Lexmark International Inc. v. Universal Imaging Industries, LLC
Filing
286
ORDER granting in part and denying in part 239 Motion for Summary Judgment; granting in part and denying in part 242 Motion for Partial Summary Judgment; granting in part and denying in part 244 Sealed Motion; granting in part and denying in part 247 Sealed Motion. Signed by Judge William F. Jung on 10/12/2023. (LG)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
LEXMARK INTERNATIONAL
INC.,
Plaintiff,
v.
Case No. 8:18-cv-1047-WFJ-AEP
UNIVERSAL IMAGING
INDUSTRIES, LLC,
Defendant.
_________________________________/
ORDER
Before the Court are Plaintiff Lexmark International Inc. (“Lexmark”) and
Defendant Universal Imaging Industries, LLC’s (“UII”) motions for summary
judgment (Dkts. 242/S-247 & 239/S-244). Both parties have provided responses
(Dkts. 260/S-262 & 253/S-256) and replies (Dkts. 271/S-272 & 269). On September
19, 2023, the Court held a hearing on these matters (Dkt. S-280). With the benefit of
full briefing, the Court grants-in-part and denies-in-part both motions.
BACKGROUND
Lexmark develops and sells toner cartridges that utilize patented microchip
technology for printer-to-cartridge authentication purposes. UII develops and sells
devices that allow third parties to make aftermarket toner cartridges which work with
Lexmark printers. Lexmark maintains that UII’s devices infringe its patents.
I.
Factual Background
Lexmark’s business strategy focuses on building an installed base of printers
that will generate demand for Lexmark’s toner cartridges and services. Dkt. 36 at 3.
To protect this demand, Lexmark developed microchip technology that allows
authorized toner cartridges and Lexmark printers to record information and
communicate with one another in novel ways. Id. at 6. The implementation of this
technology is supposed to prevent unauthorized toner cartridges from being used in
Lexmark printers while also improving the general processing capabilities of
Lexmark products. Id.
Lexmark owns a number of patents that cover key features of its microchip
technology. Eight are at issue here: U.S. Patent Nos. 9,839,136 (“the ‘136 Patent”);
9,400,764 (“the ‘764 Patent”); 7,844,786 (“the ‘786 Patent”); 8,966,193 (“the ‘193
Patent”); 8,225,021 (“the ‘021 Patent”); 8,386,657 (“the ‘657 Patent”); 8,850,079
(“the ‘079 Patent”); and 9,176,921 (“the ‘921 Patent).1 The parties agree that these
patents fit into four categories: the “Voltage Clamping Patents” (the ‘136 and ‘764
Patents); the “Punch Out Bit Patents” (the ‘786 and ‘193 Patents); the “First Family
of Address Change Patents” (the ‘021 and ‘657 Patents); and the “Second Family of
Address Change Patents” (the ‘079 and ‘921 Patents).
Lexmark’s asserted patents can be found at Dkts. 36-3 (the ‘021 Patent), 36-4 (the ‘657 Patent),
36-5 (the ‘079 Patent), 36-6 (the ‘921 Patent), 36-8 (the ‘786 Patent), 36-9 (the ‘193 Patent), 3611 (the ‘764 Patent), and 36-12 (the ‘136 Patent).
1
2
The Voltage Clamping Patents describe memory modules, electrical
interfaces,
addressing
schemes,
and
command
protocols
that
facilitate
communication between computing devices and memory modules. See generally
Dkts. 36-11 & 36-12. These patents seek to overcome issues with both the untimely
updating of non-volatile memory modules and their general use-based degradation.
Dkt. 36-11 at 15; Dkt. 36-12 at 18. They teach that these issues can be diminished
by utilizing an intermediate signal wire voltage that allows a controlling computer
system to continue sending data and clock signals to subject memory modules while
also tracking individual memory modules. Dkt. 36-11 at 15–16; Dkt. 36-12 at 18–
19; see Dkt. S-247-6 at 16–18.
The Punch Out Bit Patents describe electrical interfaces, addressing schemes,
and command protocols that allow for single signal communications with multiple
memory modules in computing devices. See generally Dkts. 36-8 & 36-9. These
patents largely seek to overcome the same issues that the Voltage Clamping Patents
are directed towards. Dkt. 36-8 at 13; Dkt. 36-9 at 15. They teach that these issues
can be further diminished by utilizing command protocols to send “punch out”
commands concerning specified bits in one or more non-volatile memory modules.
Dkt. 36-8 at 13–14; Dkt. 36-9 at 15–16. These commands effectively enable each
subject memory module to change a particular bit field in order to record/signify
data such as toner cartridge depletion. Id.
3
The First Family of Address Change Patents describe master/slave
communication systems in which a master device communicates with a slave device
by uniquely addressing each of the slave devices for security-authentication
purposes. See generally Dkts. 36-3 & 36-4. These patents seek to provide more
security in bus systems shared by master and slave devices (such as printers and
toner cartridges) by periodically changing a slave device’s unique address through
master command without having the slave device communicate its new address back
to the master. Dkt. 36-3 at 11; Dkt. 36-4 at 11. They teach that these goals can be
achieved through a pseudorandom address-changing method in which, by master
command, a slave changes its address according to a secret algorithm. Dkt. 36-3 at
11–12; Dkt. 36-4 at 11–12. Knowing the algorithm itself, the master can then
generate the same changed address without the slave translating it back across the
shared communication bus. Id. This purportedly prevents imposter slave devices
from intercepting or detecting an authentic slave device’s new address.
The Second Family of Address Change Patents describe methods of setting a
slave device’s address that include determining a characterization value associated
with a consumable, calculating number of address change operations based upon the
characterization value, and setting a last address generated from the number of
address change operations as the new address of the slave device, wherein the
characterization value is determined based upon a usage of the consumable. See
4
generally Dkt. 36-5 & 36-6. In other words, these patents describe a more variable
and dynamic address-changing method that is meant to alleviate vulnerabilities
inherent in the security techniques disclosed by the First Family of Address Change
Patents (i.e., the possibility of an imposter device that can mimic basic
pseudorandom address-changing sequences). Dkt. 36-5 at 10; Dkt. 36-6 at 9. The
Second Family of Address Change patents teach that these vulnerabilities can be
diminished by a command protocol in which a master device transmits a number of
address-change requests, and a slave device undertakes the same number of addresschange operations. Dkt. 36-5 at 10–11; Dkt. 36-6 at 9–10. Once the slave
acknowledges completion of all requested operations, the final address generated by
the slave is set as its new address. Id. This is supposed to make it more difficult for
a person to produce imposter devices that can predict correct addresses.
Notwithstanding the aforementioned authentication technology—which
Lexmark claims to have implemented in its products—UII has created devices that
allow unauthorized toner cartridges to work in Lexmark printers. These devices are
(or were) sold by UII2 to third party cartridge remanufacturers and include UII’s
E260 Family, T650 Family, and Color Printer Devices, (collectively, “the UII
Pensive Devices”) as well as UII’s MS/MX 310 Family, MS/MX 710/810 Family,
and BSD M/XM Family (collectively, “the UII Arwen Devices”). Dkt. 36 at 10–11.
2
See generally Dkt. 36-14 (screenshots from www.uiiindustries.com taken on April 5, 2018).
5
Each UII device generally utilizes two integrated circuit chips to achieve
communication and processing goals similar to those discussed above. Id. They
nevertheless correspond to different Lexmark products3 and vary in functionality by
group (i.e., UII Pensive Devices versus UII Arwen Devices).
Lexmark claims that UII was able to produce these devices only by
disassembling and reverse engineering the microchips in Lexmark’s toner cartridges.
Id. at 17–19. Lexmark seeks to prove that, in so doing, UII created devices that
infringe multiple claims contained within the patents asserted above.
II.
Procedural Background
On April 30, 2018, Lexmark brought the instant patent infringement suit
against UII. Dkt. 1. After multiple years of motion practice, the following issues
remain: (I) whether the UII Pensive Devices infringe claims 1 and 9 of the ‘136
Patent; (II) whether the UII Pensive Devices infringe claims 15 and 24 of the ‘764
Patent; (III) whether the UII Pensive Devices infringe claims 2 and 6 of the ‘786
Patent; (IV) whether the UII Pensive Devices infringe claims 10 and 33 of the ‘193
Patent; (V) whether the UII Arwen Devices infringe claims 1 and 3 of the ‘021
According to Lexmark, and UII’s website, UII’s devices correspond to Lexmark’s products in
the following way: the E260 Family corresponds to Lexmark’s E26cx/36x/46x Family; the T650
Family corresponds to Lexmark’s T65x Family; the Color Printer Devices correspond to
Lexmark’s C54x Family; the MS/MX 310 Family corresponds to Lexmark’s MS31x/41x/51x/61x
Family; the MS/MX 710/810 Family corresponds to Lexmark’s MS71x/81x Family; and the BSD
M/XM Family corresponds to certain models in Lexmark’s MS31x/41x/61x and MS71x/81x
Families. Dkt. 36 at 11; Dkt. 36-14 at 4–5.
3
6
Patent; (VI) whether the UII Arwen Devices infringe claims 2 and 9 of the ‘657
Patent; (VII) whether the UII Arwen Devices infringe claims 7 and 14 of the ‘079
Patent; (VIII) whether the UII Arwen Devices infringe claims 1 and 15 of the ‘921
Patent; (IX) whether Lexmark’s products practice at least one claim of each of the
asserted patents; and (X) whether any claims at issue in the asserted patents are
invalid.
On August 7, 2023, the parties submitted opposing motions for summary
judgment. Dkts. 239/S-244 & 242/S-247. Lexmark requests: (I) a finding of validity
as to all asserted claims of the Voltage Clamping Patents; (II) a finding of validity
as to claim 33 of the ‘193 Patent; (III) a finding of infringement concerning the UII
Arwen Devices’ alleged infringement of claim 1 of the ‘021 Patent and claim 7 of
the ‘079 Patent; (IV) a finding of infringement concerning the UII Pensive Devices’
alleged infringement of claim 15 of the ‘764 Patent; and (V) a finding that Lexmark’s
products practice at least one claim of each of the patents at issue. See generally Dkt.
S-247. UII requests: (I) a finding of non-infringement as to each asserted patent; (II)
a finding of invalidity as to the Punch Out Bit Patents; (III) a finding that Lexmark
has failed to establish lost profits damages; and (IV) a finding precluding Lexmark
from recovering any pre-suit damages. See generally Dkt. S-244. The Court now
turns to address these issues.
7
LEGAL STANDARD
Under Federal Rule of Civil Procedure 56, “[t]he 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); see
also Mize v. Jefferson City Bd. of Educ., 93 F.3d 739, 742 (11th Cir. 1996). An issue
of fact is “genuine” only if “a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A
fact is “material” if the fact could affect the outcome of the lawsuit under the
governing law. Id.
The moving party bears the initial burden of identifying those portions of the
record demonstrating the lack of a genuinely disputed issue of material fact. Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986). If met, the burden shifts to the nonmoving party to “come forward with specific facts showing that there is a genuine
issue for trial.” Shaw v. City of Selma, 884 F.3d 1093, 1098 (11th Cir. 2018) (citation
omitted). To satisfy its burden, the non-moving party “must do more than simply
show that there is some metaphysical doubt as to the material facts.” Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The non-moving
party must go beyond the pleadings and “identify affirmative evidence” that creates
a genuine factual dispute. Crawford-El v. Britton, 523 U.S. 574, 600 (1998).
8
In determining whether a genuine dispute of material fact exists, the Court
must view the evidence and draw all factual inferences therefrom in a light most
favorable to the non-moving party. Skop v. City of Atlanta, 485 F.3d 1130, 1136
(11th Cir. 2007). In addition, the Court must resolve any reasonable doubts in the
non-moving party’s favor. Id. Summary judgment should only be granted “[w]here
the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party[.]” Matsushita, 475 U.S. at 587.
DISCUSSION
The instant dispute revolves around invalidity, infringement, damages, and
whether Lexmark’s products practice at least one claim of each of the patents
asserted above. The Court will address each below.
I.
Non-Invalidity
Patents are presumed valid under 35 U.S.C. § 282. To overcome this
presumption on summary judgment, UII must establish invalidity by clear and
convincing evidence. See Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1326 (Fed.
Cir. 2004). To retain this presumption, Lexmark need only demonstrate that UII
failed to meet its evidentiary burden of establishing invalidity. See Eli Lilly & Co. v.
Barr Lab'ys, Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (finding that “a moving party
seeking to have a patent held not invalid at summary judgment must show that the
9
nonmoving party . . . failed to produce clear and convincing evidence on an essential
element of a defense upon which a reasonable jury could invalidate the patent”).
Here, Lexmark has adequately demonstrated that UII failed to present clear
and convincing evidence concerning the invalidity of Claims 15 and 24 of the ‘764
Patent, Claims 1 and 9 of the ‘136 Patent, and Claim 33 of the ‘193 Patent. Indeed,
beyond the fact that “UII chose not to contest the validity of these specific claims”
on summary judgment, Dkt. S-256 at 13, UII’s technical expert, Joseph
McAlexander, admitted that he has no invalidity opinions about them:
Lexmark’s counsel: Okay, Mr. McAlexander, I reviewed your
invalidity reports. And there are two patents that we’ve been discussing
at length here regarding voltage clamping and voltage limiting [the ‘764
and ‘136 Patents (the Voltage Clamping Patents)]. And also Claim 33
of the ‘193 Patent which includes a voltage limiting limitation. I did not
see any invalidity arguments that you presented for any of those -- those
claims. Do you have any invalidity arguments with respect to Claim 33
of the ‘193 Patent or the other two voltage clamping patents?
Mr. McAlexander: The -- of the eight patents, my invalidity positions
are addressing six of those -- or eight of those -- excuse me -- six of
those patents. I did not present any addition -- any invalidity positions
for the other two. That answers the first part of your question. And with
regard to Claim 33 on the ‘193, I believe I did not offer any invalidity
position on that as well.
Dkt. 247-5 at 23–24. Summary judgment of non-invalidity is therefore appropriate
as to these claims.4 See Biotec Biologische Naturverpackungen GmbH & Co. KG v.
There appears to be some dispute concerning Lexmark’s entitlement to summary judgment on
this issue due to UII’s decision not to affirmatively challenge validity at the summary judgment
stage. See Dkt. S-256 at 13; Dkt. S-272 at 12. The Court notes that UII challenged the validity of
4
10
Biocorp, Inc., 249 F.3d 1341, 1352–55 (Fed. Cir. 2001) (upholding summary
judgment finding of non-invalidity where the moving party “presented deposition
testimony of the defendants’ primary witness wherein they admitted knowing no
facts that implied the invalidity of the patents”).
II.
Invalidity
UII challenges the validity of: (1) Claims 2 and 6 of the ‘786 Patent, and (2)
Claim 10 of the ‘193 Patent. Specifically, UII maintains that prior art both anticipates
and renders obvious each of these claims. Dkt. S-244 at 19–45.
“The first step in any invalidity analysis is claim construction[.]” SIBIA
Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1355 (Fed. Cir. 2000)
(citation omitted). “Claim scope or construction is a question of law and the
existence of a dispute as to that legal issue does not preclude summary judgment.”
Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 (Fed. Cir. 1987) (citation
omitted). If “a claim is in dispute, however, it is necessary to look at certain extrinsic
evidence, including the specification, the prosecution history, and other claims.” Id.
Where that extrinsic evidence includes “expert testimony needed to explain a
disputed term . . . an underlying factual question may arise which makes summary
the ‘764, ‘136, and ‘193 Patents in its affirmative defenses. Dkt. 67 at 61–62. This makes noninvalidity an appropriate subject of summary judgment. See Fed. R. Civ. P. 56(a) (“A party may
move for summary judgment, identifying each claim or defense—or the part of each claim or
defense—on which summary judgment is sought.”).
11
judgment improper.” Howes v. Med. Components, Inc., 814 F.2d 638, 643 (Fed. Cir.
1987) (cleaned up) (citation omitted).
The Punch Out Bit Field Patent claims challenged by UII read as follows:
1. A method of updating memory modules, comprising: receiving, at
one or more memory modules, a command transmitted from a
processing device, wherein the command comprises a) an increment
counter command operable to instruct the one or more memory
modules to increment a counter within the one or more memory
modules and b) a punch out bit field command operable to instruct the
one or more memory modules to punch out a specified bit field within
the one or more memory modules; and processing the command at the
one or more memory modules [Claim 1, ‘786].
2. The method of claim 1, wherein processing the command comprises
incrementing, in each of the one or more memory modules, at least one
counter [Claim 2 of ‘786].
6. The method of claim 1, wherein receiving further comprises
receiving, at the one or more memory modules, the command from the
processing device transmitted to the one or more memory modules via
an asynchronous data channel [Claim 6, ‘786].
*****
10. A memory module, comprising: a plurality of memory bits, wherein
the memory module receives at least one command indicative of usage
of toner or ink in a consumable item for an imaging device and instructs
the memory module to punch out at least one bit in at least one specified
bit field within the memory module indicative of the usage of toner or
ink, and processes the at least one command [Claim 10, ‘193].
Dkt. 36-8 at 20 (the ‘786 Patent); Dkt. 36-9 at 23 (the ‘193 Patent).
Thus far, the Court has construed the following limitations in the following
ways:
12
Claim Term
Claim Term Construction
“processing the command at the one or “executing instructions to perform the
more memory modules”
command described in this claim at the
one or more memory modules”
“punch out bit field command”
“command to change at least one bit, in
a specific bit field in the one or more
non-volatile memory modules”
“punch out a specified bit field”
“changing a specified bit or specified
group of bits in a non-volatile memory
module”
“punch out at least one bit”
“change at least one bit, in the nonvolatile memory module”
Dkt. 117 at 10, 23. The Court will address additional claim construction issues, such
as scope, in the specific contexts of anticipation and obviousness.
i.
Anticipation
35 U.S.C. § 102 provides that a claim is anticipated only “‘if each and every
limitation is found either expressly or inherently in a single prior art reference.’”
IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1380 (Fed. Cir. 2005)
(citation omitted). Ultimately, this is a question of fact. Id. (citation omitted).
Summary judgment is therefore inappropriate unless no reasonable jury applying the
clear and convincing evidence standard could find that prior art fails to anticipate all
of the subject claim’s limitations. Telemac Cellular Corp. v. Topp Telecom, Inc.,
247 F.3d 1316, 1327 (Fed. Cir. 2001).
UII argues that three sources of prior art anticipate the subject claims: (1)
certain Inter Solution Ventures, Ltd. coding (“the ISV Code”); (2) certain Static
13
Control Components, Inc. coding (“the SCC Code”); and (3) U.S. Patent No. 6,984,
012 (“Asauchi”). Dkt. S-244 at 19–34. As a preliminary matter, Lexmark responds
that the ISV Code cannot qualify as prior art. The Court disagrees.
For patents having a filing date prior to March 16, 2013, prior art can include
disclosures of the claimed invention in patents or publications anywhere in the
world, as well as public use or sale of the claimed invention the United States—as
long as the disclosure, sale, or use occurred more than one year before the subject
patent application was domestically filed. See U.S. Water Servs., Inc. v. Novozymes
A/S, 843 F.3d 1345, 1350 n.5 (Fed. Cir. 2016); 35 U.S.C. § 102(b). To prevail on the
“on-sale bar[,]” a party must show that the invention in question “was both (1) the
subject of a commercial offer for sale and (2) ready for patenting.” Sunoco Partners
Mktg. & Terminals L.P. v. U.S. Venture, Inc., 32 F.4th 1161, 1168 (Fed. Cir. 2022)
(citations and internal quotations omitted). “Application of the on-sale bar . . . is
ultimately a question of law.” Id. at 1169 (citations and internal quotations omitted).
Given this, there is no question that the ISV Code qualifies as prior art. The
‘786 Patent claims priority back to June 16, 2005, Dkt. 36-8 at 2, and the ‘193 Patent
claims priority back to April 19, 2006, Dkt. 36-9 at 2. Accordingly, the earliest
critical date for either patent is June 16, 2004. UII has presented unrebutted evidence
that the ISV Code was included in ISV chips that were advertised and sold prior to
this date. Dkt. 241-9 at 4–14. Whether the purchaser was ignorant of the ISV chips’
14
internal coding is irrelevant for determining whether this qualified as a sale of the
invention itself. See Abbott Lab'ys v. Geneva Pharms., Inc., 182 F.3d 1315, 1318
(Fed. Cir. 1999) (agreeing with defendants that “it is irrelevant that the parties to the
sales did not know [the precise subject matter with which they were dealing]”).
Lexmark, moreover, cannot plausibly contest that the ISV Code was ready for
patenting at this time. It was reduced to practice prior to sale. See Pfaff v. Wells
Elecs., Inc., 525 U.S. 55, 61 (1998) (“It is well settled than an invention may be
patented [even] before it is reduced to practice.”).
Anticipating these issues, Lexmark argues that the on-sale provision of section
102(b) precludes only patentees from commercializing their own inventions prior to
patenting them. Dkt. S-262 at 17. This, however, is a misunderstanding of Federal
Circuit caselaw. Although preventing patentees from unduly extending their
monopoly over a later patented subject-matter is a strong policy behind the on-sale
bar, it is not section 102(b)’s only goal. What is more, the Federal Circuit has made
clear that “the statutory on-sale bar is not subject to exceptions for sales made by
third parties.” Abbott, 182 F.3d at 1318 (citation omitted). The fact that ISV sales
“were not made by [Lexmark] is therefore irrelevant.” Id. The ISV Code is prior art
that UII can rely on for invalidity purposes.
Notwithstanding, the Court finds that a material issue of fact precludes
summary judgment regarding the ultimate issue of anticipation. On one hand, Mr.
15
McAlexander presents extensive opinions regarding why the ISV Code, the SCC
Code, and Asauchi each disclose all of the limitations of Claims 2 and 6 of the ‘786
Patent or Claim 10 of the ‘193 Patent. Dkt. 241-10 at 351–67, 415–25, 437–50, 481–
86. On the other hand, Lexmark’s technical expert, Dr. Martin Walker, presents
similarly extensive rebuttal opinions to the contrary. S-Dkt. 262-10 at 114–21, 127–
32, 143–45. A reasonable jury could find for either party based on these reports and
the material facts contested therein. It follows that a “classic ‘battle of the experts’”
exists “which renders summary judgment improper.” Edwards Sys. Tech., Inc. v.
Digital Control Sys., Inc., 99 F. App'x 911, 921 (Fed. Cir. 2004); see also Crown
Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1384
(Fed. Cir. 2011) (finding that, “[w]here there is a material dispute as to the credibility
and weight that should be afforded to conflicting expert reports, summary judgment
is usually inappropriate”); TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343 (Fed.
Cir. 2010) (reversing summary judgment where genuine issues of material fact
surrounded anticipation). UII may present their anticipation case at trial. It is up to
the jury to weigh materially disputed expert testimony on this subject, not the Court.
See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220
(Fed. Cir. 2003) (“The question of what a reference teaches and whether it describes
every element of a claim is a question for the finder of fact.”).
16
ii.
Obviousness
35 U.S.C. § 103 provides that a claim is invalid due to obviousness where:
the differences between the claimed invention and the prior art are such
that the claimed invention as a whole would have been obvious before
the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.
“Whether the claimed subject matter would have been obvious to an ordinarily
skilled artisan at the time of the invention ‘is a question of law based on underlying
questions of fact.’” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1353 (Fed. Cir.
2013) (citation omitted). These facts include: “(1) the scope and content of the prior
art; (2) differences between the prior art and the claims at issue; (3) the level of
ordinary skill in the pertinent art; and (4) relevant objective considerations, including
commercial success, long felt but unsolved needs, and failure of others[.]” Id.
(internal quotations and citations omitted) (cleaned up). Obviousness must be proved
by clear and convincing evidence. See Procter & Gamble Co. v. Teva Pharms. USA,
Inc., 566 F.3d 989, 993–94 (Fed. Cir. 2009).
Unlike anticipation, “[o]bviousness can be proven by combining existing
prior art references[.]” Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364
(Fed. Cir. 2008). This means that it will sometimes “be necessary for a court to look
to interrelated teachings of multiple patents; the effects of demands known to [the
relevant field]; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an apparent
17
reason to combine” known prior art elements in the way claimed by the subject
patent. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “The combination
of familiar elements according to known methods is likely to be obvious when it
does no more than yield predictable results.” Id. at 416.
Here, UII argues that the combination of U.S. Patent No. 5,995,744
(“Applegate”) and the Dallas Semiconductor DS1982 Specification Sheet
(“DS1982”) render the ‘786 and ‘193 Patents obvious. Dkt. S-244 at 34–45.
Lexmark responds that underlying issues of material fact preclude summary
judgment on these issues. Dkt. S-262 at 19–21.
The Court begins its analysis by noting that Applegate and DS1982 qualify as
prior art that a skilled artisan would have had reason to combine. Applegate, a
“method and apparatus for storing data in a non-volatile memory circuit mounted on
a printer’s process cartridge,” was issued on November 30, 1999. Dkt. 241-5 at 2.
DS1982, a “secure microchip” specification sheet, is published in Appendix A of
U.S. Patent No. 5,760,385 (“Curry”), which was itself issued on June 2, 1998. Dkt.
241-6 at 2, 12–33. These prior art references consequently predate the earliest critical
date for the subject patents by years. See Dkt. 36-8 at 2; Dkt. 36-9 at 2. Further,
Applegate expressly references DS1982 on multiple occasions and states that its
preferred EPROM “comprises a [DS1982 integrated circuit memory device].” Dkt.
241-5 at 21. Such a reference provides express motivation to combine Applegate and
18
DS1982. See Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d
1369, 1374–75 (Fed. Cir. 2013) (finding motivation to combine two pieces of prior
art where one expressly referenced the other).
With this much established, a comparison of Applegate/DS1982 and the
Punch Out Bit Field Patents is appropriate.
a. The ‘786 Patent and Applegate/DS1982
Both Claim 1 of the ‘786 Patent and Applegate/DS1982 disclose a method of
updating non-volatile memory modules. Dkt. 36-8 at 20; Dkt. 241-5 at 30; Dkt. 24110 at 368–375. The first issue to consider is whether, like Claim 1,
Applegate/DS1982 disclose a method that involves “receiving, at one or more
memory modules, a command transmitted from a processing device wherein the
command comprises: a) an increment counter command operable to instruct the one
or more memory modules to increment a counter within the one or more memory
modules[.]” Dkt. 36-8 at 20. While the parties agree that DS1982 does disclose an
operation for updating a value in non-volatile memory, they disagree about whether
this operation specifically involves an increment counter command from a
processing device. Dkt. S-262-10 at 133. Dr. Walker posits, and UII does not
dispute, that “[t]here are multiple ways that a memory value can be updated, most
of which involve the processor writing an updated value to the memory module.” Id.
at 132. Dr. Walker consequently maintains that “[s]ending an updated value to the
19
memory module is different from sending an increment counter command” and there
is “no reason to infer that” DS1982 discloses an increment counter command where
Applegate/DS1982 are “silent about how the count is incremented[.]” Id. at 133
(emphasis in original).
The Court largely agrees with Dr. Walker. Mr. McAlexander’s strongest
source of evidence concerning Applegate/DS1982’s disclosure of an increment
counter command comes from the DS1982 demonstratives included below:
20
See Dkt. 241-10 at 381–86. These demonstratives nevertheless fail to show how the
count is incremented, and they certainly show no specific increment counter
command from a processing device. More importantly, though, DS1982 itself
provides that DS1982 chips “will automatically increment [their] address counter to
select the next byte in the EPROM Status data field” when certain “bit position”
conditions are met. Dkt. 241-6 at 23. This reasonably suggests that DS1982
incrementation is not a product of specific increment counter commands transmitted
from processing devices interacting with DS1982 chips.
Mr. McAlexander attempts to close this gap by pointing to Applegate, but the
same issue arises. Consider the following Applegate background reference upon
which Mr. McAlexander relies:
A concept found in some conventional printer/copiers is the ability to
limit the service life of a process cartridge based on information being
stored in the process cartridge. An example of this is U.S. Pat. No.
5,276,461 (owned by Tokyo Electric) which discloses a laser printer
having a replaceable photosensitive cartridge and also having a nonvolatile memory mounted to a card base plate. The non-volatile
memory comprises an EEPROM integrated circuit, which has a new
count value incremented every time the printer produces a new printed
sheet of print media.
Dkt. 241-5 at 16. Once again, this does not suggest that any new count value is being
reached through a specific increment counter command sent from a processing
device that is then processed by the memory module. It is just as likely that one
skilled in the art would understand this to be a reference to a processor writing an
21
updated value to a memory module. The combination of Applegate and DS1982 fail
to clearly disclose a method of updating non-volatile memory modules that includes
increment counter commands.
The second disputed issue to consider is whether, like Claim 1,
Applegate/DS1982 disclose a method that involves a command comprising both a)
an increment counter command and “b) a punch out bit field command [(i.e., a
command to change at least one bit, in a specific bit field in the one or more nonvolatile memory modules)] operable to instruct the one or more memory modules to
punch out a specified bit field within the one or more memory modules[.]” Dkt. 368 at 20. Based on the foregoing, it is clear that this is not the case. Applegate/DS1982
do not disclose an increment counter command—let alone a command frame that
includes both a specific increment counter command and a punch out bit field
command. Mr. McAlexander’s assertions to the contrary strike the court as ipse dixit.
Moreover, even if it were true that “each [DS1982] memory module [disclosed by
Applegate] includes at least a command to increment a counter and instruct the
memory module to punch out at least one bit[,]” Mr. McAlexander does not
adequately explain where Applegate/DS1982 disclose such a multi-pronged
command that comes from a processing device such as a printer. See Dkt. 241-10 at
376. The prior art cited by UII can be reasonably interpreted as disclosing a method
22
of updating non-volatile memory modules that is different from that disclosed by the
‘786 Patent. Material issues of fact exist.
That said, UII has failed to meet its burden of showing by clear and convincing
evidence that the ‘786 Patent was obvious. “Obviousness requires more than a mere
showing that the prior art includes separate references covering each separate
limitation in a claim under examination.” Unigene Lab'ys, Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). It “requires the additional
showing that a person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course of research and
development to yield the claimed invention.” Id. Here, UII has shown a motivation
to combine Applegate and DS1982, but it has not shown that this prior art covers the
limitations of the ‘786 Patent or that an artisan would have reached the novelties of
the ‘786 Patent through a normal course of research and development. The “primary
object of” Applegate, after all, is “to provide an image forming apparatus such as a
printer that is capable of irreversibly storing information on a memory device that is
attached to a process cartridge.” Dkt. 241-5 at 17. In such a device, “the EPROM
memory device [DS1982] acts as a ‘write once read often’ memory device, because
the EPROM cannot be erased by ultraviolet light, since the window through which
this normally occurs is permanently sealed[.]” Id. at 18. The ‘786 Patent discloses
no such apparatus and does not envision treating non-volatile memory devices in
23
this specific way. It therefore makes little sense to suppose, without more, that an
artisan on the path set forth by Applegate/DS1982 would ever arrive at the method
claimed by the ‘786 Patent. The Court denies UII summary judgment on this issue.
b. The ‘193 Patent and Applegate/DS1982
The parties’ obviousness dispute as to the ‘193 Patent revolves around Claim
10, an independent claim which, as noted above, discloses:
A memory module, comprising: a plurality of memory bits, wherein the
memory module receives at least one command indicative of usage of
toner or ink in a consumable item for an imaging device and instructs
the memory module to punch out at least one bit in at least one specified
bit field within the memory module indicative of the usage of toner or
ink, and processes the at least one command.
Dkt. 36-9 at 23. At this point, there is no question that Applegate/DS192 disclose a
non-volatile memory module that is comprised of a plurality of bits. Applegate
expressly discloses DS1982 as its preferred EPROM embodiment, and DS1982
chips provide at least 1024 bits of data memory. Dkt. 241-5 at 21; Dkt. 241-6 at 12.
Instead, the issue is whether this prior art discloses a memory module that also
“receives at least one command indicative of usage of toner or ink in a consumable
item for an imaging device and instructs the memory module to punch out at least
one bit in at least one specified bit field within the memory module indicative of the
usage of toner or ink.” Dkt. 36-9 at 23.
The Court finds that it does not. In the context of literal infringement, UII
relies on the notion that there is a material difference between (a) changing specific
24
bits in a non-volatile memory bit field in response to a command and (b) copying
and storing information (bytes), without any changes, from volatile memory into
non-volatile memory. Dkt. S-244 at 13. Because the subject limitation requires the
disclosed non-volatile memory module, through specific command, to “change at
least one bit, [in at least one specified bit field,] in the [disclosed] non-volatile
memory module,” see Dkt. 117 at 10, 23, the Court agrees that the former would
satisfy the subject limitation, while the latter would not. The later method is simply
too generalized. As Dr. Walker himself testified, it involves no reception of a
command to punch out a specific bit, in a specific bit field, in non-volatile memory.
See Dkt. S-246-3 at 152–53. The problem for UII, then, is that DS1982 only
discloses this later method. Indeed, its own demonstrative shows that, in response to
a Write Memory OFh command, “DS1982 COPIES SCRATCHPAD [(volatile
memory)] TO DATA EPROM [(non-volatile memory)]” before “DS1982
INCREMENTS ADDRESS COUNTER[.]”
25
Dkt. 241-6 at 20.
Of course, the Court recognizes that UII’s infringement construction is partly
a product of Dr. Walker’s alleged flip-flopping on the issue of whether the
distinction addressed above is material. But UII cannot have it both ways any more
than Dr. Walker can. See CommScope Techs. LLC v. Dali Wireless Inc., 10 F.4th
1289, 1299 (Fed. Cir. 2021) (finding that a party cannot simultaneously rely on
inconsistent claim requirements for invalidity and infringement). And, either way,
as will be further explained in the context of infringement, this is the scopeconstruction most compatible with the common limitations found in other claims of
the Punch Out Bit Field Patents. Receiving a command to punch “out a specified bit
field” results in directly changing a specified bit or specified group of bits in a nonvolatile memory module. Applegate/DS1982 do not disclose a non-volatile memory
module that does anything more than copy and store entire bytes (the bits of which
are apparently unspecified by command) from volatile memory into an unspecified
bit field. This means that they do not cover the subject limitation.
The Court consequently finds that UII has failed to meet its burden of showing
by clear and convincing evidence that the ‘193 Patent was obvious. UII has not
clearly shown that Applegate/DS1982 covers the limitations of Claim 10. Nor has it
convincingly shown that an artisan would have reached the novelties of the ‘193
Patent through a normal course of research and development. See Unigene, 655 F.3d
26
at 1360. The memory module disclosed by the ‘193 Patent arguably takes a novel
step in processing highly specified commands indicative of usage of toner or ink in
a consumable item for printers that does not naturally follow from
Applegate/DS1982. UII is denied summary judgment on this issue.
III.
Infringement
Like invalidity, a “determination as to infringement involves a two-step
analysis.” WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1346 (Fed. Cir.
1999). “First, the claims are construed, a question of law in which the scope of the
asserted claims is defined. Second, the claims, as construed, are compared to the
accused device. This is a question of fact.” Advanced Cardiovascular Sys., Inc. v.
Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001) (citation omitted). To
ultimately prove infringement, the patentee must show by a preponderance of the
evidence that the accused device meets each claim limitation either literally or under
the doctrine of equivalents. Id. Summary judgment is appropriate where “it is shown
that the infringement issue can be reasonably decided only in favor of the movant,
when all reasonable factual inferences are drawn in favor of the non-movant.” Voice
Techs. Grp., Inc. v. VMC Sys., Inc., 164 F.3d 605, 612 (Fed. Cir. 1999).
Here, both parties request summary judgment on various infringement issues.
Lexmark requests findings that: (1) the UII Arwen Devices literally infringe Claim
1 of the ‘021 Patent as well as Claim 7 of the ‘079 Patent, and (2) the UII Pensive
27
Devices literally infringe Claim 15 of the ‘764 Patent. Dkt. S-247 at 6–7. UII
requests findings that its devices do not infringe any of the claims asserted by
Lexmark. Dkt. S-244 at 7, 13, 15.
i.
The Address Change Patents (‘021, ‘’657, ‘079, ‘921)
Because the parties largely agree on how the UII Arwen Devices operate,
literal infringement of the Address Change Patents turns on claim construction. See
Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996)
(finding that where “the parties do not dispute any relevant facts regarding the
accused product but disagree over which of two possible meanings [of a claim] is
the proper one, the question of literal infringement collapses to one of claim
construction”).
The Court begins by noting that at least one of the following limitations is
found within each asserted claim of the Address Change Patents:
Claim Term
Claim Term Construction
“address generator”
“software or electronic circuitry
implementing an algorithm to generate
address values by performing the
specified algorithm”
“address generator generating plural “software or electronic circuitry capable
addresses”
of implementing an algorithm to
generate more than one address value by
performing the specified algorithm”
“dynamic address generator”
“software or electronic circuitry capable
of implementing an algorithm that
generates a new component address”
28
“dynamic address generator generates a “software or electronic circuitry capable
new component address”
of implementing an algorithm that
generates a new component address”
“pseudorandom address generator”
not defined during claim construction
Dkt. 117 at 14, 18–19.5 It follows that, for the UII Arwen Devices to infringe the
Address Change Patents, they must, at the very least, contain an “address generator.”
See Advanced Cardiovascular Sys., Inc., 261 F.3d at 1336. The question is what
qualifies as “software or electronic circuity implementing an algorithm to generate
address values by performing the specified algorithm.”
Lexmark argues that software or electronic circuitry qualifies as such as long
as it takes multiple steps to provide an address. See Dkt. 247 at 31–32. Under this
view, providing an address by implementing a finite sequence of steps to retrieve a
value from a preprogramed table of address values would qualify as performing an
algorithm that generates address values. Id. UII, on the other hand, maintains that it
is not enough to merely provide a predetermined address through implementation of
a series of steps. Dkt. S-244 at 8–9. The steps must themselves generate the address
value that is ultimately provided. Id. In other words, UII argues that the subject
“[A]ddress generator” is found in Claim 1 of the ‘021 Patent. Dkt. 36-3 at 16. “[P]seudorandom
address generator” is found in Claim 3 of the ‘021 Patent through Claim 3’s dependence on Claim
2, which is itself dependent on Claim 1. Id. “[A]ddress generator” is also found in Claims 2 and 9
of the ‘657 Patent through their dependence on Claim 1. Dkt. 36-4 at 16. “[D]ynamic address
generator” is found in Claim 7 of the ‘079 Patent as well as Claim 14 through its dependence on
Claim 12. Dkt. 36-5 at 14. Finally, “dynamic address generator” is also found in Claims 1 and 15
of the ‘921 Patent. Dkt. 36-6 at 13.
5
29
algorithm within the software or electronic circuitry must do the address generating
work in order for said software or circuitry to qualify as an “address generator.” Id.
The Court agrees with UII. It is axiomatic that an address generator generates
addresses. And, contrary to Lexmark’s suggestions, “to generate” is not “to
provide.” To provide is “to supply or make available.” Provide, Merriam-Webster,
https://www.merriam-webster.com/dictionary/provide (last visited Oct. 11, 2023).
To generate is “to bring into existence: such as, to create by means of a defined
process.”
Generate,
Merriam-Webster,
https://www.merriam-
webster.com/dictionary/generate (last visited Oct. 11, 2023). It is therefore clear that
the “software or electronic circuitry implementing an algorithm to generate address
values by performing the specified algorithm” must perform an algorithm that
actually brings address values into existence (in some form) in order to qualify as an
“address generator.” It must do the work of generation, not just providing. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996) (finding that “[e]xtrinsic evidence is to be used for
the court’s understanding of the patent, not for the purpose of varying or
contradicting the terms of the claims”).
Lexmark offers a number of reasons to reject this approach. First, Lexmark
argues, it “wrongly excludes the preferred embodiments disclosed in the ‘021 Patent
where the address generator ‘provides’ a new address.” Dkt. S-272 at 7. While the
30
Court recognizes that it is “rarely, if ever, correct” to interpret a claim so as to
exclude preferred embodiments, Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1583 (Fed. Cir. 1996), that is not what is happening here. An address generator
can both generate and provide an address. The two are not mutually exclusive. For
instance, consider the following portions of the ‘021 Patent cited by Lexmark:
2:29-37: In one or more disclosed embodiments, each slave device
incorporates therein a pseudorandom address generator which can be
incremented in response to a change address command from the master
device. When an address change is requested by the master, the slave
receives the request and increments the pseudorandom address
generator to provide a new slave address. The master device, running
the same address change algorithm, also increments the address in the
algorithm and thus predicts the new slave address.
6:5-13: When the slave device, for example slave device 14a, receives
the command and the old slave address matches the address currently
provided by the dynamic address generator 32a, then the command is
processed by the I2C circuit 26a. When decoded, the address change
command causes the dynamic address generator 32a, to be
incremented, whereupon a new random address is generated and selfassigned to the slave device 14a.
7:20-25: FIG. 4 illustrates an embodiment of a slave address generator
according to another embodiment of the invention. Here, the
pseudorandom address generator 50 described above provides the least
significant bits of the slave device address, and a fixed address circuit
62 provides a fixed address that is unique to each slave device 14.
8:2-6: If the address received on the shared bus 16 matches the 10-bit
address provided by the slave address generator 64, then the particular
slave device 14 can respond according to the command.
Dkt. 36-3 at 11–14. To begin with, none of these references is excluded by the
Court’s construction. The above embodiments, moreover, do not suggest that
31
address generation is mere address provision. They instead suggest that where an
address generator is “incremented . . . a new random address is generated and selfassigned.” And because a new address is never actually communicated or provided
back to a master device under the Address Change Patents, this in turn suggests that
address generators are envisioned to both generate and provide themselves with new
addresses. Lexmark cannot plausibly claim otherwise simply by citing passages that
contain the word “provide.”
Lexmark subsequently argues that UII’s current construction, which the Court
has now largely adopted, is based on a previous construction that the Court
considered and rejected. Dkt. S-272 at 7. This is somewhat true, but not surprising
or problematic. Since the original claim construction in this case, the parties have
been fighting about whether “generate” in “software or electronic circuitry
implementing an algorithm to generate address values by performing the specified
algorithm” should be understood as “provide” or “create.” Dkt. 117 at 14–21
(emphasis added). The Court rejected both terms and stuck with “generate” because
it was most true to the subject claim language; indeed, “generate” is found in a
plethora of claims and references. In so doing, however, the Court implicitly
recognized that “create” is a synonym of “generate.” Id. at 16. Thus, in adopting
“generate,” the Court did not wholly depart from UII’s original construction—it
adopted the construction originally offered by UII and replaced one word therein
32
with a closely related synonym. It would therefore make little sense for UII to
significantly abandon its original construction. Lexmark’s suggestion that UII is
attempting to relitigate claim construction falls flat.
Moving forward, the Court now turns to whether the UII Arwen Devices
utilize an “address generator” as that term has been constructed above. The parties
agree that source code in the UII Arwen Devices contains “a precomputed table of
6-bit partial I2C addresses . . . “referred to as AddrChgTable[.]” Dkt. S-247-6 at 73.
These addresses are never “generated” by the chips; they are prepopulated in the
code to match data utilized by Lexmark products. And in order to provide, change,
or self-assign these addresses, the UII Arwen Devices perform the following steps:
33
Dkt. S-247 at 12; Dkt. S-247-5 at 29–31.
This being the case, the Court finds that the UII Arwen Devices do not utilize
an “address generator” and consequently do not literally infringe the Address
Change Patents. The series of steps employed by the UII Arwen devices (the
algorithm) involves accessing a list of static, predetermined addresses, selecting the
next available predetermined address, and making it available. See Dkt. S-247 at 32
(Lexmark itself stating that the “UII Arwen Devices select addresses from a table
and provide that selected, new address to the ASIC”). This means that the software
or electronic circuitry therein implements an algorithm to provide address values,
not to generate them. The Address Change Patents require implementing an
algorithm that itself generates addresses. Accordingly, “every limitation recited” in
the Address Change Patent claims is not found in the UII Arwen Devices. See
Strattec Sec. Corp. v. Gen. Auto. Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997)
(finding that “every limitation recited in the claim is found in the accused device”
when “the properly construed claim reads on the accused device exactly”). Summary
judgment in favor of UII is appropriate on the issue of literal infringement. See
Athletic Alternatives, 73 F.3d at 1578 (Fed. Cir. 1996) (finding that the question of
literal infringement is “amenable to summary judgment” where “the question of
literal infringement collapses to one of claim construction”).
34
Whether the UII Arwen Devices infringe under the doctrine of equivalents is
a related but different question. In this context, the essential inquiry is whether “the
accused product or process contain[s] elements identical or equivalent to each
claimed element of the patented invention[.]” Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 40 (1997). “The function-way-result test provides that ‘an
element in the accused device is equivalent to a claim limitation if it performs
substantially the same function in substantially the same way to obtain substantially
the same result.’” Tomita Tech. USA, LLC v. Nintendo Co., 681 F. App’x 967, 972
(Fed. Cir. 2017) (citation omitted). In assessing the “way” prong, the only prong
truly at issue here, the Court must determine whether “the way the accused product
performs the function . . . is ‘substantially different’ from the way . . . of the subject
patent.” Id. “The determination of equivalency is a question of fact[.]” Upjohn Co.
v. Mova Pharm. Corp., 225 F.3d 1306, 1309 (Fed. Cir. 2000). Hence, to prevail on
this issue on summary judgment, UII must show that there is a lack of genuinely
disputed material facts. See Celotex Corp, 477 U.S. at 323.
UII attempts to show that no genuine issue of material fact exists as to
equivalency by pointing to Dr. Walker’s equivalency analysis. Specifically, UII
argues that “[n]either Lexmark nor its expert provide any meaningful explanation or
evidence to establish the same function-way-result test as to each element(s)
Lexmark contends it met under the [doctrine of equivalents].” Dkt. 269 at 3.
35
“Instead,” UII argues, “Dr. Walker states generically that the accused devices
perform the same function, in the same way, to achieve the same result.” Id.
The Court largely agrees. Concerning the UII Arwen Devices and the “address
generator” limitation, Dr. Walker states that:
[W]hen UII Arwen Devices change to a next address among a list of
predetermined addresses, UII Arwen Devices, nonetheless, implement
an algorithm to change an address by performing the algorithm to look
up and change the address. In this way, UII Arwen Devices perform
substantially the same function as claimed, that is, to generate a new
address. Moreover, UII Arwen Devices generate the addresses in
substantially the same way, that is, by performance of a specified
algorithm. Finally, the result is substantially the same in that an address
is changed from an old address to a new address in a manner that is
coordinated between a master printer device and a slave toner device
such that the system continues to operate seamlessly after the new
address is implemented. It is my opinion that UII’s source code is
written with a full understanding of the manner in which microchips on
original Lexmark toner cartridges change addresses such that the
manner in which UII Arwen Devices change addresses is done to
achieve substantially the same function (i.e., change addresses), in
substantially the same way (i.e., implementation of an algorithm), to
achieve substantially the same result (i.e., implement a new address that
is coordinated between a printer and a toner cartridge).
Dkt. S-247-6 at 183. As an initial matter, it is fair to characterize Dr. Walker’s one
sentence “way” analysis as a conclusory expert assertion. Such assertions do not
raise issues of material fact. Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed.
Cir. 2008) (“Conclusory expert assertions cannot raise triable issues of material fact
on summary judgment.”). Beyond that, Dr. Walker’s analysis—if it can be called
that—is based on an erroneous construction of “address generator” that directly
36
contradicts the proper construction. The UII Arwen Devices do not generate
addresses by performance of a specified algorithm, as Dr. Walker states. They
provide static, prepopulated addresses by performing an algorithm that amounts to
selecting and adopting the next value in a predetermined table. By solely relying on
Dr. Walker’s inadequate and conclusory opinions, Lexmark has failed to “come
forward with specific facts showing that there is a genuine issue for trial.” Shaw, 884
F.3d at 1098 (citation omitted). The UII Arwen Devices do not infringe the Address
Change Patents either literally or under the doctrine of equivalents.
ii.
The Punch Out Bit Field Patents (‘786, ‘193)
UII alone requests summary judgment concerning infringement of the Punch
Out Bit Field Patents. UII argues that the UII Pensive devices do not meet at least
one element of Claims 2 and 6 of the ‘786 Patent or Claims 10 and 33 of the ‘193
Patent. Dkt. S-244 at 12–15.
While the disclosures of Claims 2 and 6 of the ‘786 Patent and Claim 10 of
the ‘193 Patent are provided in the Court’s invalidity analysis, see supra pp. 12–13,
Claim 33 of the ‘193 Patent (a dependent claim) has yet to be considered. It claims:
30. A memory module, comprising: memory cells for storing
information therein; and a plurality of signal lines for communicating
with a processing device, the memory module configured such that
following reception of a command on the signal lines and during
processing thereof, a voltage on a first signal line of the plurality of
signal lines is limited for a period of time by the memory module to be
no more than an intermediate voltage greater than voltages
corresponding to a binary zero value and less than voltages
37
corresponding to a binary one value, for indicating by the memory
module one of a busy condition and an error condition; wherein the
command pertains to usage of toner or ink in a consumable item for an
imaging device for instructing the memory module to punch out at least
one bit of at least one specified bit field within the memory module to
indicate the usage of toner or ink, and wherein the memory module
processes the command following the reception thereof.
32. The memory module of claim 30, further comprising at least one
electrical component coupled between the first signal line and a ground
potential such that the memory module passes current through the at
least one electrical component for limiting the voltage on the first signal
line to be no more than the intermediate voltage.
33. The memory module of claim 32, wherein the intermediate voltage
is based at least in part upon a resistance corresponding to the at least
one electrical component.
Dkt. 36-9 at 24. In light of this, and what has been discussed above, one dispositive
issue pertaining to literal infringement is whether the UII Pensive Devices receive a
command to change at least one specified bit, in a specific bit field, in one or more
non-volatile memory modules.6 Although construction of this limitation was
addressed in the context of invalidity, its importance for infringement necessitates a
more detailed discussion here. See WMS Gaming, Inc., 184 F.3d at 1346.
The parties’ disagreement over the meaning of “receiving a command to
change at least one specified bit, in a specific bit field, in one or more non-volatile
memory modules” ultimately boils down to whether this limitation encompasses
This limitation is found in Claim 10 of the ‘193 Patent as well as Claim 33 through its dependence
on Claim 32, which is itself dependent on Claim 30. Dkt. 36-9 at 23–24. This limitation is also
found in Claims 2 and 6 of the ‘786 Patent through their reliance on Claim 1. Dkt. 36-8 at 20.
6
38
reception of a command to copy RAM data (volatile memory) to EEPROM (nonvolatile memory). See Dkt. S-244 at 13; Dkt. S-262 at 13. Lexmark argues that it
does because a byte (what is copied from RAM by the UII device) is simply 8 bits,
and copying entire bytes comprised of punched out bits from RAM to EEPROM
“necessarily changes each punched out bit in each byte that is copied.” Dkt. S-262
at 13. UII argues that “there is no specified bit ‘punched out’” under this UII method.
Dkt. S-269 at 5.
As previously mentioned, Dr. Walker appears to waiver on this issue
depending on whether infringement or invalidity is at issue:
Q: Okay. And you change bits in this field – right? – as part of this
function, is changing bits in the field?
A: You can change bits in the field, but that doesn’t – doesn’t explain
that it is punching out a bit, and it doesn’t explain – so – and it doesn’t
explain how – that it’s – how that there’s a command to – that it receives
a command to punch out a specific bit in a bit field.
Q: Well, the Court’s construction was changing a – changing a bit is
punching out a bit, right?
[objection to the form of the question]
Q: Is –
A: I can’t remember. I don’t – the – the – the – you can only – let’s see.
So the claim requirements – the claim itself requires that you receive a
– that you receive a command to punch out a particular bit in a bit field.
And what this is showing is that you can write a – and this – this shows
that you write to a particular address, and I think that the two are distinct
for the reasons that I discussed in my report.
39
Q: Okay well, the Court said that “punch out at least one bit” means
“change at least one bit in nonvolatile memory,” right?
A: Yes . . .
*****
A: And it doesn’t explain that it also means that you – that you need
to receive a – that the rest of the claim requires that you receive a
command, not that – and the command is distinct from a[n] address
and a value.
Q: Okay. Well, this – this – the 1982 spec talks about receiving this
write memory command, right?
A: And the write memory command is comprised of an address and a
value.
Dkt. S-246-3 at 152–54 (Dr. Walker discussing DS1982 in the context of invalidity).
Ultimately, the Court once again finds that reception of a command to copy
RAM data to EEPROM in a UII device does not qualify as receiving a command to
change at least one specified bit, in a specific bit field, in one or more non-volatile
memory modules. Throughout the claims of the ‘786 and ‘193 Patents, the received
command itself specifies bits to be changed in a specified non-volatile memory bit
field.7 The description of the ‘193’ Patent further provides that, “[a]ccording to one
See ‘193 Claim 1 (“a command indicative of usage of toner or ink in a consumable item for an
imaging device for instructing the memory module to punch out at least one bit of at least one
specified bit field within the memory module”); ‘193 Claim 3 (“The method of claim 1, wherein
the at least one bit comprises a plurality of bits and the at least one specified bit field comprises a
plurality of separately specified bit fields such that each bit corresponds to a distinct specified bit
field”); ‘193 Claim 10 (“instructs the memory module to punch out at least one bit in at least one
specified bit field”); ‘786 Claim 1 (“a punch out bit field command operable to instruct the one or
more memory modules to punch out a specified bit field”); ‘786 Claim 9 (same).
7
40
aspect of the invention, each memory module in the imaging or printing device may
be directed to increment one or more page counts by a specified value or to punch
out a resource bit field.” Dkt. 36-9 at 17. The description of the ‘786 Patent provides
the exact same. Dkt. 36-8 at 15. The Court therefore agrees with Dr. Walker when
he says that “the claim itself requires that you . . . receive a command to punch out
a particular bit in a bit field.” Dkt. S-246-3 at 154. A command to copy data from
RAM to EEPROM, however, does not involve this level of specification. At least
one bit is inevitably changed in one or more non-volatile memory modules through
such a command, but those bits are only specified by the volatile memory data—the
command is generalized to copy whatever is contained therein. Finally, although the
Federal Circuit has not endorsed “a regime in which validity analysis is a regular
component of claim construction[,]” the Court notes that, under the construction
Lexmark advances in the infringement context, it is unclear how multiple claims of
the Punch Out Bit Field Patents are not rendered obvious by prior art. Phillips v.
AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005). DS1982 receives commands
pertaining to usage of toner or ink in a consumable item for an imaging device and
processes them by copying data from volatile to non-volatile memory. See Dkt. 2416 at 20.
It follows that the UII Pensive Devices do not literally infringe the Punch Out
Bit Field Patents. The parties agree that that the UII Pensive Devices receive
41
“PunchBit” commands that are processed by “copy[ing] [an entire] bitfield’s current
value from [the subject printer’s] EEPROM to temporary storage” and then
“stor[ing] the punched-out bitfield in the [subject device’s] EEPROM[.]” Dkt. S247-6 at 59–61. This means that the UII Pensive Devices do not receive commands
that direct them to punch out at least one bit in a specified bitfield in non-volatile
memory—they receive commands that direct them to punch out specified bits in
specified bitfields in volatile memory and then eventually copy the entire volatile
memory bitfield to non-volatile memory. Accordingly, the subject limitation does
not read on the UII Pensive Devices in exact fashion. See Strattec Sec. Corp, 126
F.3d at 1418 (Fed. Cir. 1997).
Lexmark argues that “UII cannot avoid infringement by utilizing an extra step
of changing at least one bit, in a specific bit field in RAM prior to making the same
change in EEPROM[,]” Dkt. S-262 at 13, but this argument misses the mark. The
principle that “[i]infringement arises when all of the steps of a claimed method are
performed, whether or not the infringer also performs additional steps[,]” Smith &
Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 1311 (Fed. Cir. 2001), is not a means
by which patent litigants can bring the function-way-result test into literal
infringement analysis. In method claims using the signal word “comprising,”
“infringement is not avoided by the presence of elements or steps in addition to those
specifically recited in the claim.” Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200
42
F.3d 795, 811 (Fed. Cir. 1999) (emphasis added). The UII Pensive devices are
missing the element of receiving a command that instructs them to change at least
one specified bit, in a specific bit field, in one or more non-volatile memory modules.
UII devices simply do not do that. Additionally, the Court did not find Lexmark’s
ice cream analogy persuasive. See Dkt. S-285 at 8. UII never punches out at least
one bit in non-volatile memory through specified command. Even if the ultimate
result might be similar in some instances, the methods are different. There is no
literal infringement here.
The Court concludes this section by noting that, with regard to the Punch Out
Bit Field Patents, UII has made no averments concerning its entitlement to summary
judgment of non-infringement under the doctrine of equivalents. Lexmark may
argue this issue to the jury.
iii.
The Voltage Clamping Patents (‘136, ‘764)
The Voltage Clamping Patents have yet to be covered. On summary judgment,
Lexmark argues that the UII Pensive Devices infringe Claim 15 of the ‘764 Patent.
Dkt. S-247 at 36. UII argues that its devices do not infringe any of the asserted
Voltage Clamping Patent claims (Claims 1 and 9 of the ‘136 Patent and Claims 15
and 25 of the ‘764 Patent). Dkt. S-244 at 15.
These patent claims disclose:
1. A memory module, comprising: a plurality of memory cells; and a
plurality of signal lines for communicating with a processing device,
43
the memory module configured such that upon encountering a busy
condition while processing a command received by the memory
module, the memory module limits a voltage on a first signal line of the
plurality of signal lines for a period of time to be no more than an
intermediate voltage greater than voltage levels corresponding to a
binary zero state and less than voltage levels corresponding to a binary
one state when voltages on the first signal line is not limited by the
memory module, for indicating an occurrence of the busy condition,
wherein the memory module is configured to receive a clock signal on
the first signal line, and during the period of time in which the memory
modules limits a voltage on the first signal line of the plurality of signal
lines to be no more than the intermediate voltage, the memory module
1) receives the clock signal on the first signal line and 2) at the same
time indicates to the processing device the occurrence of the busy
condition by limiting the voltage on the first signal line to be no more
than the intermediate voltage [Claim 1, ‘136].
9. A memory device, comprising: a first signal line for receiving, by the
memory device, a clock input signal; a second signal line for
communicating address and data information; and a plurality of
memory cells and circuitry coupled to the first signal line and the
second signal line, the circuitry limiting a voltage level on the first
signal line for a first period of time to be no more than a first voltage
level in response to encountering a busy condition by the memory
device during processing of a command, the first voltage level being
less than voltage levels corresponding to a binary one state when
voltages on the first signal line are not limited by the circuitry and
greater than voltage levels corresponding to a binary zero state, wherein
during the first period of time, the memory device receives the clock
input signal on the first signal line from a processing device while at
the same time the memory device communicates to the processing
device an occurrence of the busy condition by limiting the voltage of
the clock input signal to be no more than the first voltage level [Claim
9, ‘136].
*****
15. A memory module, comprising: memory cells for storing
information therein; and a plurality of signal lines for communicating
with a processing device, the memory module configured such that
44
during processing of a command received on at least one of the plurality
of signal lines, a voltage on a first signal line of the plurality of signal
lines is clamped for a period of time by the memory module to be no
more than an intermediate voltage greater than voltages corresponding
to a binary zero value and less than voltages corresponding to a binary
one value, the voltage clamping for communicating by the memory
module to the processing device an occurrence of one of a busy
condition and an error condition; wherein the memory module is
configured to concurrently 1) receive a first binary input signal on the
first signal line and 2) clamp the voltage of the first binary input signal
to be no more than the intermediate voltage such that the voltageclamped first binary input signal being at the intermediate voltage
instead of one of the voltages corresponding to the binary one value
communicates the occurrence of the one of the busy condition and the
error condition by the memory module [Claim 15, ‘764].
24. A memory module, comprising: a plurality of memory cells; and a
plurality of signal lines for communicating with a processing device,
the memory module configured such that in response to encountering a
busy condition while processing a command, the memory module
clamps a voltage on a first signal line of the plurality of signal lines to
be no more than an intermediate voltage greater than voltage levels
corresponding to a binary zero state and less than voltage levels
corresponding to a binary one state for a period of time to communicate
to the processing device an occurrence of the busy condition; wherein
the memory module is configured to receive a first binary input signal
on the first signal line during the period of time the memory module
clamps the voltage on the first signal line to be no more than the
intermediate voltage such that the voltage-clamped first binary input
signal being at the intermediate voltage instead of one of the voltage
levels corresponding to the binary one state communicates by the
memory module to the processing device the occurrence of the busy
condition, the first binary input signal comprising an input clock signal
[Claim 24, ‘764].
Dkt. 36-12 at 27–28 (the ‘136 Patent); Dkt. 36-11 at 23–24 (the ‘764 Patent).
Thus far, the parties have agreed to the following constructions:
45
Claim Term8
Agreed Construction
“busy condition”
“the memory module is busy processing
a previous command”
“a voltage on a first signal line of the
plurality of signal lines is limited to be
no more than an intermediate voltage
which is greater than a voltage level
representing a logical ‘0’ and is less than
a voltage level representing a logical
‘1’”
“voltage on a first signal line of the
plurality of signal lines to be no more
than an intermediate voltage greater
than voltage levels corresponding to a
binary zero state and less than voltage
levels corresponding to a binary one
state”
Dkt. 117 at 11. At this point, the parties do not appear to have any claim constructionspecific disagreements; rather, they disagree about whether the particular “command
preamble” received by UII Pensive Devices as part of a “command frame” functions
as a separate, “previous command.” See Dkt. S-256 at 8–9 (UII arguing that the
“command preamble is a single byte that contains no command to be processed . . .
it is a signal sent to identify the address of the specific device to which the command
data packet will be sent”); Dkt. S-262 at 14 (Lexmark arguing that “the command
preamble is, in fact, a command”).9
Before turning to this issue, however, the Court must address the admissibility
of Herman Schnell’s testimony. It is undisputed that Mr. Schnell is a member of UII
These claim terms were agreed upon in the context of the ‘764 Patent.
Whether or not this can be considered a matter of claim construction is immaterial. As the Court
will explain below, it is an underlying issue of material fact. And, although claim construction is
itself ultimately a matter of law, where claim construction requires extrinsic evidence such as
expert testimony to explain a disputed term “an underlying factual question may arise which makes
summary judgment improper.” Howes, 814 F.2d at 643 (Fed. Cir. 1987) (citation omitted).
8
9
46
and that he personally helped create the source code for the UII Arwen and Pensive
devices. Mr. Schnell was also deposed by Lexmark, and Dr. Walker referenced his
testimony dozens of times in his report on infringement. See generally Dkt. S-24710 (excerpts from Mr. Schnell’s deposition); Dkt. S-247-6 (Dr. Walker’s
infringement report). Lexmark nevertheless now argues that the Court “should
disregard Mr. Schnell’s opinions because he was not disclosed as an ‘expert’ . . . did
not issue a report . . . and did not make a [Rule 26] disclosure[.]” Dkt. S-262 at 7.
The Court will not disregard Mr. Schnell’s opinions. It is well established that
lay witnesses may testify “based on particularized knowledge gained from their own
personal experiences.” United States v. Hill, 643 F.3d 807, 841 (11th Cir. 2011). As
a result:
most courts have permitted [owners and officers] to testify . . . without
the necessity of qualifying the witness as an . . . expert. Such opinion
testimony is admitted not because of experience, training, or
specialized knowledge within the realm of an expert, but because of the
particularized knowledge that the witness has by virtue of his or her
position in the business.
Tampa Bay Shipbuilding & Repair Co. v. Cedar Shipping Co., 320 F.3d 1213, 1222
(11th Cir. 2003) (emphasis and alterations in original) (citation omitted). Here, Mr.
Schnell has particularized knowledge of the UII Arwen and Pensive Devices—he
wrote the source code that makes them work. This is why Lexmark deposed him,
and also why Dr. Walker cites Mr. Schnell’s opinions throughout his report. Dr.
Schnell may therefore testify as to the UII Arwen and Pensive Devices’ source code.
47
Still, “the fact that [Dr. Schnell] may have particularized knowledge and experience
as a co-inventor of the [accused devices] does not necessarily mean he also has
particularized knowledge and experience in [anything else].” Air Turbine Tech., Inc.
v. Atlas Copco AB, 410 F.3d 701, 714 (Fed. Cir. 2005). The admissibility of his
opinions is consequently limited. Mr. Schnell may not opine in expert fashion on
issues beyond his purview. Id.
Moving back to the Voltage Clamping Patents, however, the Court finds that
a material issue of fact precludes summary judgment for either party. Each of the
asserted claims of the Voltage Clamping Patents contain at least one “busy
condition” limitation. Whether this limitation reads on the UII Pensive Devices turns
on which expert is right about the nature of the “command preamble” that UII
Pensive Devices receive prior to voltage reduction. While Dr. Walker treats the
“command preamble” as a separate and unitary command, see Dkt. S-247-8 at 13,
Mr. McAlexander claims that:
Dr. Walker’s analysis uses the correct Court claim construction for the
term “busy condition.” However, as explained in more detail later in
this Supplemental Rebuttal Report, Dr. Walker incorrectly applies this
construction to include a condition that occurs while a command is
being received rather than while a previous command is being
processed, as required by the Court’s claim construction. In essence,
Dr. Walker breaks up a command received into two parts, the preamble
and the data packet. He then labels the preamble as a previous command
such that, while receiving the remainder of the same command data
packet portion, Dr. Walker unbelievably concludes that a previous
command is being processed. Nothing is further from the fact. The
preamble address sets up the module to receive the command data
48
packet. This type of command packet handling methodology has been
a standard in packet processing for multiple decades. Command packet
composition structure has been and still is a combination of, e.g., source
and destination addresses, type of command, configuration/command
specific information, and associated command data. To arbitrarily
segregate the preamble as its own command is completely outside the
understanding of an ordinarily skilled artisan and is inconsistent with
the teachings of, and not supported by, the ‘193 Patent.
Dkt. D-247-7 at 46–47. This dispute is not clearly resolved by the testimony of Mr.
Schnell or the Lexmark Pensive Specification UII largely addresses through attorney
argument. A classic battle of the experts therefore exists. And this renders “summary
judgment improper.” Edwards Sys. Tech., Inc., 99 F. App'x at 921; see also Crown
Packaging Tech., Inc., 635 F.3d at 1384; TriMed, Inc., 608 F.3d at 1343. The parties
may argue their respective positions to the jury along with any other Voltage
Clamping Patent infringement issues.
IV.
Whether Lexmark Products Practice the Asserted Claims
As Lexmark notes, whether a patentee practices the asserted claims of its
patents can be relevant to a number of issues in any given patent infringement case.
Lexmark requests such a finding here—presumably for purposes of damages. Dkt.
S-247 at 41–42. UII, on the other hand, argues that Lexmark has not established that
its products practice all of the asserted claims. Dkt. S-256 at 12.
The Court finds that issues of material fact preclude summary judgment on
this issue as it relates to the Voltage Clamping Patents and the Punch Out Bit Field
49
Patents.10 Although Dr. Walker is the only expert to examine Lexmark’s products,
his resulting opinions rest on factually contested issues or overly broad
constructions. For instance, Dr. Walker’s view that Lexmark’s Pensive microchips
practice the Voltage Clamping Patents wholly depends on his understanding that the
command preamble received by said microchips is in fact a “previous command.”
See Dkt. S-247-6 at 253. Dr. Walker nevertheless fails to differentiate the command
preamble received in Lexmark’s Pensive chips from those received in UII’s. And,
as the Court explained above with reference to Mr. McAlexander’s opinions, it is
not clear that a single byte of an entire command frame sent to identify the address
of the specific device to which the command data packet will be sent can itself be
understood as a unitary command by one with ordinary skill in the art. If the evidence
at trial shows this to be true (or Lexmark’s command preamble to be of a different,
qualifying nature), Lexmark will be entitled to a finding that its Pensive microchips
practice the Voltage Clamping Patents. If not, such a finding does not necessarily
follow from Dr. Walker’s report despite the fact that UII’s expert did not directly
examine Lexmark’s products. Additionally, as to the Punch Out Bit Field Patents,
Dr. Walker “applied the same constructions” that the Court previously found to be
erroneous in scope. Id. at 258–59. It would therefore be questionable to rely solely
10
The Court has found that the UII Arwen Devices do not infringe the Address Change Patents
literally or under the doctrine of equivalents. Whether Lexmark’s products practice them is
therefore irrelevant.
50
on his opinion, as written, to grant summary judgment on the issue of whether
Lexmark’s products practice the Punch Out Bit Field Patents. Further clarification
is necessary to determine the impact of the Court’s findings on Dr. Walker’s
opinions.
V.
Damages
The final issue to consider is the availability of lost profits.11 UII argues that,
even if infringement is proven, Lexmark cannot establish them. Dkt. S-244 at 46–
47. Lexmark responds that, at the very least, there is an issue of material fact that
precludes summary judgment on this issue. Dkt. S-262 at 21–24.
The Court agrees with Lexmark. 35 U.S.C. § 284 provides that “[u]pon
finding for the claimant the court shall award the claimant damages adequate to
compensate for the infringement, but in no event less than a reasonable royalty for
the use made of the invention by the infringer[.]” As the Federal Circuit has
explained, this opens the door to compensatory damages, such as lost profits, based
on “but for” causation. See Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d
1275, 1284 (Fed. Cir. 2017). It is ultimately “the fact finder’s job” to determine what
a patent holder’s profits would have been but for an infringer’s actions. Id. at 1285.
11
While the parties initially disputed the propriety of pre-suit damages, they have apparently
stipulated that “Lexmark is entitled to recover pre-suit damages with respect to the UII Pensive
Devices that [allegedly] infringe the ‘786 Patent.” See Dkt. S-262 at 25; Dkt. 269 at 8.
51
Nothing presented here precludes the jury from considering this issue. UII’s
argument to the contrary primarily revolves around whether Lexmark can
demonstrate but for causation and satisfy apportionment principles under the
Panduit12 test. See Dkt. S-244 at 46–47. The Court need not answer these questions,
though, because “[t]here is no particular method required to prove but for causation.”
Mentor Graphics Corp., 851 F.3d at 1284. To be sure, the Panduit test is only one
“useful, but non-exclusive” means of doing so. Id. And given the particularities of
this case, it is not clear that the Panduit test is appropriate. Regardless of the fact
that UII was selling its products to remanufactures while Lexmark was selling to end
users—an apparent issue for treating the demand for UII’s products and Lexmark’s
products as interchangeable—a material issue of fact exists as to whether each of
UII’s sales directly caused Lexmark to lose a customer. This is because Lexmark
plausibly argues that (1) UII’s devices would not allow aftermarket toner cartridges
to work in Lexmark printers without certain aspects of Lexmark’s patented
technology, and (2) customers would be forced to buy Lexmark products if UII was
not helping remanufacturers produce infringing substitutes. These factual issues may
be addressed at trial though expert testimony. If Lexmark fails to establish but for
12
See Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152, 1164 (6th Cir. 1978); Mentor
Graphics Corp., 851 F.3d at 1285 (listing the Panduit factors as: “(1) demand for the patented
product; (2) absence of acceptable non-infringing alternatives; (3) manufacturing and marketing
capability to exploit the demand; and (4) the amount of profit it would have made”).
52
causation or properly apportion damages under Federal Circuit precedent, UII may
reassert its position on a motion for judgment as a matter of law or directed verdict.
CONCLUSION
Lexmark is granted summary judgment finding that Claims 15 and 24 of the
‘764 Patent, Claims 1 and 9 of the ‘136 Patent, and Claim 33 of the ‘193 Patent are
not invalid. UII is granted summary judgment finding that the UII Arwen Devices
do not infringe the Address Change Patents either literally or under the doctrine of
equivalents, and that the UII Pensive Devices do not literally infringe the Punch Out
Bit Field Patents. The parties may argue unresolved issues to the jury.
Accordingly, it is hereby ORDERED and ADJUDGED:
(1) Lexmark’s Motion for Partial Summary Judgment (Dkts. 242/S-247) is
GRANTED-IN-PART and DENIED-IN-PART.
(2) UII’s Motion for Summary Judgment (Dkts. 239/S-244) is GRANTEDIN-PART and DENIED-IN-PART.
DONE AND ORDERED at Tampa, Florida, on October 12, 2023.
/s/ William F. Jung
WILLIAM F. JUNG
UNITED STATES DISTRICT JUDGE
COPIES FURNISHED TO:
Counsel of Record
53
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