ViaTech Technologies Inc. v. Microsoft Corporation

Filing 329

MEMORANDUM OPINION regarding pending motions (D.I. 209 , 212 , 214 , 218 , 221 , 224 , 226 , 232 ). Signed by Judge Richard G. Andrews on 6/12/2017. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

VIATECH TECH. INC.,

Plaintiff,
No. 14-cv-1226 (RGA)

v.
MICROSOFT CORP.,

Defendant.

MEMORANDUM OPINION

James D. Taylor, Jr., Esq., Allison J. McCowan, Esq., Saul Ewing LLP, Wilmington,
Del.; Michael J. Lennon, Esq., Sheila Mortazavi, Esq. (argued), Georg C. Reitboeck,
Esq. (argued), Michael S. Turner, Esq. (argued), Andrews Kurth Kenyon LLP, New
York, N.Y., attorneys for Plaintiff.
Martina Tyreus Hufnal, Esq., Santosh V. Coutinho, Esq., Christopher A. Winter,
Esq., Nitika Gupta, Esq., Fish & Richardson P.C., Wilmington, Del.; Frank E.
Scherkenbach, Esq. (argued), Kurt L. Glitzenstein, Esq., Steven R. Katz, Esq.
(argued), Chet D. Campbell, Esq., Whitney A. Reichel, Esq. (argued), Fish &
Richardson P.C., Boston, Mass., attorneys for Defendant.

June

'J-; 2017
1

Plaintiff ViaTech has sued Defendant Microsoft for infringement of U.S.
Patent No. 6,920,567. The '567 Patent is directed to enforcing software licenses. The
accused products include several versions ofWindows 1 and Office2 software.
Plaintiff has asserted fifteen claims, including one independent apparatus claim
(claim 1), nine dependent apparatus claims (claims 2-7 and 13-15), two
independent method claims (claims 28 and 31), and three dependent method claims
(claims 29, 30, and 32). Defendant has responded with invalidity defenses and·
counterclaims. (D.I. 61).
Plaintiff filed two motions for summary judgment: one for summary
judgment of infringement (D.I. 226) and the other for summary judgment of validity
(D.I. 232). Defendant filed three motions for summary judgment: one for summary
judgment of invalidity (D.I. 209), one for summary judgment of no willful
infringement and no pre-suit damages (D.I. 214), and one for summary judgment of
non-infringement (D.I. 218). Also pending are three Daubert motions (D.I. 212, 221,
224). Trial is scheduled for June 19, 2017. (D.I. 63).
For the following reasons, I am granting Defendant's motion (D.I. 218) for
summary judgment of non-infringement and denying Plaintiffs motion (D.I. 226)
for summary judgment of infringement. I am also denying in part and dismissing in

1

2

Windows Vista, Windows 7, Windows 8, Windows 8.1, and Windows 10. (D.I. 229 at 5).
Office 2010, Office 2013, Office 2016, and Office 365. (D.I. 229 at 5).

2

part Defendant's motion (D.I. 209) for summary judgment of invalidity and denying
Plaintiffs motion (D.I. 232) for summary judgment of validity.

1.

LEGAL STANDARD

"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 oflaw." Fed. R. Civ. P. 56(a). Material facts are those "that could affect
the outcome" of the proceeding. Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc., 4 77 U.S. 242, 248 (1986)). "[A]
dispute about a material fact is 'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving party." Id. The burden on the
moving party may be discharged by pointing out to the district court that there is
an absence of evidence supporting the non-moving party's case. Celotex Corp. v.

Catrett, 4 77 U.S. 317, 323 (1986).
The burden then shifts to the non-movant to demonstrate the existence of a
genuine issue for trial. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 4 75
U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, Pa., 891F.2d458,
460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely
disputed must support such an assertion by: "(A) citing to particular parts of
materials in the record, including depositions, documents, electronically stored
information, affidavits or declarations, stipulations ... , admissions, interrogatory
answers, or other materials; or (B) showing that the materials cited [by the

3

opposing party] do not establish the absence ... of a genuine dispute ...."Fed. R.
Civ. P. 56(c)(l).
When determining whether a genuine issue of material fact exists, the court
must view the evidence in the light most favorable to the non-moving party and
draw all reasonable inferences in that party's favor. Wishkin v. Potter, 476 F.3d 180,
184 (3d Cir. 2007). If the non-moving party fails to make a sufficient showing on an
essential element of its case with respect to which it has the burden of proof, the
moving party is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S.
at 322.

II.

INFRINGEMENT

I am granting summary judgment for Defendant because Plaintiff has failed
to produce sufficient evidence to create a genuine dispute over whether the accused
products include a "dynamic license database" that "resides in the digital content
file." This issue is appropriate for disposition on summary judgment because the
parties' experts, Dr. Benjamin Goldberg for Plaintiff and Dr. Stephen Wicker for
Defendant, agree on the attributes of the accused products. (See Goldberg Reply at if
10; D.I. 261 at 5). 3 The only disagreement is whether those attributes fall within the
scope of the asserted claims.

3

The following documents are cited in this opinion. The infringement report of Plaintiffs expert Dr.
Benjamin Goldberg is cited as "Goldberg Report" and is available at D.I. 230-1 Ex. 2. Dr. Goldberg's
reply report is cited as "Goldberg Reply" and is available at D.I. 230-1 Ex. 5. Deposition testimony of
Dr. Goldberg is cited as "Goldberg Tr." and is available at D.I. 230-1 Ex. 7. The infringement report
of Defendant's expert Dr. Stephen Wicker is cited as "Wicker Report" and is available at D.I. 230-1

4

Each of the asserted claims requires a "digital content file" that includes a
"dynamic license database." Claim 1 is representative as to this limitation. It reads:
1. A digital content file including a license control mechanism for controlling

the licensed use of digital content, comprising:
a digital content, and
an embedded file access control mechanism embedded in the digital
content file, including
a license functions mechanism embedded in the digital content
file and including
a license monitor and control mechanism communicating
with a dynamic license database and monitoring use of the
digital content by a user to determine whether a use of the
digital content by a user complies with the license defined
in the dynamic license database, and
a license control utility providing communications between
a user system and an external system to communicate
license definition information between the user system and
the external system, including
a graphical user interface associated with the license
control utility to provide communication between a
user and user accessible functions of the license
functions mechanism, and
the dynamic license database wherein the dynamic license database is
associated with the digital content file for storing information
controlling operations of the file access control mechanism and license
information controlling licensed use of the digital content.

Ex. 4. The invalidity report of Dr. Wicker is cited as "Wicker Invalidity" and is available at D.I. 2282.
5

('567 Patent, col. 40, 1. 65-col. 41, 1. 25 (emphasis added)). The other independent
claims read in relevant part:

·~method

for distributing a digital content file ...

comprising ... preparing a licensable digital content file, containing ... an embedded
file access control mechanism, including ... a license control utility ... including, ... the
dynamic license database ... " (id. at col. 47, 1. 43-col. 48, 1. 29), and "A method for
providing a license for use of digital content in a digital content file residing in a
user system wherein the digital content file includes ... a dynamic license
database .... " (id. at col. 49, 1. 26-col. 50, 1. 30).
In my Markman opinion, I adopted two relevant constructions. First, I
construed "dynamic license database" to be "a database that resides in the digital
content file and that is programmed to accept modifiable licenses." (D.I. 139 at 10).
Second, I construed "file" as having its plain and ordinary meaning which I set out
as "a collection of data that is treated as a unit by a file system." (Id. at 12).

A.

Literal Infringement

For literal infringement, Plaintiff must prove by a preponderance of the
evidence that "every limitation recited in the claim is found in the accused device."

Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If any claim
limitation is absent from the accused device, there is no literal infringement as a
matter oflaw." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.
Cir. 2000). I am granting summary judgment for Defendant on literal infringement
because Plaintiff cannot prove that Defendant's products include a "dynamic license
database" that "resides in the digital content file."
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i.

Summary of the Accused Products

Plaintiff argues that the "digital content file" is the Windows software4 itself
as it exists pre-installation on an optical disk or in a disk image file. (D.I. 229 at 89; D.I. 268 at 8). 5 In that form, Plaintiff argues, it "can be mounted by the file
system on a user's computer in order to install the software." (D.I. 229 at 8-9; D.I.
268 at 8).
Plaintiff further argues that the "dynamic license database" is a combination
of several files including the trusted store, the token store, and the cache store.
(Goldberg Report at if 65). 6 These components are controlled by the Software
Protection Platform ("SPP") (Goldberg Report at if 67-72; Goldberg Reply at if 14),
and they "store data defining the terms and conditions of a license .... " (Goldberg
Report at if 67). The trusted store, which is a file named data.dat, stores the product
keys. (Id.; Goldberg Tr. at 236). The token store, a file named tokens.dat, stores the
license files. (Goldberg Report at if 67; Goldberg Tr. at 235-36). The cache store "is a

4 There are also accused Office products. While the Office products operate differently for the
"embedded file control mechanism" term, they do not operate in a materially different way for the
"dynamic license database" term, which is the focus of this opinion. Thus, I will only discuss
Windows, but the same analysis applies to the accused Office products.
5 I do not read Plaintiffs brief to argue that the collection of files that constitutes Windows in its
post-installation form is a "file" because it only makes that argument in a footnote to its brief.
Robocast, Inc. v. Apple Inc., 2014 WL 2622233, at *1 (D. Del. June 11, 2014); cf. SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). At oral argument, however, Plaintiff
asserted that its brief does raise that argument. (D.I. 325 at 52). Even if the footnote sufficed to raise
the argument, Plaintiffs position would be clearly contrary to my rejection of their claim
construction argument. In the Markman opinion, I construed "file" to be "a unit" because the patent
"never refers to a collection of files as a single 'file.'" (D.I. 139 at 13). Windows, after installation, is
many files such as taskeng.exe, winlogon.exe., and explore.exe. (Wicker Report at p. 31; see also
Goldberg Reply at~ 18 (disagreeing with Dr. Wicker's conclusion but not on the underlying facts)).
6 According to Plaintiff, the dynamic license database also includes the trusted timer.

7

memory location that stores the results of the license evaluation." (Wicker Report at
p. 48). 7

The trusted store, token store, and cache store "are used by the Windows
operating system software, but are not themselves executable code." (Id.). Instead,
the trusted store and token store are data files, while the cache store is a memory
location. (Id.).B
Dr. Wicker, Defendant's expert, explains that "prior to, and at the time of,
installation, the files and cache store ... do not exist. Rather, they are created later
when the installed software is executed." (Wicker Report at p. 30). "When SPP is
first run, SPP will look to see if the trusted store and token store exist, and if not, it
will create them. The cache store is created in memory after Windows boots and is
likewise not in the installation media." (Id.).
Plaintiff points to no place in the report of its expert Dr. Goldberg where he
rebuts Dr. Wicker's explanation of how these files are created and their status at
the time of installation. In fact, Dr. Goldberg appears to confirm it when he states

7

Dr. Goldberg and Dr. Wicker agree on the operation of the license database except for a small and
non-material disagreement about where the cache store resides. Dr. Goldberg states that the cache
store does not reside only in memory. (Goldberg Reply at iJ 55 n. 24). Instead, he explains "[t]he
information from the Cache Store is periodically copied to the hard disk drive or solid state drive of a
user system for future use." (Id.). In his reply, he does not actually contest, however, Dr. Wicker's
statement that the cache store is created in memory. (See id. at iii! 54-62).
8 Dr. Wicker provided this explanation but Dr. Goldberg did not rebut it or otherwise disagree with
it. (See Goldberg Reply at iii! 54-56). Plaintiff artfully states that the pre-installation software
contains "executable code that is programmed to save that license data in files it creates on a user
system." (D.I. 268 at ii 15). The materials cited by Plaintiff to support that assertion, however, do not
actually state that the trusted store, token store, and cache store are themselves executable code.
(See id. at 15 (referencing id. at 13 n. 18)).

8

"[t]he installable versions of Windows/Office each contain code for creating the
Trusted Store and ... Token Store ... upon installation." (Goldberg Report at if 73
(emphasis added); see also Goldberg Tr. at 65 ("Once ... the token store, the trusted
store, etc., are created .... "); Goldberg Reply at if 11).
Any license information contained in the pre-installation software is stored in
a BLOB (Goldberg Tr. at 64), not in the token store. "A BLOB typically is some data
that generally is not intelligible by just looking at it, you need to view it through
some sort of program or programmatically." (Id. at 64-65).
The licenses are put into the token store after installation occurs. "Once ... the
token store, the trusted store, etc., are created, then SPP has a way of taking license
data and putting them into those-into the appropriate portions of those database
components. (Id. at 65).
ii.

The Accused Software Does Not Infringe in Any One State

Plaintiff cannot establish the accused software infringes in any one state
because Plaintiff cannot prove the accused products meet the "license database" and
the "file" limitations at the same time.
At claim construction, Plaintiff argued that "file" could mean a collection of
files, and not just a discrete file. (D.I. 92 at 33, 36-37). I rejected this position,
explaining that the patent "never refers to a collection of files as a single 'file."' (D.I.
139 at 13). My construction of "file" places Plaintiffs infringement theory in a bind.
Post-installation, Windows is a collection of files, not a single file. Pre-installation,
Windows is a "file." Post-installation, the files Plaintiff points to as the "license
9

database"-the token store, the trusted store, and the cache store-exist. Preinstallation, they do not. Plaintiffs infringement position requires me to treat
Windows in one form for one part of the claim and in another form for the other. I
cannot do so.
iii.

Ericsson and Finjan Are Not Relevant

In arguing infringement, Plaintiff relies on two cases: Finjan, Inc. v. Secure

Computing Corp., 626 F.3d 1197, 1203-05 (Fed. Cir. 2010) and Ericsson, Inc. v. DLink Systems, Inc., 773 F.3d 1201, 1215-17 (Fed. Cir. 2014). (D.I. 229 at 23; D.I. 268
at 17 n. 27). Those cases are inapposite because they address accused products that
were capable of being operated in an infringing manner.
In Finjan, the accused product was sold with the infringing capability, but it
had to be unlocked to be used. Finjan involved patents covering proactive scanning
software, that is, software for "techniques directed to detecting and defeating
previously unknown, Internet-based threats to computers, such as viruses." 626
F.3d at 1201. Defendants sold a product that included three software modules that
performed proactive scanning. Id. at 1202. Those modules were "locked" when
Defendants' products were sold. Id. Customers had to purchase an additional
product key in order to unlock the infringing modules. Id.
In Finjan the "code for proactive scanning was already present in Defendants'
accused products when sold." Id. at 1205 (internal quotation marks omitted). The
software code did not have to be modified for the locked modules to be used. Id. The
court found Defendants' products infringed because the claim language only
10

required the accused product to be able to perform the claimed capability, not that it
actively perform the capability. Id.
In Ericsson, the accused product infringed some of the time, but not all of the
time. 773 F.3d at 1215. Ericsson involved the transmission of data over wireless
internet. See id. at 1208-09. Data is transmitted in pieces called packets. Id. at
1209. The packets include a payload, the data being transmitted, and headers that
assist the receiving device in prioritizing the packets. One asserted patent included
a claim limitation that required a header with a value identifying the type of
content being transmitted. Id. at 1210. The accused products included a traffic
identifier field and, for some uses of the accused product, the value in that field
corresponded with the content type; for some, it did not. Id. at 1211, 1215. The court
held this was sufficient to establish infringement.

Finjan and Ericsson do not rescue Plaintiff for two reasons.
First, assuming arguendo that the asserted claim language requires only
software capable of having a license database and that the disk image file has that
capability, the accused product would still not be capable of being operated in an
infringing mode. In both Finjan and Ericsson the accused product was capable of
operating in a way that met all of the claim limitations. In Finjan, once the software
was unlocked, it infringed. In Ericsson, when the header did correspond with the
payload type, the other claim limitations were still met. Here, once the "license
database" is created, the product still does not infringe because there is no "file."

11

Second, claim 1 requires more than capability in the relevant part. 9 Claim 1
includes capability claiming insofar as the "license database" must be capable of
controlling the operations of the file access control mechanism and the licensed use
of the digital content. Claim 1 does not, however, only require software that is
capable of having a "license database." The "file" must comprise the "license
database."
The disk image file does not have the "license database." Instead, the
program that creates the trusted store, token store, and cache store exists in the
disk image file. In Ericsson, there was no dispute that the accused product had the
claimed "processor" that was capable of providing a header that corresponded with
the payload type. In Finjan, the software components for performing the claimed
capabilities were present in the software as sold. Here, the trusted store, token
store, and cache store are not present in the disk image file. Thus, again, Ericsson

l

I

and Finjan do not save Plaintiff.

I

Having found Plaintiff lacks any theory of infringement where the accused
products meet all of the claimed limitations at the same time, I grant summary
judgment of no literal infringement.

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l

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f

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9

The asserted method claims also require more than capability. Both require a file having a license
database.

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B.

Doctrine of Equivalents

Defendant requests summary judgment of no infringement under the
doctrine of equivalents because Plaintiff "failed to assert infringement under the
doctrine and [Plaintiffs] expert has failed to provide a proper equivalents
analysis .... " (D.I. 219 at 22). Plaintiff responds in two ways.
First, Plaintiff essentially argues that if it is wrong on infringement, then it
is a near miss, so infringement under the doctrine of equivalents is appropriate.

(See D.I. 268 at 24). Infringement under the doctrine of equivalents occurs where
there is no literal infringement because of an "unimportant and insubstantial
change to the claimed invention." Lear Siegler, Inc. v. Sealy Mattress Co. of Mich.,

Inc., 873 F.2d 1422, 1425 (Fed. Cir. 1989) (internal quotation mark omitted). To
prove infringement under the doctrine of equivalents, a plaintiff must establish
"substantial identity" of "function performed, means by which function is performed,
and result achieved." Id.
In Lear, the Federal Circuit overturned a jury verdict of infringement under
the doctrine of equivalents because the plaintiff failed to provide any independent
evidence or analysis of substantial identity of function, means, and results. Id. at
1425-26. The court explained that those three "elements must be presented in the
form of particularized testimony and linking argument." Id. at 1426. Each element
must be individually addressed with "evidence and argument ...." Id. at 1425. "The
evidence and argument on the doctrine of equivalents cannot merely be subsumed
in plaintiff's case of literal infringement." Id. "[E]vidence and argument on literal
13

infringement, that may also bear on equivalence," is insufficient on its own to
sustain a finding of infringement under the doctrine of equivalents. Id.
Prior to summary judgment briefing, Plaintiff had not expressed a clear
interest in pursuing a doctrine of equivalents claim.IO For example, Dr. Goldberg
states his opinion relates to whether Defendant's products "include each of the
elements of asserted claims 1-7 and 13-15 ... [and] whether Microsoft performs each
of the method steps described in claims 28-30 ... and ... claims 31-32 .... " (Goldberg
Report at if 6). He makes no mention of the doctrine of equivalents. Only in his reply
report does he state, "I see no reason why the opinions rendered in my Opening
Expert Report and in this Reply Expert Report would not be relevant to ...
infringement under the doctrine of equivalents ...." (Goldberg Reply at if 8). That is
the full extent of either report's mention of the doctrine of equivalents. Further, in
its answer to interrogatories seeking Plaintiffs infringement contentions, Plaintiff
makes no mention of infringement under the doctrine of equivalents. (D.I. 220-8 at
3-4).
Plaintiff has produced no evidence from which a factfinder could find
infringement under the doctrine of equivalents. In the summary judgment briefing,
Plaintiff dumped, in a footnote and without any analysis, citations to about 100
paragraphs from Dr. Goldberg's reports. (See D.I. 268 at 24 n. 40). Failing to make a
proper doctrine of equivalents argument is a waiver in and of itself. SmithKline

10

Plaintiff still has not expressed a clear doctrine of equivalents theory.

14

Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Nevertheless,
having reviewed those cited paragraphs, none of them provide a basis for Dr.
Goldberg to opine that there is substantial identity of function, means, and results
as required for Plaintiff to assert the doctrine of equivalents.
In a deposition, Dr. Goldberg asserted that he conducted the analysis
necessary to support a finding under the doctrine of equivalents. He gives an
example relevant here. He points to paragraph thirty-two from his expert reply.
(Goldberg Tr. at 62-63). In that paragraph, Dr. Goldberg states in relevant part:
Regardless of whether the Trusted Store, Token Store, Trusted Timer, and
Cache Store components are stored in their final form on the installer disk, or
whether they are stored in a modified form, when the Windows and Office
software is installed and run on the user system, the Trusted Store, Token
Store, Trusted Timer, and Cache Store components are created and stored in
the same final form.
This is the closest his expert reply comes to providing a doctrine of equivalents
analysis. It still falls short for three reasons.
For one, the context of this paragraph makes clear that Dr. Goldberg is still
expanding on his literal infringement theory. For two, even if this opinion could be
used to support a substantial uniformity of results, it offers no support for a
factfinder to find substantial uniformity of means or function. For three, it contains
none of the required "linking" testimony.
Second, Plaintiff asks for a chance to present a doctrine of equivalents
argument. The time to do so has elapsed. Trial is mere weeks away and Plaintiff

15

just now raises the issue. See Laurie v. Nat'l Passenger R.R. Corp., 105 F. App'x
387, 392-93 (3d Cir. 2004).
Plaintiff argues it should be allowed the opportunity because Defendant's
position is predicated on a new claim construction. I disagree. It is the claim
construction I issued last June that defeats Plaintiffs literal infringement case.
Thus, I am granting summary judgment of no infringement under the
doctrine of equivalents.
III.

INVALIDITY

Defendant filed a motion for summary judgment of invalidity on the basis of
obviousness and indefiniteness. (D.I. 209). Plaintiff filed a cross-motion for
summary judgment of validity. (D.I. 232). I am denying Plaintiffs motion and
Defendant's motion on the basis of indefiniteness. I am dismissing Defendant's
motion for summary judgment of obviousness and its counterclaims as moot.

A.

Plaintiff's Motion

Defendant asserts a counterclaim and the affirmative defense that the '567
Patent is invalid as obvious over seven prior art references, including the Microsoft
product Brazilian Publisher and U.S. Patent No. 6,243,468. (See Wicker Invalidity).
A patent claim is invalid as obvious under 35 U.S.C. § 103 if the novel aspect of the
claimed invention "would have been obvious ... to a person having ordinary skill in
the art .... " Id. § 103(a); see also KSR Int'l Co. v. Telefiex Inc., 550 U.S. 398, 406-07
(2007). Obviousness is a question of law that depends on the following factual
inquiries: (1) the scope and content of the prior art; (2) the differences between the
16

claims and the prior art; (3) the level of ordinary skill in the relevant art; and (4)
any objective indicia of nonobviousness. See KSR, 550 U.S. at 406; see also

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d
1340, 134 7 (Fed. Cir. 2012). To prove obviousness, a party must show that a skilled
artisan would have been motivated to combine the prior art teachings with a
reasonable expectation of success. See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286,
1291 (Fed. Cir. 2013).
Plaintiff moves for summary judgment because it argues Defendant's
obviousness case fails in two ways. First, Plaintiff argues Defendant has failed to
produce sufficient evidence that it would have been obvious to implement a file
access control mechanism entirely locally. (D.I. 233 at 19-22). Second, Plaintiff
argues Defendant has failed to produce sufficient evidence that it would have been
obvious to have a dynamic license database that resides in the digital content file.
(D.I. 233 at 22-23). Both elements are required by the claims as I construed them.
(D.I. 139 at 10, 14).
While Dr. Wicker does not point to prior art references where these claim
limitations occur, he does provide analysis of why a person of ordinary skill in the
art would know how and be motivated to modify the prior art references to include
these limitations.
For the file access control mechanism, Dr. Wicker explains why a skilled
artisan would be motivated to implement the control mechanism entirely locally. He
explains it "would simplify the system by allowing it to operate without an
17

activation server and increase customer satisfaction (particularly at a time when
internet access was slow)." (Wicker Invalidity at p. 72; see also id. at p. 107
(performing the same analysis with another prior art reference)). He also explains
how the control mechanism in the '468 Patent could be modified to accomplish the
goal. (Id. at p. 72).
For the dynamic license database, Dr. Wicker explains why a skilled artisan
would be motivated to locate the database in the digital content file. He explains "a
database in the file has the advantage of necessarily traveling with the file (because
it is inside it)." (Wicker Invalidity at p. 81).
Dr. Wicker's opinion on obviousness is sufficient because he offers more than
bald assertions; he offers reasoned analysis. Dr. Wicker is not required to point to
some specific teaching in the prior art to support his opinion. KSR, Int'l, 550 U.S. at
418. His education, research, and experience (see Wicker Invalidity at pp. 1-3),
adequately support his opinion.
In its reply brief, Plaintiff raises other issues with Defendant's obviousness
case. It argues that the prior art does not disclose a license database that accepts
modifiable licenses and that Brazilian Publisher is not prior art. (D.I. 294 at 5-7,
12-13). Because these arguments were not raised in the opening brief (see D.I. 233
at 17-23), they were waived. Novosteel SA v. U.S. Bethlehem Steel Corp., 284 F.3d
1261, 1273-74 (Fed. Cir. 2002) ("Raising the issue for the first time in a reply brief
does not suffice; reply briefs reply to arguments made in the response brief-they do

18

not provide the moving party with a new opportunity to present yet another issue
for the court's consideration.").
Thus, there are genuine disputes defeating Plaintiffs motion for summary
judgment.

B.

Defendant's Motion

Defendant moves for summary judgment of invalidity on two grounds:
indefiniteness and obviousness.
i.

Indefiniteness

Defendant argues the asserted claims are indefinite because of the claim
limitation:
the dynamic license database wherein the dynamic license database is
associated with the digital content file for storing information controlling
operations of the file access control mechanism and license information
controlling licensed use of the digital content.
('567 Patent, col. 41, 11. 21-25) (emphasis added). Defendant focuses on the claim's

requirement of both information that controls the operations of the file access
control mechanism and information that controls licensed use of the digital content.
Defendant asserts "there is no way to distinguish these two types of information."
Thus, Defendant argues, the claim is indefinite. (D.l. 210 at 23).
I do not read the claim language as necessitating two informations
performing distinct functions rather than a single information performing both
functions. Further, Defendant fails to establish its burden of proving the issue by
clear and convincing evidence. In its opening brief, Defendant generically references
the specification and makes a single citation to a sixty-five page declaration

19

submitted by Dr. Wicker. (D.I. 210 at 22-23 (citing D.I. 222-1)). Buried in that
declaration is one relevant paragraph containing a conclusory assertion that "[o]ne
of ordinary skill in the art would not have been able to determine with reasonable
certainty the scope of each of these phrases," accompanied by a description of the
specification. (D.I. 222-1 at if 47).
Having failed to establish that the asserted claims are indefinite by clear and
convincing evidence, Defendant's motion for summary judgment of invalidity is
denied in part.
ii.

Obviousness

Defendant's obviousness case relies on its product Brazilian Publisher. At
oral argument, it stipulated there was a genuine dispute over the prior art status of
Brazilian Publisher, but asked me to rule that, if Brazilian Publisher is prior art,
Defendant made a prima facie case of obviousness that was unrebutted. While
Defendant makes a strong case, such a ruling would leave a piecemeal presentation
for the jury. Having granted summary judgment of non-infringement, I am
dismissing the motion for summary judgment of obviousness and Defendant's
counterclaims of invalidity as moot because proceeding to a jury trial would be
inefficient and wasteful. See Phonometrics, Inc. v. N. Telecom Inc.,133 F.3d 1459,
1468 (Fed. Cir. 1998).

IV.

CONCLUSION

Every claim requires a "digital content file" that includes a "dynamic license
database." I have granted summary judgment of no literal infringement and no
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infringement under the doctrine of equivalents. 11 Thus, I grant Defendant's motion
(D.I. 218) for summary judgment of non-infringement and deny Plaintiffs motion
(D.I. 226) for summary judgment of infringement. Plaintiffs motion (D.I. 232) for
summary judgment of validity is denied. Defendant's motion (D.I. 209) for summary
judgment of invalidity on the basis of indefiniteness is denied and on the basis of
obviousness is dismissed as moot. Defendant's motion (D.I. 214) for summary
judgment of no willful infringement, its motion (D.I. 221) to exclude Dr. Goldberg's
testimony, and the two Daubert motions (D.I. 212, 224) related to damages are
dismissed as moot.
An order consistent with this opinion will follow.

11 Plaintiff has also asserted indirect infringement. Plaintiff has made no argument unique to
indirect infringement. Because indirect infringement requires direct infringement to occur, this
claim falls as well. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir.
2004).

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