results. (D. I. 305 at 31) (citing D. I. 176 at 24-29;
D. I. 201 at 18-21) The court held that "[a] genuine issue of material fact exists as to
9
lt is also required to show that external power is supplied to both the battery and
the transceiver through the recharging connector.
10
this limitation of the independent claims at issue and, therefore, summary judgment of
infringement is precluded."
lntermec argues, "[t]he court read out the requirement of a 'battery charge level'
in finding a question of fact regarding infringement of the '049 [p]atent. It is undisputed
that Palm does not have any evidence regarding the battery charge level at which
lntermec's devices enter the 'suspend' mode and cease transmitting .... " Once again,
lntermec attempts only to reargue the same issues and evidence that were before the
court in the decision at bar. The court denies lntermec's motion for reconsideration as
to non infringement of the '049 patent by the CN3.
E. Summary
In its motion for reconsideration, lntermec does not point to a change in the
controlling law or any newly discovered evidence. lntermec has not shown a need to
correct a clear error of law or fact to prevent manifest injustice. lntermec has not
demonstrated that the court has patently misunderstood a party, has made a decision
outside the adversarial issues presented to the court by the parties, or has made an
error of apprehension. lntermec's chief complaint is that the court did not weigh the
facts of record as lntermec would have wanted. Such is insufficient to meet the motion
for reconsideration standard.
V. CONCLUSION
For the above reasons, the court denies lntermec's motion for reconsideration
(D.I. 308). An appropriate order will issue.
11
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