Improved Search LLC v. Microsoft Corporation
Filing
104
MEMORANDUM AND ORDER: Improved Search LLC's Motion for Summary Judgment of Non-Infringement of the asserted claims of U.S. Patent No. 6,604,101 (D.I. 85 ) is GRANTED. A Judgment in conformity with this Memorandum and Order will issue this date (*see Order for further details). Signed by Judge Joseph F. Bataillon on 5/28/2019. (ceg)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
IMPROVED SEARCH LLC,
Plaintiffs,
1:16CV650
vs.
MEMORANDUM AND ORDER
MICROSOFT CORPORATION.,
Defendant.
This matter is before the Court on the plaintiff’s motion for a summary judgment of
noninfringement (D.I. 85) and defendant’s opposition thereto and purported cross-motion
for summary judgment on its affirmative defenses.1 D.I. 88. This is an action for patent
infringement, pursuant to 35 U.S.C. § 271 et seq.
I.
FACTS
In its complaint, plaintiff Improved Search LLC (“Improved”) alleges Microsoft
Corporation (“Microsoft”) infringes two related patents, U.S. Patent Nos. 6,604,101 (the
“101 Patent”) and 7,516,154 (“the ’154 patent”) (collectively, “the Asserted Patents”) (D.I.
1, Complaint at 4). The patents improve the usability of searching over the internet and
are directed to cross-language translation of query and search information as well as
1
Though Microsoft characterizes its pleading as a cross-motion for summary judgment, that title is a
misnomer. Microsoft has not asserted any counterclaims, only affirmative defenses. A party moves for
judgment in its favor on a claim or a counterclaim, whereas a meritorious defense to a claim results in a
judgment against the party asserting that claim. There are no claims on which Microsoft would be entitled
to judgment.
Both Improved and Microsoft seek a judgment in favor of Microsoft and against Improved on its claims for
infringement of the ’101 patent. Microsoft’s pleading cannot therefore be characterized as an opposition to
Improved’s motion. Rather, it apparently seeks a determination that is allegedly broader than the relief
arguably sought by Improved in its motion. The Court finds the relief sought by both parties is essentially
the same.
1
retrieval of multilingual information over a computer network. The ’101 patent generally
relates to methods and systems of for translating queries from a source language to a
target language, and the ’154 patent generally relates to methods of and systems for
providing cross language advertising services over the Internet. Id. at 4. In the answer
to Improved’s complaint, Microsoft asserted several affirmative defenses, including
noninfringement and invalidity. D.I. 7, Answer at 11-12. Microsoft did not assert any
counterclaims for declaratory relief. Id.
On April 2, 2018, United States Magistrate Judge Sherry R. Fallon filed a Report
and Recommendation (“R&R”) which, among other things, adopted defendant Microsoft’s
proposed definition of “dialectal standardization.”2 D.I. 68, R&R at 7. The term or a
variant of it appears in all of the independent claims of the ’101 patent. Id.; D.I. 1-1, ’101
patent at cols. 7 – 10. This Court adopted the Report and Recommendation on August
21, 2018. D.I. 76, Memorandum and Order at 8. In a related motion, Improved moved to
dismiss its claims alleging infringement of the ’154 patent under Federal Rule of Civil
Procedure 41, based on the Court’s claim construction and on a purported agreement
between the parties. D.I. 95. The Court granted the motion and Improved’s claims of
infringement of the ’154 patent were dismissed, with prejudice, under Federal Rule of Civil
Procedure 41(b). (D.I. 102).
Any asserted claims or defenses by defendant Microsoft
were dismissed without prejudice. Id.
This definition extends to other forms of the term “dialectal standardization,” including “dialectally
standardized,” “dialectally standardizing, “dialectal standardization of the at least one content word
extracted from the query,” “dialectal standardization of the content word extracted from the query,”
“dialectally standardizing a content word extracted from the query, and “dialectally standardized content
word.”
2
2
Improved now moves for summary judgment, seeking a determination that
Microsoft does not infringe the ’101 patent.3 D.I. 85. Improved concedes that “based on
the currently available documents, it cannot, in good faith, pursue their infringement claim
under the Court’s construction of ‘dialectal standardization.’” D.I. 86, Brief at 1. It candidly
admits that it seeks summary judgment in order to move forward with a direct appeal to
the Federal Circuit. Id. at 3.
Microsoft agrees that a summary judgment of noninfringement of the ’101 Patent
should be granted. D.I. 88, Brief at 1. Microsoft, however, also seeks a ruling in its favor
on the merits of its affirmative defenses of noninfringement, both literally and under the
doctrine of equivalents, and invalidity.4 D.I. 88, Brief. It contends that there is no genuine
dispute that none of the accused systems or methods infringe any of the currently
asserted claims of the ’101 Patent. It argues that it seeks summary judgment “based on
five separate claim requirements not specifically mentioned in Plaintiff’s motion but for
which Plaintiff cannot advance evidence sufficient to support a jury finding in its favor.”
Id. Microsoft submits evidence in support of its position. D.I. 89-2, Exs. 1-5.
In response to Microsoft’s arguments, Improved states that there are genuine
issues of material fact on whether Microsoft would be entitled to a summary judgment on
any grounds other than under the claim construction at issue. It asks the court to enter a
summary judgment of noninfringement, but to deny Microsoft’s motion to the extent it
seeks a judgment of noninfringement on any grounds other than those relating to the
Specifically, Improved moves for a summary judgment that “that the currently asserted claims of the
U.S. Patent No. 6,604,101 (the “’101 Patent”) are not infringed by the accused products of Microsoft based
on the currently available documents and the Court’s construction of “dialectal standardization” as defined
by the Court in the April 30, 2018 Report and Recommendations (D.I. 68) and the subsequent August 22,
2018, Memorandum and Order construing the claims. D.I. 76; D.I. 86, Brief at 1.
4 Microsoft’s arguments with respect to the ’154 patent are moot by reason of the Rule 41 dismissal.
3
3
Court’s construction of dialectical standardization and related terms. D.I. 93, Reply Brief
at 9.
II.
LAW
“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. P. 56(a). The moving party bears the initial burden of demonstrating
the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). The moving party “is entitled to a judgment as a matter of law [when] the
nonmoving party has failed to make a sufficient showing on an essential element of her
case with respect to which she has the burden of proof.” Id. (internal quotation marks
omitted). The moving party need only show “that there is an absence of evidence to
support the nonmoving party’s case.” Id. at 325.
If the moving party has carried its burden, the nonmovant must then “come forward
with specific facts showing that there is a genuine issue for trial.” Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (internal quotation marks omitted).
The court will “draw all reasonable inferences in favor of the nonmoving party, and it may
not make credibility determinations or weigh the evidence.” Reeves v. Sanderson
Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). Infringement, whether literal or under
the doctrine of equivalents, is a question of fact. Ferguson Beauregard/Logic v. Mega
Sys., Inc., 350 F.3d 1327, 1338 (Fed.Cir.2003).
A determination of infringement is a two-step process. Wright Med. Tech., Inc. v.
Osteonics Corp., 122 F.3d 1440, 1443 (Fed. Cir. 1997).
The first step is claim
construction, which is a question of law to be determined by the court. Id. The second
4
step is an analysis of infringement, in which it must be determined whether a particular
device infringes a properly construed claim. Id. This analysis is a question of fact. Id.
A ruling on claim construction after a Markman hearing is not a final, appealable
order, in the absence of a resolution of all of the factual issues of infringement or validity
dependent thereon. Nystrom v. TREX Co., Inc., 339 F.3d 1347, 1350 (Fed. Cir. 2003)
(sua sponte dismissing appeal of a finding of noninfringement and invalidity of certain
claims of a patent for lack of jurisdiction where a declaratory-judgment counterclaim for
invalidity and unenforceability remained pending as to other claims of the patent and had
been stayed). “Piecemeal litigation is as strictly precluded by the rule of finality for patent
cases as it is for any other case.” Id. Under the finality rule, parties may only appeal a
“final decision of a district court.” Id. A final judgment “is a decision by the district court
that ‘ends the litigation on the merits and leaves nothing for the court to do but execute
the judgment.’” Pause Tech. LLC v. TiVo Inc., 401 F.3d 1290, 1292 (Fed. Cir. 2005)
(quoting Catlin v. United States, 324 U.S. 229, 233 (1945)).
“[W]hether an order
constitutes a final judgment ‘depends upon whether the judge has or has not clearly
declared his intention in this respect in his opinion.’” Pandrol USA, LP v. Airboss Ry.
Prod., Inc., 320 F.3d 1354, 1362 (Fed. Cir. 2003) (quoting United States v. F. & M.
Schaefer Brewing Co., 356 U.S. 227, 232 (1958) (citation omitted)). “A ‘judgment that
does not dispose of pending counterclaims is not a final judgment.’” Pause Tech LLC,
401 F.3d at 1293.
To be appealable a claim construction order must preclude a finding of
infringement—a required element of the plaintiff's cause of action. Princeton Digital
Image Corp. v. Office Depot Inc., 913 F.3d 1342, 1348 (Fed. Cir. 2019). Such preclusion
5
of infringement may be established by the patent owner's binding admission that the
accused activities are not infringing under the adopted claim construction. Id. (noting that
where a claim construction order does not resolve the issue of infringement, it is not a
final decision, and, accordingly, is not appealable); see also Wilson Sporting Goods Co.
v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326 (Fed. Cir. 2006) (“[F]inal judgment in a
patent case will usually produce a judgment of infringement or non-infringement. [The
appellate] court reviews claim construction only as necessary to reach that final judgment
on an infringement cause of action”).
The Federal Circuit acknowledges that the Supreme court’s decision in Microsoft
v. Baker, 137 S. Ct. 1702, 1706-07 (2017) (involving class certification), “at least
establishes that a voluntary dismissal does not constitute a final judgment where the
district court’s ruling has not foreclosed the plaintiff’s ability to prove the required elements
of the cause of action.” Princeton Digital, 913 F.3d at 1348. It is “clear that unless the
district court has conclusively determined, including determined by consent, that the
plaintiff has failed to satisfy a required element of the cause of action, a voluntarily
dismissal lacks finality.” Id. at 1349.
There is authority for the proposition that a district court, in ruling on infringement
impliedly disposes of an invalidity defense, whereas an invalidity counterclaim would be
a separate claim that would remain unresolved if not expressly ruled upon by the district
court. Pause Tech LLC, 401 F.3d at 1294; see also Altvater v. Freeman, 319 U.S. 359,
363 (1943); Pandrol, 320 F.3d at 1361–63 (noting distinction between invalidity defense
and counterclaim but recognizing finality of judgment where district court found invalidity
defenses waived after counterclaim dismissed without prejudice and not revived). Even
6
when a counterclaim has been pled, a district court can properly expressly dispose of an
invalidity counterclaim by either adjudicating it, indicating the alleged infringer concurs in
a disposition that would permit a dismissal without prejudice and without a finding of
mootness, or by finding there is no longer a “controversy,” i.e., that the counterclaim is
moot. Pause Tech, LLC, 401 F.3d at 1293-94 (emphasis added); see also Nystrom, 339
F.3d at 1351.
Also, in appropriate circumstances, a district court may exercise its
discretion to dismiss a remaining invalidity counterclaim without prejudice. Nystrom, 339
F.3d at 1351; Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1370-71 (Fed. Cir.
2004) (holding that a district court faced with an invalidity counterclaim challenging a
patent that it concludes was not infringed may either hear the claim or dismiss it without
prejudice, subject to review only for abuse of discretion).
Once an accused infringer proves that the specific device accused of infringing
does not infringe, “the specific accused device[ ] acquires the ‘status’ of a noninfringing
device vis-à-vis the asserted patent claims.” Brain Life, LLC v. Elekta Inc., 746 F.3d 1045,
1057 (Fed. Cir. 2014).
III.
DISCUSSION
Improved’s concession that the Microsoft’s systems and methods do not infringe
under the Court’s claim construction is dispositive of the issue of noninfringement.
Improved acknowledges that it cannot prevail on its claims of infringement under the
Court’s claim construction, particularly its construction of “dialectical standardization.”
Microsoft accedes to that proposition.
Improved’s admission means that it fails to
establish the required elements of it cause of action for infringement. The parties have
essentially stipulated and consented to a final judgment of noninfringement. Accordingly,
7
the Court finds the record establishes that there are no genuine issues of material fact
and the accused methods or systems do not infringe as a matter of law. See Pause
Tech., LLC v. TiVo, Inc., 419 F.3d 1326, 1336 (Fed. Cir. 2005). Judgment in favor of
Microsoft and against Improved on Improved’s claim of infringement is therefore
appropriate. The Court has conclusively determined by consent—that is, in accord with
Improved’s concession and Microsoft’s agreement—that Improved has failed to satisfy a
required element of the cause of action.
Having determined that Microsoft does not infringe, the Court need not address
Microsoft’s affirmative defenses.
The affirmative defenses are moot by reason of
Improved’s concession that Microsoft’s systems and methods do not infringe its patents
under this Court’s claim construction. Because Microsoft does not assert a declaratory
judgment counterclaim as to invalidity, there is no remaining claim pending and no longer
an actual controversy between the parties with regard to the asserted patent. A final
judgment of noninfringement in favor of Microsoft resolves the controversy as to this
patent for all claims asserted or that could have been asserted by Improved. There is no
necessity for a determination of invalidity of the patents to protect Microsoft from
hypothetical future assertions of infringement of these patents against the accused
technology. See Brain Life, LLC v. Elekta, Inc., 746 F.3d 1045, 1056 (Fed. Cir. 2014)
(applying the doctrine announced in Kessler v. Eldred, 206 U.S. 285, 286-87 (1907),
which fills the gap between the claim and issue preclusion doctrines, to bar relitigation
and to allow an adjudged non-infringer to avoid repeated harassment for continuing its
business as usual post-final judgment in a patent action). The finding of noninfringement
resolves this case. By virtue of the doctrines of issue and claim preclusion, as well as the
8
Kessler doctrine, any threat of future enforcement of the infringement claims or litigation
against Microsoft is foreclosed.
The Court rejects Microsoft’s argument that Improved’s concession is somehow
limited and that it is necessary for the Court to make determinations based other claim
limitations.
Improved concedes to a broad proposition—that it cannot, in good
conscience, pursue its infringement claims in light of the Court’s claim construction.
Improved asserted infringement of numerous claims of the ’101 patent and all of the
asserted independent claims of the ’101 patent requires “dialectal standardization” or a
related claim, as construed by the Court. Improved’s concession of noninfringement of
the all of the asserted claims resolves all claims that Improved asserted or could have
asserted against Microsoft. The plaintiff’s broad acknowledgment of noninfringement
leaves nothing for the Court to do but execute the judgment.
Similarly, the Court rejects Improved’s request to somehow limit the judgment as
based only on the currently available documents and the Court’s construction of dialectal
standardization. Such a qualified order specifically reserving the parties’ right to litigate
other matters would not “conclusively resolve” the controversy and would likely not
amount to final judgment. See Princeton Digital, 913 F.3d at 1347. Improved moves for
a summary judgment of noninfringement. It admits that, under the Court’s construction,
Microsoft does not infringe. One either infringes or does not infringe—it is as simple as
that. The Court is aware of no authority that permits it to enter a conditional final
appealable order.
Though Microsoft may wish “to drive a stake through the heart of these patents to
ensure never having to face them again in the future,” the Court declines to rule on
9
affirmative defenses to a claim of patent infringement that has been conclusively resolved
favor or the defendant. See Sonix Tech. Co. v. Yoshida, No. 12CV0380-CAB (DHB),
2015 WL 11199835, at *2 (S.D. Cal. Sept. 14, 2015), judgment entered sub nom. Sonix
Tech. Co. Ltd v. Yoshida, No. 12CV380-CAB-DHB, 2015 WL 11199836 (S.D. Cal. Dec.
30, 2015). Accordingly, the Court will grant the plaintiffs motion for a summary judgment
of noninfringement and enter final judgment in favor of Microsoft on plaintiff’s claims. This
action is without prejudice to Microsoft’s affirmative defenses.
IT IS ORDERED:
1.
Improved Search LLC’s Motion for Summary Judgment of Non-Infringement
of the asserted claims of U.S. Patent No. 6,604,101 (D.I. 85) is granted.
2.
A Judgment in conformity with this Memorandum and Order will issue this
date.
Dated this 28th day of May. 2019.
BY THE COURT:
s/ Joseph F. Bataillon
Senior United States District Judge
10
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?